Intellectual Property Law

Friday Shorts

Posted on April 04, 2008
Standard for Invalidity Tested at SCOTUS: In Microsoft Corp. v. z4 Tech., Microsoft argued that z4's patent was invalid under 102(g), and sought a lowered standard of invalidity for art that was not considered by the PTO. Relying partly on the dicta from the SCOTUS KSR decision ("[w]e nevertheless think it appropriate to note that the rationale underlying the presumption [of validity] - that the PTO, in its expertise, has approved the claim - seems much diminished here"), Microsoft is asking the SCOTUS to formally take a stance on the presumption...

Commerce Department Renews Support for AQS's in S. 1145

Posted on April 03, 2008
Carlos Gutierrez from the Department of Commerce sent a letter today to Arlen Specter, expressing "strong support" for a "key element" of S. 1145: Applicant Quality Submissions (AQS).The Administration strongly supports the AQS provision in the bill in its current form and believes that enactment will prove to be the strongest step toward improved patent quality...

*** USPTO Continuation Ruled Dead (For Now) ***

Posted on April 01, 2008
Judge Cacheris from the ED Va. granted GSK?s and Tafas?s Motions for Summary Judgment finding that the PTO?s "hard limit" on the number of continuation applications and claims per patent were excessive extensions of PTO authority:Because the USPTO?s rulemaking authority under 35 U...

271 Blog On Vacation

Posted on March 30, 2008
Although I have been remiss in keeping everyone posted, the 271 Blog has been off on vacation for the last week. I anticipate being back on Wednesday, and will resume posting shortly thereafter. See you soon!- Peter

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CAFC Chides Counsel, Court, On Claim Construction Conduct

Posted on March 19, 2008
LSI Industries, Inc. v. ImagePoint, Inc., (2007-1292), March 19, 2008In this nonprecedential case, the CAFC reversed almost every disputed claim term construed by the district court which was the basis for summary judgment of noningfringement. During litigation, the district court openly admitted it was in over its head with the patent case, and reached out to counsel for guidance...

PTO Budget Amendment Approved

Posted on March 18, 2008
From the Congressional Daily (link): The Senate unanimously approved last week an amendment to the fiscal 2009 budget resolution condemning the diversion of funds from the Patent and Trademark Office.When PTO funds are diverted for other purposes, the office's examiners cannot approve patents as quickly and that hinders the economic benefits these innovations could potentially bring, according to Sen...

Gor Blimey! Software Patent Rejection Gets Pipped at the Post (UK-IPO)

Posted on March 18, 2008
Lest anyone think the USPTO is the only office having issues with patentable subject matter, the UK-IPO is now in full-fledged "struggle" mode trying to conform the Office's policy on software patents with that of the EPO.The UK Patents Act is aligned with the European Patent Convention (EPC)...

The Latest From Delaware

Posted on March 17, 2008
The good people at the Delaware IP Law Blog have picked up steam after a quiet February and are back with some great posts. Last week, there was the interesting observation that, as a per cent of the civil case load, Delaware outranks the E.D. Texas and E...

Latest Amendments to S.1145

Posted on March 14, 2008
The Senate has released the latest amendments to the Patent Reform Act in advance of Senate Floor Debate:Interlocutory appeals: limits interlocutory appeals of claim construction orders to those which the district court determines have a reasonable basis for disagreement, and the appeal may advance the ultimate termination of the litigation;Best Mode amendment: best mode would be considered for obtaining a patent, but not for invalidating;Reexamination amendment: restores third-party reexamination;The "CAFC Telework" amendment: ensures that CAFC judges that do not reside within a 50-mile radius of Washington DC use chambers of an existing courthouse in the district where they reside...

Latest Ex Parte Reexamination Statistics from the PTO

Posted on March 14, 2008
The latest statistics on Ex Parte Reexamination (through December 2007) have been released by the PTO. As expected, the number of reexamination requests continue to climb:2002 - 272 filings2003 - 392 filings2004 - 441 filings2005 - 524 filings2006 - 511 filings2007 - 643 filings2008 - 165 filingsThe success rate for requestors has not changed, and continues to favor requestors...

PWC Releases 2008 Patent Damages Study

Posted on March 13, 2008
Aron Levko, together with Vincent Torres and Joseph Teelucksingh have released the 2008 PricewaterhouseCooper Patent Litigation Study, and it appears from the study that previous trends in patent litigation have continued into this year. Specifically, the study found that:? The annual median damages award since 1995 has remained fairly consistent, when adjusted for inflation...

Patent Troll Tracker Litigation Update

Posted on March 12, 2008
Joe Mullen, reporter at IP Law & Business magazine and author of the Prior Art Blog has some additional information on the Ward/Albritton lawsuit against Frenkel and Cisco (see 271 Blog post below). As many have noticed already, the Ward complaint "making the rounds" is an amended complaint...

*TROLL TRACKER SUED*

Posted on March 11, 2008
"I am altering the deal. Pray I don't alter it any further" - Darth Vader, Empire Strikes Back (1980)John Ward v. Cisco Systems, Inc. (2007-2502-A), 188th District, Gregg County TexasOn February 27, John Ward filed a complaint in district court alleging defamation against Richard Frenkel (aka the Patent Troll Tracker) and Cisco...

PTO Publishes Impact Analysis on "Alternative Claim Language" Proposal

Posted on March 10, 2008
Examination of Patent Applications That Include Claims Containing Alternative Language (RIN 0651?AC00), March 10, 2007In August 0f 2007, the PTO issued a notice stating that Markush-type claiming and other alternative claiming formats were being restricted for practice before the PTO:The Office is proposing to revise the rules of practice pertaining to any claim using alternative language because patent applicants sometimes use Markush or other alternative format to claim two or more independent and distinct inventions and/or to recite hundreds, if not thousands, of alternative embodiments in one claim...

CPF Ups the Ante on Patent Reform, Spells Out Damage Apportionment

Posted on March 09, 2008
On March 5, the Coalition for Patent Fairness (CPF) issued a letter to Senators Leahy, Specter and Hatch proclaiming that, not only is damage apportionment necessary, apportionment considerations need to be codified to provide a template for judges to instruct juries:A serious and continuing problem in the calculation of a reasonable royalty is the lack of adequate jury instruction...

USPTO: The Toughest Place to Get a Patent?

Posted on March 06, 2008
Earlier, the 271 Blog reported on USPTO Commissioner Dudas' testimony before Congress (link), where he commented that the allowance rate for applications has dropped to 44%. As recently as November 2007, the USPTO indicated that allowance rates were at 51% (link)...

W.D. Wis.: "A Few Examples" Of Allegedly Infringing Products is Insufficient Notice

Posted on March 05, 2008
Taurus IP, LLC v. Ford Motor Company, Western District of Wisconsin, Case 3:07-cv-481, February 4, 2008Taurus launched a patent infringement suit against 3 car companies, alleging infringement of their patent relating to a computer system for managing sales information...

Joff Wild Responds to "End Software Patents"

Posted on February 29, 2008
Understandably, great exception was taken to the bombastic claim that the software industry spends $11.4 billion dollars on patent litigation. From this morning's post:Clearly, what the [End Software Patents] authors have done is take 55 [the number of cases alleged to be filed each week], multiply it by 52 [weeks] and then multiply that figure (2860) to get the $11...

Costs of Patent Prosecution

Posted on February 28, 2008
When people decide to patent, the inevitable question of "how much will it cost?" comes up. While not everyone has a handy copy of each AIPLA cost survey, Alan Kasper, First Vice-President of the AIPLA, provided a brief glimpse into the costs involved in his testimony before Congress:Average Cost of Preparation:? Preparation and filing of an original application of minimal complexity (10 page specification, 10 claims) = $8,548...

Dudas and Others Testify Before Congress

Posted on February 28, 2008
Yesterday, the Subcommittee on Courts, the Internet, and Intellectual Property Oversight held a hearing on the USPTO (link). The witness list included Jon Dudas, who published his remarks on the Committe on the Judiciary website.An interesting comment appears on the second page of Dudas' testimony:Our patent examiners completed over 362,000 patent applications in 2007, the largest number ever, while maintaining for the second year in a row an examination compliance rate1 of 96...

"End Software Patents" Launches With Website and Report

Posted on February 28, 2008
Coming in fashionably late to the "great patent reform debate", this organization (covered previously here) "will initially focus on two approaches: 1) assisting corporations that choose to challenge software patents in the courts and at the U.S. Patent and Trademark Office (USPTO) on the basis that patents for software and designs with no physically innovative step have no legal validity, and 2) public education aimed at passing laws to protect software from patent law...

District Court Uses eBay to Enjoin Patentee From Enforcing Patent

Posted on February 27, 2008
Unitronics v. Samy Gharb, Civil Action No. 06-27 (RMC), District Court for the District of Columbia, January 30, 2008After receiving letters accusing them of infringement, Unitronics filed for a declaratory judgment seeking a ruling of noninfringment, patent invalidity, and a judgment that Gharb had intentionally interfered with Unitronics? contractual relations...

Tempering (Over) Zealous Advocacy - Courts Overturn Verdict, Sanction Counsel $10M

Posted on February 26, 2008
"There are only two tragedies in life: one is not getting what one wants, and the other is getting it."- Oscar WildeMedtronic Navigation Inc. v. Brainlab, Civil Action No. 98-cv-01072-RPM, District of Colorado, February 12, 2008When judges become infuriated over hyper-aggressive litigation, they issue sanctions, and even set aside verdicts...

Unmasked: The Patent Troll Tracker Steps Forward

Posted on February 25, 2008
Less than 6 months after having a bounty placed on his identity (recently upped to $15k) by Ray Niro, the Patent Troll Tracker has stepped forward and revealed himself - he is none other than Rick Frenkel, Director of Intellectual Property at Cisco Systems, Inc...

Bilski Presentation Tomorrow in Chicago

Posted on February 25, 2008
Tomorrow I'll be a featured speaker at the Chicago Bar Association's (CBA) Section of Intellectual Property Law, discussing the upcoming Bilski case and the state of patentable subject matter.The presentation should start shortly after 12:00PM, and is expected to last about an hour (MCLE Credit is available)...

CAFC Creates Potential Conflict in De Nove Review of MPF Claims

Posted on February 25, 2008
Aristocrat Tech. v. Multimedia Games, Inc. (2007-1375), February 22, 2008, Non-PrecedentialAristocrat appealed the order from the Central District of California entering summary judgment of invalidity for indefiniteness of their patent. Multimedia filed a motion for summary judgment arguing that a disputed claim was invalid for indefiniteness, because the specification of the patent failed to disclose necessary structure corresponding to several of the means-plus-function limitations...

Thomson Publishes Patent Focus Report for 2008

Posted on February 21, 2008
Joff Wild, editor of Itellectual Asset Magazine, author of the IAM Blog, and contributor to Thomson's Knowledge Newsletter, has issued the "Patent Focus Report for 2008." In the report, Joff looks at the patent activity for China, Europe, Japan, India and the U...

ND Cal.: Late Claim for Inventorship Barred by Laches

Posted on February 20, 2008
Mark Moore v. Broadcom Corp. (c06-05647), February 12, 2008While working at Intermec, Inc., inventor Beard filed for a provisional application in 1997 that was ultimately converted and issued as a U.S. patent. Right around the same time, Beard was collaborating with Moore to start a new venture, and they discussed various concepts that were subsequently patented...

KSR Invades Preliminary Injunctions at the CAFC

Posted on February 19, 2008
Erico Int'l Corp. v. Vutec Corp. (2007-1168) February 19, 2008After surviving reexamination, Erico alleged that their J-Hook patent was being infringed by the defendants. While one of the defendants assured Erico that they would stop selling the allegedly infringing product, they "sold the very products it promised to retain and continued to manufacture and sell knock off J-Hooks...

Monday Shorts - Business Method Challenge at the CAFC

Posted on February 18, 2008
Bye Bye Business Methods? The CAFC decided, sua sponte, to order an en banc rehearing of In Re Bilski. The following 5 questions were presented:1. Whether claim 1 of the 08/833,892 patent application claims patent-eligible subject matter under 35 U.S...

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