Intellectual Property Law

Startups Push Congress to Maintain One-Year "Grace Period" for Patent Reform

Posted on May 04, 2010
A group of 100 startup companies sent a letter petitioning the U.S. Congress to support the current one-year grace period for filing a patent application.   Current reform measures directed to a "first-to-file" regime arguably weaken or eliminate any grace period for disclosed inventions...

Fed. Cir.: Actions of Non-Inventor/Attorney Leads To Inequitable Conduct

Posted on April 28, 2010
Avid Identification Sys. v. Crystal Import Corp., No. 09-1216 (April 27, 2010)Avid brought suit against Datamars alleging infringement of a patent directed to an RFID system for reading encoded implant chips.   The patent was found valid and infringed, but was unenforceable for inequitable conduct committed by Dr...

BPAI Informative Opinion Underscores Different Validity Standards for Reexams

Posted on April 27, 2010
Ex Parte Baxter International, Inc., No. 2009-006493 (18 March 2010) (informative opinion)Baxter and Fresenius engaged in a hard-fought battle over patents relating to hemodialysis machines with touch screen user/machine interfaces.  During litigation, Fresenius submitted Baxter's patents to the USPTO for reexamination...

Federal Circuit Looks to Redefine "Materiality" and "Intent" For Inequitable Conduct

Posted on April 26, 2010
Therasense Inc. v. Becton, Dickinson and Co., No. 08-1511 (April 26, 2010, order)During proseuction before the USPTO, the patentee made certain representations to the examiner regarding the patent claims and the prior art.  At the same time, the patentee made representations to the EPO that were clearly inconsistent with the USPTO proceedings...

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Patent Reform Before Memorial Day?

Posted on April 22, 2010
From Tech Daily Dose:Senate Judiciary Chairman Patrick Leahy, D-Vt., is pressing Senate leaders to bring his patent overhaul legislation to the Senate floor before the Memorial Day break. Senate Majority Whip Richard Durbin, D-Ill., said Thursday that Leahy would like Senate leaders to bring up the patent bill after the Senate finishes action on financial regulatory legislation, expected to come up next week, and food safety legislation...

Patent Survey Suggests Most 2009 Trends Should Slightly Improve in 2010

Posted on April 20, 2010
Inovia recently surveyed over 150 US companies to assess the impact of the economic downturn on their global IP strategy and their outlook for 2010.  The company issued a follow-up report that summarizes the results and trends identified in the received responses...

Fed. Cir.: Incorporation By Reference Valid When Information is "Ascertanabe" By the Examiner

Posted on April 19, 2010
Harari v. Hollmer, No. 09-1406 (April19, 2010)During an Interference proceeding, Harai was dismissed from the proceeding and the Board concluded that Harari?s claims were unpatentable for lack of written description due to an insufficient incorporation by reference statement...

"Bikkuri Shimashita Ka?" Japanese Companies Surge in Latest IEEE "Patent Power Scorecard"

Posted on April 14, 2010
IEEE Spectrum (with the help of 1790 Analytics) has released its annual "Patent Power Scorecards" measuring the relative strength of patent portfolios in various industries.  Factors that affected rankings included the number of patents issued, processed against four variables referred to as "Pipeline Growth", "Pipeline Impact", "Pipeline Generality", and "Pipeline Originality...

Fed. Cir. Nixes USPTO Claim Construction for Not Contruing Claim Term "Consistent With the Specification."

Posted on April 14, 2010
In Re Suitco Surface, Inc., No. 09-1418 (April 14, 2010)One of the issues in this case was the interpretation of a claim directed to ?floor finishing material? for use on athletic courts, bowling lanes, and other floor surfaces made of wood, linoleum, terrazzo, or concrete...

Fed. Cir.: "Direct" Action Not Implied When Method Step is Performed

Posted on April 12, 2010
SIRF Technology v. ITC, No. 09-1262 (April 12, 2010)SiRF Technology, Inc. (?SiRF?) and other defendants appealed the decision of the ITC finding that certain GPS devices infringed patents owned by Global Locate.  One of the claims-at-issue recited A method of receiving global positioning system (GPS) satellite signals comprising:receiving satellite ephemeris at a first location;communicating the satellite ephemeris to a mobile GPS receiver at a second location; andprocessing satellite signals received at the mobile GPS receiver using the ephemeris to reduce code and frequency uncertainty in the mobile GPS receiver to improve acquisition sensitivity of the mobile GPS receiver...

Video: Kappos Speech on the Future of the USPTO

Posted on April 09, 2010
On April 6, Director Kappos spoke at the William Mitchell College of Law, where he shared his vision for a "more innovation-friendly U.S. patent system."The law school has graciously posted a video of the speech online - you can watch it here (link)

USPTO Launches Ombudsman Pilot Program for Handing Problematic Examinations

Posted on April 08, 2010
Tuesday the USPTO announced that the agency is looking to assign an ombudsman (plus one backup) to each technology center in an effort to assist applicants in "handling application-processing problems if the normal channels have not been successful."  This one-year pilot program is intended to provide applicants with additional resources to ensure application-processing problems are handled in a more efficient way, thereby saving applicants and the Agency both time and resources and improving patent quality...

USPTO Looking at a Two Year Delay For Converting Provisional Apps Into Non-Provisional Apps

Posted on April 05, 2010
The USPTO is proposing to change the process for converting provisional patent applications by providing a 12?month extension to the existing 12-month provisional application period.   In stead of simply providing a two year period, the USPTO will allow applicants to add another year through the missing parts practice in nonprovisional applications...

Hatch-Waxman Patent Term Extension Deadlines: Business Day or Calendar Day?

Posted on April 05, 2010
35 U.S.C. section 156(d)(1) provides:To obtain an extension of the term of a patent under this section, the owner of record of the patent or its agent shall submit an application to the Director. Except as provided in paragraph (5), such an application may only be submitted within the sixty-day period beginning on the date the product received permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use...

Fed. Cir. On Relative Claim Terminology

Posted on March 30, 2010
From today's opinion in Power-One, Inc. v. Artesyn Technologies, Inc., 08-1501(March 30, 2010):Claims using relative terms such as ?near? or ?adapted to? are insolubly ambiguous only if they provide no guidance to those skilled in the art as to the scope of that requirement...

SDNY Sides With ACLU By Limiting Gene Patenting Under 35 U.S.C. 101

Posted on March 30, 2010
Association for Molecular Pathology and ACLU v. USPTO and Myriad (S.D.N.Y. 2010) (Judge Sweet)Yesterday, the Southern District of New York issued a controversial opinion in granting partial summary judgment that the claims of several patents on BRCA1 were invalid as encompassing non-statutory subject matter...

DataTreasury Gets $27M Jury Verdict on Joint Infringement Theory

Posted on March 29, 2010
On Friday, the first of three infamous DataTreasury patent litigations concluded with the jury returning a verdict in favor of DataTreasury for $27 million dollars.  The jury found that none of the claims of the "Ballard patents" were invalid and that some of the infringement was willful (DataTreasury originally asked the jury for over $200M)...

Google, Yahoo! Skirt Divided Infringement Claim Based on Data Provided "By the User"

Posted on March 15, 2010
PA Advisors LLC v. Google, Inc. et al., Case No. 2:07-cv-480 (E.D. Tex., March 11, 2010, order)nXn (formerly "PA Advisors") owned a patent directed to Internet searching technology that "reflects the user's cultural, educational, and social backgrounds and the user's psychological profile" based on historic linguistic patterns identified in the user's prior activity...

Director Kappos Clarifies BPAI?s Standard of Review of Examiners? Rejections

Posted on March 09, 2010
Ex Parte Frye, BPAI Appeal 2009-006013 (February 26, 2010) PrecedentialAppellant appealed a 102 rejection for an invention directed to shoe having a forwardly-inclined, reverse wedge.  Specifically, it was argued that the Examiner erred in finding that the prior art reference ("Snabb")taught a "forward section of substantially constant thickness" that "meets the rearward section of the insole 'at a point substantially halfway' with respect to the upper surface or the outsole" as called for in independent claims...

Senate Releases Lastest Amendments to the Patent Reform Act

Posted on March 04, 2010
The Senate Judiciary Committee announced today the details of an agreement on long-pending legislation to reform the patent system.  Senators Leahy, Hatch, and Senators Jeff Sessions (R-Ala.), the Committee?s ranking Republican, and Chuck Schumer (D-N...

Vaguely Identified Devices in Patent Complaint Fails Twombly

Posted on March 02, 2010
Bender v Motorola Inc., No. 09-1245 (N.D. Cal., February 26, 2010, order)Rule 8 of the Federal Rules of Civil Procedure requires that a complaint contain a ?short and plain statement of the claim showing that the pleader is entitled to relief.? If a complaint fails to satisfy Rule 8, it ?must be dismissed? under Rule 12(b)(6) for failure to state a claim upon which relief can be granted...

Judge Rader Accuses CAFC Panel of "Bias Against Non-Technical Arts"

Posted on March 01, 2010
Media Technology Licensing v. The Upper Deck Co., No. 2009-1022  (March 1, 2010)Media Tech sued defendants on a patent that is generally directed to covering "a piece of a memorabilia item" attached to a trading card.  Exemplary claim 1 reads:A memorabilia card comprising a substrate in the form of a card and having an image surface,the image surface including a background image and a foreground image, and wherein the foregoing image is of a famous figure,a piece of a memorabilia item being adhered to the card adjacent to where an image of the actual item normally would appear, and the card including a certificate attesting to the authenticity of the item...

Tech Sector Holds Breath as IV Unloads More Patents

Posted on February 25, 2010
Today's Wall Street Journal reports:Intellectual Ventures LLC continues to sell some of its vast patent holdings, recently selling patents to two companies that incorporated in Marshall, Texas, a favored venue for litigious patent-holding companies known as patent trolls...

Who Cares About Health Care Reform? Patent Reform is Back!

Posted on February 25, 2010
EE Times reports:Senate committee has struck a rough compromise on a controversial patent reform bill that has been stalled for several months while Congress has debated health care. A Senator leading the charge for reform suggested the compromise keeps the draft bill alive by balancing calls for lowering damages in patent infringement suits with calls for improving the quality of patents...

Disclosure Cut-and-Pasted From Another Patent Leads to Malpractice Claim

Posted on February 23, 2010
Cold Spring Harbor Lab v. R&G, Case No. 2:10-cv-00661(E.D.N.Y.)This case involved the prosecution of a series of patent applications on behalf of CSHL directed to RNAi technology developed by a Dr. Hannon.  According to the plaintiff, [R]ather than providing an original, complete description of Dr...

Intellectual Ventures: White Hat or Black Hat?

Posted on February 18, 2010
?I guess I should warn you, if I turn out to be particularly clear, you've probably misunderstood what I've said"   -- Alan GreenspanThe New York Times published the latest installment of feature pieces on Intellectual Ventures and the aspirations of Nathan Myhrvold...

Federal Circuit to Look at Admissibility of New Evidence for BPAI Appeals

Posted on February 18, 2010
Hyatt v. Kappos, __Fed.App.__ (Fed. Cir. 2010)(en banc)(order)Hyatt filed for an application in the USPTO that was rejected for lack of adequate written description and lack of enablement, among other reasons. The BPAI upheld the rejections.Hyatt appealed the rejection by filing a district court action under 35 U...

The Companies Most Pursued by NPEs

Posted on February 17, 2010
PatentFreedom has identified and profiled over 315 distinct NPEs and claims that, since 1985, these NPEs have been involved in litigation with nearly 4,500 different operating companies in over 3,100 distinct actions. Furthermore, nearly 75% of the suits between these NPEs and operating companies were filed since 2003...

Patentee's Failure to Cite Prior Art Leads to Inequitable Conduct on Summary Judgment

Posted on February 11, 2010
Sabasta v. Buckaroos, Inc., No. 4:06-cv-180 (S.D. Iowa, February 3, 2010)Sabasta sued Buckaroos on a patent relating to roll-bending dies used to make saddles for pipe insulation.   Just prior to filing the patent, Sabasta discovered that specially-fabricated dies used in conjunction with a "two roll-bending machine" could efficiently produce pipe saddles of interest...

Lucent v. Gateway Dooms Another Damages Award at the CAFC

Posted on February 09, 2010
ResQNet.com, Inc. v. Lansa, Inc., No. 08-1365 (Fed. Cir., February 5, 2010)Lansa appealed an award of damages for patent infringement from the Southern District of New York, arguing that the evidence and expert testimony relating to damages was erroneous, leading to an inflated 12...

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