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Top Patent Stories of the Decade 2000 – 2009 (Part 1)


Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course
Posted: December 21, 2009 @ 2:52 pm

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This year as we wind down and look back we not only need to look back at the previous year, but the first decade of the new century and new millennium will be ending.  So at this reflective time of year it seems appropriate to take a look back at the biggest patent related news stories of the decade.  As with any Top 10 list, or any ranking, there will undoubtedly be disagreements, arguments and some things that people believe should have been on the list.  What follows is Part 1 of my personal Top 10 patent news related stories for the decade. Once I get all 10 out, by later in the week, I will provide a survey that allows you to rank them, and I hope you will.  We can then take a look back at my Top 10 vs. the Top 10 of IPWatchdog.com readers next year.  Please also feel free (and I am sure you will) to point out things that I missed or clearly got wrong, at least in your opinion.

Without further ado, in descending order, here is Part 1 of my Top 10 Patent Related Stories of the Decade:

10. The Doctrine of Equivalents – Festo and Honeywell

Clearly the doctrine of equivalents is much ado about nothing, thanks in no small part to the work of the United States Court of Appeals for the Federal Circuit and the United States Supreme Court.  While Festo v. Shoketsu Kinzoku Kogyo Kabushiki came to a head early in the decade (May 2002) it continued to linger throughout the decade and consume far more time and energy than it deserved.  Recall that the Federal Circuit had ruled that any amendment precluded making a claim of infringement under the doctrine of equivalents, which went completely against Supreme Court precedent.  The Supreme Court took the Festo case and embarked on a decade of reversing the Federal Circuit.  In this situation what the Supreme Court came out with was even worse, and terribly intellectually dishonest.

The Supreme Court explained: “There is no reason why a narrowing amendment should be deemed to relinquish equivalents unforeseeable at the time of the amendment and beyond a fair interpretation of what was surrendered.”  And that when an equivalent was unforeseeable “the patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence.”  Thus, in order to be entitled to make a claim under the doctrine of equivalents you must demonstrate you were not in possession of the invention at the time of filing, thereby creating a Written Description problem.  Brilliant!

On June 2, 2004, apparently unknown to the Supreme Court (because they refused cert.), the Federal Circuit killed the doctrine of equivalents in Honeywell International Inc. v. Sundstrand Corp., where the Federal Circuit ruled that dependent claims rewritten into independent form during prosecution lost the doctrine of equivalents even if claim scope never changed.  Judge Newman in dissent explained “this new rule will simply drive patent applicants away from dependent claims and away from the accepted protocol of presenting successively narrowed dependent claims for examination. This new rule will simply raise the cost and increase the difficulty of patent examination.”  She turned out to be correct, as some large firms with big tech clients started filing patent applications with thousands of claims in order to guarantee many would issue without ever having been amended at all!

9. Brobeck; Pennie & Edmonds; Morgan & Finnegan No More

Perhaps no news story shook the patent bar quite the same way as did the demise of Brobeck, Phleger & Harrison and Pennie & Edmonds, both of which occurred in 2003.  Morgan & Finnegan also dissolved and then filed for bankruptcy earlier this year, and other high profile fimrs such as Lyon & Lyon and Fish & Neave met their demise, but none more spectacularly than the three mentioned at #9.

Brobeck was began in 1926 with three lawyers and went on to become one of the most powerful names in the patent space, representing a whose who of clients in San Francisco, California. At some point in time during the 1990s, as the technology sector was growing at an enormous rate, Brobeck decided to start accepting equity in emerging start-up tech companies in lieu of traditional pay-as-you-go compensation for lawyers. This lead to a rapidly expanding base of clients, the hiring or more and more attorneys and partner’s per year compensation that rose to more than $1 million on average. Times were good, at least right up until they were not good. As the Internet/tech bubble burst, so did the firm. The practice of taking equity in companies that crashed in value practically overnight proved more than the venerable firm could withstand.

Pennie & Edmonds was a New York City based firm that focused on all aspects of intellectual property. The firm started in 1883 and had a run of 120 years, being dissolved on December 31, 2003. The popular belief on the demise of the firm suggests that at this time general practice firms were starting to gain on boutiques, causing problems for Pennie & Edmonds. Additionally, the loss of Jonathan A. Marshall, a rainmaking litigator with high profile clients such as Hewlett-Packard, certainly did not help. But perhaps the straw the broke the camel’s back was the U.S. District Court for the Western District of New York ruling that the University of Rochester patent relating to Cox II Inhibitors was invalid in March 2003. Pennie & Edmonds already had ethical problems associated with not telling existing clients who would be targets of the patent that they were representing the University of Rochester, and when the patent estimated to bring in $4 to $5 billion to the University in royalties was lost the writing was no doubt on the wall.

Morgan & Finnegan started in 1893, and was one of the nation’s oldest and most respected intellectual property law firms. Thanks to numerous partners leaving and little fresh talent coming in, Morgan & Finnegan dissolved in February and filed for bankruptcy protection just 6 days after being placed into receivership in response to a  lawsuit by lender JPMorgan Chase. The boutique firm listed $6.37 million in assets and $10 million in liabilities in its bankruptcy filing.

8. Patent Reform That Never Happened

On again, off again, patent reform has dominated policy discussions and lobbying efforts for the second half of the decade now about to end. While frequent readers of IPWatchdog.com may have difficulty believing this, I never used to follow patent legislation unless and until it was enacted because so often nothing was ever accomplished. Then several years ago I heard from several trusted sources that it was a done deal, it was going to happen and nothing could stop it. Famous last words! In all truth, I cannot blame those sources because over and over again patent reform legislation has been a done deal only to lose all momentum at the last minute. So we will close 2009 and the decade without anything to show for it.

On some level the lack of patent reform has been enormously positive. At least Congress has not done any more harm with a topic that the vast majority of them seem to know little or nothing about. If Senator Kyl, Senator Hatch and Congressman Issa could fashion reform I would be all for it, but there are 532 other Members of Congress that I worry about to one degree or another. The Federal Circuit has taken care of some of the issues, particularly venue in the Eastern District of Texas in the TS Tech case. The sad thing about patent reform is that even if it had happened it still wouldn’t have done much good because the larger issues of obviousness and inequitable conduct were not going to be fixed. Maybe 2010 will be a different year, but I am not holding my breathe. Of course, like any train wreck it is hard not to watch and be amused by talk of imminent patent reform. I guess I just don’t understand what the word “imminent” means.

7. The Rise of Patent Blogs

No doubt some will think this is self serving, but that is not true. If you are reading this article I don’t need to convince you that IPWatchdog.com is worth reading, or that patent blogs in general are worth reading. At the beginning of the decade I was doing a weekly newsletter that reviewed every intellectual property case with a decision or opinion in the Federal Court system. With the rise of widespread and cost effective (or even free) content management systems many who were doing various newsletters and working with static websites transitioned into blogging. Truth be told, I don’t like the term “blogging” with respect to what I do, and I don’t really think it applies to most of the best patent blogs out there today. We write op-ed type pieces, informational articles and what we do collectively is much more like an online magazine than it is a blog, which frequently seems to be mostly random and brief thoughts.

There are a lot of great patent blogs out there. Recently larger firms are getting into patent blogging, which will no doubt keep all of us on our toes and continue to lift the quality through what is no doubt a competition, albeit hopefully a friendly competition.

The net result is high quality information and analysis that is easily findable and accessible. Blogs in our space are picked up in Google News and in Google, Yahoo and Bing search engines. Now if the popular press can raise its analysis and reporting the role of blogs and blogging will only have continued impact on shaping debate and influencing decision makers and the public.

6. Obama Names Patent Attorney PTO Director

It is impossible for readers of IPWatchdog.com not to know my own particular political persuasion. I did not vote for President Obama, but I try and keep my analysis real. While I don’t agree with much of what is happening in Washington, DC, the area I know best is one that has dramatically improved since President Obama became our 44th President. After a disastrous period during the second Bush Administration, the United States Patent Office seems to be once again open for business and operating as a Patent Granting Authority! While things started to change upon the resignation of former PTO Director Jon Dudas, there was only so much that could be accomplished by the dedicated career employees and officials at the USPTO prior to a new Director coming to power.

Simply stated, David Kappos is the right man for the job and he is making great progress. I cannot say that I have disagreed with anything he has done so far, and it is clear that he understands the patent process and what ails the patent system. He has surrounded himself with high caliber people who are well respected and dedicated. Some of these people are Sharon Barner, Bob Stoll, Peggy Focarino and Rob Clarke. I have great hopes for 2010 and beyond, and having a patent attorney run the Patent Office will make all the difference.

Thank you President Obama for listening to the patent bar and giving us a Director with a plan and someone who knows what he is doing!

NOTE: Article updated 12/21/09 at 4:52pm ET to add Morgan & Finnegan to #9.

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patents

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

18 comments
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  1. Gene,

    Regarding Story 9 (IP firrms that died), I would also include Morgan & Finnegan which basically died in 2009. That was detailed in article by Dan Slater called “What Went Wrong” in IP Law & Business. I knew Morgan & Finnegan from my days at Procter & Gamble.

  2. Gene,

    The BIg Story of the last decade actually took place in 1999: Passage of the American Inventor’s Protection [Racket] Act of 1999.

    That was the beginning of the end of the patent system as we had known it.
    Today we live in a meaner (but not leaner) world.

    Another overlooked event in 1999 was the US Supreme Court decision in Dickinson v. Zurko. It is the number one reason that inventors lose so often in front of the Board of Appeals now a days and yet have no help from the CAFC. The CAFC is constrained to give deference to the USPTO under the substantial evidence rule. The roaring ’00’s (oh ohs) actually began in 1999.

    Where is KSR on your count down list?
    How about eBay?

  3. Step-

    I am going to do a post on “honorable mentions” before I get to the top 5. The honorable mentions will be Part 2 and the top 5 will be Part 3. I know it is probably a little out of order, but it will keep the suspense hopefully.

    I think mentioning Zurko and AIPA there are probably appropriate. They would have surely made the list, but I was trying to keep to January 1, 2000 through December 31, 2009.

    Rest assured that I have not forgotten KSR or eBay! More to come!

    -Gene

  4. EG-

    Thanks for bringing that to my attention. I have updated #9 to reflect that as well. There are no doubt others, but I think those 3 old and respected firms ceasing to exist really captured the same feeling and story. I originally focused only on Brobeck and Pennie & Edmonds because both happened in 2003 and there was a flood of patent attorneys on the job market all at once. I believe everyone landed on their feet, but I know some highly talented people that couldn’t get absorbed as quickly as they should have given the glut of attorneys.

    -Gene

  5. Social comments and analytics for this post…

    This post was mentioned on Twitter by ipwatchdog: Top Patent Stories of the Decade 2000 – 2009 (Part 1) – Festo, patent reform, PTO get patent attorney, patent blogs. http://bit.ly/4MShTR

  6. One minor point. There are actually only 535 members of congress, 435 in the house and 100 in the senate. (Unless you count DC’s Eleanor Holmes Norton, but she is non-voting).

  7. Hercule-

    Thanks for catching that. It was a typo. It should have said 532, not 632. I made the fix above. So aside from the 3 named, I worry about the other 532 members.

    -Gene

  8. Your continued enthusiasm over Kappos is based on nothing at all. I suspect your “Patent Granting Authority!” hyperbole and the like will prove embarrassing as time goes on and it becomes clear that the PTO is not operating substantially differently under Kappos as it did under his predecessors.

    The appointment of Kappos was probably a step up in many respects, but any rhetoric on Kappos’s part intended to improve the Office’s functioning has not trickled down into concrete directives; all the Office actions we’re getting now have the same problems as the Office actions we were getting last year. Kappos’s relentless propagandic cheerleading for first-to-file, as if he were still beholden to the policy positions of IBM, is abysmal. And it is unclear why Kappos has failed in his most important mission with the Congress, to win more funding for the Office and permanently end fee diversions.

    I suspect your ideological loyalty to Kappos will reverse suddently and swiftly rather than gradually sour over time. One day, we will read the “I now hate Kappos” post, and it will explain at length all your reasons and will even justify the sudden change with an assertion that, in actuality, you knew Kappos was bad news all along.

  9. Robert-

    I feel sorry for you, I really do. You sound so bitter, and for what reason? You seem to dislike first to file, despite the fact that you know we have a de facto first to file system. Why is that?

    The fact that you think the patent office is not granting patents is a mystery, and calling what I say hyperbole. Really? Believe it or not, patents are getting granted.

    You really think it is unclear why Kappos cannot get more money from Congress? Do you blame Kappos? It seems like you do, but why?

    When you say he is “beholden to the policy positions of IBM..” it seems clear what your true agenda is. You don’t like the man, you don’t like IBM, you are bitter you can’t get patents issued and want to blame everything on Kappos, and presumably me for having the audacity to acknowledge what we all know is true. The Patent Office is being run much better now than it was under Dudas.

    Your bitter tales of not being able to work with examiners and get patents misleads inventors and innovators into believing there is nothing that can be done. The fact that you cannot throw up your hands any more must be disturbing.

    -Gene

  10. Well, I need to spend my time in other ways than arguing with you, Gene, but I will put one post into setting the record straight:

    – “Bitter” isn’t the right word for how I feel about the present situation; I started in this career during the last eight years so I’ve never known anything but the “reject, reject, reject” PTO, the one that cooks up absurd, nonsensical 103s and fights them through to the BPAI. One can’t be bitter if one has never tasted sweet. But one can be a bit puzzled when a colleague is munching on earth and keeps telling everyone around him how great this honey is.
    – We don’t have a “de facto” first-to-file system at present, and it is dismaying to see you keep using this and other lines of propaganda even after all the effort that has been put into explaining to you why they are not so.
    – I am sure you are right that “patents are getting granted”. This is not at issue. More at issue is whether the allowance rate has picked itself up off the cliff, whether pendency is going down, whether the backlog is being depleted, whether response rates pick up, whether filing rates are going up, and whether there has been a culture change at the examination corps level which results in an end to Office actions that do things like distort the teachings of references and insist on unreasonable definitions of terms of the art in order to fit rejections into place, creating puzzles of unfitting pieces that have been pounded together. I am sure we’ll see some interesting posts on the Watchdog when the next round of plots come out showing that the allowance rate continues to fall and pendency continues to rise well into the Kappos regime even as filing rates plummet. (I don’t hope for these outcomes–naturally, I hope for the opposite.)
    – Kappos has dispensed plenty of rhetoric about boosting the PTO budget and ending fee diversions, yet the opposite has occurred under his regime. Granted, he does not have absolute control over these factors, but out of everyone, he is in the highest position of advocacy for a financially strengthened PTO, so some of the blame for the failure must go to him.
    – My “agenda” is pro small technology business because small businesses create more jobs than big businesses and more innovation comes out of small businesses than large businesses. Fostering small businesses is win-win for America. IBM’s patent policy positions are designed to elbow out small businesses and weaken the patent system in favor of a large company which doesn’t need patents to preserve market dominance since it can do so through through marketing and sales. I certainly prefer a patent attorney like Kappos running the PTO over someone with nonexistent or unclear patent system experience. However, ideally, a PTO director would also come from a background of entrepreneurship and would thus be someone who understands the business forces that innovate and create wealth for employees in America, and the importance procuring patents plays in securing investment. Going by his most recent remarks and particularly his blog posts, I remain unconvinced that Kappos has any real sense of how the patent system unleashes American innovation and creates jobs (or how it ought to be better harnessed to do so). Kappos is still toeing the IBM line, so in this respect, he is much more like the “foxes guarding the henhouse” federal administration appointees of the Bush era (Baker, Snow, Leavitt, Norton, Brown, etc., etc.).
    – Your closing about “throwing up of hands” amounts to a playground taunt, and it’s unbefitting. Elite patent prosecution requires fighting arduous battles, and I fight those battles, as it’s my job. In virtually all cases the battles are arduous unnecessarily, simply because examiners are shackled by a culture of “no”. If you think this culture has changed, I look forward to the data evidencing that. Until then, you don’t know whether the team is worth rooting for, so stop cheerleading.

  11. Robert K S,

    I agree 100% with every point you made in your 4:13 PM post.

    It is one thing to welcome change and promote accord between the Office and the Bar. It is quite another to shut one’s eyes and take a big gulp because we are told the kool-aid tastes great.

    And while I found Gene’s post of 8:56 PM to be a bit more snarky than usual, we all know that Gene is passionate about what he writes and I do not doubt that Gene fully believes in his position. Of course, he is entitled to be wrong, just as any of us are. He is also entitled to be bitter or snarky – this is his forum.

    But do not let that dissuade you from arguing your position Robert; after all, arguing is what we do.

  12. Robert-

    I don’t want to get into a long debate, and I am sorry if I am snarky. I just want to point out one thing.

    We most assuredly do have a de facto first to file system, and why you ignore the cold hard facts is a mystery. Be dismayed if you like, but you can’t fight reality.

    I am pro small business as well, and it is exceptionally clear that those who embrace first to file will be far better off. We all know big tech cannot and does not innovate. They acquire and copy. Now independent inventors and small businesses will have the incentive to do what they should all be doing anyway, which is file as early as possible to get the best priority date possible. So to the extent that the Patent Office and Patent Laws give them incentive to do the right thing then they will, and will be begrudgingly grateful later when it is clear that big tech got a wish they shouldn’t have wanted.

    In so far as Kappos not having a real sense of American innovation and doing IBM’s bidding, I would rather have someone who understands just what a progressive patent strategy and a powerful patent portfolio can do.

    Perhaps Kappos will turn out to be the fox guarding the hen house, but I doubt it. What he is doing is worthy of cheering, particularly after the dark ages of Dudas. We all complained about Dudas, and rightfully so. Now we get a patent guy and there is complaining anew. I for one think the office is on a good path, and they should be cheered loudly and urged to continue. I particularly like the fact that they are little by little adopting ideas that I have been suggesting for many months and years. I would be a hypocrite not to think what they are doing makes sense. Go back and look at my writings over the last couple years and you will see many of the suggestions coming into being. I can’t say it is because they are doing what I said, but they are doing what I suggest whether they adopted my positions or came to them on their own. Another one will be unveiled tomorrow or next week. I was going to write it up today, but patentability assessments and client duties called.

    -Gene

  13. “We most assuredly do have a de facto first to file system, and why you ignore the cold hard facts is a mystery. Be dismayed if you like, but you can’t fight reality.”

    37 CFR 1.131 is the reality, and not just a “de facto” reality–it’s on the books and patent practitioners make use of it every day. S.515 and its new 102 would kill rule 131; new 102 in combination with the creativity of examiners to force together illogical or unreasonable 103s would do nothing but add friction to a patent system that is already quite corroded.

    Your blog is at its best when it keeps the rhetoric down–information is always useful, but your ideology blows with the wind.

  14. Gene:

    In my book, the Top Patent Story of the Decade, is my patent infringement case against StairMaster/Sports Medical Products, Inc. (now Nautilus, Inc.) that has been ongoing the entire decade.

    The case is so big and complex, that I had to resort to explaining it on my Show @
    http://commandodave.com/GOINALLIN/commandodaveshow.html And now that Nautilus, Inc. is selling some of its StairMaster assets to Fit Dragon International, the story is destined to become even bigger and more complicated.

    The gist of my case is on YouTube @ http://www.youtube.com/user/CmndoDave#p/u/4/p1oxbB8fxj8 and Blogger @ http://goincommando.blogspot.com/2009/12/contingency-plan.html with the explanation for its complexity @ http://commandodave.com/policies.html

    With all due respect to your #7 entry, perhaps you should consider replacing it, or at least adding a “7.1” once you check out GOIN’ ALL IN!, the beginning of “The Rise of Patent Shows.”

    I’m just getting started, so stay tuned.

  15. 131 deals with swearing behind and has nothing to do with interference practice. You use 131 to prove conception behind a reference, not to demonstrate an alleged first inventor is entitled to a patent when they are the first to file. So a change to first inventor to file would not at all impact 131 practice.

    The scare tactics and attempts to blur topics that have nothing to do with one another do no one any good. With any legislation the devil will be in the details, but there is no point ignoring the different roles of interference, which deals with an application and another application or issued patent and 131 practice which deals with an application and a reference.

    Why would you try and blur things that are unrelated? You seem not to like my opinions, but I don’t compare apples with oranges. I also don’t change my opinions or blow in the wind. You always know what I think, where I stand and exactly why. But what about you? What is your agenda? Why do you try and mislead to gain support for your cause?

  16. “131 deals with swearing behind and has nothing to do with interference practice. … Why would you try and blur things that are unrelated?”

    My only response to this is my mouth staying wide open for ten seconds, and moving on back to my work. Not only have I explained this issue to you before, but it would be immediately evident to you if you still did any real prosecution work. Get a clue (you can find a few in the MPEP, in any recently issued rejections, and in the language of S.515).

  17. […] upon identifying the top 10 patent stories of the decade, which ends as we usher in the new year.  The Top 10 Part 1 identified what I thought were in the bottom half of the top 10, and while any top 10 list is sure […]

  18. […] what I believed to be the Top 10 Patent Stories of the Decade, see Top 10 – #1 to #5 and Top 10 – #6 to #10.  At the time I promised to do a third in the series, which would discuss the “Honorable […]