Yesterday the United States Patent and Trademark Office held a public meeting on the so-called Three Track examination proposal, with everyone in agreement that the proposal is quite welcome, at least in principle. On June 4, 2010, the USPTO published a Notice in the Federal Register setting out the preliminary Three Track proposal and setting Tuesday, July 20, 2010 as a date for the public to come to the Alexandria, Virginia campus to let PTO Officials hear their thoughts. This public meeting proceeds the due date of written comments by a full month, and many of those who spoke explained they would continue to review the proposal and follow up with additional written comments. For more information on the specifics of the proposal please see USPTO Announces New Examination Rules.
One thing can be said definitively: everyone thinks it is a good idea, no one has issues with accelerating applications (Track 1) or allowing them to remain on course as today (Track 2), but there were numerous concerns raised about applicants slowing applications down (Track 3). The good news for the PTO, however, is that speaker after speaker highlighted the same or similar concerns, so it does appear as if there are a finite set of manageable considerations for the PTO to address. In fact, the senior PTO Officials that I spoke with after the public meeting were extremely pleased and quite grateful. I was told by one senior PTO Official that the points raised were all good and that the PTO intends to take them into consideration and address the concerns, along with whatever written feedback they receive. What a refreshing change that will be!
Earlier today the Wall Street Journal gave front page space to a story relating to the United States Patent and Trademark Office. Widely regarded as one of the “papers of record” in the United States, one might expect that the Wall Street Journal had brought its considerable clout to an important issue plaguing our time, such as an horribly under funded Patent Office that is holding innovation hostage, costing America perhaps millions of jobs. NO! Rather than educate itself and others, thereby exposing in real terms for the everyday observer the plight of the Patent Office and what it means to the United States economy, the Wall Street Journal wrote a front page article on the errant creation of a trademark class associated with medical marijuana.
Don’t get me wrong, every tabloid should have front page news story about pot, medical marijuana and have an image of a VW bus over the tag “the Canny Bus,” as the Journal did earlier today. Call me crazy, but I expected more from the Wall Street Journal.
Over the last several weeks “patent trolls” have been back in the news. The mother of all patent trolls, NTP, which won over $600 million from Research in Motion as the result of a successful patent infringement litigation over the popular BlackBerry phone, is back at it again. NTP is now suing Apple, Google, Microsoft and others alleging that smart phone e-mail systems infringe its patents. See, for example Bad News for Tech Heavies?and NTP sues Apple, Google, Microsoft and others.
Not long ago Attorney John M. Desmarais, who wasone of the attorneys who represented GlaxoSmithKline in their effort to stop the claims and continuations rules from becoming effective, left the practice of law. He acquired 4,500 patents and is going to throw his hat into the ring, presumably representing himself, going after those large companies that he believes are infringing his patents. See Billion Dollar Lawyer Desmarais Quits Firm to Troll for Patents.
Just this past week, Kelley Drye & Warren, the firm that represented Dr. Tafas in the claims and continuations challenge, filed an $11.4 billion lawsuit on behalf of XPRT Ventures, LLC. Many in the popular press and in the blogging community are, like lemmings heading off a cliff, referring to XPRT as a patent troll. But what evidence do that have of that? As far as I can tell little or none; mostly none. See eBay’s PayPal Sued for $11.4 Billion for Patent Infringement.
The United States Patent and Trademark Office (USPTO) will be holding a public roundtable discussion on its proposed Enhanced Examination Timing Control Initiative, also known as “Three-Track,” currently under consideration by the USPTO. The purpose of the roundtable meeting is to solicit opinions from the public on the proposed initiative. The meeting will be held on Tuesday, July 20, 2010, from 1:30 p.m. to 5:30 p.m. at the USPTO headquarters in the Madison Building Auditorium, which is located at 600 Dulany Street, Alexandria, VA, 22314. The meeting will also be webcast. Web cast information is available on the USPTO’s website by visiting http://www.uspto.gov/patents/announce/3track.jsp.
The proposed ”Three-Track” initiative would provide applicants greater control over when their applications are examined and promote greater efficiency in the patent examination process. The proposal is designed to provide applicants with the timing of examination they need and to reduce pendency of patent applications.
WASHINGTON– The United States Patent and Trademark Office (USPTO) announced that the period for receiving public comments regarding the agency’s 2010-2015 draft Strategic Plan has been extended until August 2, 2010. The extension has been made to allow more time for the public to provide feedback to the agency about the plan.
The draft plan includes the USPTO’s mission statement, vision statement and a description of the strategic goals, objectives and significant actions that the USPTO plans to take in order to accomplish its mission and achieve its vision over the next five years. The final plan will be posted on the Web site by September 30, 2010.
In a recent decision, the Eastern District of Texas has clarified the proper role of functionality in claim construction for design patents. By statute, design patents must be directed to “ornamental designs for an article of manufacture.” As a result, courts have struggled with how and when functional aspects of a design should be considered when construing a patent claim. The Federal Circuit addressed this issue earlier this year in Richardson v. Stanley Works, 2010 WL 774334 (Fed. Cir. 2010), in whch it appeared to direct district courts to factor out the functional aspects of designs during claim construction.
The claim at issue in Good Sportsman v. Li & Fung Limited, 2010 WL 2640385 (E.D. Tex. 2010), was for a clip-on book light. Plaintiff Good Sportsman proposed the claim construction of “an ornamental design for a clip light as shown in Figure 1 of the picture.” Defendant Li & Fung Limited sought a more limiting construction based on Richardson, which expressly discounted “functional” elements of the design, such as the design’s clip, headlamp, on-off switch, and flexible wire. Ultimately, the court adopted Good Sportsman’s approach, holding that the claimed design is best represented by the illustration contained in the patent and refused to provide limiting language regarding functionality in its claim construction.
Nick Godici, the former Acting Director of the United States Patent and Trademark Office, sat down with me on Tuesday, June 29, 2010, for an extended interview. Nick is one of a select few who have seen the Patent Office on every level, from patent examiner, to SPE, to Group Director, Commissioner for Patents and ultimately Acting Director. In Part 1 of the interview we discussed his philosophy on examining patent application, the historic allowance rate vs. the depressed allowance rate of the pre-Kappos PTO and a variety of other topics. In Part 2 we discussed how President Obama’s approach to revitalizing the USPTO under Director Kappos’ direction parallels President Reagan’s attempts under Gerry Mossinghoff. We also discussed building relationships between patent examiners and the patent bar, what the PTO is likely doing to announce 101 guidelines in the wake of Bilski v. Kappos, and what it is like to be Director of the USPTO.
In this final installment of my interview with Nick Godici we learn just how close the Patent Office was to sending out 9,000 furlough notices (to all those on the patent side of the building) during the Summer of 2009 as a result of lack of funds. We also discuss the historic patent allowance rate versus the 42% rate the Patent Office got down to during the Q1 of 2009. Godici also humors me by answering the fun questions and we learn that he was the primary examiner on a somewhat famous (or infamous) patent relating to a bird trap and a cat feeder, and he goes off the board with an interesting selection for most famous fictional inventor.
On Friday, July 9, 2010, Garmin International Inc., a unit of Garmin Ltd. (NASDAQ: GRMN), issued a press release touting the fact that they had managed to win a Motion for Summary Judgment in the Northern District of Illinois, with the Federal District Court granting Garmin’s motion in SP Technologies, LLC v. Garmin International, Inc. and TomTom, Inc. The Memorandum Opinion and Order, issued by Federal District Court Judge Rebecca R. Pallmeyer, hands famous, notorious and/or infamous (depending on your viewpoint) attorney Ray Niro a defeat. Niro, a favorite attorney of those alleged to be patent trolls, represented SP Technologies.
The Order granting Summary Judgment in favor of Garmin, which issued on July 7, 2010. explains that all asserted claims of U.S. Patent 6,784,873 are invalid. The did not decide the matter of non-infringement, finding it to be mooted as a result of the invalidity determination of the ‘873 patent. Nevertheless, wining on validity, or invalidity as the case may be, is still and win, and this marks the third consecutive patent suit that Garmin has successfully concluded by aggressively attacking invalid patents asserted by non-practicing patent holding companies, also known as patent trolls in some circles.
Stephen Moore represented Dr. Tafas, now represents XPRT
The attorneys at Kelley Drye & Warren LLP are back at it making big news. You will likely recall that it was the attorneys of Kelley Drye & Warren that represented Dr. Tafas in the successful claims and continuations challenge, effectively prevailing against long odds against the United States Patent and Trademark Office. Now they are representing XPRT Ventures, LLC, in a enormous $11.4 billion lawsuit brought against eBay’s PayPal. The complaint filed in the United States District Court for the District of Delaware, asserts trade secret theft and patent infringement claims with respect to six XPRT patents. In a nutshell, XPRT asserts eBay unfairly stole the idea and method of payment used in eBay’s PayPal and similar electronic payment systems.
The complaint seeks $3.8 billion in damages at a minimum, but in no event less than a fair and full reasonable royalty, but also seeks tripled damages as a result of willful infringement, which would bring the total to $11.4 billion at a minimum. While willful infringement is quite hard to prove, if the facts actually are what is alleged it would seem as if the case is exceptional, which could lead to triple damages and attorneys fees as well. So when you add that all together and add pre-judgment and post-judgment interest, the total amount on the line could easily exceed $15 billion. And before you write this off as a patent troll trying to hold up a true innovator, which some of the uninformed in the popular press are doing already, read the rest of the article and take a look at the complaint. If the facts alleged even remotely resemble reality this could turn out to be an epic battle to which we will all want front row seats!
Nick Godici, currently with Birch, Stewart, Kolasch & Birch LLP, is a former patent examiner, Commissioner for Patents and Acting Director of the United States Patent and Trademark Office. During the Summer of 2009 he was personally asked by Secretary of Commerce Gary Locke to return to the Patent Office as a special adviser to the Obama Administration and to pave the way for David Kappos to take over as Director. On Tuesday, June 29, 2010, I sat down with Godici in his Falls Church office for an in depth interview. This is part 2 of a 3 part series. For part 1 see On the Record with Former PTO Director Nick Godici – Part 1.
In this interview we talk about how two Presidents that are extremely different on so many fronts, Presidents Reagan and Obama, are pursuing quite similar strategies regarding the Patent Office. We also talk about the importance of good working relations between patent examiners and the patent bar, the enormous backlog of applications at the Patent Office, the Patent Office process for handling decisions and issuing guidance in situations such as the recent Supreme Court decision in Bilski v. Kappos and what it is like to be Commissioner for Patents and the Director of the Patent and Trademark Office.
Congressman Conyers seems interested in providing funding to the USPTO
Recently the United States Patent and Trademark Office released its draft Strategic Plan for FY 2010 – 2015. This may seem odd given that FY 2010 is almost over, ending on September 30, 2010. So it is probably a better title to call it the FY 2011 – 2015 Strategic Plan, but there is no doubt as you read the document that under the guidance of Director David Kappos the USPTO has already well launched the short term Strategic Plan. Now if Congress would only be wise enough to grant funding for the Patent Office to actually accomplish what needs to be done!
Truth be told, it would be enough for Congress to just (1) stop siphoning off money from the USPTO through fee diversion; (2) grant the USPTO fee setting authority; and (3) stand out of the way. So my message to Congress would be this: put the pocketbook down, slowly step back and raise your hands over your head so we can see them!
On Tuesday, June 29, 2010, I had the opportunity to sit down on the record with Nick Godici, the former Acting Director of the United States Patent and Trademark Office and Former Acting Undersecretary of Commerce for Intellectual Property. Godici is one of only a small handful of individuals to have seen the Patent Office on every level, from newest patent examiner to SPE to Group Director, Commissioner for Patents and ultimately to Director of the USPTO. I have wanted to sit down with him for some time now, and some mutual friends of ours, who are mentioned in the interview in passing, made introductions. I was put in touch with Godici and now the rest is history, as they say.
I thoroughly enjoyed my time with Godici, and we managed to get into a wide variety of issues that ranged from his early days as a patent examiner, his patent examination philosophy and approach, the role of the USPTO, the Patent Granting Authority versus the Patent Denial Authority, examiner training, building relationships between patent examiners and the patent bar, the PTO work from home initiative, inequitable conduct, the Bilski decision and what the USPTO is now likely doing to address that, the parallels between the Reagan Administration and the Obama Administration in terms of patent and innovation policy and exactly what it is like to be the Commissioner of Patents and the Director of the Patent Office, and much more. Oh yes, we also talked about his getting a call from Secretary of Commerce Gary Locke last summer and returning to the Patent Office for a few months as a special adviser at the request of the Obama Administration.