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Reverse Payment Home Run for Pharma Antitrust Enforcement

Posted: Monday, Jul 16, 2012 @ 3:50 pm | Written by Michael Carrier | 9 comments

For the past nine years, every appellate court to analyze the issue applied deferential analysis to “reverse payment” settlements.  Court upon court lined up to support the agreements, and plaintiffs were down to their last batter. Today, the United States Court of Appeals for the Third Circuit stepped up to the plate and hit a home run in favor of antitrust scrutiny when it released its decision in In re K-Dur Antitrust Litigation.

First, some context. One of the most complex issues in antitrust and patent law today involves agreements by which brand-name drug companies pay generics to delay entering the market. In the past decade, with the Supreme Court showing no interest in wading into the area, the Federal, Second, and Eleventh Circuits have upheld these agreements. And, with each court relying on its sister court, a momentum had developed that made it nearly impossible to discern a role for antitrust scrutiny.

Obviousness When All Elements Not Present in Prior Art?

Posted: Monday, Jul 16, 2012 @ 3:12 pm | Written by Gene Quinn | 3 comments

Last week I wrote about the petition for en banc rehearing that I recently filed in Plasmart v. Kappos.  See Petition for Rehearing en banc filed in Plasmart v. Kappos and How Much Deference Should the CAFC Give the USPTO?  The case arose from what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. In the reexamination proceeding the patent examiner found claims 20-33 to be patentable.  The Board agreed that claims 20-33 were patentable as not being obvious, but also found claim 1 patentable as well.  Then the Federal Circuit, in a nonprecedential decision, determined that none of the claims were patentable.  That was when I became involved in the case.

The Board recognized multiple characteristics that differentiate the claimed invention in the “674 patent from the prior art combination of Song and Handong.  Among these, the Board specifically determined that the claimed invention possessed a “supporting arm” and that the safety wheels of a resultant combination of Song and Handong would be raised off the ground, unlike what is depicted in the ‘674 patent and recited in the claims.  Still, the panel determined that the claims were invalid.  How is it possible to find an invention obvious when not all of the elements are within the prior art?  This is unfortunately a disturbing trend that has been brought about by a misreading of KSR.

Introducing Article One Partners

Posted: Sunday, Jul 15, 2012 @ 4:14 pm | Written by Gene Quinn | 4 comments

As you may have noticed over the past several days, has a new Super Sponsor — Article One Partners.  Long time readers of IPWatchdog are likely familiar with Article One Partners, or AOP as they are sometimes called, because I have written about their endeavors on many occasions in the past. Until now, however, AOP has not been a sponsor.  I have written a lot of positive things about them in the past because I think what they are doing is innovative and serves a real need within the industry, regardless of whether you are one looking for prior art to challenge a patent, or you are looking to see if there is prior art you need to know about to sure up patent rights prior to licensing or enforcement activities.  We are happy to have them as a sponsor and this article is to introduce the AOP story to those who may not be intimately familiar with the company and its history.

In November of 2008, Article One Partners announced the launch of what they characterized as a new global community to legitimize the validity of patents. Community members, called Advisors, would have the opportunity to send in previously hard to find evidence that challenges the validity of high profile patents. It was believed that by tapping the knowledge of Advisors it would be possible to collect valuable publicly available prior art, particularly non-patent literature. I was initially quite skeptical of the plan, but on the heals of that initial article I was contacted by Cheryl Milone, who is the President and CEO of Article One.  She asked if I would be willing to talk about the business model and learn more.  I accepted Cheryl’s invitation and over the last nearly 4 years Cheryl has become one of the people in the industry I reach out to on a periodic basis to help me keep my finger on the pulse of everything patents and intellectual property.

CLS Bank v. Alice Corporation Reveals “A House Divided”

Posted: Sunday, Jul 15, 2012 @ 7:30 am | Written by Paul Cole | 30 comments

The decision of the Supreme Court in Prometheus has been predicted to have implications for business method patentability, but the decision in what will surely become known as the Alice case provides an early indication that the CAFC may endeavour to limit its scope. Whether the claimed subject matter lies in the reality of patent-eligible subject-matter or is more correctly located in the Wonderland of abstract ideas is an issue that has been debated on both sides of the Pond, and on which the Dodo or the King of Hearts in his judicial capacity would surely have had an opinion if it had been brought to their attention. In the US there appears to be ample scope for further debate.

The patentees Alice Corporation are based in Australia and are a joint venture between a private company and National Australia Bank Limited. Their website [1] explains that they were established in Melbourne in 1995 and have applied for and obtained patents on their financial market innovations worldwide, including in the US, UK and other major financial centres. The patented innovations cover the trading of risk, investment, lending, exchanging and similar products. Alice exploits its inventions by licensing selected entities. Neither Alice nor Ian Shepherd who was the inventor has a significant web presence, and in contrast to the situation in Prometheus there appears to be no back-story that throws light on the merits or otherwise of the alleged invention.

Inventor Pitfalls: Causing Irretrievable Patent Damage

Posted: Saturday, Jul 14, 2012 @ 12:10 pm | Written by Gene Quinn | 1 Comment »

As you can probably imagine, over the years I have had the opportunity to work with many inventors, the majority of which were first time inventors, or inventors who were for the first time attempting to protect their own invention for their own company. I have found that those who are serious are also capable of meaningfully participating in the preparation of their own patent applications. These folks are motivated, but they simply do not know what to do, or exactly how to do it, and they are afraid to mess things up by trying to do something themselves that is over their head, not because they are not smart enough, but rather because this patent stuff is really hard and very complicated.

As I tell students in the patent bar review course I teach, you could not – drunk and on a bet – come up with a more screwy patent system than we have in the United States.  The rules are complex, and unnecessarily so in many (if not most) situations.  For example, do you know how long “a month” is?  I bet you think you do, but I bet you haven’t a clue how long “a month” is considered to be under the rules in place at the USPTO.  See Do You Know How Long A Month Is?

USPTO Opens First Ever Satellite Office in Detroit

Posted: Friday, Jul 13, 2012 @ 12:16 pm | Written by U.S.P.T.O. | 1 Comment »

Acting U.S. Commerce Secretary Rebecca Blank and Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) David Kappos, along with elected officials, today participated in a ribbon-cutting ceremony to officially open the Elijah J. McCoy USPTO in Detroit, Michigan – the first-ever Patent and Trademark Office outside of Washington, DC. The new office is the first to open out of four recently announced USPTO satellite offices that will function as hubs of innovation and creativity, helping protect and foster American innovation in the global marketplace, helping businesses cut through red tape, and creating hundreds of highly-skilled jobs in each of the local communities.

“Patents are the fuel for American innovation,” said Acting Commerce Secretary Rebecca Blank. “By opening the doors to America’s first-ever satellite patent office in Detroit, we are going to put more patents in the hands of entrepreneurs throughout this region and across the country. The McCoy office will make America’s patent system stronger, empowering America’s innovators to attract capital, put their business plans into action, and create more good jobs for the middle class.”

Kodak Authorized to Sell Patent Assets in Bankruptcy

Posted: Friday, Jul 13, 2012 @ 7:30 am | Written by Gene Quinn | 2 comments

Eastman Kodak Company issued a press release on July 2, 2012, explaining that they obtained approval from the United States Bankruptcy Court for the Southern District of New York to conduct an auction to sell its Digital Capture and Kodak Imaging Systems and Services (KISS) patent portfolios. Rather than simply taking Kodak’s word for it I always like to sign into PACER to verify. I could not find the Order discussed in the Kodak press release. I reached out to Kodak for comment and was told that the order was undergoing revision prior to being issued by the Court. Ultimately, on July 5, 2012, the Order Conditionally Authorizing Sale of Patent Assets was issued by the Court, and now I am comfortable writing about the sale of patent assets being authorized by the Bankruptcy Court.

Kodak’s motion was contested by Apple, Inc. (“Apple”) and FlashPoint Technologies, Inc. (“FlashPoint”) which have asserted “ownership” interests in a small number of the 1,100 patents in the portfolios. The Bankruptcy Court, over Apple and Flashpoint’s objections, found that all of the patents in the Digital Capture and KISS patent portfolios are property of Kodak’s estate. Accordingly, the Court granted Kodak the right to sell these patents free and clear of Apple and FlashPoint’s claims at the auction, subject to the applicable provisions of the U.S. Bankruptcy Code.

Counterfeit Coupons – A Costly Scam

Posted: Friday, Jul 13, 2012 @ 7:30 am | Written by Gene Quinn | Comments Off

According to the Federal Trade Commission (FTC), coupons are a big business.  There are more than 3,000 manufacturers that annually distribute nearly 330 billion coupons that are worth an estimated $280 billion. Best estimates available suggest that 77% of American households use some eight billion coupons a year to save $4.7 billion on their grocery bills.

With this type of marketplace it is easy to understand why opportunistic criminals would be interested in the industry, particularly given the economic plight of the moment caused by the Great Recession, which we cannot seem to escape.  Tough times cause people to be more cost conscious, but this also provides the perfect cover for con artists and scammers.  Consumers need to be wary.