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Happy Thanksgiving!

At this festive time of year we always try and profile turkey and/or Thanksgiving related patents, because after all what better way is there to celebrate a holiday than to celebrate American ingenuity? This year we did a slightly different article for the occasion. We bet you didn’t know the role Thanksgiving leftovers played in achieving the fundamental breakthrough that led to the invention of LASIK, but that only proves that inspiration can come at any time from anywhere. We also invite you to check out our holiday articles from Thanksgivings past. Happy Thanksgiving everyone!


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The Smart Phone Patent Wars: What the FRAND is Going On?

Posted: Tuesday, Mar 27, 2012 @ 11:30 am | Written by Raymond Millien | 3 comments

UPDATED March 28, 2012 at 12:15 am ET

In my last article, I posed the question whether the “Smart Phone Patent Wars” were giving IP rights – and more specifically, patents – a bad rap?  My conclusion was an unfortunate “yes,” with the villains being a handful of companies that willingly contributed patented technologies to various standard setting organizations (SSOs), encouraged their use in a host of consumer electronics, and years later charge the very producers they encouraged to implement these standards with patent infringement.  Now in this article – the second in a six-part series – I examine the so-called “Fair, Reasonable and Non-Discriminatory” (FRAND) licensing terms that SSOs require of their participants.

First, before discussing the meaning of FRAND licensing terms, we must understand the nature and importance of SSOs.  These national or international organizations are typically private, non-profit organizations whose members include for-profit company participants seeking to establish one or more technical standards that will be incorporated into a product or technical system.  Some of the more widely recognized SSOs include the Institute of Electrical and Electronics Engineers (IEEE), the Joint Electron Device Engineering Council (JEDEC) and the Telecommunications Industry Association (TIA).  The technical standards adopted by these SSOs are voluntary (unless they are enacted into law by, for example, a state legislature), but influential.  Why, however, have technical standards?  Well, would you buy a smart phone if it could not connect to a mobile network so that you can communicate (by voice or text) to your peers, visit all your favorite websites on the Internet or download pictures, videos and the like?  That is, standardization delivers consumer benefits, especially in product markets where the very value of the product is the fact that a great number of other consumers use the same or a compatible product.

Prometheus – What are We to Make of All This?

Posted: Tuesday, Mar 27, 2012 @ 8:16 am | Written by Charles Gorenstein | 3 comments

The Prometheus decision reflects that Supreme Court is obviously concerned about the possibility that a patent claim might preempt a law of nature and thereby broadly restrict use and application of the underlying principles.  Perhaps the concern is heightened by the fact that the claimed method relates to treatment of disease, and the prospect of preempting such treatment is troubling.  The reasoning set forth in the opinion, however, is anything but helpful.

The court dismisses a suggestion that virtually any step beyond a law of nature should transform an unpatentable law of nature into a potentially patentable application, sufficient to satisfy §101 whereby patentability could be determined under applicable novelty and obviousness analyses pursuant to 35 U.S.C. §102 and 103, saying that such an approach would render the “law of nature” exception to §101 a “dead letter.” The court, never the less, decides the status of the claimed subject matter under §101 under a point of novelty approach, leaving the reader to puzzle about which part of the opinion should be considered as determinative of what is proper under the law.

A Matter of Patent Law Despotism: The Nonsensical Reasoning in the Supreme Court’s Mayo Collaborative Services Decision Part 2*

Posted: Monday, Mar 26, 2012 @ 11:28 am | Written by Eric Guttag | 58 comments

Our patent world was fairly “rocked” last week by the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.  See Eviscerating Patent-Eligibility of Drug Testing Methods: The Nonsensical Reasoning in the SCOTUS Prometheus Decision* .  Now that the dust is starting to settle (and hopefully the “verbal vitriol” being thrown is starting to subside), I’ve reflected more on what this decision means for the patent-eligibility of analytical and diagnostic method specifically, and the informed interpretation of patent law generally.  What I see expressed by Breyer’s opinion in this case is both ominous and alarming.  Frankly, for the past 5 or 6 years, I’ve witnessed “patent law despotism” and “patent hostility” being expressed by the Supreme Court like I haven’t seen since the 1970’s.

For those who have “cheered” Breyer’s opinion in Mayo Collaborative Services, the end result, the invalidation of Prometheus’ claimed drug dosage calibration method as patent-ineligible under 35 U.S.C. § 101, is the least bothersome to me.  That Prometheus’ claimed method would satisfy 35 U.S.C. § 101 was problematical to me after the Supreme Court’s decision in Bilski v. Kappos based on the final “determining step” and the “wherein clauses” which inform you (indirectly) when the dosage of the administered thiopurine drug  is too high or too low.  What Prometheus’ claimed method needed to do was use the measured metabolite levels gained by the “determining step” and, as guided by the “wherein clauses,” to achieve a useful result.  As Steve Hansen has kindly pointed out on this blog, Claims 1 and 13, respectively, of Prometheus’ related U.S. Pat. No. 6,987,097 do exactly that by stating that the drug dosage should be increased (if the metabolite levels measured are too low) or should be decreased (if the metabolite levels measured are too high).  If Claims 1 and 13 of the ’097 patent can’t pass the “patent-eligibility” bar under 35 U.S.C. § 101, then I don’t know what method or process claim can.

AUTM Meeting: Cost-Effective International Patenting Strategies

Posted: Monday, Mar 26, 2012 @ 7:20 am | Written by Cara DiSisto | Comments Off

From Left to Right: Matthew Bryan, Alan Kasper, Derek Eberhart and Susanne Hollinger.

Recently, the Association of University Technology Managers (AUTM) held its annual meeting at the Anaheim Marriott in California.  Last year’s AUTM venue was Las Vegas, which offered attendees a variety of dining and nightlife options, and Anaheim was no different.  With Disneyland just around the corner, attendees at the Anaheim AUTM meeting had plenty of options for nightlife and networking.

I attended on behalf of inovia; it was our third year exhibiting at AUTM and our second year presenting a panel titled “Cost-Effective International Patenting Strategies” for AUTM attendees.  The panelists for this session were Matthew Bryan (Director, Patent Cooperation Treaty (PCT) Legal Division, World Intellectual Property Organization), Derek E. Eberhart, Ph.D., (Senior Licensing Manager, University of Georgia Research Foundation, Inc.), Susanne Hollinger, Ph.D., J.D., (Chief Intellectual Property Officer and Associate Director, Office of Technology Transfer, Emory University) and Alan J. Kasper (Partner & Director of the International Department, Sughrue Mion, PLLC).  The panelists discussed IP portfolio strategy, cost-effective foreign filing, Patent Prosecution Highway (PPH) programs, and effective use of the Patent Cooperation Treaty (PCT).

Patent Contingent Fee Litigation

Posted: Sunday, Mar 25, 2012 @ 2:04 pm | Written by David Schwartz | 6 comments

In the last decade, a substantial market has begun to develop for contingent fee representation in patent litigation. Wiley Rein — a traditional general practice law firm with hundreds of attorneys practicing all areas of law — represented a small company, NTP, Inc., in its patent infringement lawsuit against Research in Motion, the manufacturer of the Blackberry line of devices. The lawsuit famously settled in 2006 for $612.5 million, and the press reported Wiley Rein received over $200 million because it handled the lawsuit on a contingent fee basis. And Wiley Rein is not alone in doing so. Many patent litigators around the country have migrated toward handling patent cases on a contingent fee basis.

In the past, patent litigation was almost entirely performed on an hourly fee basis rather than on a contingent fee basis. That made sense because patent litigation appeared a poor candidate for contingent representation. Among other reasons, patent cases were expensive to litigate, took years to resolve, and outcomes on liability and damages were considered uncertain and unpredictable. In contrast, personal injury cases are relatively inexpensive to litigate, are adjudicated quicker, and often the liability of the defendant is not seriously disputed.

Prior Borat? Non-traditional Prior Art Rejections!

Posted: Saturday, Mar 24, 2012 @ 4:20 pm | Written by Stewart Walsh | 14 comments


Recently, I was working on a patent search requiring me to look in areas of patent art relating to male underclothing (a very popular area for patenting, as you may guess) when I came across this little number: US Patent Application 12/071,878, which is titled “Scrotal Support Garment.”  The primary illustration is shown to the left.

Look familiar? Yes, with the exception of adjustable straps, this is the Borat Swimsuit, the swimwear made famous by comedian Sasha Baron Cohen, a.k.a., Borat in the 2006 film Borat: Cultural Learnings of America for Make Benefit Glorious Nation of Kazakhstan. If you remember the movie (and how could you forget?), Borat wore this swimsuit in one very short scene at the top of the film. That short scene set the tone for the craziness that was Borat’s world.

USPTO Announces 2012 National Trademark Expo

Posted: Friday, Mar 23, 2012 @ 1:30 pm | Written by U.S.P.T.O. | Comments Off

Exhibitor applications due May 18, 2012

Washington – The United States Patent and Trademark Office (USPTO) will host the 2012 National Trademark Expo on Friday, Oct. 19, and Saturday, Oct. 20, at the USPTO’s headquarters in Alexandria, Virginia. The free two-day event is designed to educate the public about trademarks and their importance in the global marketplace. Last year’s Trademark Expo attracted more than 15,000 visitors of all ages.

Exhibitors are invited to showcase their federally-registered trademarks through educational exhibits, including booths, themed displays, costumed characters, and inflatables. In addition, the Expo features educational seminars for adults, and children’s workshops and activities.

Track One By the Numbers. What are you Waiting for?

Posted: Thursday, Mar 22, 2012 @ 12:49 pm | Written by Gene Quinn | 10 comments

David Kappos is Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office.  He assumed that role within the Obama Administration when he took over the USPTO in August of 2009, nearly 32 months ago.  Upon arrival Director Kappos found a largely dysfunctional Patent Office, which had really become the “No Patent For You” Office owing to the philosophical and ideological beliefs of the prior Administration.  This lead to the development of a massive backlog of un-examined patent applications and played no small part in the severity of the economic collapse and the sluggish rebound.  We have a technology based economy and start-up companies that are the backbone of our economy struggled without patents to attract capital investment, expand and hire.

There is still a massive backlog of patent applications, but things are undeniably turning around.  There are certainly some pockets of resistance within the USPTO, See Business Methods by the Numbers, but the Patent Office is by-and-large open for business.  The USPTO has returned to the historical philosophy that patent examiners should work cooperatively with patent applicants to identify allowable subject matter and issue patents on what is allowable, not just focusing on rejection after rejection after rejection.

While there are quite a few positive changes, with more in the works, Track One is by far the most successful policy initiative that has come to bear during the Kappos Administration.  The only problem with Track One is that more applicants are not using it!  What are you waiting for? A look at the numbers shows that Track One is a huge success and ought to be employed far more than it has been.

Setting the Record Straight on the Innovatio Patent Portfolio

Posted: Wednesday, Mar 21, 2012 @ 3:41 pm | Written by Raymond P. Niro | 4 comments

Recently I did an interview with Gene Quinn, which was published on See Exclusive Interview with Ray Niro, Mr. Patent Litigation. During this interview we discussed important issues and the undeniable reality that innovators are frequently and unjustifiably maligned for enforcing patent rights granted to them by the United States government.

During the interview Gene asked me about bad actors within the industry. Our exchange, in part, went as follows:

QUINN: It strikes me that there are some really bad actors out there that give everybody in the industry a bad name… Have you given any thought as to what could be done with respect to the bad actors without penalizing everybody that’s just engaged in legitimate business?

NIRO: Well, you raise an interesting point. There are clearly bad actors. And generally the bad actors fall into the category, I don’t think you can quantify based on what they’re seeking in damages. And I’ll circle back to that in a minute. I think you quantify on the basis of whether or not they truly represent the interest of inventors. I see an NPE as someone who’s created to help inventors. I don’t represent companies be they NPEs or whatever you want to call them, that are associated with inventors unless their model methodology is to help inventors. You do have a bunch of opportunists. Some of them are publically traded now. They’re playing a numbers game. They got—I don’t want to mention the company, but I think you can figure it out. That has a methodology of a bunch of people in horizontal across the board who’s job it is to generate revenue for the company. And their report card gets graded on how much revenue they generate. And they’re not as selective in what and how they enforce —they’re playing a numbers game. They don’t really care whether they win, lose, or draw, they get some lawyers to represent them and if I bring ten lawsuits and one turns out to be okay, that’s good for me. That methodology is bad. Because there isn’t a careful legitimate evaluation of the merits of the claim. They also happen to be the same kind of people that in my view are disconnected from the inventors. Their interest is not in helping an inventor.

Eviscerating Patent-Eligibility of Drug Testing Methods: The Nonsensical Reasoning in the SCOTUS Prometheus Decision*

Posted: Wednesday, Mar 21, 2012 @ 2:20 pm | Written by Eric Guttag | 34 comments

Justice Breyer delivered the opinion of a unanimous Court.

Well, Justice Breyer, the writer of the dissenting opinion in Laboratory Corp. v. Metabolite Laboratories, Inc., finally got his wish.  Writing the opinion for a unanimous Supreme Court in Mayo Collaborative Services v. Prometheus Laboratories, Inc., Breyer ruled that a claimed drug dosage calibration method based on previously unknown “precise correlations between metabolite levels [of administered thiopurine drugs] and likely harm or ineffectiveness” was patent-ineligible under 35 U.S.C. § 101 because it “adds nothing to the laws of nature that is not already present when the steps [of the claimed method] are considered separately.”  While I’m not surprised that Breyer ruled the claimed method patent-ineligible, his reasoning in Mayo Collaborative Services is, in my view, often nonsensical, and is fraught with unfortunate statements that could potentially eviscerate the patent-eligibility of drug testing methods (as well as related medical diagnostic methods) generally under 35 U.S.C. § 101.

Briefly, the claimed method in Mayo Collaborative Services determined (calibrated) the proper dosage of thiopurine drugs to treat both gastrointestinal and non-gastrointestinal autoimmune diseases.  What the claimed method sought to do was optimize therapeutic efficacy while minimizing toxic side effects.  The claimed method had essentially only two steps:  (1) administering a thiopurine drug to a patient; and (2) determining the level of metabolites of the drug in the patient after administration.  The claimed method also concluded with some “wherein clauses” that, if certain drug metabolites were below a certain level, that would indicate a need to increase the amount of the drug administered.  Conversely, if those drug metabolites were above a certain level, that would indicate a need to decrease the amount of the drug administered.  See CAFC: Method for Calibrating Drug Dosage Is Transformative.