Seeking a writ of mandamus seems as if it is becoming a more popular avenue to pursue than it once might have been. A writ of mandamus essentially seeks an order from a higher court to direct a lower court to follow the law. They are extraordinary remedies because they come well before the case is over, which means that an ordinary appeal cannot be taken at that point; appeals are only typically allowed for final adjudications. Notwithstanding the extraordinary nature of a mandamus request, earlier today the Federal Circuit issued a writ of mandamus requiring a district court to dismiss a false marking lawsuit because the complaint did not contain allegations sufficient to allow the plaintiff to appeal. Essentially, even if each and everything in the complaint were believed the plaintiff could not possibly be entitled to a recovery. Kudos to the Federal Circuit for standing up and getting rid of a frivolous lawsuit initiated by an obviously defective complaint.
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Certainly those of us involved with international IP protection have heard the horror stories about how IP protection in China is a waste of money, effort, time, etc. or how such a phrase may even seem to be an oxymoron. Honestly, when a study comes out showing that most government computers are running pirated Windows® software then the headlines are easy, and the politicians start pounding their fists to make political capital while the sun shines.
And certainly one can not pretend that IP in China is issue-free. However, as one who has been working in Asia for over a decade on IP matters, I tell you it is getting better.
The United States Patent and Trademark Office is radically updating the Patent Bar Examination starting in April 2011. Since I teach the PLI Patent Bar Review Course that has required John White and I to revise our materials. One of the new things tested will be the recently released 112 Guidelines, which are full of great information and explanation, particularly relating to computer implemented processes; what many would call software. Being the “software guy” one of my responsibilities has been to work on the 112 Guidelines and the Bilski Guidelines for the PLI course. So I thought I would take this opportunity to write, once again, about how to disclose computer implemented inventions to satisfy the disclosure requirements, which are embodied specifically in 35 U.S.C. § 112.
The statutory requirements for computer-implemented inventions are the same as for all inventions. That means that in order to be patentable the invention must meet the patent eligibility test in 35 U.S.C. § 101, the invention must be new (§ 102), it must be non-obvious (§ 103) and it must be adequately described (§ 112). Since the United States Supreme Court announced its decision in Bilski v. Kappos, the United States Patent and Trademark Office has continually urged patent examiners to get beyond the § 101 inquiry except in extreme cases. Prior to the Supreme Court’s Bilski decision many examiners would simply see a computer-implemented method and issue a blanket and rather non-specific rejection asserting that the invention was not patent eligible subject matter under § 101. The USPTO focus on getting past § 101 and to the meat of the invention means that such rejections are no longer the norm. It also means that the Patent Office is pushing the real question about whether an patentable invention is presented into the adequate description space pursuant to § 112. Thus, a thorough and complete description is absolutely essential when your invention relates to a computer-implemented method, whether it is software, an Internet processes or a business method.
On Friday, March 11, 2011, lawyers representing i4i Limited Partnership filed the Brief for Respondents in the matter of Microsoft Corp. v. i4i Limited Partnership. The fight is at the United States Supreme Court, which will hear oral arguments in the matter on April 18, 2011. At issue is whether a patent in litigation deserves a heightened presumption of validity under the clear and convincing evidence standard or not. Today, in order for a defendant to invalidate a patent claim there must be clear and convincing evidence that the claim should have have been issued by the Patent Office. Microsoft seeks to lower the standard and make it easier to challenge issued patents in court.
More specifically, Microsoft would like to have the standard for invalidating a patent claim lowered to a mere preponderance of the evidence standard. They say that prior art not considered by the Patent Office should not be afforded the same level of deference. I say — why not?
Take a knee, sports fans, we have some issues to discuss. The National Football League (“NFL”) team owners and the players’ union have been squabbling over how to divvy up the dough (a paltry $9 billion a year). They couldn’t come to an agreement (because $185 million is really hard to split) so on Friday, they broke off labor negotiations, decertified the union, and 10 players sued the owners in federal court in Minneapolis. See NFLPA decertifies. Normally, I really couldn’t care less about a bunch of billionaires arguing with a bunch of millionaires. But this case has major antitrust and intellectual property issues and that makes me very happy. So now I’m paying attention. It all stems back to a teeny little case called American Needle and a unanimous United States Supreme Court (“USSC”) decision that appeared to all but greenlight antitrust suits against the NFL. Finally! A sports related intellectual property issue that has some staying power. Let’s just jump right in, shall we?
Earlier today President Barack Obama held a press conference where he addressed the nation on the rapid increase in gas prices caused most immediately by unrest in Northern Africa and more generally as a result of the world slowly emerging from the Great Recession. After detailing a number of efforts to boost domestic oil production, including encouraging companies to pursue leased lands that are idle and possible new development efforts onshore and off-shore in Alaska, the President explained, “All of these actions can increase domestic oil production in the short and medium term, but let’s be clear: it is not a long term solution. Even if we started drilling new wells tomorrow, that oil isn’t coming online over night. Even if we tap every single reserve available to us we can’t escape the fact that we only control 2% of the world’s oil, but we consume over a quarter of the world’s oil.” President Obama even quoted T. Boone Pickens,saying: “This is one emergency we can’t drill our way out of.”
Earlier this week the United States Supreme Court granted the petition for a writ of certiorari filed by lawyers from Stanford Law School’s Fair Use Project (FUP) and Wheeler Trigg O’Donnell LLP and will review the constitutionality of a federal statute that removed thousands of foreign works from the Public Domain and placed them under copyright protection. The case presents a two-pronged constitutional challenge to the 1994 law passed by Congress, which amended the Copyright Act. The case will test whether Congress has the authority to remove works from the Public Domain under the “Intellectual Property Clause” of the United States Constitution and whether the 1994 law violates the First Amendment rights of those who performed, adapted, restored and distributed works which had previously been in the Public Domain.
The Fair Use Project filed the petition in October, 2010 on behalf of orchestra conductors, educators, performers, film archivists and motion picture distributors who relied for years on the free availability of works in the Public Domain, which they performed, adapted, restored and distributed. The 1994 amendment to the Copyright Act, the Uruguay Round Agreements Act (URAA) (see copyright highlights of URAA), removed these works and many others from the Public Domain and placed them under copyright protection in conjunction with the implementation of international intellectual property treaties. That amendment affected the copyright status of thousands of works by foreign authors that had previously fallen into the Public Domain in the United States.
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 it is hard to argue with results. On Monday, March 7, 2011, Article One Partners announced that it had surpassed the $1 Million milestone and has now distributed over $1 million in reward money to Advisors.
At 11:30 am on Monday, March 7, 2011, Secretary of Commerce Gary Locke spoke at the Asia-Pacific Patent Cooperation Forum hosted by the United States Patent and Trademark Office. Immediately after his remarks I was granted an exclusive interview with Secretary Locke. The interview was originally scheduled for 10 minutes, but as you can see from the transcript below the interview went long. In fact, Secretary Locke was gracious enough to talk about a range of issues for more than 25 minutes.
During my interview with Secretary Locke we spoke about patent reform efforts in the United States Senate, what patent reform might look like from the House of Representatives, his management style and how to motivate individuals to achieve transformative change. What you will not read, however, is about his much anticipated appointment as the new U.S. Ambassador to China. ABC News first broke the story that President Obama would nominate Secretary Locke to become Ambassador to China after the close of business. This interview wrapped up at approximately 12:30 pm, some 6 hours before Locke’s impending nomination as the Ambassador to China became public knowledge.
UPDATED: March 9, 2011 @ 2:35pm
By a vote of 95 to 5, the Senate last night passed comprehensive patent reform legislation. S.23, “The America Invents Act”. But the path forward for passage of the measure in the House of Representatives remains unclear.
The bill – which was introduced by the Senate Judiciary Committee’s Chairman, Sen. Patrick Leahy (D-VT), Sen. Orrin Hatch (R-Utah), and the Committee’s Ranking Republican, Sen. Charles E. Grassley (R-IA) – moved quickly through the Judiciary Committee, with a Committee vote of 15-0. Catching some critics off-guard, S.23’s advocates were able to take advantage of the light Senate floor schedule that often exists early in a new Congress and to capture the attention of Majority Leader Harry Reid (D-NV). Specifically, S.23’s bipartisan posture, fueled by an Administration eager to advance innovation and job creation policy initiatives, made the bill an attractive floor measure for Senate Leadership, who was otherwise consumed by a heated, partisan battle over federal government funding.