The conundrum created by the Federal Circuit’s joint infringement doctrine and its impact on protecting interactive computer-based technologies got worse last week with McKesson Technologies, Inc. v. Epic Systems Corp. McKesson Technologies involved a patented interactive electronic method for communicating between healthcare providers and patients about personalized web pages for doctors. Judge Linn’s majority opinion (and a “thin” at majority at that) ruled that, because the initial step of the patented method was performed by the patient while the remaining steps were performed by the software provided by the healthcare provider, there was no infringement, direct, indirect, joint or otherwise of the patented method.
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At 11:03 am this morning Justice Scalia, sitting in for the recused Chief Justice John Roberts, called the most recent Supreme Court foray into patent law saying: “We’ll hear argument now in… Microsoft Corporation v. i4i Limited Partnership.” The Chief Justice recuses himself from any and all Microsoft cases before the Supreme Court, so eight Justices are left to decide whether it is appropriate to require clear and convincing evidence to find an issued patent claim invalid during litigation. In a nutshell, Microsoft and the amici supporting Microsoft would rather have a lower threshold (i.e., preponderance of the evidence) at least with respect to prior art that was not considered by the patent examiner during prosecution of the patent application at the United States Patent and Trademark Office. On the other side of the case, i4i, along with its amici and the Solicitor General, argue that the current standard should not be changed.
On April 4, 2011, I had the honor to interview Manny Schecter, the Chief Patent Counsel for IBM Corporation. I met Manny in October 2010 when I did a CLE presentation at IBM’s offices in Armonk, New York. Since that time I have worked to schedule a time to chat with him on the record, and we were recently able to coordinate and chatted on the record for approximately 60 minutes. During our conversation we talked about numerous topics, including patent reform, Microsoft v. i4i, Patent Office initiatives such as the Three Track initiative and Peer to Patent. We also discussed David Kappos, his former boss, as well as Watson’s Jeopardy triumph, the new Intellectual Property @ IBM blog and the usual fun questions.
We started the interview diving straight into patent reform. In the fast moving and shifting landscape of patent reform it is worth noting that the most recent amendments to the House version of patent reform had not been discussed or voted on when our interview took place, so for those who have been hanging on every twist and turn you will notice that the House Judiciary Committee vote on patent reform was not a topic of discussion because it had not yet happened.
The United States Patent and Trademark Office has updated the patent bar exam, sometimes referred to as the patent registration examination. Effective April 12, 2011, the patent bar examination now tests MPEP 8th Edition Revision 8, as well as critically important guidelines, such as the KSR, Bilski and 112 guidelines, not yet a part of any edition of the MPEP. See USPTO Updates Registration Examination. I have been teaching the PLI Patent Bar Review Course for over 10 years now, and along with John White (the original course creator) participated in revising our materials, lectures and questions to bring the course up to date with the latest edition of the exam now being offered. I continue to believe the PLI Patent Bar Review Course is the best course out there, and I have put together the following Top 10 reasons to take our Review Course.
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It is not uncommon for inventors to want to attempt to draft and file patent applications on their own, and I frequently get asked about sample patent applications. Here is where you as an inventor need to make a critical choice, and making a thoughtfully considered business decision is fine. Notwithstanding, I cringe at times because some will make a reckless choice, or choose because they think you can do as well as a patent attorney who has dedicated their entire career to mastery of the art. It is true that the cost of hiring an attorney to draft a patent application can price inventors out of the market, so they are left with no real choice, or so it seems. Either you do nothing and simply don’t pursue seeking exclusive rights in the form of a patent, or you have to do something on your own that is within your budget.
If paying a patent attorney is out of the question on a budgetary level you probably would serve yourself well to sit down and carefully go over your budget (which all inventors should do) and ask yourself whether you have the financial resources and abilities to pull off the project. Inventing, patenting and making money by commercializing does not come cheap, and if you have few resources you might be better off building your savings so you can appropriately pursue your inventions in the future. If you are truly an inventor you are creative and, trust me, there will be many inventions in your future.
ARLINGTON, VA — The American Intellectual Property Law Association (AIPLA) commends House Judiciary Committee Chairman Lamar Smith (R-Tex) for shepherding patent reform legislation another step closer to enactment with the Committee’s strong approval of H.R. 1249.
Washington, D.C. (April 15, 2011) – Biotechnology Industry Organization (BIO) President and CEO Jim Greenwood released the following statement regarding the America Invents Act, H.R. 1249, which passed the House Committee on the Judiciary yesterday:
“BIO has consistently praised House Judiciary Committee Chairman Lamar Smith (R-TX) for his introduction of a comprehensive patent reform bill similar to the bill adopted by the U.S. Senate earlier this month by a nearly unanimous vote. Unfortunately, given the addition of the Goodlatte supplemental examination amendment, added to the bill during Committee consideration, we have no choice but to oppose floor consideration of the bill until this issue is repaired.
On tap this afternoon at the BIO IP Counsel Meeting is ethics. There are two separate panels schedule, the first which will address the ethical issues associated with joint inventorship and joint representation. The second panel dealing with ethical issues as they present particularly for in-house IP counsel.
The moderator of the first panel is Donald Ware of Foley Hoag, who is leading a discussion of pitfalls that may arise from prosecuting joint inventions conceived in the course of research collaborations among multiple institutions, including companies, universities and hospitals. On the panel is Irene Pleasure, Associate General Counsel and Director of Patent Law at Genentech, who discussed the in-house perspective on managing patent issues in research collaborations. Rounding out this first panel discussion of the afternoon will be David Hricik, Professor of Law at Mercer University School of Law and co-author of two patent ethics treatises, namely Patent Ethics – Prosecution (2009) and Patent Ethics – Litigation (2010). Hricik, who is also on the second panel, addressed the professional responsibilities of patent attorneys involved in the prosecution of jointly-owned patent applications.
Next on the agenda at the BIO Intellectual Property Counsels Committee Conference meeting in Seattle is the so-called Myriad case, Association of Molecular Pathology v. U.S.P.T.O, moderated by Andrew T. Serafini, Ph.D., Partner, IP Group & Life Sciences Practice, Fenwick & West LLP. I have been following the case closely since its beginning, so I am keenly interested in the case. I am separately working on a “readers digest like” summary of the oral arguments that took place at the Federal Circuit on April 4, 2011, so look for that in the coming days.
The first speaker on the second panel was Debra Greenfield, an attorney and Adjunct Assistant Professor, UCLA Center for Society and Genetics. It was a bit difficult for me to follow her presentation, oddly enough, because she was reading her presentation. Time and time again it seemed as if she was phrasing her background of the case and what is at stake as one who supports the ACLU challenge, ending with she looks forward to defending her position in the question and answer session. As it turns out, she is in favor the the ACLU position, which caught me by surprise. Let’s face it, the BIO IP attorneys are not exactly a friendly audience for her, but kudos to the program committee for attempting to provide a balance perspective of the case despite the obvious biases (which I share) of those in the audience.
I am sitting in a ball room at the Hotel 1000 in downtown Seattle, Washington, attending the Biotechnology Industry Organization (BIO) IP Counsels Committee Conference. The Conference kicked off yesterday with an excellent presentation giving an insider’s perspective of the U.S. Supreme Court and the Solicitor General’s Office, given by Traci L. Lovitt, a partner in the Boston office of Jones Day (more on this forthcoming). This morning the first panel discussion is focusing on Stanford v. Roche, titled Who’s Rights Are They Anyway? The first speaker, Maggie Shafmaster, Ph.D., Vice President and Chief Patent Counsel, Genzyme Corporation, lead off by pointing out something that everyone largely seems to agree with, namely that the facts of the case are still largely in dispute, which makes me wonder why would the Supreme Court take such a case. Be that as it may, Shafmaster went on to say that this case is one that makes in-house attorneys and those representing Universities lay awake at night. She characterized the case as “an academic/industry collaboration gone wrong.” And we are off to the races!