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Celebrating 15 Years of IPWatchdog.com

On October 10, 1999, IPWatchdog.com first went live on the Internet. It has been an honor and privilege to get to know so many wonderful people in our industry over the last 15 years, to talk to many industry leaders on the record, and to in some small way continue to push the debate forward. Thanks to our readers and contributors we have been recognized as as one of the top 100 legal blogs by the American Bar Association for 5 years in a row. For 3 of the last 4 years (2010, 2012, 2013) we were recognized as the top intellectual property law blog according to the ABA. In January 2014 we were also honored to be inducted into the ABA Blawg Hall of Fame. CLICK HERE to read more.


Most Recent Articles on IPWatchdog.com


The Past, Present and Future of Post Grant Administrative Trials

Posted: Thursday, Sep 18, 2014 @ 11:43 am | Written by Gene Quinn | 1 Comment »

EDITOR’S NOTE: I will host a free webinar discussion of the PTAB past, present and future with Scott McKeown on Tuesday, September 23, 2014 at 11:00 am Eastern. You can register by CLICKING HERE.

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On September 16, 2011, President Barack Obama signed into law the most sweeping changes to U.S. patent law since at least the 1952 Patent Act, perhaps ever. One of the dramatic changes to the U.S. patent system was the creation of post grant administrative proceedings where a challenger could in a contested forum akin to a trial challenge one or more claims of a patent already issued. These new proceedings — post grant review, inter partes review and covered business method review — went into effect on the one year anniversary of the signing of the America Invents Act (AIA) on September 16, 2012.

The patent litigation landscape has forever changed thanks to the AIA. On that date the Patent Trial & Appeal Board (PTAB) was born. The precursor to the PTAB was the Board of Patent Appeals and Interferences (BPAI), which would hear appeals from applicants who had their patent applications rejected and also conducted interference proceedings. With the signing of the America Invents Act (AIA) the PTAB was born and the jurisdiction of the appellate body within the United States Patent & Trademark Office (USPTO) was greatly expanded.

This Board, the adjudicative body of the USPTO, consists of technically and scientifically trained administrative patent judges (APJs). The PTAB was created, in part, to adjudicate the new patent challenge mechanisms of the AIA. Between September 16, 2012, and August 7, 2014, there were 1793 post grant challenges instituted. See USPTO PTAB Update, slide 5. Of those challenges 1,585 (or just over 88%) were inter partes reviews. There have been 201 covered business method challenges, 6 derivation proceedings and only a single post grant review. The fact that there has been only a single post grant review is not surprising giving that a PGR can only be instituted to challenge patents that were examined under the first to file rules of the AIA, which did not go into effect until March 16, 2013. The relatively low number of covered business method challenges suggests that this form of review is not nearly as popular as it was thought to have been prior to the enactment of the AIA.





Department of Energy Pumps Money into Offshore Wind Energy

Posted: Wednesday, Sep 17, 2014 @ 11:30 am | Written by Steve Brachmann | 11 comments

From U.S. Patent No. 8,729,723, entitled “Removable Offshore Wind Turbines with Pre-Installed Mooring System.”

Alternative forms of energy which can create electricity in much cleaner processes than fossil fuels have been an area of intense development in recent years. Here at IPWatchdog, we’ve covered recent developments in solar and hydrogen energy generation technologies in the past, and alternative energy is a frequent topic, particularly during our Earth Day coverage each year. We dive into this topic given that reports from the U.S. Department of Energy have led to a lot of optimism in recent days about the future of wind energy, specifically wind energy collected from offshore sources.

A developed network of offshore wind turbines could power the entire United States of America. According to the National Renewable Energy Laboratory, there is a potential 4,150 gigawatts of energy which can be collected from offshore wind collection around the country’s waters. The total electric generating capacity of the entire nation was 1,010 gigawatts as of 2008. All of this energy can be collected from waters within 50 nautical miles of America’s shorelines.

There are many obstacles in the way of increasing the scale of these technologies. Currently, offshore wind projects in America have capital costs of about $6,000 per kilowatt during installation, compared with about $1,940 per installed kilowatt for land-based wind projects. This is according to the recent Offshore Wind Market and Economic Analysis report released by the U.S. DoE, mentioned above.





Are Republicans Abandoning Patent Reform?

Posted: Tuesday, Sep 16, 2014 @ 9:00 am | Written by Gene Quinn | 6 comments

Congressman Kevin McCarthy (R-CA)

On August 8, 2014, Congressman Kevin McCarthy (R-CA), the newly minted Majority Leader in the United States House of Representatives, explained that the 44 “jobs bills” passed by the House and dead in the Senate would be voted out once again by the House as part of one big jobs bill. See McCarthy Sets up Votes on Messaging Bills Ahead of Midterms. According to Speaker.gov, one of the bills that is a “jobs bill” that was dead in the Senate was the Innovation Act, sometimes referred to in the industry as the Goodlatte Bill, which would have among other things enacted fee shifting legislation and expanded post grant review of patents. See House Passes Innovation Act and also IPWatchdog coverage of the Innovation Act.

Of course, the Innovation Act has absolutely nothing to do with jobs, job creation, job retention or spurring the economy in any way, but save that issue for another day.





Patent Drafting: Employing Claim Differentiation to Ensure Broad Construction

Posted: Tuesday, Sep 16, 2014 @ 8:00 am | Written by Joseph Root | 1 Comment »

EDITOR’S NOTE: This article is an excerpt from Rules of Patent Drafting: Guidance from Federal Circuit Cases, 2014 Edition, which is now available at Amazon.com. This is the fifth installment of the series. To read other installments please see Joseph Root on Patent Claim Drafting.

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The most significant obstacle to achieving patent breadth in contemporary patent law lies in the Federal Circuit’s proclivity to import imitations from the specification into the claims. The Court justifies its actions as merely discerning the inventor’s intent to limit the invention. The most effective counter to that activity is claim differentiation—the concept that claims are presumed to have different meanings, so a limitation expressly present in one claim should not be read into another claim, particularly where the narrower claim is dependent upon the broader. The Federal Circuit’s formulation of that rule was well stated in SRI Int’l v. Matsushita Elec. Corp.: “It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”

Courts often express this principle in terms of avoiding claim redundancy. The Phillips court faced that question in dealing with steel-shell panels that can be welded together to form vandalism-resistant walls. The broadest claim included a limitation “internal steel baffles extending inwardly from the steel shell walls.” The court was required to determine exactly what characteristics were implicit in the term “baffles,” and one technique employed for that purpose was an examination of the other claims. For example, dependent Claim 6 recited, “the internal baffles of both outer panel sections overlap and interlock at angles providing deflector panels extending from one end of the module to the other.” “If the baffles recited in claim 1 were inherently placed at specific angles,” the court reasoned, “claim 6 would be redundant.” Thus, a construction of Claim 1 that included a specific angle would be improper, based on the doctrine of claim differentiation.





Coming to Your City: Gene Quinn Roadshow – Fall 2014

Posted: Monday, Sep 15, 2014 @ 7:23 pm | Written by Gene Quinn | No Comments »

Over the years I have been invited to participate in more and more events, and I try and attend a handful of conferences each year regardless of whether I am presenting. I have a packed schedule this Fall, traveling from New York to Washington, DC to Toledo to Chicago to New Jersey back to Washington, DC to San Francisco and ultimately to Orange County, California. If your schedule permits, and I’m visiting an area close, perhaps you can join me at one or more of the events listed below.

 

  1. PLI Patent Bar Review Course, New York
    September 17-21, 2014
    Location: PLI, 1177 Avenue of the Americas, 2nd Floor, NY, NY
     
  2. Free Webinar: PTAB Past, Present, and Future: Post Grant Proceedings at the PTO
    Tuesday, September 23, 2014 from 11am to 12pm ET
    Presented by Innography
     




Merck Patents Drugs for Metabolic Disorders & Alzheimer’s

Posted: Monday, Sep 15, 2014 @ 8:00 am | Written by Steve Brachmann | No Comments »

Merck & Co., Inc., also known as Merck Sharp & Dohme, MSD, is one of the world’s largest developers of pharmaceutical drugs and it is currently headquartered in Whitehouse Station, NJ. Currently, the corporation has nine major drugs in different stages of development which are attracting a lot of investor attention, leading some analysts to believe that Merck’s share prices will rise in the coming months. Merck was recently successful in petitioning the U.S. Food and Drug Administration to approve sales of Belsomra, the first insomnia drug designed to regulate the sleep-wake cycle by modulating the activity of orexin in the brain. The U.S. FDA also gave a fast-track designation in early September to move along development of a Merck antibiotic for hospital-acquired pneumonia.

As readers have probably noticed, we have recently surveyed patents and patent applications of pharmaceutical manufacturers as part of our Companies We Follow series. See Pfizer Focuses Recent Patent Activity on Antibacterial Agents and Eli Lilly Patents Treatments for HIV and Ebola. We’ll be wrapping up this segment focus with a look at Merck’s recent medical innovations, although we will certainly return to pharma and biotech again in the future.





Best Practices for Fostering a Culture of Innovation

Posted: Sunday, Sep 14, 2014 @ 8:00 am | Written by Andrew J. Sherman | No Comments »

EDITOR’S NOTE: Mr. Sherman, a partner at Jones Day, is the author of Harvesting Intangible Assets, which addresses strategies to jumpstart our struggling economy. He will also be the featured speaker at a free webinar on Thursday, September 18, 2014, at 1pm ET, where he will discuss these and other topics related to driving new streams of revenue from intellectual properties.

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Over the years, I have developed and observed a wide variety of best practices for fostering and establishing on a sustainable basis a genuine culture of innovation. These must be embraced at all levels of the organization to be effective. What follows is discussion of some key lessons for maintaining a culture of innovation.

Innovation, like the spreading of fertilizer, is messy, lumpy, smelly, expensive, and unpredictable. Innovation rarely happens in a neat and sequential fashion. Imposing too many rules or protocols will retard or overly restart the process. And there must be a commitment to spread the fertilizer frequently, consistently, and across the entire field, not just once in a while to “pet” projects. And the results are not always what you would predict or expect. If you create processes that are appropriate for the levels of innovation and creativity goals that have been set, you create an environment that supports this process. If you are overly process oriented budget driven or linear in your thinking, you may be putting too many walls around a process that needs room to breathe.





A Conversation with New UIA Executive Director John Calvert

Posted: Saturday, Sep 13, 2014 @ 8:00 am | Written by Gene Quinn | 1 Comment »

John Calvert

Many within the independent inventor community are well acquainted with John Calvert. Calvert originally started out working for the United States Patent and Trademark Office as a patent examiner, but by the time he retired twenty-four years later he was in charge of the independent inventor outreach efforts of the USPTO. I have known him for a long time, he is a friend, and he has been a champion for the independent inventor community.

When Calvert retired in June 2014 I was saddened to see a him leave, but also saddened because I know how tirelessly he works to inform, educate and assist independent inventors. While he has no doubt earned a quite retirement I am extremely pleased to say that in retirement Calvert will continue to work with independent inventors; he was recently hired as the new Executive Director of the United Inventors Association (UIA). His energy, passion, knowledge and contacts should dramatically impact the UIA in a positive way. Good things are no doubt on the horizon.





The Destruction of a High Tech Economy

Posted: Friday, Sep 12, 2014 @ 9:00 am | Written by Gene Quinn | 73 comments

There was a lot riding on Alice v. CLS Bank, and the Supreme Court got it wrong. There is no point in sugar-coating it, or pretending that everything will be alright. The Supreme Court is openly hostile to patents, and increasingly so is the Federal Circuit. Simply stated, strong patent rights are an absolute prerequisite for a high tech economy.

It is a sad realization, but we are indeed at a point were commercially viable claims worth litigating are virtually assured to be invalid claims. Until this changes the economy suffer in due course. After all, it isn’t the copycats who create new things. Copycats copy and innovators innovate. You cannot infringe patents owned by an innovator and claim that because the product is new to you it is an innovation. NO! It is merely new to you and a rip-off from the true innovator.





Pfizer Focuses Recent Patent Activity on Antibacterial Agents

Posted: Friday, Sep 12, 2014 @ 8:00 am | Written by Steve Brachmann | No Comments »

Pfizer, Inc., is a major American developer of pharmaceutical medications and vaccines for a wide spectrum of medical disciplines. The majority of Pfizer’s business is operated in the northeastern United States, where the company has its corporate headquarters in New York City and its research headquarters in Groton, CT. A Pfizer vaccine that helps to protect against clostridium difficile, a potentially life-threatening bowel infection, received a fast-track designation from the U.S. Food and Drug Administration in late August of this year. The company also recently announced that it has struck a partnership with fellow American pharmaceutical giant Merck & Co. to conduct and evaluate a study on a treatment for lung cancer. Although Pfizer’s efforts to acquire British drug manufacturer AstraZeneca were squashed in May, speculation regarding stock movement in recent weeks has led some to believe that Pfizer may try to revisit the negotiations soon.

The Companies We Follow series  is visiting this major manufacturer of medications as we continue our survey of recent innovations in pharmaceutical fields. Patent applications recently published by the U.S. Patent and Trademark Office show that Pfizer’s recent development goals have focused on a broad spectrum of diseases and disorders. We discuss a trio of patent applications related to treatments involving the nervous system, including a couple of medications treating Alzheimer’s disease along with a host of other ailments. A couple of patent applications are also related to novel treatments for cancer, especially in the area of preventing cancerous growth.