Calvert didn’t go quietly off into the sunset though, which is a good thing. A long time friend and champion of the independent inventor he is now going to work with and for inventors in the private sector by and through the United Inventors Association (UIA). As the new Executive Director of the UIA he will lend his time and talents in an endeavor that is near and dear to his heart.
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.
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Over the past several months we have had a number of articles that have gotten quite a bit of attention on various social media outlets. If you haven’t read these articles yet take a look, they seem to be driving an interesting debate.
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Financial services are one of the more interesting areas of innovation which we touch on in IPWatchdog’s Companies We Follow series. Many unique products and services for both individual consumers and business organizations are patent-protected, and a number of American banking institutions are regular applicants at the U.S. Patent and Trademark Office. In our most recent look into the state of financial innovation in America, we sought out the most intriguing patent applications or patents assigned to the Bank of America Corporation, JPMorgan Chase Bank and Wells Fargo Bank. What becomes clear is that the Supreme Court decision in Alice v. CLS Bank does not seem to have slowed the allowance of financial services software patents to these and other major banking institutions.
Each of these major banking institutions have increasingly incorporated digital technologies into their financial services offerings, a development we visit in more detail below. All three of these banks have partnered with Apple for the development of the Apple Pay system, allowing iPhone users to conduct transactions directly from their device. The total transaction volume of the six banks in total that are using Apple Pay represents about 83 percent of America’s total credit card transaction volume. In other, more discouraging, technology news related to major American banks, it was recently reported that hackers were able to gain access to dozens of JPMorgan Chase servers, although no theft or fraud has been reported as a result.
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.
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.
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.
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.
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.
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.
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.
- PLI Patent Bar Review Course, New York
September 17-21, 2014
Location: PLI, 1177 Avenue of the Americas, 2nd Floor, NY, NY
- 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 & 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.
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.
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.
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.