Gene Quinn (left) is a widely read commentator, a law professor and a patent attorney. In 1999 Gene launched IPWatchdog.com. Today IPWatchdog has over 110,000 monthly readers and has been recognized as the top IP Law blog for 2 of the last 3 years by the American Bar Association.
In addition to Gene's articles we publish a variety of articles from Guest Contributors who offer their unique expertise and commentary on a variety of issues. We also have several freelance journalists who write for us now as well.
Are Pharmaceutical Patents A Barrier to Access to Medicines? (May 21, 2013) - Dr. Kristina Lybecker takes on patent critics who say "patents kill," by brining up the real question: what really influences a population's access to medicines? Barrier are more prevalent in less developed nations without patent rights.
Pharma Update for May 2013 (May 21, 2012) - Ed Silverman, founder of Pharmalot, provides his monthly take on the news in the pharmaceutical industry worth knowing. This month he tells us about Ranbaxy's $500 million fine, a Children's Tylenol scandal in Korea for Johnson & Johnson, the fight over Plan B birth control and Bayer being sued over advertising Vitamins.
No Quanta of Solace for Farmer Bowman (May 20, 2013) - Eric Guttag explains that to understand the ruling in Bowman you must first understand Monsanto’s patented Roundup Ready® soybean technology.
I wonder what it is about the dawning of Spring that gets people in the mood to clean house. Is it the smell of the blooming flowers that gets a person to finally throw out that old broken chair that’s been sitting in the corner of the garage forever because it’s missing one leg? Or maybe it’s a rainy Saturday that gets people’s cleaning juices flowing.
Whatever the motivation is, one thing is for sure–having the proper tools to make one’s cleaning efforts worthwhile is essential. Perhaps these four patents and one patent application will do the trick.
In order to clean, it is imperative that you have an effective cleaning tool that will get the job done, and inventor Johann Zita believes that a bendable cleaning device and system is just the ticket to get rid of all that dust that seems to pile up on top of our kitchen cabinets and bookcases. Sure, there are all kinds of dusters currently on the market that will do a decent job of getting the dust off of those fragile pieces of crystal that you’ve been keeping on display on a shelf in the living room. But what about the top of the refrigerator (which everyone seems to forget about) or the top of the curio that everyone walks by and barely touches? Those items require something a bit stiffer and more adjustable than your typical feather duster. That’s where Zita’s cleaning device and system comes in. The invention is a duster that comes with a handle and a bendable duster portion that will make reaching those hard-to-reach spots more manageable. The user can shape the duster portion of the unit to whatever angle they so desire, and when the cleaning is done, the duster can be put back into its original position with ease. So say bye-bye to those dust bunnies that have been living on top of your refrigerator!
As the patent community waits to see whether the United States Supreme Court will deal a significant, perhaps fatal blow, to the patenting of many genetic related innovations in Association of Molecular Pathology v. Myriad Genetics, announcement came this morning of a newly issued U.S. patent. This patent — U.S. Patent No. 8,399,645 — was issued to St. Jude Children’s Research Hospital. The invention relates to compositions for genetically modifying human immune cells so they can destroy some of the most common forms of cancer in children and adults.
It seems unthinkable that the Supreme Court could issue a ruling that would call into question the patent eligibility of an innovation that has the potential for curing cancer, but that is what is at stake. The Supreme Court will hear oral arguments in AMP v. Myriad on April 15, 2013, and the issue they will consider only a single question: Are human genes patentable?
While this St. Jude invention is not likely to be directly impacted by any ruling the Supreme Court makes, if the Supreme Court says that human genes are not patentable then what is to stop the march toward a ruling that says genetic modifications are likewise not patentable? Additionally, the Myriad claims relate to isolated DNA sequences, not DNA as it exists in a person or in nature. Some of St. Jude claims to this cure for cancer would seem to fall if the Myriad claims fall because they cover isolated host cells. Indeed, there is a lot at stake.
Yet another busy month has passed since our last stop here at IPWatchdog. So let’s recap some of the more interesting developments. The last few weeks, in fact, have been bookended by concern over a batch of diabetes drugs and links to pancreatitis, but also pre-cancerous cellular changes in the pancreas.
First, a study in JAMA Internal Medicine indicated the drugs can double the risk of developing pancreatitis, an issue that has plagued these meds for years. Insurance records for more than 2,500 diabetics between 2005 and 2008 were examined and found patients hospitalized with pancreatitis were twice as likely to have taken the drugs than a control group that did not have pancreatitis. The study did not examine other meds, such as Novo Nordisk’s Victoza, that were not available at that time.
The issue raised questions about whether the results might alter treatment practice by physicians. Of course, the drug makers issued statements standing by the safety of their medicines, while acknowledging the risks have been detected in the past. The American Association of Endocrinologists and the American Diabetes Association issued a joint statement noting the analysis was a retrospective study, not a prospective, randomized controlled clinical trial.
Google is another technological innovator whose name comes up often every week at the U.S. Patent & Trademark Office, as they are in the habit of protecting many aspects of their Android system and various other Internet developments. This week, the USPTO published 9 patent applications assigned to the firm. Some of these improve user interfaces associated with touchscreen displays or head-mounted displays. Google also received 25 patents this week, including one that looks to improve online systems of user review for products.
Social media has proven to be a huge boon for businesses who can get word-of-mouth to spread faster than television or print advertisements. Businesses often use their social media presence to offer giveaways to customers, which helps encourage others to follow the business if they believe they might benefit in some way. A user can also check-in to a business establishment through social media, which helps spread the word to their social media contacts.
Google’s hoping to protect a system of rewarding customers for using social media to build exposure for a business. This system keeps track of check-ins, tags and other digital footprints left by social media users that involve the place of business. If a customer’s check-in is followed quickly by many other check-ins from people within the initial individual’s social network, the business could decide to send a promotional coupon or other digital item directly to the first individual who attracted the new business.
I am in San Francisco today at the Practicing Law Institute California Center, which is located on Market Street. Today is the west coast version of the 7th Annual Patent Law Institute, which is also being simultaneously webcast. The room here at PLI is packed, and several hundred attorneys are viewing via the Internet.
The first presentation today is by Brian Hanlon, who is the Director of the Office of Patent Legal Administration at the United States Patent and Trademark Office. The topic of his presentation is simple — PTO Update.
Hanlon started with statistics relating to the variety of new procedures that were ushered in as part of either phase one or phase two implementation of the America Invents Act (AIA). He started with prioritized examination, which went into effect on September 26, 2011. Between inception and February 19, 2013, there have been 8,554 requests for prioritized examination, with 94% of requests granted. In those cases where the petition was granted there were only 55 days from petition grant to the First Office Action, and the average days to final disposition has been just 168 days. So far there have been 3,667 final dispositions mailed with 1,828 allowances mailed, which corresponds to an allowance rate of 49.9%, which isn’t bad, but didn’t initially strike me as great either.
Electronic device developer and manufacturer Apple Inc. has recorded another big week with the U.S. Patent & Trademark Office. On Tuesday, the California corporation was issued 36 patents, and the USPTO published another 32 patent applications on Thursday. Many of these prospective patents focus on better responses to user interactions, including new methods of music library visualizations and smarter microphone response to ambient sound. One of the patents issued to Apple protects a fiber optic cable connection that is self-cleaning.
Optical signals between electronic devices can be transmitted through fiber optic cables connecting the two devices. For example, a television can play DVDs if a DVD player has been connected to the television through a cable plugged into the proper jack input. With time, however, the plug can degrade in quality through scratches or from the buildup of dirt and other organic debris, affecting the signal transmitted through the cable.
The patent awarded this Tuesday to Apple protects a new design for a fiber optic cable connection that is not only cleanable but also self-cleaning. The ejector of this new plug connector pops the plug out of the jack with enough force that any debris remaining in the connector is also expelled. The new configuration is also designed to reduce scratching on the optical element of the cable connection, protecting the signal quality:
The fireside chat between Rader and Flanigan lasted nearly 60 minutes, and the Chief took questions from the audience. I found this entire presentation terribly interesting, but there were several things in particular that I have wanted to get to publishing, which did not neatly fit into the first article about patent litigation abuse. Namely, the Chief discussed the Supreme Court’s aversion to bright line rules and why they are really quite important in the commercial law context. He also discussed what the Federal Circuit has done to bring more certainty to damages, and he provided a razor sharp criticism of Judge Posner of the United States Court of Appeals for the Seventh Circuit.
President Obama signs the AIA on Sept. 16, 2011, setting the stage for first to file.
The America Invents Act (AIA) was signed by President Barack Obama on September 16, 2011. The most significant changes to U.S. patent law did not go into effect right away. Rather, there were waves or phases of implementation. The second phase of AIA implementation was ushered in on September 16, 2012, which brought with it a host of new post-grant procedures, supplemental examination, changes to the oath or declaration requirement, and other various items. By any objective measure phase two ushered in massive changes to patent law and procedure.
By comparison, however, the second phase of AIA implementation pales in comparison to the third phase of AIA implementation. Effective on Saturday, March 16, 2013, the United States is now a first to file country, abandoning the first to invent laws that were long the hallmark of U.S. patent law and practice. The oddity, however, is that what has been adopted is not really a first to file system. There are some exceptions whereby a person who files second can still prevail, but those exceptions are infinitesimally insignificant, and the law surrounding the parameters of the exceptions is non-existent and unfortunately rather ill defined by the USPTO at this point.
It is also critical to understand that the new law contains traps and loopholes. For those who have not spent adequate time considering the many nuances of the law you will be surprised to learn what it really means. For example, did you know that long held and previously unpatentable trade secrets can now be patented? It seems unthinkable, but then again it is also unthinkable that the law will allow for the re-patenting of inventions, but it does that as well.
The latest round of what seems to be a never-ending trademark battle between the United States Polo Association (USPA) and PRL USA Holdings, Inc. (referred to here as Ralph Lauren) has ended with Ralph Lauren emerging victorious over the polo association. Judges Reena Raggi, Peter Hall and Christopher Droney, all with the 2nd US Circuit Court of Appeals, recently issued an unsigned opinion finding that the USPA could, in fact, be banned from using a double horseman logo on its fragrances or cosmetics on the basis that the logo was too similar to trademarks currently owned by Ralph Lauren and such use constituted unfair competition.
For today’s post, I thought I would share two positions that we have open. Both are located on the West Coats and both are in Litigation. The first is a top tier international firm that is seeking associates with 4-7 years of IP Litigation experience for its Los Angeles office. The second is a global firm, that has been recognized as one of the Best Places to Work that is seeking a junior/midlevel IP Litigation associate in San Francisco.
Job #10 ~ Mid/Senior IP Litigation Associate (Los Angeles)
On Friday March 1, 2013 Judge Lucy Koh handed down her decision regarding various motions that were filed on behalf of Apple Inc. (“Apple”) and Samsung Electronics Co. (“Samsung”) over the past few months post-trial. Specifically, Apple requested additur, supplemental damages, and prejudgment interest, while Samsung moved for a new trial on damages or remittitur. Judge Koh determined that the “Court has identified an impermissible legal theory on which the jury based its award, and cannot reasonably calculate the amount of excess while effectuating the intent of the jury.” The total amount stricken from the jury’s award was $450,514,650 –pending a new trial on damages. The jury awards stands for the remaining 14 products for a total of $598,908,892 in favor of Apple.
Post-trial, Apple requested the Court to increase its damages award for five products because the jury gave an award less than what was calculated by Samsung’s damages expert. However, the Court pointed out that “Apple provide[d] no authority for the argument that the Court should not consider the jury’s specific findings.” Moreover, the Court stated that by doing so would be to violate the longstanding rule that the Seventh Amendment prohibits a judicial increase in a damages award made by a jury. See Dimick v. Scheidt, 293 U.S. 474, 486-87 (1935). Although Apple contends that this rule does not apply in this current case because there is no dispute about the proper amount of damages, the Court quickly and swiftly disagreed. In fact, the Court points out that “[t]he amount of damages is heavily disputed here, as evidenced by extensive testimony provided by both parties concerning the proper amount of compensation.” Additionally, the jury was not bound by either side’s damages testimony and therefore free to evaluate the testimony of both sides’ experts in arriving at its award. The Court denied Apple’s motion for an increase in the jury’s damages.
The U.S. Patent and Trademark Office recently awarded over 200 new claims to Eric Gould Bear, user interface designer, testifying expert witness and co-founder of MONKEYmedia. The four most recently issued patents fall under MONKEYmedia’s “Relativity Controller” family of patents.
Two of the patents issued deal with commonly-used techniques that are utilized with regard to Blu-rays and DVDs to give a viewer a variety of versions of the same film all on the same disc. More specifically, long videos can be abbreviated by viewers who have the ability to choose to pass by any sequence or scene that they want.
Another one of the recently issued patents deals with techniques regarding the auto-summarization of documents that are used in online research tools and various word processor applications. In particular, a user’s search results and/or long documents are shortened by showing only the important portions of content sought by a user based on his or her preferences, and contracting the non-important content.
A patent practitioner prosecuting an application would not normally worry about an issued patent having a much later filing date. The CAFC’s Hubbell decision shows, however, that such a patent can create a problem under the doctrine of obviousness-type double patenting, that prevents the earlier-filed application from issuing.
Hubbell is an inventor of U.S. Application 10/650,509. Hubbell appeals from the decision of the Board of Patent Appeals and Interferences affirming the Examiner’s final rejection of his claims for obviousness-type double patenting over U.S. Patent No. 7,601,685, which also names Hubbell as an inventor. The ‘509 application was filed on August 27, 2003, but claims benefit of a provisional application filed in 1997 when Hubbell was a professor at CalTech. Thus, the ‘509 application is assigned to CalTech.
Hubbell left CalTech and joined the faculty at Eidgenossische Technische Hochschule Zurich (“ETHZ”) in 1998. The application which issued as the ‘685 patent was filed on December 17, 2002 and is jointly assigned to ETHZ and Universitat Zurich. It is undisputed that the ‘509 application and the ‘605 patent do not have identical inventive entities, nor do they have common assignees. It is also undisputed that the ‘685 patent is not available as prior art under 35 USC §§ 102 or 103. The Patent Office concluded that the ‘685 patent claims “are a species of the instantly claimed invention and thus anticipate the claimed invention,” in making its obviousness-type double patenting rejection.
Judge Richard Linn, in chambers at the CAFC Feb. 8, 2012.
This final installment of my interview with Judge Linn of the United States Court of Appeals for the Federal Circuit. In part I of the interviewwe discussed a number of general background issues, including how the Judge got into the field of patent law and became a Judge on the Federal Circuit. In part II of the interview we discussed the Inns of Court and the Richard Linn Inn Alliance, as well as civility (or lack thereof) in litigation.
In this final segment of the interview, which appears below, we move into the issues of the day: the changing patent laws and Supreme Court interest in patents. We also discuss Judge Linn’s decision to take senior status, the fact that he won’t be able to sit en banc unless he was on the original panel, and the Judge’s idea that only few cases really should be designated as precedential opinions.
Senator Ron Wyden was first to submit legislation on unlocking cell phones.
The Digital Millennium Copyright Act (DMCA) has recently become a hot topic in Congress. The renewed interest is the result of a “We the People” petition that successfully reached the required number of signatures to merit a response from the White House. The petition, titled “Make unlocking cell phones legal,” said, “We ask that the White House ask the Librarian of Congress to rescind this decision, and failing that, champion a bill that makes unlocking permanently legal.” The White House fully agreed with the petition, responding, “It’s time to legalize cell phone unlocking,” and adding, “if you have paid for your mobile device, and aren’t bound by a service agreement or other obligation, you should be able to use it on another network.
Within days of the White House’s response, lawmakers were rushing to offer legislative fixes compatible with the petition. Senator Ron Wyden (D-OR) was the first to introduce a bill, the Wireless Device Independence Act (S.467), which would create a permanent exemption for unlocking. Most recently, Senator Patrick Leahy (D-VT) has introduced legislation, cosponsored by four other senators from both parties, that would reverse the Library of Congress’s decision and restore the exemption.
But many proponents of the original petition reacted negatively to these legislative proposals. Derek Khanna, for example, one of the most public advocates of cell phone unlocking, said of the legislation that “the worst … approach would be to simply reverse the decision of the Librarian of Congress and provide a temporary ‘exception’ for three years and let the Librarian rule on this again in three years.”
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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