31 Mar 2009 11:24:00 GMT IPWatchdog.com http://www.ipwatchdog.com en All in all I would characterize the mood of the PTO officials I spoke with as up-beat and the mood of the stakeholders in attendance was generally positive, but with reservations about the mechanics of Track 3. After the event I too would be upbeat if I were among the senior ranks at the USPTO. Those aspects that were viewed as negative or needing more work or clarification seemed few, were identified over and over again and should be addressable. That being the case it seems the majority of the proposal is acceptable and the community remains hungry for these types of creative initiatives, which sadly is all we have given that Congress continues to be AWOL on even relatively meaningless reforms, let alone reforms that could actually do some real good. 21 July 2010 http://www.ipwatchdog.com/2010/07/21/patent-office-three-track/id=11716/ http://www.ipwatchdog.com/2010/07/21/patent-office-three-track/id=11716/ Earlier today the Wall Street Journal gave front page space to a story relating to the United States Patent and Trademark Office. Widely regarded as one of the “papers of record” in the United States, one might expect that the Wall Street Journal had brought its considerable clout to an important issue plaguing our time, such as an horribly under funded Patent Office that is holding innovation hostage, costing America perhaps millions of jobs. NO! Rather than educate itself and others, thereby exposing in real terms for the everyday observer the plight of the Patent Office and what it means to the United States economy, the Wall Street Journal wrote a front page article on the errant creation of a trademark class associated with medical marijuana. 19 July 2010 http://www.ipwatchdog.com/2010/07/19/wall-street-journal-medical-marijuana/id=11704/ http://www.ipwatchdog.com/2010/07/19/wall-street-journal-medical-marijuana/id=11704/ The reality is that the term patent troll seems to be more in the eye of the beholder than anything else. So a patent troll is whoever is suing you because you must be correct and some evil wrong-doer is holding you hostage. Never mind that you are actually infringing and you are the real wrong-doer (i.e., tortfeasor). So the term patent troll is much like the term communist during the McCarthy era. Once you are labeled a patent troll reality no longer matters, just as those who were labeled communists found out. Of course, some of those who were labeled communists by Senator McCarthy were, in fact, communists. But there were some who were labeled communists that were not, having only been caught up in the frenzy and ruined as a result thereof. 18 July 2010 http://www.ipwatchdog.com/2010/07/18/definition-patent-troll/id=11700/ http://www.ipwatchdog.com/2010/07/18/definition-patent-troll/id=11700/ The United States Patent and Trademark Office (USPTO) will be holding a public roundtable discussion on its proposed Enhanced Examination Timing Control Initiative, also known as Three-Track, currently under consideration by the USPTO. The purpose of the roundtable meeting is to solicit opinions from the public on the proposed initiative. The meeting will be held on Tuesday, July 20, 2010, from 1:30 p.m. to 5:30 p.m. at the USPTO headquarters in the Madison Building Auditorium, which is located at 600 Dulany Street, Alexandria, VA, 22314. 17 July 2010 http://www.ipwatchdog.com/2010/07/17/three-track-patent-proposal/id=11695/ http://www.ipwatchdog.com/2010/07/17/three-track-patent-proposal/id=11695/ In a recent decision, the Eastern District of Texas has clarified the proper role of functionality in claim construction for design patents. By statute, design patents must be directed to ornamental designs for an article of manufacture. As a result, courts have struggled with how and when functional aspects of a design should be considered when construing a patent claim. The Federal Circuit addressed this issue earlier this year in Richardson v. Stanley Works, 2010 WL 774334 (Fed. Cir. 2010), in whch it appeared to direct district courts to factor out the functional aspects of designs during claim construction. 15 July 2010 http://www.ipwatchdog.com/2010/07/15/e-d-of-tx-rejects-design-patent-point-of-ornamentality-test/id=11676/ http://www.ipwatchdog.com/2010/07/15/e-d-of-tx-rejects-design-patent-point-of-ornamentality-test/id=11676/ In this final installment of my interview with Nick Godici we learn just how close the Patent Office was to sending out 9,000 furlough notices (to all those on the patent side of the building) during the Summer of 2009 as a result of lack of funds. We also discuss the historic patent allowance rate versus the 42% rate the Patent Office got down to during the Q1 of 2009. Godici also humors me by answering the fun questions and we learn that he was the primary examiner on a somewhat famous (or infamous) patent relating to a bird trap and a cat feeder, and he goes off the board with an interesting selection for most famous fictional inventor. 15 July 2010 http://www.ipwatchdog.com/2010/07/15/nick-godici-part-3/id=11635/ http://www.ipwatchdog.com/2010/07/15/nick-godici-part-3/id=11635/ The United States Patent and Trademark Office (USPTO) announced that the period for receiving public comments regarding the agency’s 2010-2015 draft Strategic Plan has been extended until August 2, 2010. The extension has been made to allow more time for the public to provide feedback to the agency about the plan. 15 July 2010 http://www.ipwatchdog.com/2010/07/15/uspto-extends-public-comment/id=11690/ http://www.ipwatchdog.com/2010/07/15/uspto-extends-public-comment/id=11690/ Everyone seemed interested in paying exorbitant sums of money to litigate, complaining all the while. It seems obvious to me that those that complain, for the most part, do so because they need a boogeyman to rail against on Capitol Hill as the reason they need legislation that will destroy the fabric of the patent right and bring the patent system to its knees. 14 July 2010 http://www.ipwatchdog.com/2010/07/14/patent-trolls-conspiratorial-symbiosis/id=11646/ http://www.ipwatchdog.com/2010/07/14/patent-trolls-conspiratorial-symbiosis/id=11646/ The complaint seeks $3.8 billion in damages at a minimum, but no event less than a fair and full reasonable royalty, but also seeks tripled damages as a result of willful infringement, which would bring the total to $11.4 billion at a minimum. While willful infringement is quite hard to prove, if the facts actually are what is alleged it would seem as if the case is exceptional, which could lead to triple damages and attorneys fees as well. So when you add that all together and add pre-judgment and post-judgment interest, the total amount on the line could easily exceed $15 billion. If the facts alleged even remotely resemble reality this could turn out to be an epic battle to which we will all want front row seats! 13 July 2010 http://www.ipwatchdog.com/2010/07/13/ebay-sued-for-patent-infringement/id=11652/ http://www.ipwatchdog.com/2010/07/13/ebay-sued-for-patent-infringement/id=11652/ In this interview we talk about how two Presidents that are extremely different on so many fronts, Presidents Reagan and Obama, are pursuing quite similar strategies regarding the Patent Office. We also talk about the importance of good working relations between patent examiners and the patent bar, the enormous backlog of applications at the Patent Office, the Patent Office process for handling decisions and issuing guidance in situations such as the recent Supreme Court decision in Bilski v. Kappos and what it is like to be Commissioner for Patents and the Director of the Patent and Trademark Office. 13 July 2010 http://www.ipwatchdog.com/2010/07/13/nick-godici-part-2/id=11614/ http://www.ipwatchdog.com/2010/07/13/nick-godici-part-2/id=11614/ Recently the United States Patent and Trademark Office released its draft Strategic Plan for FY 2010 – 2015. This may seem odd given that FY 2010 is almost over, ending on September 30, 2010. So it is probably a better title to call it the FY 2011 – 2015 Strategic Plan, but there is no doubt as you read the document that under the guidance of Director David Kappos the USPTO has already well launched the short term Strategic Plan. Now if Congress would only be wise enough to grant funding for the Patent Office to actually accomplish what needs to be done! 12 July 2010 http://www.ipwatchdog.com/2010/07/12/funding-the-patent-office/id=11604/ http://www.ipwatchdog.com/2010/07/12/funding-the-patent-office/id=11604/ We managed to get into a wide variety of issues that ranged from his early days as a patent examiner, his patent examination philosophy and approach, the role of the USPTO, the Patent Granting Authority versus the Patent Denial Authority, examiner training, building relationships between patent examiners and the patent bar, the PTO work from home initiative, inequitable conduct, the Bilski decision and what the USPTO is now likely doing to address that, the parallels between the Reagan Administration and the Obama Administration in terms of patent and innovation policy and exactly what it is like to be the Commissioner of Patents and the Director of the Patent Office, and much more. Oh yes, we also talked about his getting a call from Secretary of Commerce Gary Locke last summer and returning to the Patent Office for a few months as a special adviser at the request of the Obama Administration. 11 July 2010 http://www.ipwatchdog.com/2010/07/11/nick-godici-part-1/id=11548/ http://www.ipwatchdog.com/2010/07/11/nick-godici-part-1/id=11548/ Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) David Kappos announced today that the USPTO’s draft Strategic Plan for fiscal years (FY) 2010-2015 is posted for public review and comment on the USPTO Web site. The draft 2010-2015 Strategic Plan sets out the USPTO’s mission-focused strategic goals: to optimize patent quality and timeliness; to optimize trademark quality and timeliness; and to provide global and domestic leadership to improve intellectual property (IP) policy, protection, and enforcement worldwide. 9 July 2010 http://www.ipwatchdog.com/2010/07/09/uspto-draft-strategic-plan/id=11588/ http://www.ipwatchdog.com/2010/07/09/uspto-draft-strategic-plan/id=11588/ On May 17, 2010, Invention Submission Corporation (ISC) d.b.a. InventHelp® and IPWatchdog, Inc. settled the litigation initiated by ISC against IPWatchdog, Gene Quinn and Renee Quinn (collectively IPWatchdog). Effectuation of the settlement has taken longer than initially contemplated, and this article (published after review, contribution and acquiescence by InventHelp® and their attorneys), has gone through multiple revisions and is the final piece of the settlement. The case is now over and all terms of the Settlement Agreement have been satisfactorily met by both parties. The parties are pleased that the lawsuit was resolved to their mutual satisfaction. Aside from the details contained in this article the terms of the settlement will remain confidential, although the lawsuit itself may be discussed. 8 July 2010 http://www.ipwatchdog.com/2010/07/08/invention-promotion-lawsuit-settled/id=11558/ http://www.ipwatchdog.com/2010/07/08/invention-promotion-lawsuit-settled/id=11558/ One reason I was quite interested in Bilski was because the Supreme Court (not surprisingly) ruled that the Federal Circuit’s “machine or transformation” test was too inflexible, much like the “teaching, suggestion and motivation” (TSM) test in KSR International v. Teleflex. So why my intense interest in the Supreme Court (aka the Judicial Mount Olympus) relegating the “machine or transformation” (aka MoT) test to “second class status” in Bilski? Besides the inanity of MoT as the sole test for patent-eligibility, I am interested because of Judge Sweet’s ill-advised reliance on MoT (now smitten by the thunderbolts from our Judicial Mount Olympus in Bilski) for invalidating Myriad’s method claims using its BRCA1 and BRCA2 gene sequence technology. 7 July 2010 http://www.ipwatchdog.com/2010/07/07/foaming-at-the-mouth-iii-and-then-came-bilski/id=11517/ http://www.ipwatchdog.com/2010/07/07/foaming-at-the-mouth-iii-and-then-came-bilski/id=11517/ Although he has only been in his job for a little under a year, Kappos is a well-known figure in Europe. He was a frequent traveller across the Atlantic during his time as head of IP at IBM and as a result has met many senior figures at the European Patent Office, as well as corporate IP big hitters. And you can say the same about Asia too. As a result, when it comes to the international aspects of his job, there has been no big learning curve. Kappos was familiar with the major issues already. It will come as no surprise to any reader of this blog to know that these are focused on closer co-operation between patent offices in order to improve quality, lower costs and reduce the huge patent backlog. 7 July 2010 http://www.ipwatchdog.com/2010/07/07/david-kappos-a-view-from-europe/id=11524/ http://www.ipwatchdog.com/2010/07/07/david-kappos-a-view-from-europe/id=11524/ Last week Robert Holleyman, the CEO of the Business Software Alliance, published on op-ed article in the Mercury News. This article started by asking what the negative impact for the automotive industry would be on the incentive to innovate if 4 out of 10 automobiles were stolen right off the dealer’s lots rather than purchased. Holleyman went on to explain that this is exactly what is happening in the software industry today, with 43 percent of software being pirated in 2009, which is up 2 percentage points from 2008. 6 July 2010 http://www.ipwatchdog.com/2010/07/06/indifference-fuels-software-piracy/id=11520/ http://www.ipwatchdog.com/2010/07/06/indifference-fuels-software-piracy/id=11520/ At the start of the new year I pledged that I would start to try and expand the scope of IPWatchdog.com to touch upon intellectual property matters outside the United States. In part this means trying to add an international flavor where appropriate, which is certainly always possible in part through discussion of the Patent Cooperation Treaty (PCT). In another facet it means profiling interesting stories relating to foreign intellectual property laws. Some time ago Petosevic, a firm that offers a full range of intellectual property services in Eastern Europe, contacted us and offered us the ability to republish some of their news articles. So from time to time we will publish excerpts of their articles with links back to their website for additional information. 6 July 2010 http://www.ipwatchdog.com/2010/07/06/ip-news-eastern-europe/id=11527/ http://www.ipwatchdog.com/2010/07/06/ip-news-eastern-europe/id=11527/ My belief is that open source can and should play a vital role in innovation, but the way it is by and large carried forward today does little to forward innovation and an awful lot to significantly disadvantage start-up companies. The horribly bad advice that pervades the open source community and the utter lack of knowledge or familiarity about patent law is staggering. I don’t begrudge anyone who doesn’t like the patent system, but can you please at least not like it for a valid reason? With the myths and disinformation spewed by those who are either clueless and loud, or those who know better and have an agenda, are drowning out rational debate and significantly impeding progress and innovation. 5 July 2010 http://www.ipwatchdog.com/2010/07/05/open-source-stalls-innovation/id=11506/ http://www.ipwatchdog.com/2010/07/05/open-source-stalls-innovation/id=11506/ It has long been anticipated that the Bilski v. Kappos decision, though based on business method claims, would have implications that reached far beyond the business method world. Indeed, Justice Kennedy acknowledged that the M-or-T test would create uncertainty for new technologies of the Information Age, including, among other types of technologies, diagnostic medical testing techniques. (Bilski, Slip Op., p. 9.) The removal of the machine-or-transformation test as the sole test is good news for the biotech industry, particularly in the field of personalized medicine. 2 July 2010 http://www.ipwatchdog.com/2010/07/02/diagnostic-testing-in-the-wake-of-bilski-v-kappos/id=11474/ http://www.ipwatchdog.com/2010/07/02/diagnostic-testing-in-the-wake-of-bilski-v-kappos/id=11474/ Frequent readers of IPWatchdog.com know that on holidays I look for appropriate patents to profile that fit within the festive spirit of the holiday. Call me a geek if you like, you wouldn’t be the first and I’m sure not the last, but what better way to say “happy holiday” than with a patent? Alright, Hallmark® I am not, but what I am is a purveyor of multiple things patent, and one of those things is a little bit of fun and hopefully some learning as well. 1 July 2010 http://www.ipwatchdog.com/2010/07/01/disney-fireworks-patent/id=11467/ http://www.ipwatchdog.com/2010/07/01/disney-fireworks-patent/id=11467/ Last week I dangled the thought that perhaps the Supreme Court would not decide Bilski this term and might hold the case over. I still think it is unlikely that the Supreme Court will hold Bilski over, just because it is an extraordinarily rare occurrence, but with only two more decision days this term (i.e., Monday June 21 and Monday June 28), it seems appropriate to at least ponder the rare occurrence of the Supreme Court holding a case over, which the Court did in Marbury v. Madison and Brown v. Board of Education. 14 June 2010 http://www.ipwatchdog.com/2010/06/14/speculating-no-bilski-decision-this-term/id=11154/ http://www.ipwatchdog.com/2010/06/14/speculating-no-bilski-decision-this-term/id=11154/ Last night the Intellectual Property Owners honored Judge Paul Michel, the recently retired Chief Judge of the United States Court of Appeals for the Federal Circuit, with the Distinguished IP Professional Award, which honors lifetime achievement. The IPO also honored a trio of Dupont inventors, George Lahm, Ph.D., Thomas Selby, Ph.D. and Thomas Stevenson, Ph.D., awarding them collectively the National Inventor of the Year Award for their work on Rynaxypyr, which is a safe and environmentally friendly insecticide and affects only insects and does not affect mammals. 11 June 2010 http://www.ipwatchdog.com/2010/06/11/ipo-awards-dinner/id=11120/ http://www.ipwatchdog.com/2010/06/11/ipo-awards-dinner/id=11120/ It is usually a surprise to most people to learn that there is not a requirement that an invention actually be an improvement in any real sense in order for it to be patented. So when patent attorneys and patent agents talk about an improvement patent we are typically talking about inventions that build upon and/or somehow relate to the prior art. So the next lesson is this: just because it can be patented doesn’t mean it really is an improvement in the real sense of the word. Said another, perhaps more harsh, way: just because it can be patented doesn’t mean it should be patented. 10 June 2010 http://www.ipwatchdog.com/2010/06/09/improvement-toilet-seat/id=11045/ http://www.ipwatchdog.com/2010/06/09/improvement-toilet-seat/id=11045/ Cumulative statistics released by the USPTO demonstrate steady growth in the number of requests for reexamination being filed generally (particularly inter partes) since the advent of third-party participation in 1999. Between January 1, 1999 and December 31, 2009 the USPTO Official Gazette noticed 5,594 requests for reexamination. Of these, 97 or 1.7% were requests for reexamination of design patents. Of these 97 reexaminations, 85 or 88% were ex parte and 12 or 12% were inter partes. 8 June 2010 http://www.ipwatchdog.com/2010/06/08/design-patent-reexam/id=10945/ http://www.ipwatchdog.com/2010/06/08/design-patent-reexam/id=10945/ Do you remember back in the day when music came from pointy abrasive means, sometimes referred to as a “needle”? It was placed on a rotatably spinning, substantially circular piece of vinyl with groves disposed thereon, sometimes referred to as a “record.” As I tried to come up with clever and entertaining ways to once again say that the Supreme Court of the United States has once again not issued a Bilski decision, what immediately came to mind was a broken record. 7 June 2010 http://www.ipwatchdog.com/2010/06/07/no-bilski-for-you-today/id=10918/ http://www.ipwatchdog.com/2010/06/07/no-bilski-for-you-today/id=10918/ If you visit the Google bulk USPTO data site you will see that the data, volumes of it, is presented in zip format. Thus, the data will not likely be at all useful to individual users, but perhaps other commercial services will be able to finally access the data and create usable products. I say this because as good as Google is for many things it seems pretty clear to me that Google gets a project only so far before they lose interest, move on to whatever is next and leave an 80% solution behind. I have seen this over and over again with Google. As good and quick as Google Patents is, for example, it lacks easy to provide and fundamentally important features and is, therefore, not that useful. 7 June 2010 http://www.ipwatchdog.com/2010/06/07/uspto-google/id=10881/ http://www.ipwatchdog.com/2010/06/07/uspto-google/id=10881/ With respect to Track I, of particular note is the fact that the Patent Office is considering limiting the number of claims in a prioritized application to four independent and thirty total claims. In addition, the USPTO is considering requiring early publication of prioritized applications so that applications would be published shortly after a request for prioritization is granted, or no later than eighteen months from the earliest filing date. While this will undoubtedly make those in the patent community nervous, I suggest holding off on reactionary judgment. Obviously, limiting the number of claims conjures up nightmare memories about the failed claims and continuations rules. 4 June 2010 http://www.ipwatchdog.com/2010/06/04/pto-announces-public-meeting/id=10897/ http://www.ipwatchdog.com/2010/06/04/pto-announces-public-meeting/id=10897/ The United States Patent and Trademark Office is seeking public comment on a major new patent examination initiative that would provide applicants greater control over the speed with which their applications are examined and promote greater efficiency in the patent examination process. This newly proposed Three-Track program aims to provide applicants with the ability to go faster or slower through the patent process, which will in turn hopefully reduce the pendency of those patent applications that are the most time sensitive. 3 June 2010 http://www.ipwatchdog.com/2010/06/03/pto-proposes-major-new-patent-application-processing-rules/id=10872/ http://www.ipwatchdog.com/2010/06/03/pto-proposes-major-new-patent-application-processing-rules/id=10872/ A packed room of at least 200 individuals, including the newly retired Chief Judge Paul Michel, former USPTO Director Q. Todd Dickinson, former USPTO Director Bruce Lehman and others listened to Kappos give an impassioned speech about how innovation can create jobs, how the Patent Office is unfortunately continuing to hold jobs hostage due to a staggering backlog of pending patent applications and how American economic security depends upon development of a comprehensive national IP strategy. I have heard Kappos talk about the job creating power of innovation and the role the USPTO can and should play, but there was something different about his speech today. 2 June 2010 http://www.ipwatchdog.com/2010/06/02/kappos-us-economic-security-depends-on-national-ip-strategy/id=10861/ http://www.ipwatchdog.com/2010/06/02/kappos-us-economic-security-depends-on-national-ip-strategy/id=10861/ On Friday, May 28, 2010, USPTO Director David Kappos gave five suggestions for practitioners on the Director's Forum (i.e., the Kappos blog). It would be wonderful if such things could occur in the prosecution of every case, but unfortunately the Federal Circuit has effectively prevented that from happening and forced upon the USPTO and the practicing patent bar a game of hide the ball, which benefits no one. With Congress not stepping up to the plate any time soon to do anything useful for the patent system there may be only one hope left; namely to get the CAFC judges to examine patent applications, sitting by designation, so they can better understand the mess they have created. 2 June 2010 http://www.ipwatchdog.com/2010/06/02/cafc-judges-should-be-require-to-examine-patent-applications/id=10839/ http://www.ipwatchdog.com/2010/06/02/cafc-judges-should-be-require-to-examine-patent-applications/id=10839/ Pperhaps the most crucial element of the American patent system was that it did not simply encourage ordinary people to participate in inventive activity. It made it economically feasible for them to do so. By creating a market in which inventors with little or no capital could license their discoveries to enterprises that could then commercialize them, the patent system enabled unprecedented numbers of ordinary people to generate income from invention and thereby make it a full-time career. Which naturally generated even more innovation. 1 June 2010 http://www.ipwatchdog.com/2010/06/01/was-thomas-edison-a-patent-troll/id=10829/ http://www.ipwatchdog.com/2010/06/01/was-thomas-edison-a-patent-troll/id=10829/ In what is turning into a broken record, the Supreme Court once again did not issue a decision in Bilski v. Kappos. Perhaps we should be thankful that the Supreme Court is taking so long and treating it as the overwhelmingly important case we know it to be. On the other hand, perhaps we should be afraid that the Supreme Court is giving it so much scrutiny. Let’s face it, the Supreme Court has not done much over the last decade to evidence anything other than glib familiarity and vague understanding of patent law. I sure hope they break with that tradition in Bilski. 1 June 2010 http://www.ipwatchdog.com/2010/06/01/another-no-bilski-day/id=10805/ http://www.ipwatchdog.com/2010/06/01/another-no-bilski-day/id=10805/ In reversing this portion of the district court ruling, the Federal Circuit panel in Enzo Biochem (Judge Linn writing the opinion along with Judge Plager and Chief Judge Michel) agreed with the patentee (Enzo Biochem) that the asserted claims of these three patents weren’t “indefinite.” Citing the 2003 Federal Circuit decision of Deering Precision Instruments, LLC v. Vector Distrib. Sys. Inc., the Federal Circuit panel in Enzo Biochem observed that “substantially,” when used in a claim, can denote either language of approximation or magnitude. In the claim phrase “not substantially interfering,” the word “substantially” was viewed as denoting language of magnitude “because it purports to describe how much interference can occur during hybridization, i.e., an insubstantial amount of interference” (emphasis in the original), citing the 2002 Federal Circuit case of Epcon Gas Sys., Inc. v. Bauer Compressors, Inc. 31 May 2010 http://www.ipwatchdog.com/2010/05/31/definiteness-needs-teeth/id=10794/ http://www.ipwatchdog.com/2010/05/31/definiteness-needs-teeth/id=10794/ As I set out down this path I did a Google search and the first patent that came up chronologically was US Patent No. 2,560,132, which according to Google was filed in 1844 and issued in 1951. Obviously, there was a typo there since the inventor, Otto H. Schmitt, was not born until 1913, but I thought maybe I was on to something. I did some research on Schmitt, who was a Professor at the University of Minnesota. During World War II he and his wife worked behind the scenes like so many other scientists, his wife working on the Manhattan Project, and Otto inventing a device to pinpoint the location of enemy submarines. As I started thinking about this it suddenly hit me. The only proper way to celebrate Memorial Day 2010 with a patent and innovation story would be to pay tribute to Robert H. Rines, a true American hero and a world class inventor. 31 May 2010 http://www.ipwatchdog.com/2010/05/31/memorial-day-remembering/id=10797/ http://www.ipwatchdog.com/2010/05/31/memorial-day-remembering/id=10797/ On Tuesday, May 25, 2010, Adam Albrett, a patent attorney (Reg. No. 50514) who lives in Fairfax, Virginia, was arrested and charged with making threats on the life of the President of the United States, Barack Obama. At that time an order of temporary detention was issued by US Magistrate Judge Thomas Rawles Jones, Jr., who ordered that Albrett be held in custody pending a detention hearing that was to be held on Thursday, May 27, 2010 at 1:30 pm. Instead of the detention hearing being held today it was deferred until Tuesday, June 1, 2010, at 2:00 pm. Albrett’s temporary detention was extended until that time. 28 May 2010 http://www.ipwatchdog.com/2010/05/28/patent-attorney-arrested-for-threatening-president-obama/id=10784/ http://www.ipwatchdog.com/2010/05/28/patent-attorney-arrested-for-threatening-president-obama/id=10784/ While it may seem like an extreme case where a patent owner would not take action against an infringer for a period of years, such decisions are made every day, and perhaps even more common is that infringement goes unnoticed for lengthy periods of time. This frequently happens where an small to medium sized business is involved, perhaps making the conscious choice not to purse infringers based on the costs associated with such enforcement, or perhaps because there are not meaningful mechanisms in place to identify infringement in the marketplace. In either situation, the failure to take legal action against an infringer can have dire consequences. Today, thanks to the increase in contingency representation for patent owners who cannot afford to pay patent litigators by the hour, there may be hope and there may not be a need to put off pursuing infringers. 27 May 2010 http://www.ipwatchdog.com/2010/05/27/the-risk-of-sleeping-on-your-patent-rights/id=10777/ http://www.ipwatchdog.com/2010/05/27/the-risk-of-sleeping-on-your-patent-rights/id=10777/ After first “threatening,” then being “silent” for over three years, the patentee in Aspex Eyewear was barred by the defense of equitable estoppel from getting any relief for patent infringement. What’s even worse, after the initial “threat” of infringement the patentee in Aspex Eyewear created this ticking estoppel time bomb by failing to mention (in follow up exchanges) the two patents for which suit was filed, while mentioning three other patents which were not involved in the suit that was filed. 26 May 2010 http://www.ipwatchdog.com/2010/05/26/estoppel-time-bomb/id=10768/ http://www.ipwatchdog.com/2010/05/26/estoppel-time-bomb/id=10768/ If you ever thought of starting a patent software company, I have some good news for you. Unlike the general software markets for, say, antivirus or mp3 software, the legal software market is just not very saturated. A lot of the existing software for patent lawyers is outdated, ridiculously expensive, and frankly, not that good. There is definitely room for better software products and services, especially in the fields like patent prosecution/litigation, portfolio management, and e-discovery. In fact, entire sections of patent practice are just begging for helpful and affordable software, but none or very little exists. 25 May 2010 http://www.ipwatchdog.com/2010/05/25/business-of-software-how-to-develop-tools-for-patent-lawyers/id=10642/ http://www.ipwatchdog.com/2010/05/25/business-of-software-how-to-develop-tools-for-patent-lawyers/id=10642/ Earlier today the United States Supreme Court denied Microsoft Corporation's petition for writ of certiorari in Lucent Technologies, Inc. v. Gateway, Inc. et al, with Microsoft being among the et al. While the Federal Circuit affirmed the validity and infringement aspects of the underlying decision of the United States Federal District Court for the District of Southern California, the Court vacated and remanded the damages portion to the district court for further proceedings because the damages calculation lacked sufficient evidentiary support. Despite the Federal Circuit vacating and remanding of the damages award of $357.69 million Microsoft appealed to the Supreme Court, an appeal that will never happen with the denial of the petition for writ of certiorari. 24 May 2010 http://www.ipwatchdog.com/2010/05/24/scotus-refuses-microsoft-appeal/id=10736/ http://www.ipwatchdog.com/2010/05/24/scotus-refuses-microsoft-appeal/id=10736/ After 6 months and 15 days we still wait for a decision in Bilski v. Kappos, perhaps the most anticipated Supreme Court patent decision of all time. So, once again, it seems as if the patent story of the day will be the one that never materialized. The difficulty the Supreme Court is facing is in all likelihood this: how do they kill the Bilski patent application as being unpatentable subject matter without also killing the US economy. A decision that is too broad not only could put an end to the pure business methods akin to the Bilski "invention," but could also put an end to the patentability of software, business methods and medical innovations. Thus, it is hardly an overstatement to observe that the Bilski case, if decided improperly, could destroy an already fragile US economy and set back medical research decades. 24 May 2010 http://www.ipwatchdog.com/2010/05/24/the-wait-continues-another-day-without-a-bilski-decision/id=10719/ http://www.ipwatchdog.com/2010/05/24/the-wait-continues-another-day-without-a-bilski-decision/id=10719/ Our busy Summer Tour 2010 kicked off in New York City on May 12, 2010, and this week we will be on the other side of the country in San Jose, California, for a class at Santa Clara University from May 24-28, 2010. The next stop as John White and I criss-cross the country will be Orange County, California, from June 9-13, 2010. After that we don’t have another live course until mid-July in Boston, and then we wrap up our summer travels in Chicago at the beginning of August. 23 May 2010 http://www.ipwatchdog.com/2010/05/23/pli-patent-bar-review-summer-tour-2010/id=10703/ http://www.ipwatchdog.com/2010/05/23/pli-patent-bar-review-summer-tour-2010/id=10703/ Coming on the heels of the BP disaster in the Gulf of Mexico the expansion of the green tech initiative at the PTO seems to be in line with the overall direction of the Obama Administration, which today shifted away from a true "all of the above" energy solution and is tending away from domestic oil exploration and drilling in favor of green technologies, including increasing the fuel efficiency of automobiles even further. The USPTO is front and center in a coordinate effort by the federal government to pursue green technologies as part of a unified energy plan. The latest USPTO green initiative will lead to faster patents and a coherent national policy built on the back of American inventors and entrepreneurs. 21 May 2010 http://www.ipwatchdog.com/2010/05/21/uspto-expands-green-tech/id=10680/ http://www.ipwatchdog.com/2010/05/21/uspto-expands-green-tech/id=10680/ For most of us patent prosecutors, Judge Newman is our hero. She is one of us. On some occasions the patent planets even align and Judge Newman gets to write the majority opinion in a Federal Circuit case. And fortunately for us patent prosecutors, In re Vaidyanathan is one of those cases where Newman waxed very eloquent in saying: “Obviousness is determined as a matter of foresight, not hindsight.” More importantly for us prosecutors, she provided us with useful case law precedent to challenge rejections which are long on conjecture and speculation, but extremely short on facts, evidence, logic, or reasoning. In short, Judge Newman flattened a factually unsupported and badly reasoned obviousness rejection under 35 U.S.C. § 103 in Vaidyanathan. 21 May 2010 http://www.ipwatchdog.com/2010/05/21/newman-obviousness-foresight/id=10641/ http://www.ipwatchdog.com/2010/05/21/newman-obviousness-foresight/id=10641/ A team of humans creates genetically altered and a self-replicating synthetic cell using a computer. I suspect that computer was running some pretty powerful and sophisticated software. So the anti-patent crowd should be sufficiently whipped into a frenzy over this story top to bottom. It hits all the hot button issues, life, genetics, software, ethics and it rolls them all into one. But while we might relish the anguish of those in the anti-patent community, this type of scientific advance should not be taken lightly because it has the potential to fire up those with an anti-patent agenda and could also fire up religious groups as well. The coming together of such strange bedfellows would result in an alliance with enormous political power. So innovators need to pay attention and be vigilant. 20 May 2010 http://www.ipwatchdog.com/2010/05/20/jcvi-creates-worlds-first-genetically-engineered-self-replicating-synthetic-bacterial/id=10628/ http://www.ipwatchdog.com/2010/05/20/jcvi-creates-worlds-first-genetically-engineered-self-replicating-synthetic-bacterial/id=10628/ The United States Patent and Trademark Office today announced two news items relative to its efforts to expand international work sharing arrangements. First, On May 19, 2010, USPTO Director David Kappos and China’s State Intellectual Property Office (SIPO) Commissioner Tian Lipu signed a Memorandum of Understanding (MOU) on comprehensive bilateral cooperation on patents. The signing took place during a signing ceremony held at the USPTO campus in Alexandria, Virginia. Second, in a separate and seemingly unrelated item, the USPTO also announced today that it would eliminate the fee for the petition to participate in Patent Prosecution Highway (PPH) programs. The elimination of the PPH petition fee is expected to encourage greater PPH participation by patent applicants. The good news is that yet more is being done to address the backlog and pendency. But I am still hoping for a plan aimed straight at independent inventors and start-up businesses here in the U.S. 20 May 2010 http://www.ipwatchdog.com/2010/05/20/uspto-pph-china/id=10623// http://www.ipwatchdog.com/2010/05/20/uspto-pph-china/id=10623/ Unless and until Congress steps up to the plate and does something, which seems extraordinarily unlikely, the Patent Office will be left to attempt to piecemeal together solutions. So while no one solution can or will solve all of the problems plaguing the patent system, if cascading solutions are employed at least some applicants can be helped and at least some applications can be accelerated. Of course, the name of the game today is job creation, so I propose a creative way to accelerate patent applications out of order upon proper showing that jobs will be created, and focus my suggestions on those companies that are most likely to create jobs; namely those 5 years or younger and with 99 or fewer employees. 19 May 2010 http://www.ipwatchdog.com/2010/05/19/proposal-unlocking-job-growth-with-patent-acceleration/id=10616/ http://www.ipwatchdog.com/2010/05/19/proposal-unlocking-job-growth-with-patent-acceleration/id=10616/ The United States Patent and Trademark Office today announced the expansion to all applicants a “Project Exchange” program. Under the expanded Project Exchange, which will take effect with the publication of the Federal Register notice in the coming weeks, an applicant with more than one application currently pending at the USPTO can receive expedited review of one application in exchange for withdrawing an unexamined application. This unique initiative seeks to reduce the backlog of patent applications by getting rid of those that are no longer important to applicants or are of marginal value. 17 May 2010 http://www.ipwatchdog.com/2010/05/17/uspto-expands-application-exchange-to-reduce-backlog/id=10566/ http://www.ipwatchdog.com/2010/05/17/uspto-expands-application-exchange-to-reduce-backlog/id=10566/ The Supreme Court held oral arguments in the Bilski case on November 9, 2009, and that means we have now been waiting 6 months and 8 days for a decision, and the wait continues. If you look back at the lag time between oral argument and decision over the last 17 Supreme Court patent decisions the average is 2.82 months. The longest lag between argument and decision in the list below was for KSR v. Teleflex, which was easily the most fundamentally important patent decision issued by the Supreme Court over at least the last generation. The lag from argument to decision for KSR was 5.07 months, and we are already at 6.29 months lag for Bilski. Could Bilski be of greater importance to the future of patent law than KSR? 17 May 2010 http://www.ipwatchdog.com/2010/05/17/another-day-without-bilski-decision-what-does-it-mean/id=10554/ http://www.ipwatchdog.com/2010/05/17/another-day-without-bilski-decision-what-does-it-mean/id=10554/ The United States Court of Appeals for the Federal Circuit yesterday announced that they would take up the matter of Tivo, Inc. v. EchoStar Corp. en banc. The earlier panel decision, which was issued on March 4, 2010, is now vacated and the appeal is reinstated. While en banc rehearings are rare, it seems that the Federal Circuit is showing increased willingness to take high profile cases en banc. Recently the Federal Circuit agreed to hear Hyatt v. Doll en banc, which relates to whether new evidence can be submitted in an appeal of a decision of the Board of Patent Appeals and Interferences to the United States Federal District Court for the District of Columbia. Just weeks ago the Federal Circuit also agreed to hear important matters of inequitable conduct en banc. Perhaps this may show an increased willingness to settle certain fundamental areas of law, which would be a welcome occurrence after what appears to be in-fighting among CAFC Judges on a variety of important issues. 15 May 2010 http://www.ipwatchdog.com/2010/05/15/cafc-grants-en-banc-rehearing-of-tivo-dish-patent-dispute/id=10545/ http://www.ipwatchdog.com/2010/05/15/cafc-grants-en-banc-rehearing-of-tivo-dish-patent-dispute/id=10545/ Earlier this week i4i Limited Partnership announced that the United States Patent and Trademark Office confirmed the patentability of all claims of the U.S. Patent 5,787,449. The ‘449 patent was being reexamined by the USPTO at the request of Microsoft after the Redmond giant lost close to $300 million as a result of infringement of the i4i patent. Microsoft was also ordered to stop selling Word or remove certain XML functionality. MS had put a lot of hope in reexamination, and now their options are running out. They are apparently contemplating an appeal to the US Supreme Court. 14 May 2010 http://www.ipwatchdog.com/2010/05/14/bad-news-for-microsoft-i4i-patent-emerges-reexamination/id=10537/ http://www.ipwatchdog.com/2010/05/14/bad-news-for-microsoft-i4i-patent-emerges-reexamination/id=10537/ On May 7, 2010, Nokia Corporation escalated its patent war with Apple, Inc., by filing yet another patent infringement action against Apple in the United States Federal District Court for the Western District of Wisconsin. The complaint filed by Nokia alleges that Apple is violating its patents through the importation and sale of certain wireless communication devices and services, such as the Apple iPhone, Apple iPhone 3G, Apple iPhone 3GS, and Apple iPad 3G. But why Wisconsin? Mark A. Lemley, William H. Neukom Professor, Stanford Law School and partner in the San Francisco law firm Durie Tangri LLP, may just have the answer. 12 May 2010 http://www.ipwatchdog.com/2010/05/12/nokia-sue-apple-in-new-rocket-docket-the-w-d-of-wisconsin/id=10443/ http://www.ipwatchdog.com/2010/05/12/nokia-sue-apple-in-new-rocket-docket-the-w-d-of-wisconsin/id=10443/ On May 26, 2010, the Department of Justice, the Federal Trade Commission (FTC), and the Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that they will hold a joint public workshop on the intersection of patent policy and competition policy and its implications for promoting innovation. Assistant Attorney General for the department’s Antitrust Division Christine Varney, Under Secretary of Commerce for Intellectual Property and Director of the USPTO David J. Kappos, and U.S. Chief Technology Officer Aneesh Chopra will give opening remarks at the morning session of the workshop. FTC Commissioner Edith Ramirez will open the afternoon session. 11 May 2010 http://www.ipwatchdog.com/2010/05/11/doj-ftc-pto-to-hold-workshop-on-promoting-innovation/id=10502/ http://www.ipwatchdog.com/2010/05/11/doj-ftc-pto-to-hold-workshop-on-promoting-innovation/id=10502/ Good things are happening, but just like with start-up companies, nothing is possible without adequate funding. What would be possible if the USPTO were to have its budget increased by 50% for the next few years? Congress just authorized $18 billion in job creation funds, and we all know that won’t work, or at least it will be ineffective to solve the riddle of the economic crisis, which isn’t even a riddle although it has perplexed many of our leaders for the most part. Why not try something cheap, at least by Washington DC standards, and tell the Patent Office they can keep everything they collect plus an extra $1 billion? 11 May 2010 http://www.ipwatchdog.com/2010/05/11/patents-create-jobs/id=10485/ http://www.ipwatchdog.com/2010/05/11/patents-create-jobs/id=10485/ IFW Insight is a web-based application for searching, sharing and collaborating on US Patent Image File Wrapper documents, which are also commonly referred to as “File History” documents. The IFW Insight database currently includes over 1,000 IFW documents. IFWs are created by the USPTO as image-based documents, and are thus not searchable. Notwithstanding, by applying proprietary optical character recognition algorithms The Patent Box is able to expose text data embedded within these image-based documents, thereby making them fully searchable. 10 May 2010 http://www.ipwatchdog.com/2010/05/10/the-patent-box-searchable-image-file-wrapper-documents/id=10365/ http://www.ipwatchdog.com/2010/05/10/the-patent-box-searchable-image-file-wrapper-documents/id=10365/ Katehi also has some interesting suggestions regarding what the Patent Office could do to help Universities, both in speeding up the patent process and in keeping costs lower. I learned a lot from speaking with Katehi, which supplemented my knowledge based on my experiences at Syracuse University. What I am continually piecing together suggests that there is no great surprise why most Universities do not do a better job with respect to technology transfer. There are things that are clearly considered best practices in the private sector that seem to elude Universities for the most part. The University of California system seems to be out in front and trying to bring the best practices of the private sector into Universities. It is no wonder they do a better job than most with technology transfer. 9 May 2010 http://www.ipwatchdog.com/2010/05/09/in-search-of-technology-transfer-best-practices-a-conversation-with-uc-davis-chancellor-linda-katehi/id=10425/ http://www.ipwatchdog.com/2010/05/09/in-search-of-technology-transfer-best-practices-a-conversation-with-uc-davis-chancellor-linda-katehi/id=10425/ My trip was uneventful on the way out, and on the way back for that matter, which is just the way to characterize successful business travel. If there is ever a story to tell about the trip it never seems to be a good thing, like the time I went to… well… never mind that. I made it into position in a relatively nice hotel not far from McCormick Place, which is where the Convention was held. I got a good night of sleep and awoke early to get the Convention bright and early, check in and get ready for my interview with Francis Gurry, the Director General of the World Intellectual Property Organization (WIPO). Things were proceeding according to plan, which is always nice. 7 May 2010 http://www.ipwatchdog.com/2010/05/07/diary-reporting-live-from-the-2010-bio-international-convention/id=10431/ http://www.ipwatchdog.com/2010/05/07/diary-reporting-live-from-the-2010-bio-international-convention/id=10431/ On Wednesday, May 5, 2010, David Kappos testified in front of the United States House of Representatives Committee on the Judiciary. See Hearing Page and Kappos Prepared Remarks. Many issues were covered during the hearing, but there were a couple matters that jump out as quite important. Most significantly, it seems that once again the Senate patent reform bill may be running into some difficulty in the House of Representatives. Some in the House of Representatives seem interested in slowing down regarding the substantive changes embodied in the Senate bill, but seem willing to consider legislation less grandiose and focused solely on giving the Patent Office fee setting authority and perhaps the ability to retain its fees. This, however, lead to a heated exchange that has been misreported in some outlets, so lets set the record straight. 6 May 2010 http://www.ipwatchdog.com/2010/05/06/kappos-take-heat-at-house-hearing-patent-reform-dead/id=10405/ http://www.ipwatchdog.com/2010/05/06/kappos-take-heat-at-house-hearing-patent-reform-dead/id=10405/ Yesterday I had the honor of spending 30 minutes interviewing Francis Gurry, the Director General of the World Intellectual Property Organization (WIPO). The Director General spoke substantively about issues facing the Patent Offices of the world, as well as some possible solutions. Gurry also discusses harmonization attempts, work-sharing agreements and the crushing worldwide backlog of patent applications that could lead to irrelevance of the system. As you read the interview you will also see that he thinks it is possible that the rest of the world will adopt a US-like grace period. We even talked about computer implemented inventions. 4 May 2010 http://www.ipwatchdog.com/2010/05/04/interview-francis-gurry-wipo/id=10393/ http://www.ipwatchdog.com/2010/05/04/interview-francis-gurry-wipo/id=10393/ What follows are pieces of remarks made by Director Kappos at the session prior to taking questions and answers. While it is probably unfair to call these remarks prepared remarks, it was clear that he referred to his notes as he provided detailed information and statistics. He also seemed to be reading what he said when he spoke about the ACLU case against Myriad Genetics, but who can blame him given the USPTO was a nominal party to the case and it will be appealed to the Federal Circuit. Discretion is the better part of valor, and while I was somewhat surprised he addressed the case so directly, I was glad he did. After all, how could he present at a BIO Convention and not discuss the 800 pound gorilla in the room? 4 May 2010 http://www.ipwatchdog.com/2010/05/04/kappos-talks-patent-reform-and-gene-patents-at-bio-convention/id=10382/ http://www.ipwatchdog.com/2010/05/04/kappos-talks-patent-reform-and-gene-patents-at-bio-convention/id=10382/ On Wednesday, April 21, 2010, I had the pleasure of conducting an exclusive, on the record interview with Jim Greenwood, former Congressman and current President and CEO of BIO. Over the last year, as I have increasingly written about biotechnology patent and innovation policy, I have admired Greenwood’s work at BIO and have even opined that I wished all of our industry organizations were run as such a well oiled machine. If all innovation and patent industry groups were run as efficiently and capably as BIO, we would likely have better, more coherent patent laws. 3 May 2010 http://www.ipwatchdog.com/2010/05/03/exclusive-interview-jim-greenwood-president-ceo-of-bio/id=10375/ http://www.ipwatchdog.com/2010/05/03/exclusive-interview-jim-greenwood-president-ceo-of-bio/id=10375/ Earlier today, in In re Ciprofloxacin Hydrochloride Antitrust Litigation, the United States Court of Appeals for the Second Circuit issued a ruling addressing whether so-called reverse payments, payments made under a negotiated settlement by a pharmaceutical patent owner to a would-be generic entrant in exchange for not entering the market, are a violation of U.S. Antitrust Law. The appeal came from a judgment of the United States District Court for the Eastern District of New York (Trager, J.) granting summary judgment for defendants, manufacturers of the antibiotic ciprofloxacin hydrochloride (“Cipro”) or generic bioequivalents of Cipro. In a per curiam decision the Second Circuit panel (Judges Newman, Pooler and Parker) affirmed, determining in accordance with Second Circuit precedent (see In re Tamoxifen Citrate Antitrust Litig.) that reverse payments stemming from a patent settlement do not violate U.S. Antitrust Laws. 29 April 2010 http://www.ipwatchdog.com/2010/04/29/reverse-payments-not-antitrust-violation/id=10339/ http://www.ipwatchdog.com/2010/04/29/reverse-payments-not-antitrust-violation/id=10339/ In a decision handed down earlier today in Avid Identification Systems v. The Crystal Import Corporation, a bad acting President of a closely-held company managed to create potentially bad inequitable conduct law for the rest of us. Intent to deceive was admitted, if you can believe that, but as it turns out the prior art withheld, a prior sale, was not invalidating and would not have lead to an appropriate rejection by the Patent Office. Nevertheless, the prior sale of an earlier version of the invention in question was the closest prior art and the Federal Circuit, per Judge Prost, explained that materiality does not require that the the withheld prior art lead to a good rejection. So Judge Prost applied the Patent Office law relative to materiality as it existed prior to the 1992 revision of 37 CFR 1.56 27 April 2010 http://www.ipwatchdog.com/2010/04/27/cafc-bad-actor-makes-bad-inequitable-conduct-law/id=10326/ http://www.ipwatchdog.com/2010/04/27/cafc-bad-actor-makes-bad-inequitable-conduct-law/id=10326/ There are few things in this world that irritate me more than hypocrisy. I know to some extent that it is probably true to say that everyone exhibits signs of hypocrisy on occasion, but it is a special level of hypocrisy when you come out swinging at a patent system, have your study thrown about the Internet and popular press as the battle cry to cut down the patent system and then it comes to light that since 1976 you have 716 issued US patents, 266 of which in some way, shape or form relate to genetics and 156 of which relate in some way, shape or form relate to both genetics AND cancer. Duke University… please approach the nearest mirror and look into said mirror. What is staring back at you is a University with an agenda. 27 April 2010 http://www.ipwatchdog.com/2010/04/27/patent-reality-check-the-hypocrisy-of-duke-university-on-patents/id=10184/ http://www.ipwatchdog.com/2010/04/27/patent-reality-check-the-hypocrisy-of-duke-university-on-patents/id=10184/ The United States Court of Appeals for the Federal Circuit earlier today decided to take up important issues relating to inequitable conduct en banc, vacating the earlier panel decision in Therasence, Inc. v. Becton Dickinson and Co., which issued January 25, 2010. Hopefully the entire Federal Circuit will be able to put to rest the nonsense that has become inequitable conduct, and if the questions presented are any indication we might be in store for a major re-write and settling of the law of inequitable conduct. 26 April 2010 http://www.ipwatchdog.com/2010/04/26/federal-circuit-to-consider-inequitable-conduct-en-banc/id=10289/ http://www.ipwatchdog.com/2010/04/26/federal-circuit-to-consider-inequitable-conduct-en-banc/id=10289/ Senate Judiciary Committee Chairman Patrick Leahy (D-VT) recently came to agreement with Committee Ranking Republican Jeff Sessions (R-AL) on changes to the Patent Reform Act of 2009 (S. 515), winning Senator Sessions’ support for passage and making it extremely likely that patent reform will happen this year, and likely very soon. An individual involved in the ongoing patent reform debate on Capitol Hill tells me that the Leahy-Sessions language would substitute for the Committee-passed language, and then be considered by the Senate as a whole. This is an important procedural step toward passing patent reform, and could mean that patent reform will be passed by the full Senate any day now. Leahy’s procedural move is called a “hot line”, in which Senate Majority Leader Harry Reid (D-NV) will ask all Senate offices for unanimous consent to proceed to the bill, substitute the new language, and consider it passed. 26 April 2010 http://www.ipwatchdog.com/2010/04/26/leahy-procedural-move-makes-patent-reform-passage-near/id=10281/ http://www.ipwatchdog.com/2010/04/26/leahy-procedural-move-makes-patent-reform-passage-near/id=10281/ How is it possible that a calendar that tells me that January 2 is a bank holiday in the UK, that February 6 is Waitangi Day in New Zealand, that March 13 is Eight Hours Day in Australia, and that July 12 is Battle of the Boyne Day in Northern Ireland, could possibly forget to mention that April 26 is World Intellectual Property Day! It is sort of universal, almost like Christmas and New Years Eve, although with substantially less hoopla. But not too much less hoopla this year given that today marks the 10th Anniversary, or birthday if you prefer, of World Intellectual Property Day. So, despite my faulty desk calendar, I thankfully remembered that April 26 is World Intellectual Property Day! 25 April 2010 http://www.ipwatchdog.com/2010/04/25/wipo-turns-40-happy-world-intellectual-property-day/id=10276/ http://www.ipwatchdog.com/2010/04/25/wipo-turns-40-happy-world-intellectual-property-day/id=10276/ PLI is pleased to announce a new live course added to the schedule in conjunction with the Santa Clara University School of Law’s High Tech Law Institute. The Santa Clara course is scheduled for Monday, May 24, 2010 to Friday, May 28, 2010. The PLI Patent Bar Review course is not typically Monday through Friday, and there are always some that say they would prefer a Monday through Friday live course, so if that is your preference here is your chance. 23 April 2010 http://www.ipwatchdog.com/2010/04/23/pli-patent-bar-review-new-live-course-at-santa-clara-may-24-28/id=10260/ http://www.ipwatchdog.com/2010/04/23/pli-patent-bar-review-new-live-course-at-santa-clara-may-24-28/id=10260/ Hundreds of intellectual property (IP) business leaders will attend the Licensing Executives Society (USA and Canada) Spring Meeting May 19-21 in Boston. Themed, IP for Entrepreneurs and Universities, the meeting is uniquely designed for entrepreneurs, start-ups, investors, universities, labs and others who wish to learn about successful commercialization of early stage technologies. 23 April 2010 http://www.ipwatchdog.com/2010/04/23/ip-leaders-gather-in-boston-may-19-21-for-les-spring-meeting/id=10215/ http://www.ipwatchdog.com/2010/04/23/ip-leaders-gather-in-boston-may-19-21-for-les-spring-meeting/id=10215/ Treat your invention from day one as if it will be wildly successful, at least when you are dealing with your patent attorney or patent agent. Give consideration to what the next several phases of development will be if phase 1 turns out to be successful enough to warrant phase 2 and beyond. By doing this you will start to fill out those short-term, intermediate and long-term goals, which if they can be defined enough on paper can and should be integrated into your patent application. Always think about where you want to go and how you want to get there, as well as thinking about what the competition may want to do to elbow their way into your turf if you are successful. The business reality is if you are successful there will be others who want to get in on the action, that is simple economics 101. So treat your patent application as a master plan and an integral part of your business development. 21 April 2010 http://www.ipwatchdog.com/2010/04/21/patent-strategy-laying-the-foundation-for-business-success/id=10192/ http://www.ipwatchdog.com/2010/04/21/patent-strategy-laying-the-foundation-for-business-success/id=10192/ Duke University released a study that, not surprisingly, says patents block competition. WOW! Thank you so much for clearing that up Duke! What would we have ever done without the learned elite at Duke University telling us that patents block competition. Seriously… what was your first clue? For goodness sakes I hope you didn’t take much time or energy coming to that conclusion, given that is exactly what patents are supposed to do. You see, they provide exclusive rights, which means the owner of the right has the ability to exclude. So let’s all breath a sigh of relief that the money spent on an academic study actually reached factual findings that were true and accurate. If only the conclusions drawn from the study were as commonsensical as the discovery of patents conveying exclusive rights. 19 April 2010 http://www.ipwatchdog.com/2010/04/19/newsflash-duke-researchers-say-patents-block-competition/id=10172/ http://www.ipwatchdog.com/2010/04/19/newsflash-duke-researchers-say-patents-block-competition/id=10172/ Charles Darrow, an unemployed salesman, was struggling to support his family during the Great Depression. It was during this time that he claimed to have fondly remembered summers in Atlantic City, New Jersey, and dreamed about being a real estate mogul. These diversions purportedly lead to him formulating what has become the most popular board game of all time – Monopoly®. Friends and family gathered to play the game, enjoying earning and spending large amounts of play money. Darrow felt certain he had a hit on his hands so he contacted Parker Brothers, who initially turned him down, but only after explaining that his game violated some 52 fundamental rules of a board successful game. Thankfully for all those who have played and enjoyed the game over the years, a reported 500 million people, Darrow was not deterred. 18 April 2010 http://www.ipwatchdog.com/2010/04/18/the-first-millionaire-game-inventor-75-years-of-monopoly%c2%ae/id=10161/ http://www.ipwatchdog.com/2010/04/18/the-first-millionaire-game-inventor-75-years-of-monopoly%c2%ae/id=10161/ A group of Nevada patent owners and experts announced the formation Thursday of a coalition to oppose legislation aimed at changing U.S. patent laws in a fashion that will have a strongly negative impact on patents, innovation, and job creation generally and particularly in Nevada. Called “Nevadans for Fair Patent Reform,” the coalition combines the leadership of some of the state’s top entrepreneurs and innovators with the technical expertise of attorneys from top intellectual property businesses and law firms. 16 April 2010 http://www.ipwatchdog.com/2010/04/16/nevada-patent-owners-unite-to-oppose-patent-reform/id=10153/ http://www.ipwatchdog.com/2010/04/16/nevada-patent-owners-unite-to-oppose-patent-reform/id=10153/ I arrived in Toledo late in the evening of Sunday, April 11, 2010, to not only get in position for my talk (which came with CLE credit), but so I could spend some time at the College of Law visiting with friends and speaking with students interested in intellectual property law, particularly patent law, which I did on Monday, April 12, 2010. As with any presentation I give to would be patent attorneys (i.e., current law students), I came bearing gifts from PLI. I have taught in the Practising Law Institute Patent Bar Review Course for nearly a decade, and when I go to law schools to talk I am allowed to hand out special discount coupons to the students. 16 April 2010 http://www.ipwatchdog.com/2010/04/16/diary-talking-patents-blogging-in-toledo/id=10139/ http://www.ipwatchdog.com/2010/04/16/diary-talking-patents-blogging-in-toledo/id=10139/ As you may know, I’m already worked up over the inane 152-page ruling by Judge Sweet in Association for Molecular Pathology v. USPTO (aka “the gene patent case”). See Foaming at the Mouth: The Inane Ruling in the Gene Patents Case . In AMP, Judge Sweet declared 15 claims in Myriad’s patents relating to the BRCA1 and BRCA2 gene sequences invalid under 35 U.S.C. § 101 as not being patent-eligible subject matter. This ruling was soon followed by a biased and factually distorted 60 Minutes segment which has generated a popular media “tsunami” that has unfairly vilified Myriad (and the patenting of gene technology) as the new “Evil Empire.” Never mind that Judge Sweet’s ruling will likely be trounced on appeal by the Federal Circuit as it is factually and legally flawed. 15 April 2010 http://www.ipwatchdog.com/2010/04/15/foaming-at-the-mouth-ii-my-alternative-to-the-new-but-inane-becerra-bill/id=10104/ http://www.ipwatchdog.com/2010/04/15/foaming-at-the-mouth-ii-my-alternative-to-the-new-but-inane-becerra-bill/id=10104/ The pen and paper myth goes like this: software should not be patentable because anything that can be done with pen and paper is not an invention and exclusive rights should not be given to any one person or entity. Presumably the thought process here is that if you patent software you would prevent someone from engaging in the method using pen and paper. Of course, that is not true, but why would a little thing like reality get in the way of making an otherwise absurd and provably incorrect statement? Such provably wrong statements are rampant in the patent world today, particularly in light of what appears to be an all out media assault on technology and innovation that would make the persecutors of Galileo proud. 14 April 2010 http://www.ipwatchdog.com/2010/04/14/debunking-the-software-patent-pen-and-paper-myth/id=10132/ http://www.ipwatchdog.com/2010/04/14/debunking-the-software-patent-pen-and-paper-myth/id=10132/ Happy National Be Kind To Lawyers Day! What, you’ve not heard of it before? Is it too much to ask to be nice to lawyers for just one day??? That was the question Steve Hughes, Creator of NATIONAL BE KIND TO LAWYERS DAY and the author of bekindtolawyers.com asked himself one day. Steve, a non-lawyer from St. Louis and founder of Hit Your Stride, LLC works with attorneys on a regular basis. When Steve merely mentions to others that he works with lawyers, he more often than not gets sneers and snide remarks in return, not to mention bad lawyer jokes. But do “you want the truth? You can’t handle the truth” because Steve actually enjoys his job, working with the attorneys who hire him. 13 April 2010 http://www.ipwatchdog.com/2010/04/13/celebration-april-13th-is-national-be-kind-to-lawyers-day/id=10123/ http://www.ipwatchdog.com/2010/04/13/celebration-april-13th-is-national-be-kind-to-lawyers-day/id=10123/ On April 2, 2010, I had the privilege of conducting an on the record Interview with Judge Randall Rader, the soon to be Chief Judge of the United States Court of Appeals for the Federal Circuit. When Judge Rader arrived we chatted briefly, mostly about the mechanics of the interview. I think the interview provides a good look into how Judge Rader approaches the law, his views on the role of an Appellate Court and how he approaches writing a dissent. Judge Rader also spoke to me about his experiences sitting by designation at the District Court, what patent reform may mean, some thoughts about international work sharing to streamline patent prosecution and more. At the end of the interview he even indulged me with some fun questions in my feeble attempt to emulate James Lipton (of Inside the Actors Studio fame). 12 April 2010 http://www.ipwatchdog.com/2010/04/12/an-on-the-record-interview-with-cafc-judge-randall-rader/id=10115/ http://www.ipwatchdog.com/2010/04/12/an-on-the-record-interview-with-cafc-judge-randall-rader/id=10115/ As a former Labor Secretary Reich knows a thing or two about the economy and employment in particular. The reality he paints is altogether true, unfortunate and extremely unnecessary. He concludes that “those who have lost their jobs to foreign outsourcing or labor-replacing technologies are unlikely ever to get them back. And they have little hope of finding new jobs that pay as well.” This may be true, but I know that it doesn’t have to be that way. The outsourcing of jobs is largely in violation of US export laws and that seems to me to demonstrate the reckless disregard for the American worker rampant in Washington, DC. The US government is not doing anything to enforce US export laws on the books and stop outsourcing that is in violation of US law. Sadly, this is not a Democrat problem or an Obama Administration problem, rather it is a government problem. The same US export laws were ignored under President Bush and when Republicans controlled Congress. 12 April 2010 http://www.ipwatchdog.com/2010/04/12/reichs-reality-doesnt-have-to-be-true-with-help-from-commerce/id=10103/ http://www.ipwatchdog.com/2010/04/12/reichs-reality-doesnt-have-to-be-true-with-help-from-commerce/id=10103/ Earlier today, Foreman sent the letter reproduced below to Senator Patrick Leahy (D-VT), who is Chair of the Senate Judiciary Committee. It is the Senate Judiciary Committee that has pending before it S. 515 relating to patent reform. As his letter explains, Foreman supports patent reform because “leaving the current system alone is not an option, nor does it benefit anyone.” Foreman believes the pending patent reform is a “significant improvement” because, among other things, it will lower fees for micro-entities and because it will “ultimately result in a stronger patent making it easier for independent inventors and small businesses to attract start-up capital.” 8 April 2010 http://www.ipwatchdog.com/2010/04/08/louis-foreman-supports-patent-reform/id=10050/ http://www.ipwatchdog.com/2010/04/08/louis-foreman-supports-patent-reform/id=10050/ Months ago I predicted that the Supreme Court would issue the decision on the day that is least convenient for me. That is what always seems to be the case with big news items. They seem to happen when I am away from my computer and attending to other matters, traveling or teaching. Based on the belief that the decision will issue on either April 19, 20, 21, 26, 27 or 28, my prediction is April 21, 2010. That would be the most awful day for me because of my calendar of events on April 21 and 22. So if you are going to start up an office pool on when Bilski will issue I would beg, borrow and plead for April 21. 7 April 2010 http://www.ipwatchdog.com/2010/04/07/when-will-the-supreme-court-decide-bilski/id=10024/ http://www.ipwatchdog.com/2010/04/07/when-will-the-supreme-court-decide-bilski/id=10024/ What is going on in the patent industry? Litigation is where the big firms and larger IP firms make their money, that much is certain. Those firms with litigation practices that also engage in patent prosecution do so typically for the purpose of keeping clients in the firm for all their patent needs. With large fees available for litigators and extreme downward pressure on patent prosecution, which is compounded by outsourcing to India, it is no wonder many boutiques can’t keep up. Litigation attorneys move on to greener pastures, both literally and figuratively, leaving patent prosecution specialists holding the bag, and scrambling to pay overhead for an office at 100 Extremely Rich Sounding Street in Crazyexpensiveville. 6 April 2010 http://www.ipwatchdog.com/2010/04/06/the-strange-case-of-the-vanishing-patent-boutiques/id=9877/ http://www.ipwatchdog.com/2010/04/06/the-strange-case-of-the-vanishing-patent-boutiques/id=9877/ Kappos has held such meetings in California, and in Boston, as well as other locations. This marked the first time the event was held in Alexandria. There were probably about 40 people in the room, and the event was broadcast live over the Internet. Kappos took a number of questions and seemed very engaged. It is a breath of fresh air for the USPTO to be listening to the inventor community in a substantive way like this. But it goes beyond just listening. The USPTO proposal with respect to essentially extending the life of a provisional patent application to 24 months, which was announced officially last week, was the result of a suggestion Kappos received at a round-table event in California. So not only is the USPTO listening, they are taking what the hear into consideration. What a novel, yet profound concept. 4 April 2010 http://www.ipwatchdog.com/2010/04/04/kappos-round-table-listening-continues-on-campus-of-uspto/id=10002/ http://www.ipwatchdog.com/2010/04/04/kappos-round-table-listening-continues-on-campus-of-uspto/id=10002/ Tomorrow, April 2, 2010, the Federal Register will have a Notice requesting comments on proposed changes to Missing Parts Practice. Don’t just jump over this as something inconsequential. This is the proposal that David Kappos has been talking about regarding extending the pendency period of provisional patent applications to 24 months. 1 April 2010 http://www.ipwatchdog.com/2010/04/01/uspto-proposes-24-month-provisional-application-pendency/id=9959/ http://www.ipwatchdog.com/2010/04/01/uspto-proposes-24-month-provisional-application-pendency/id=9959/ Recently I had the opportunity to chat with Dr. Gary Michelson, an Orthopedic Surgeon and celebrated inventor who holds over 900 patents worldwide. Dr. Michelson acquired both fame and fortune as the result of his innovations, which were infringed by Medtronic, and who later settled with Dr. Michelson for $1.35 billion. As many readers know, Dr. Michelson recently sent a letter to Congress, specifically addressed to Senator Patrick Leahy (D-VT) and Congressman John Conyers (D-MI), who chair the Senate and House Committees responsible for moving forward with patent reform efforts. Specifically, Dr. Michelson supports S. 515 and wanted to make sure that the Congress heard from an actual inventor who greatly benefited from the US patent system. 1 April 2010 http://www.ipwatchdog.com/2010/04/01/a-conversation-with-gary-michelson-about-patent-reform/id=9917/ http://www.ipwatchdog.com/2010/04/01/a-conversation-with-gary-michelson-about-patent-reform/id=9917/ It will likely come as a surprise to many, but I really don’t think the ACLU victory in the Myriad Genetics litigation is a big deal. Hakuna Matada is what I say. It’s actually a wonderful phrase. It means no worries for the rest of your days, and is a problem-free philosophy… blah blah blah… Picture begins to wiggle out of focus and fades to black in three… two… one… You are about to begin a journey through space and time, into another dimension. On this odyessy into a wondrous land whose boundaries are that of the surreal, the vastness of the timeless infinity forms a middle ground between light and dark, between science and superstition, and it lies at the heart of humanity’s fears and the pinnacle of understanding. You are about to enter the Twilight Zone… 31 March 2010 http://www.ipwatchdog.com/2010/03/31/hakuna-matada-the-aclu-gene-patent-victory-will-be-short-lived/id=9925/ http://www.ipwatchdog.com/2010/03/31/hakuna-matada-the-aclu-gene-patent-victory-will-be-short-lived/id=9925/ Unfortunately, the ACLU appears to have found an “ally” in Judge Sweet, who is the district court judge handling the AMP case. In my view, Judge Sweet has either been duped by the ACLU, or is more likely complicit in accepting the ACLU’s warped view of what these patents cover. That became evident when Judge Sweet denied the motions by Myriad and the USPTO to dismiss this case for lack of subject matter jurisdiction, lack of personal jurisdiction, and failure to state a claim upon which relief can be granted. In a 152 page opinion (which even includes a lengthy and overdone history on genetics going back to Watson and Crick), Judge Sweet has now added “insult to injury” by declaring all of Myriad’s patents invalid under 35 U.S.C. § 101 30 March 2010 http://www.ipwatchdog.com/2010/03/30/foaming-at-the-mouth-the-inane-ruling-in-the-gene-patents-case/id=9911/ http://www.ipwatchdog.com/2010/03/30/foaming-at-the-mouth-the-inane-ruling-in-the-gene-patents-case/id=9911/ When embarking on a software development project it is critical to understand that in order to both maximize the chance of obtaining a patent, as well as the likelihood of developing a working computer implemented process, you need to approach the task with an engineering mind set, as well as a healthy familiarity with Murphy’s Law. Anything that can go wrong will go wrong, and once you release the process to end users a human element will complicate what should otherwise be a predictable, linear, machine driven response. Embrace the uncertainty and challenges because the fact that software rarely, if ever, works like it should is what makes a working process patentable. 29 March 2010 http://www.ipwatchdog.com/2010/03/29/software-patents-and-murphys-law-uncertainty-is-where-patentability-resides/id=9898/ http://www.ipwatchdog.com/2010/03/29/software-patents-and-murphys-law-uncertainty-is-where-patentability-resides/id=9898/ The trouble is that an interference proceeding, the proceeding that would take place to determine who is entitled to receive the patent between the alleged first to invent and the first to file, costs over $650,000. With that cost not many independent inventors or small businesses are going to be able to foot that bill. Nevertheless, I thought it might be good to take a look at this thing called an interference proceeding, which if patent reform is successful would become a relic of US patent law. By understanding interferences inventors and small businesses can decide for themselves whether they think they are missing out on anything should patent reform do away with interference proceedings. 26 March 2010 http://www.ipwatchdog.com/2010/03/26/reform-doing-away-with-interference-proceedings-first-to-invent/id=9859/ http://www.ipwatchdog.com/2010/03/26/reform-doing-away-with-interference-proceedings-first-to-invent/id=9859/ On February 4, 2010, I had a call with Cheryl Milone, Founder and CEO of Article One Partners. While we don’t chat as much as I would like, we do connect when our schedules permit. This call was coordinated by one of Cheryl’s assistants, so we called into a conference line. During our call a beep was heard and recording of our conversation was inadvertently started. We kept talking and then agreed that some of our conversation might be appropriate for publication. We were talking patent reform, reexamination, patent litigation, improved patent search and IT databases, claim construction and more. You know, talking shop and bouncing ideas off one another. Cheryl agreed that our conversation could be published, and I am just now getting the transcript together for publication. 25 March 2010 http://www.ipwatchdog.com/2010/03/25/a-patent-conversation-with-cheryl-milone-of-article-one-partners/id=9836/ http://www.ipwatchdog.com/2010/03/25/a-patent-conversation-with-cheryl-milone-of-article-one-partners/id=9836/ The April 1, 2010 issue of Corporate Counsel, who provides daily breaking news coverage of the in-house counsel world, profiled the Top 10 IP Litigation Victories of 2009. The victories selected represent a diverse array of wins, which a press release announcing the Top 10 list says is due to the differing objectives of IP litigation today. These victories range from multimillion-dollar jury verdicts, including the biggest patent award ever, which was won by Johnson and Johnson’s Centocor Ortho Biotech unit against Abbott Laboratories, to the i4i injunction win blocking the distribution of Microsoft Word editions having a popular XML feature. 24 March 2010 http://www.ipwatchdog.com/2010/03/24/corporatecounsel-com-names-top-10-ip-litigation-wins-of-2009/id=9827/ http://www.ipwatchdog.com/2010/03/24/corporatecounsel-com-names-top-10-ip-litigation-wins-of-2009/id=9827/ Sitting by designation in the United States District Court for the Eastern District of Texas, soon to be Chief Judge of the Federal Circuit, Judge Randall Rader, granted summary judgment to Google Inc. and AOL LLC in the case brought by Performance Pricing, Inc., which alleged infringement of U.S. Patent No. 6,978,253. Performance Pricing accused both Google and AOL of infringing claims 1, 2, 12-15, 18, 20-23, and 30 of the ’253 patent, titled “Systems and Methods for Transacting Business Over a Global Communications Network Such as the Internet.” The patent claims methods of doing business over the Internet “wherein various forms of competition and/or entertainment are used to determine transaction prices between buyers and sellers.” ’253 patent, col.1 ll.10-14. Specifically, the patent discloses methods for using a “price-determining activity,” or PDA, to market on the internet. 23 March 2010 http://www.ipwatchdog.com/2010/03/23/rader-as-trial-judge-hands-google-aol-victory-in-ed-of-texas/id=9810/ http://www.ipwatchdog.com/2010/03/23/rader-as-trial-judge-hands-google-aol-victory-in-ed-of-texas/id=9810/ Coming as no surprise, a majority of the en banc Federal Circuit just ruled in Ariad Pharmaceuticals v. Eli Lilly Co. that there is a separate and distinct “written description” requirement in the first paragraph of 35 U.S.C. § 112. See Some Heretical Thoughts on the Ariad Case: What Does “Any Person Skilled in the Art” Mean and Should It Apply to the “Written Description” Requirement? Also not surprisingly, there were multiple concurring (and dissenting) opinions discussing this separate and distinct “written description” requirement. Judge Lourie (also not surprisingly writing the majority opinion) has now won the on-going debate that has raged between him and Judge Rader (who has strenuously argued there is no “written description” requirement separate and distinct from the “enablement” requirement) since the 19 23 March 2010 http://www.ipwatchdog.com/2010/03/23/not-losing-the-forest-for-the-trees-newman-concurs-in-ariad/id=9803/ http://www.ipwatchdog.com/2010/03/23/not-losing-the-forest-for-the-trees-newman-concurs-in-ariad/id=9803/ In 2004 the United States Patent and Trademark Office modified the way it administered the Patent Bar Examination, moving from a test given either once or twice a year in paper form at a variety of locations across the United States, to a computerized examination administered on demand. While the Patent Office maintains control over the development and content of the examination, a private sector entity, Prometric Inc., administers the examination. Notwithstanding, however, the Patent Office has administered the examination live and in paper form at the USPTO campus in Alexandria, Virginia twice a year. This live testing is generally viewed as an accommodation to those who for a variety of reasons cannot, or prefer not, to take the exam in computerized format. This year individuals seeking registration before the United States Patent and Trademark Office (Office) as patent attorneys and agents can take the exam at the USPTO on July 13 or July 14, 2010. The deadline for applying to take the exam in person at the USPTO is Friday, May 14, 2010. 22 March 2010 http://www.ipwatchdog.com/2010/03/22/uspto-announces-live-administered-exam-schedule-for-2010/id=9795/ http://www.ipwatchdog.com/2010/03/22/uspto-announces-live-administered-exam-schedule-for-2010/id=9795/ Late last night the United States House of Representatives passed the Senate Health Care Bill that has been debated for nearly a year. Like the clear majority of Americans who oppose the bill, I think this was the wrong thing to do and will ultimately be a disaster. I realize there are 30 million Americans without health insurance, but they will remain without health insurance for the next 4 years, so it is hard to believe that anything will change for the better for the uninsured in the near term. The debate also seems to completely ignore the 270 million Americans who have health insurance. Yes, costs are rising and need to be reigned in, but creating another entitlement is the wrong thing to do, particularly when Social Security and Medicare alone are collectively going to already be in the red to the tune of $50 trillion in coming years. See Statement of Judd Gregg (R-NH). But at least BIO was able to get provisions into the bill that will truly spur biotech innovation. 22 March 2010 http://www.ipwatchdog.com/2010/03/22/health-care-bill-good-for-bio-according-to-greenwood/id=9790/ http://www.ipwatchdog.com/2010/03/22/health-care-bill-good-for-bio-according-to-greenwood/id=9790/ A United States patent search is normally the first step in the patent application process. Such a search is used to determine whether the time and expense of moving forward with a patent application is a worthwhile endeavor. The patent process can be expensive, so the last thing you want to do is spend a lot of money preparing and filing an application when there is easy to find knock-out prior art that will prevent a patent, or at the very least make any patent that is obtained extremely narrow. For this reason many inventors and businesses will choose to begin the process by paying for some kind of patent search. Of course, careful review of the patent search report, any opinion or assessment provided by a patent attorney and thoughtful consideration of the patents that are found is critical. Unfortunately, in my experience a lot of inventors only give a cursory review of the patents found, thereby missing a great opportunity to use the prior art found to focus in on what is most likely unique and patentable. 21 March 2010 http://www.ipwatchdog.com/2010/03/21/patent-searches-a-great-opportunity-to-focus-on-what-is-unique/id=9780/ http://www.ipwatchdog.com/2010/03/21/patent-searches-a-great-opportunity-to-focus-on-what-is-unique/id=9780/ To fix the proposed 102, combine 102(a) and 102(b) to say that an patent applicant is entitled to a patent provided they are the first inventor to file and further provided that the invention was the invention was not patented or described in a printed publication anywhere in the world, or in public use or on sale in the US, more than one year prior to the date of the application for patent in the United States. This would eliminate interferences, but not create a race to the Patent Office. It would allow for patent applicants to swear behind prior art other than an earlier filed US patent application covering the same invention. 18 March 2010 http://www.ipwatchdog.com/2010/03/18/patent-reform-should-preserve-a-real-1-year-grace-period/id=9755/ http://www.ipwatchdog.com/2010/03/18/patent-reform-should-preserve-a-real-1-year-grace-period/id=9755/ On February 12, 2010, the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office (USPTO) issued an decision invalidating Pfizer’s broad claim for treating male erectile dysfunction (ED). U.S. Patent No. 6,469,012, entitled “Pyrazolopyrimidinones for the Treatment of Impotence” issued on October 22, 2002 and assigned to Pfizer, Inc. (NYSE: PFE). The patent issued from U.S. Patent Application No. 08/549,792, filed March 4, 1996, which is the national phase of PCT/EP94/01580, filed May 13, 1994, and which claims benefit to GB Patent Application No. 9311920, filed June 9, 1993. The patent claims cover the first commercially successful male impotence drug — Viagra®. Immediately after the decision was handed down Pfizer spokesman, Chris Loder, said “the decision has no effect on Pfizer’s patent claims relating to Viagra.” Loder also said Pfizer would appeal the decision. As yet there remains no word on an appeal by Pfizer. 17 March 2010 http://www.ipwatchdog.com/2010/03/17/pfizers-erectile-dysfunction-claim-for-viagra%C2%AE-found-invalid/id=9162/ http://www.ipwatchdog.com/2010/03/17/pfizers-erectile-dysfunction-claim-for-viagra%C2%AE-found-invalid/id=9162/ It is about that time of the year where our calendar really starts to heat up. This course, which happens every year during law school spring break, finds us in Chicago during St. Patrick’s Day festivities and the start of the NCAA College Basketball tournament. In April we do not have a course scheduled, but we typically are out on the road going to as many law schools and engineering schools as we can to talk about patent law as a profession, the patent bar exam, finding a job and, yes, the PLI Patent Bar Review Course. So if you are interested in a presentation let us know and we will see if we can work it into our schedule, or try and get something planned for the Fall of 2010. Once our Spring school tour is over then we will be back on the road teaching courses in New York City (May), Southern CA (June), Boston (July), Chicago (August), New York City (September) and San Francisco (November). 15 March 2010 http://www.ipwatchdog.com/2010/03/16/pli-patent-bar-review-springsummer-tour-2010/id=8750/ http://www.ipwatchdog.com/2010/03/16/pli-patent-bar-review-springsummer-tour-2010/id=8750/ The Biotechnology Industry Organization (BIO) has just announced that David Kappos, Director of the U.S. Patent and Trademark Office and Under Secretary of Commerce for Intellectual Property, will be a featured speaker at the Intellectual Property Super Session taking place during the 2010 BIO International Convention. The May 3 event, entitled “Leveraging IP to Spur Global Biotechnology Innovation, Investment and Jobs,” will examine the role that intellectual property systems play in attracting biotech investment and how some countries are successfully leveraging their patent policies to foster economic growth. 15 March 2010 http://www.ipwatchdog.com/2010/03/15/bio-gearing-up-for-big-spring-2010-headlined-by-kappos/id=9716/ http://www.ipwatchdog.com/2010/03/15/bio-gearing-up-for-big-spring-2010-headlined-by-kappos/id=9716/ In the case of Henryk Oleksy v. General Electric Company, et al (ILND 1-06-cv-01245), a settlement conference occurred recently. Quite a normal activity in patent litigation cases. But something about this particular entry caught our eye. Patent litigators were complimented for being civil by the district court. This is not something you typically see, but when there are these types of “feel good” moments they are worthy of being noted. 14 March 2010 http://www.ipwatchdog.com/2010/03/14/settling-with-civility-in-patent-litigation/id=9703/ http://www.ipwatchdog.com/2010/03/14/settling-with-civility-in-patent-litigation/id=9703/ Earlier today Darby and Darby, one of the oldest intellectual property boutique firms in the United States, announced that they are dissolving. The announcement, which seems to have come without much warning, confirms rumors that started swirling last night that an abrupt end was near for the firm that has been in business since 1895. Darby and Darby has offices in New York, Seattle, Washington DC, Palm Beach Gardens and Frankfort. Details remain murky, and no one seems to know exactly when the doors will be shuttered. 12 March 2010 http://www.ipwatchdog.com/2010/03/12/darby-darby-dissolving-after-115-years-in-business/id=9669/ http://www.ipwatchdog.com/2010/03/12/darby-darby-dissolving-after-115-years-in-business/id=9669/ I recently learned of a study conducted by IPVision, Inc., which focused on analyzing the intellectual property positions of over 9,000 US venture capital backed technology companies. The study was conducted with the assistance of faculty at the MIT Sloan School of Management, and not surprisingly determined that there is a strong correlation between intellectual property assets, particularly strong patent portfolios, and success. In fact, the IPVision study shows that VC-backed technology “[w]inners are many times more likely to hold intellectual property than losers.” Further proof that those who due to ideological reasons forgo pursuing a patent portfolio are dooming themselves, and their investors, to an unnecessary uphill struggle right from the start. 12 March 2010 http://www.ipwatchdog.com/2010/03/12/venture-capital-success-based-on-patents/id=9657/ http://www.ipwatchdog.com/2010/03/12/venture-capital-success-based-on-patents/id=9657/ Furthermore, arguing that first to invent is essential but not talking about or even acknowledging the costs associated with prevailing in an interferences is rather ridiculous. In fact, simply based on cost it is ridiculous to believe that an independent inventor could ever engage in an interference and prevail. According to the a 2005 economic survey conducted by the American Intellectual Property Law Association (AIPLA), the mean cost of an interference through the completion of the preliminary motions phase was a whopping $417,130. The mean total cost of the entire interference was $656,306. See An Interference: What, When and How Much Does It Cost? (page 9 at bottom). Exactly how many independent inventors can afford that? 11 March 2010 http://www.ipwatchdog.com/2010/03/11/uia-letter-to-congress-on-patent-reform-kappos-first-to-invent/id=9632/ http://www.ipwatchdog.com/2010/03/11/uia-letter-to-congress-on-patent-reform-kappos-first-to-invent/id=9632/ So it is hard to see a path forward where much gets accomplished, particularly if health care passes through the use of reconciliation. Having said this, now that a “passable” bill has been written, patent reform could be of sufficiently low political importance that Democrats and Republicans can get something done. If health care dies the Democrats will need to pass something desperately, perhaps many things, to show they actually accomplished something. Therefore, if health care dies I predict patent reform passes. If health care passes I predict patent reform will die, as the Congress and government slip into heightened posturing in advance of the 2010 elections. 10 March 2010 http://www.ipwatchdog.com/2010/03/10/analyzing-patent-reform-chances-and-first-to-file-provisions/id=9607/ http://www.ipwatchdog.com/2010/03/10/analyzing-patent-reform-chances-and-first-to-file-provisions/id=9607/ The latest victim of the “best mode” patentraptor was a foreign patent applicant in Ajinomoto Co., Inc. v. International Trade Commission. In the end, Ajinomoto was unable to outrun the “best mode” patentraptor. And like the sequels to Jurassic Park, there are likely to be future instances where this patentivour devours other U.S. patents, including those of foreign applicants who may even be ignorant of this patent monster. But ignorance of the “best mode” patentraptor is equivalent to not being aware that the bioengineered dinosaurs were multiplying in dangerous numbers in Jurassic Park. 10 March 2010 http://www.ipwatchdog.com/2010/03/10/best-mode-patent-raptor-devours-ajinomoto/id=9587/ http://www.ipwatchdog.com/2010/03/10/best-mode-patent-raptor-devours-ajinomoto/id=9587/ Intellectual Property Today has once again come out with its much anticipated list of the top patent law firms. The 2010 list has many of the usual suspects on it, and the complete list of patent law firms is available in PDF for $25. You can also obtain the list by getting a copy of the March 2010 IP Today magazine, which will be provided on a complimentary basis while supplies last for those who subscribe to IP Today. 9 March 2010 http://www.ipwatchdog.com/2010/03/09/iptoday-ranks-top-patent-law-firms/id=9588/ http://www.ipwatchdog.com/2010/03/09/iptoday-ranks-top-patent-law-firms/id=9588/ The SEB decision is important because it limits DSU and broadens the standard for inducement of infringement under 35 U.S.C. § 271(b) by directly addressing the level of knowledge that an alleged inducer must have of the patent-at-issue. Whereas the standard for inducement previously annunciated in DSU included “the requirement that [the alleged infringer] knew of the patent,” the Federal Circuit in SEB found liability for inducement under circumstances where there was no evidence that the defendant actually knew of the patent-in-suit. In concluding that inducement does not require proof of actual knowledge of the patent-in-suit, the Court distinguished DSU and articulated a broader standard for inducement liability. Specifically, under SEB, inducement may be established by showing that the defendant deliberately disregarded the risk that a patent existed. 7 March 2010 http://www.ipwatchdog.com/2010/03/07/developments-in-the-law-of-inducement-and-direct-infringement/id=9561/ http://www.ipwatchdog.com/2010/03/07/developments-in-the-law-of-inducement-and-direct-infringement/id=9561/ As I was searching I perused data on the most active stocks for Friday, March 5, 2010 on ClearStation.com. While I don’t try and time the market or any stock, per se, I do think that trends can be helpful to identify what others are thinking and doing, which of course does affect stock price. I personally like to buy stocks that have strong volume, which makes it easier to dump shares if need be. As I was doing this I came across Poniard Pharmaceuticals, Inc. (Nasdaq:PARD), a biopharmaceutical company focused on innovative oncology therapies. Shares of PARD were only up $.10 on the day, closing at $1.77, with a high of $2.09 and a low of $1.63, but volume of shares traded was 9,127,941, which is a positive increase of 140.96%, so something seemed to be going on. 7 March 2010 http://www.ipwatchdog.com/2010/03/07/poniard-pharmaceuticals-positive-phase-2-news-and-patent-portfolio-could-make-it-a-good-buy/id=9548/ http://www.ipwatchdog.com/2010/03/07/poniard-pharmaceuticals-positive-phase-2-news-and-patent-portfolio-could-make-it-a-good-buy/id=9548/ Many inventors operate under the misunderstanding that getting a patent is like owning Boardwalk and Park Place in the popular board game “Monopoly.” Unfortunately, turning a patent grant into cash is much more complicated than simply placing hotels on Boardwalk and Park Place. Those who are against patents always seem to argue that a patent is a monopoly, or at least use those terms interchangeably. Don’t be fooled into thinking that a patent is a monopoly. Simply obtaining a patent will not result in the arrival of a money truck to your doorstep. 6 March 2010 http://www.ipwatchdog.com/2010/03/06/debunking-the-myth-that-patents-create-a-monopoly/id=9538/ http://www.ipwatchdog.com/2010/03/06/debunking-the-myth-that-patents-create-a-monopoly/id=9538/ On March 2, 2010, Apple filed two lawsuits against High Tech Computer Corp. (aka HTC Corp.), HTC (B.V.I.) Corp, HTC America, Inc. and Exeda, Inc. HTC Corp. is a Taiwanese corporation and the parent company of the other defendants. According to a statement from Apple, HTC is infringing “20 Apple patents related to the iPhone’s user interface, underlying architecture and hardware.” According to Steve Jobs, Apple’s CEO, “[w]e can sit by and watch competitors steal our patented inventions, or we can do something about it. We’ve decided to do something about it. We think competition is healthy, but competitors should create their own original technology, not steal ours.” The Apple press release and complaints make it clear that this dispute if about the “revolutionary iPhone®.” Some have started speculating that because of this Jobs comment the matter is personal and perhaps Apple is whining in an unjustified fashion. Let’s not kid ourselves though. The big target here is Google, and a patent battle of epic proportions may well be unfolding. Given that Apple has sold over 40 million iPhones worldwide, if they do believe there is infringement they can hardly let Google muscle in on this lucrative technology turf. 4 March 2010 http://www.ipwatchdog.com/2010/03/04/apple-sues-htc-on-iphone-patents-but-google-is-the-real-target/id=9484/ http://www.ipwatchdog.com/2010/03/04/apple-sues-htc-on-iphone-patents-but-google-is-the-real-target/id=9484/ TiVo, Inc. (NASDAQ: TIVO), owner of U.S. Patent 6,233,389, titled “Multimedia Time Warping System,” was a big winner today at the United States Court of Appeals for the Federal Circuit when the CAFC handed down its decision in Tivo, Inc. v. EchoStar Corp. A majority of the 3 judge panel hearing the case agreed with the district court and ratified the contempt order against EchoStar (NASDAQ: SATS) and Dish Network (NASDAQ: DISH). On news of the Federal Circuit ruling TiVo stock immediately surged ahead well over $5, up over 50%. Within less than 1 hour TiVo stock when from trading just over $10 a share, trading at $10.31 at 11:06 am EST, to trading at $16.07 at 11:42 am EST, hitting an intra-day high at 1:18pm EST at $16.36, and establishing a trading range plus or minus $15.65, where it is at as of 2:46pm EST. 4 March 2010 http://www.ipwatchdog.com/2010/03/04/tivo-stock-surges-over-50-on-patent-decision-in-echostar-case/id=9496/ http://www.ipwatchdog.com/2010/03/04/tivo-stock-surges-over-50-on-patent-decision-in-echostar-case/id=9496/ I’m sure some patent litigators will blanch at what I’m suggesting about telling the “story” behind the invention in a patent application because of all the supposed “admissions” that will be made. But most patent litigators haven’t had to endure the frustration we patent prosecutors experience when try to get a “silk purse patent” based on a “sow’s ear description” because there’s no “story” told in the patent application about why the invention is patentable. Also, drafting a “litigation-proof” patent application (if one exists) is meaningless if you can’t get that patent application allowed because the “story” told doesn’t sell the patentability of the invention. It can be quite helpful to effectively, but safely tell the “story” of the invention in a patent application. 3 March 2010 http://www.ipwatchdog.com/2010/03/03/how-to-effectively-but-safely-telling-the-story-of-the-invention/id=9470/ http://www.ipwatchdog.com/2010/03/03/how-to-effectively-but-safely-telling-the-story-of-the-invention/id=9470/ Over the last week Scott Adams, the creator of Dilbert, has been out doing himself in a series of laugh out loud funny cartoons. As you can see from the first cartoon in the series, the creator of a project has left the company and his unfinished project is being passed on to the hapless Dilbert. Scott Adams, through Dilbert, teaches us not only that no one should ever trust Dilbert, but also about the importance of documenting your invention. I then take this opportunity to also opinion about the impending first to invent changes to US patent laws. What fun! 3 March 2010 http://www.ipwatchdog.com/2010/03/03/patent-law-fun-lessons-what-dilbert-teaches-about-inventing/id=9465/ http://www.ipwatchdog.com/2010/03/03/patent-law-fun-lessons-what-dilbert-teaches-about-inventing/id=9465/ I do find certain patented inventions that don’t rise to the level of being unobvious under 35 U.S.C. § 103to one of ordinary skill in the art. Such is the patented memorabilia card in Media Technologies Licensing, LLC v. The Upper Deck Company that was deemed obvious on summary judgment, a judgment which was affirmed by a majority of a Federal Circuit panel. Normally, I find Judge Rader, the heir apparent for Chief Judge of the Federal Circuit, to write cogently and persuasively, even in dissent. Witness his withering blast in In re Bilski where he rightly takes the majority to task for the nonsensical “machine or transformation” test. But unfortunately, like the line from Hamlet, Judge Rader “doth protest too much, methinks” without case law support in his dissent in Media Technologies. 2 March 2010 http://www.ipwatchdog.com/2010/03/02/judge-rader-doth-protest-too-much-in-media-technologies/id=9449/ http://www.ipwatchdog.com/2010/03/02/judge-rader-doth-protest-too-much-in-media-technologies/id=9449/ I do find certain patented inventions that don’t rise to the level of being unobvious under 35 U.S.C. § 103to one of ordinary skill in the art. Such is the patented memorabilia card in Media Technologies Licensing, LLC v. The Upper Deck Company that was deemed obvious on summary judgment, a judgment which was affirmed by a majority of a Federal Circuit panel. Normally, I find Judge Rader, the heir apparent for Chief Judge of the Federal Circuit, to write cogently and persuasively, even in dissent. Witness his withering blast in In re Bilski where he rightly takes the majority to task for the nonsensical “machine or transformation” test. But unfortunately, like the line from Hamlet, Judge Rader “doth protest too much, methinks” without case law support in his dissent in Media Technologies. 2 March 2010 http://www.ipwatchdog.com/2010/03/02/judge-rader-doth-protest-too-much-in-media-technologies/id=9449/ http://www.ipwatchdog.com/2010/03/02/judge-rader-doth-protest-too-much-in-media-technologies/id=9449/ On February 17, 2010, the United States Court of Appeals for the Federal Circuit issued an order in Hyatt v. Kappos vacating the previous decision issued by a 3 judge panel on August 11, 2009, when the case was then styled Hyatt v. Doll. Chief Judge Michel wrote for the court and was joined by Judge Dyk, with Judge Moore providing a strong dissent. The primary issue in Hyatt v. Dudas was whether the district court properly excluded evidence. An appeal was taken from the Board of Patent Appeals within the Patent Office to the United States Federal District Court for the District of Columbia pursuant to 35 U.S.C. 145. Hyatt argued that a plaintiff in a Section 145 action is entitled to submit additional evidence subject to no limitations other than those imposed by the Federal Rules of Evidence. Not surprisingly, the Patent Office disagreed, arguing that Section 145 actions are at least partly a form of appeal of PTO decisions and that evidence not submitted to the PTO through negligence must be properly excluded at the district court. 1 March 2010 http://www.ipwatchdog.com/2010/03/01/cafc-grants-en-banc-review-of-bpai-to-district-court-appeal/id=9185/ http://www.ipwatchdog.com/2010/03/01/cafc-grants-en-banc-review-of-bpai-to-district-court-appeal/id=9185/ Last week Inc.com published an article titled How to Find a Good Patent Lawyer. Unfortunately, if you follow this advice you are likely to do exactly the opposite. If you can believe it, Inc.com suggests that you not ask business associates or others for reliable recommendations, which goes completely against the well established best practices in the industry. The article also suggests that if you have an Internet business you might want to find a patent attorney who also specializes in First Amendment law, almost as if those types of lawyers readily exist, which they don’t. The article also suggests that you interview your patent attorney like you would interview your doctor. This is something I hear all the time. Can someone please tell me exactly who conducts interviews of doctors prior to scheduling an appointment and paying fees? 1 March 2010 http://www.ipwatchdog.com/2010/03/01/inc-coms-bad-advice-on-finding-a-good-patent-lawyer/id=9387/ http://www.ipwatchdog.com/2010/03/01/inc-coms-bad-advice-on-finding-a-good-patent-lawyer/id=9387/ I recently passed the patent bar, and I’m currently in the limbo phase before I receive my registration number. This is a big shift for me, as I believe the change will open many doors for me and my business, Simple Patents, which just launched the Simple Patent Attorney Services Department. I had been a little uncertain about getting a background check, however. Though I’ve always kept my nose clean, both personally and professionally, you never really know what folks may have posted or tweeted about you. So I did the only thing that seemed smart: I googled myself. 28 February 2010 http://www.ipwatchdog.com/2010/02/28/what-a-soon-to-be-patent-agent-learned-from-googling-himself/id=9376/ http://www.ipwatchdog.com/2010/02/28/what-a-soon-to-be-patent-agent-learned-from-googling-himself/id=9376/ Earlier this week, on February 23, 2010, Facebook was granted US Patent No. 7,669,123, which covers a patent on a method for dynamically providing a news feed about a user of a social network. The patent application was filed on August 11, 2006, and claims priority from a string of provisional patent applications and nonprovisional patent applications, the earliest being a provisional patent application filed on December 14, 2005. Essentially, it seems the resulting “invention” was a news feed for a social network. While this may have been new to social networking sites in December 2005 through August 2006, automatically updating news feeds were hardly new even then. 26 February 2010 http://www.ipwatchdog.com/2010/02/26/facebook-social-network-news-feed-patent/id=9317/ http://www.ipwatchdog.com/2010/02/26/facebook-social-network-news-feed-patent/id=9317/ The new count system seems to place emphasis on complete and thorough initial examination, and even provides incentive for examiners to issue patent applications early in the process. Examiners are also given up to 1 hour of non-examination time to initiate an interview with the applicant or the applicant’s representative, and to write up an interview summary. Given that patent examiners will receive more credit under the new count system for disposals without need for a Final Rejection, it seems reasonable to anticipate that when there is allowable subject matter present in an application at least some examiners will find it in their own best interest to work with an applicant to get a patent issued quickly. 26 February 2010 http://www.ipwatchdog.com/2010/02/26/uspto%E2%80%99s-new-examiner-count-system-go-into-effect/id=9310/ http://www.ipwatchdog.com/2010/02/26/uspto%E2%80%99s-new-examiner-count-system-go-into-effect/id=9310/ The day starts out quiet enough. I wake up and scoop my contacts out of the Clear Care® contact lens solution they’re swimming in. Blinking rapidly to settle my contacts, I focus on some tiny numbers printed on the contact solution box. Patent numbers. I’ve been using the solution for years and wonder how old the patents must be. I do a quick Google search and discover that the patents have expired. Strange that expired patents would be printed on the box… My 3 year old interrupts my thoughts as she walks up to me still rubbing her eyes, complaining that her Goodnites® Sleep Shorts are soggy. Knowing that absorbent products containing hydrogels with ability to swell against pressure don’t change themselves, I quickly get her some dry pants. Doing so, I check the box and sure enough, more expired patent numbers. 25 February 2010 http://www.ipwatchdog.com/2010/02/25/a-fanciful-false-marking-fiction-by-a-cottage-industrialist/id=9299/ http://www.ipwatchdog.com/2010/02/25/a-fanciful-false-marking-fiction-by-a-cottage-industrialist/id=9299/ As observed by the Federal Circuit at the end of Chapman, the BPAI on remand was “in no way precluded from, and indeed may be correct in, finding the claims to be obvious, particularly in the light of Gonzalez’s disclosure of joining two antibody fragments together with a polymer to make a dumbbell-shaped structure.” But what is refreshing and important in the Federal Circuit’s opinion is that mischaracterizations of references relied upon by the patent examiner (or the BPAI) for obviousness rulings are not to be simply glossed over as “harmless error.” Put differently, the Chapman decision gives patent applicant’s a viable legal basis to hold a patent examiner’s (as well as the BPAI’s) “feet to the fire” to challenge an obviousness (or anticipation) rejection based on one or more mischaracterizations of a reference. 25 February 2010 http://www.ipwatchdog.com/2010/02/25/obviousness-ruling-based-on-mischaracterizations-of-reference-overturned-by-cafc/id=9295/ http://www.ipwatchdog.com/2010/02/25/obviousness-ruling-based-on-mischaracterizations-of-reference-overturned-by-cafc/id=9295/ The United States Patent and Trademark Office is sending the message that it believes patent reform is needed and that it is not something that will harm independent inventors, and the messenger is none other than the Director of the USPTO, David Kappos. Just this week the USPTO launched a bi-monthly e-publication aimed at the independent inventor community – Inventors Eye. The first issue of Inventors Eye takes on the issue of Patent Reform, with a letter from Director Kappos. A video tape of Kappos essentially explaining the same thing as said in the letter, perhaps with a little more information, is available on the USPTO Website. The clear message is that the current patent reform proposals are a net benefit to the independent inventor community. I personally agree with Director Kappos and think that independent inventors and small businesses should not be afraid of patent reform but view it as an opportunity for enhanced opportunity. 24 February 2010 http://www.ipwatchdog.com/2010/02/24/kappos-trying-to-sell-patent-reform-to-independent-inventors/id=9285/ http://www.ipwatchdog.com/2010/02/24/kappos-trying-to-sell-patent-reform-to-independent-inventors/id=9285/ One of the main criticisms of patents by those who are not intimately familiar with patent law, or on the periphery of the industry, is that patents last too long. The reality, if any generalizations could be made at all, is that the overwhelming majority of patents do not last “too long,” but if anything last for only a fleeting moment in the greater scheme of life. So while it is completely true to say that software and certain other high tech innovations should not be locked up for 20 years, the reality is that no patent provides 20 years of protection. 22 February 2010 http://www.ipwatchdog.com/2010/02/22/rebutting-the-myth-that-patents-last-too-long/id=9268/ http://www.ipwatchdog.com/2010/02/22/rebutting-the-myth-that-patents-last-too-long/id=9268/ Unfortunately, those who oppose software patents frequently, if not always, want to turn the patentability requirements as they apply to software and business methods into a single step inquiry. They want it all to ride on patentable subject matter, which is a horrible mistake. The majority of the Federal Circuit got it completely wrong in Bilski, and other notable recent decisions. Patentable subject matter is a threshold inquiry and should not be used to weed out an entire class of innovation simply because bad patents could and will issue if the other patentability requirements are not adequately applied. That is taking the “easy” way out and is simply wrong. 22 February 2010 http://www.ipwatchdog.com/2010/02/21/deciding-bilski-on-patentable-subject-matter-is-just-plain-wrong/id=9258/ http://www.ipwatchdog.com/2010/02/21/deciding-bilski-on-patentable-subject-matter-is-just-plain-wrong/id=9258/ Exactly how can a patent remain pending for over 10 years and not be entitled to an extension in the term? I really don’t know to be perfectly honest, but it seems that this patent will apply to pretty much any and all DVRs currently on the market, so even if there is no patent term extension granted it could produce a choke-hold on the industry through October 20, 2019, which should create a tidy sum of royalty payments for TiVo, at least over the near term. Of course, it will also spark a rush to innovate around the TiVo patent, thereby causing innovation to march forward, much to the chagrin of anti-patent advocates who are already proclaiming this patent to be evidence that patents harm innovation. In any event, a patent that issues after 10+ years suggests problems, even if the intended march of innovation is encouraged, which will of course be the case. 19 February 2010 http://www.ipwatchdog.com/2010/02/19/submarine-patents-alive-and-well-tivo-patents-dvr-scheduling/id=9168/ http://www.ipwatchdog.com/2010/02/19/submarine-patents-alive-and-well-tivo-patents-dvr-scheduling/id=9168/ Yesterday, February 16, 2010, Google was granted US Patent No. 7,664,751, which is titled Variable user interface based on document access privileges. In this patent Google gives us a glimpse at the possible future of Google Books, which can censor books it serves based on the copyright laws of the location from which you access the Internet. In one implementation the method disclosed includes a user requesting a document, the request being received, information being processed and the viewable portions of the document being determined based on the governing copyright laws. The governing copyright laws are determined based on information relating to the user, such as relying on the IP address of the requester, which can disclose the geographic location of the user, at least when it is not spoofed. 17 February 2010 http://www.ipwatchdog.com/2010/02/17/google-books-patent-suggests-copyright-friendly-censorship/id=9115/ http://www.ipwatchdog.com/2010/02/17/google-books-patent-suggests-copyright-friendly-censorship/id=9115/ So what is my invention? Well, I like to think of it as rather sophisticated, eloquent and perhaps even a little revolutionary. Maybe not revolutionary on the scale of Einstein’s General Theory of Relativity, but revolutionary in the same way that the forward pass forever changed the game of football. Yes, a game changing revolutionary invention is what I have. The best part about it is that at one point in time it would have been widely viewed as true, simple, correct and the only sane thing to do. Today, however, it is an earth shattering innovation, at least insofar as the Supreme Court defines innovations. I mean, if it isn’t common sense it has to be patentable, right? 16 February 2010 http://www.ipwatchdog.com/2010/02/16/a-method-to-spur-the-economy-comprising-cutting-taxes-obviously-non-obvious-and-patentable-inventions-part-ii/id=9069/ http://www.ipwatchdog.com/2010/02/16/a-method-to-spur-the-economy-comprising-cutting-taxes-obviously-non-obvious-and-patentable-inventions-part-ii/id=9069/ Earlier this month David Kappos, Undersecretary of Commerce for IP and the Director of the USPTO, wrote a blog article explaining his desire to revamp, revise and re-engineer the Manual of Patent Examining Procedures. My personal view is one of extreme skepticism when it comes to using a wiki. Having said this, there is room for using a wiki, no doubt, and the USPTO and every other government agency already uses a form of a wiki, which is enabled by the Federal Register through the solicitations of comments. So to the extent input from the legal community is desirable it could and should build on what already works, which is the notice and comment process. 15 February 2010 http://www.ipwatchdog.com/2010/02/15/kappos-asks-for-patent-bar-input-on-reengineering-the-mpep/id=9055/ http://www.ipwatchdog.com/2010/02/15/kappos-asks-for-patent-bar-input-on-reengineering-the-mpep/id=9055/ Each court considered the same general factors: (1) whether the stay will cause undue prejudice or a clear tactical advantage to the nonmoving party; (2) whether the stay will simplify the issues to be determined by trial; and (3) whether discovery is complete or a trial date set. With respect to the first factor, only one court (District of Minnesota) seemed to give much consideration to the argument that plaintiff would be unduly prejudiced by defendant’s continuing allegedly infringing activity during the stay. One court acknowledged that a party may be prejudiced by the delay of the stay if it can be shown that the ability to gather evidence would be compromised by the stay. 14 February 2010 http://www.ipwatchdog.com/2010/02/14/to-stay-or-deny-recent-motions-to-stay-proceedings-pending-reexamination-and-uspto-statistics/id=9039/ http://www.ipwatchdog.com/2010/02/14/to-stay-or-deny-recent-motions-to-stay-proceedings-pending-reexamination-and-uspto-statistics/id=9039/ On February 11, 2010, General Electric (GE) launched a patent infringement lawsuit in the United States Federal District Court for the Northern District of Texas. Caught in the cross-hairs is Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc. and Mitsubishi Power Systems Americas, Inc. (hereinafter “Mitsubishi). The complaint alleges that GE engages in the development, manufacture, and distribution of variable speed wind turbines and components, and that GE is the assignee and owns all right, title and interest to US Patent No. 6,879,055 and US Patent No. 7,629,705, which are being infringed by Mitsubishi. A jury trial has been demanded in this Green Tech patent dispute; the type of dispute we are all but certain to see increasingly more often as the alternative energy market continues to mature and become more economically relevant. 12 February 2010 http://www.ipwatchdog.com/2010/02/12/general-electric-sues-mitsubishi-over-wind-energy-patents/id=8961/ http://www.ipwatchdog.com/2010/02/12/general-electric-sues-mitsubishi-over-wind-energy-patents/id=8961/ Advancement and the prospects of a better life are what push people to succeed, particularly in the innovation space where the odds can sometimes be long. After all, how else could you justify spending hundreds of millions of dollars to try and make billions of dollars? Striving for something is what makes individuals and businesses not happy with whatever they have. If you have thousands you want hundreds of thousands. If you have hundreds of thousands you want millions, if you have millions you want billions. What makes the business world go ’round, including the innovation and tech space, are the 7 deadly sins, or at least 6 of them. 11 February 2010 http://www.ipwatchdog.com/2010/02/11/motivation-for-success-the-7-deadly-sins-patent-style/id=8835/ http://www.ipwatchdog.com/2010/02/11/motivation-for-success-the-7-deadly-sins-patent-style/id=8835/ I still remember when I was a Sophomore at Rutgers University and I wondered if I really had what it took to be an electrical engineer. I went to see Dr. Richard Mammone, who was my Professor for Electrical Engineering Principles 1. He told me that 90% of being an engineer was determination and 10% was talent. I remember him saying “if you want to be an electrical engineer, you can become one.” That has always kept with me and to some extent may explain my stubbornness. There is no doubt a genetic component as well, but I have always been determined, and I think determination, perseverance and dedication can get you to where you want to be in life. Of course, a little tutoring and guidance never hurts either. 10 February 2010 http://www.ipwatchdog.com/2010/02/10/the-business-of-blogging-a-tutorial-for-would-be-bloggers/id=8828/ http://www.ipwatchdog.com/2010/02/10/the-business-of-blogging-a-tutorial-for-would-be-bloggers/id=8828/ Article One Partners, the world’s largest patent validation firm, today announced that Patrick W. Gross has joined its Board of Directors. Gross was an influential member of U.S. Secretary of Defense Robert McNamara’s staff, has been the chairman, vice chairman, founder, co-founder and trustee of a large number of public service organizations, and a board member and executive of more than 24 public and private companies. Mr. Gross is the Chairman of the Lovell Group, a private investment and advisory firm, where he applies his extensive business expertise to a portfolio of growing technology and internet commerce companies. 9 February 2010 http://www.ipwatchdog.com/2010/02/09/patrick-w-gross-joins-article-one-partners-board-of-directors/id=8809/ http://www.ipwatchdog.com/2010/02/09/patrick-w-gross-joins-article-one-partners-board-of-directors/id=8809/ Unlike the Lucent case where the damage award was rightly challenged as not being supported by “substantial evidence” based on the Georgia-Pacific factors, the ResQNet case unfortunately creates tremendous uncertainty over how those factors are to be evaluated, and especially which of those factors should (or should not) be given priority in a given case. The Federal Circuit panel majority is perhaps correct that the district court gave undue weight to damage expert’s reliance upon the five “re-bundled licenses” to inflate the royalty rate determined. But Judge Newman is also rightly perturbed at upsetting a damage award based strictly on one Georgia-Pacific factor allegedly being given undue weight while apparently ignoring royalty rate evidence based on several other Georgia-Pacific factors. 8 February 2010 http://www.ipwatchdog.com/2010/02/08/cafc-reliance-on-unrelated-licenses-doom-damage-award/id=8802/ http://www.ipwatchdog.com/2010/02/08/cafc-reliance-on-unrelated-licenses-doom-damage-award/id=8802/ Patent litigation often turns on obscure and long-buried facts, and some private investigative firms are developing expertise that can help patent counsel – on both the defendant and plaintiff sides – find information to support and even shape litigation strategy. Below are five examples of common problems that patent counsel often face in contemplating, bringing or defending lawsuits, and how investigative firms can help. Think of the cases described below as hypothetical – but we believe they capture how the fact-gathering in actual patent litigation cases can unfold, and how fact-gathering specialists are actually being used. 8 February 2010 http://www.ipwatchdog.com/2010/02/08/how-private-investigators-help-patent-litigators/id=8751/ http://www.ipwatchdog.com/2010/02/08/how-private-investigators-help-patent-litigators/id=8751/ Yes, a message from the shameless commerce division no doubt, but there are a handful of excellent PLI patent related programs coming up in February and March that deserve a mention. After all, how often can one attend a program, get CLE credits and meet Federal Circuit Judge Pauline Newman? Not all that often to be sure, but Judge Newman will be attending and presenting at the Reexamination and Reissue program in New York City on February 11-12, 2010. If you cannot make it to New York for the live program the event will be broadcast live via webcast. 6 February 2010 http://www.ipwatchdog.com/2010/02/06/judge-pauline-newman-headlines-all-star-pli-program/id=8767/ http://www.ipwatchdog.com/2010/02/06/judge-pauline-newman-headlines-all-star-pli-program/id=8767/ The United States Patent and Trademark Office wants YOU, at least if you are an intellectual property professional willing to apply for a rewarding and challenging position as a US patent examiner. Yes, the USPTO is once again hiring patent examiners, at least in a targeted way (whatever that means) as part of an initiative to help reduce the application backlog. As of now the #1 news story on USPTO.gov is the launching of a targeted effort to recruit patent examiners. The job description says there are “many vacancies,” the starting salaries range from $69,899.00 to $90,866.00 per year and applications will be accepted through March 2, 2010. 4 February 2010 http://www.ipwatchdog.com/2010/02/04/uspto-wants-you-for-the-patent-examing-corp/id=8729/ http://www.ipwatchdog.com/2010/02/04/uspto-wants-you-for-the-patent-examing-corp/id=8729/ On January 21, 2010, the United States District Court for the Central District of California issued a ruling in Big Baboon, Inc. v. Dell, Inc. et al, staying further consideration on the motion for summary judgment for invalidity until such time that the United States Supreme Court issues its much anticipated decision in Bilski v. Kappos. This is exactly what suggested (see Offering Help), and it has amazed me that other district courts and the United States Patent Office are plowing ahead and making Bilski rulings. Reality be damned, many district courts and the United States Patent and Trademark Office would rather waste their own time, the time and money of litigants and patent applicants, knowing full well that the United States Supreme Court will issue a ruling that will change the Federal Circuit machine or transformation test announced in Bilski. 3 February 2010 http://www.ipwatchdog.com/2010/02/03/court-stays-ruling-pending-supreme-decision-in-bilski/id=8716/ http://www.ipwatchdog.com/2010/02/03/court-stays-ruling-pending-supreme-decision-in-bilski/id=8716/ Did you know that while a total of 4,849 ex parte and inter partes patent reexamination requests were filed from 1999 to 2009, only 55 are reexaminations of patents associated with FDA approved products and listed in the FDA’s Orange Book? This is just one of the most surprising and interesting facts that emerged from our first of its kind study – “Reexamination Practice of Biotech/Pharma Patents in Group Art Unit 3991.” 2 February 2010 http://www.ipwatchdog.com/2010/02/02/reexamination-of-patents-listed-in-the-fdas-orange-book-surprising-facts-for-brands-and-generics/id=8700/ http://www.ipwatchdog.com/2010/02/02/reexamination-of-patents-listed-in-the-fdas-orange-book-surprising-facts-for-brands-and-generics/id=8700/ President Obama’s recently submitted budget would allow the USPTO to hire 1,000 patent examiners during both FY 2011 and FY 2012. It would also provide an interim fee increase on certain patent fees which is estimated to generate $224 million. There is no mention of fee diversion, but reading between the lines it seems the budget would allow the USPTO to keep all, or at least more, of the fees collected. More to come, but below is a press release issued by the USPTO on February 1, 2010. It is worth a read. 2 February 2010 http://www.ipwatchdog.com/2010/02/02/kappos-announces-obama%E2%80%99s-fy-2011-budget-request-for-pto/id=8691/ http://www.ipwatchdog.com/2010/02/02/kappos-announces-obama%E2%80%99s-fy-2011-budget-request-for-pto/id=8691/ Mr. Phelps has had an extraordinary career and is a prominent leader in the patent industry. He oversaw Intellectual Property and Licensing at IBM for 28 years. Chairman Bill Gates then recruited Phelps – the legendary “godfather” of intellectual property who had turned IBM’s modest IP Portfolio into a $2 billion per year revenue stream – to work his magic for Microsoft. In his role as Corporate Vice-President of IP Policy and Strategy at Microsoft, Phelps was responsible for setting the global Intellectual Property Strategies and Policies for the firm. Phelps has also served as the Microsoft Deputy General Counsel for Intellectual Property for the Legal and Corporate Affairs group, where he supervised Microsoft’s intellectual property groups and oversaw the company’s IP portfolio management (comprising well over 60,000 patents and patent applications worldwide). 1 February 2010 http://www.ipwatchdog.com/2010/02/01/former-head-of-patents-at-ms-ibm-joins-article-one-partners/id=8681/ http://www.ipwatchdog.com/2010/02/01/former-head-of-patents-at-ms-ibm-joins-article-one-partners/id=8681/ On Tuesday, January 26, 2010, the United States Federal District Court for the Middle District of Florida, per Magistrate Pizzo, granted summary judgment against Solomon Technologies, Inc. and in favor of Toyota Motor Corporation relating to claims of infringement relative to U.S. Patent No. 5,067,932. The case already had an interesting history prior to this stage, having been pursued unsuccessfully by Solomon through the United States International Trade Commission and up to the United States Court of Appeals for the Federal Circuit. In fact, soon after initiating this action for damages and injunctive relief, Solomon lodged a complaint with the ITC pursuant to 337 of the Tariff Act of 1930, 19 U.S.C. § 1337(a)(1)(B), alleging that Toyota and its affiliates imported and sold hybrids that infringed its ‘932 patent. At the joint request of Solomon and Toyota, the Middle District of Florida stayed the federal court litigation pursuant to 28 U.S.C. § 1659(a) so that the administrative proceedings could run their course. After an extensive investigation, the ITC’s ruling against Solomon as to infringement, and an unsuccessful appeal to the Federal Circuit, Solomon renewed its claim of infringement with the Middle District. The Magistrate summarized the dispute by noting that the same parties were arguing about whether the same hybrid vehicles infringed the same claim in the same patent as they argued previously before both the ITC and the Federal Circuit. 28 January 2010 http://www.ipwatchdog.com/2010/01/28/toyota-wins-summary-judgment-in-hybrid-patent-litigation/id=8641/ http://www.ipwatchdog.com/2010/01/28/toyota-wins-summary-judgment-in-hybrid-patent-litigation/id=8641/ So does this “safe harbor” apply if you file a divisional of a divisional? What if each of these divisionals has claims to more than one of the groups restricted in the original patent application? Those were the questions that confronted the Federal Circuit in Boehringer Ingelheim International GMBH v. Barr Laboratories, Inc. In responding to these questions, the entire Federal Circuit panel agreed that this “safe harbor” could apply to a divisional of a divisional. Where the majority (Judges Linn and Prost) and dissent (Judge Dyk) diverged was on whether each of these divisionals, and especially the subsequent second divisional, could have claims to more than one of the restricted groups and still receive the benefit of this “safe harbor.” 28 January 2010 http://www.ipwatchdog.com/2010/01/28/divisional-of-divisional-reaches-safe-harbor-of-35-u-s-c-%c2%a7-121/id=8624/ http://www.ipwatchdog.com/2010/01/28/divisional-of-divisional-reaches-safe-harbor-of-35-u-s-c-%c2%a7-121/id=8624/ You ask an age old question, which is really the patent/invention equivalent of the chicken or the egg. Moving forward with a patent doesn’t make a lot of sense if the invention is not likely to be marketable. I always tell folks that the best invention to patent is one you will make money with regardless of having a patent, so I do believe there needs to be market considerations factored into the analysis. After all, the goal is to make money and investing in a business or to obtain a patent makes sense only if there is a reason to believe more money will be made than spent. Having said that, without a patent pending you have absolutely no protection, at least unless you obtain a signed confidentiality agreement and even then the protection will be applicable only to those who have signed the agreement. 25 January 2010 http://www.ipwatchdog.com/2010/01/25/q-a-file-a-patent-application-before-market-evaluation/id=8599/ http://www.ipwatchdog.com/2010/01/25/q-a-file-a-patent-application-before-market-evaluation/id=8599/ It is hard to characterize Apple as anything other than wildly successful, as indicated by their market dominance and copy-cat products that seek offer substitutes for the iPod and iPhone. So if a highly developed patent strategy is appropriate for Apple, why wouldn’t a patent strategy that fits within your budget be a bad idea for you? The short answer is that if patents work for Apple they can work for you too. Stop thinking that Apple is in a different league and start remembering that like Microsoft, Apple was at one point just two guys. The dynamic duo of Bill Gates and Paul Allen, and the dynamic duo of Steve Jobs and Steve Wozniak, are but two illustrations of the American dream. Starting off small and growing into a mega-giant corporation. In the tech sector these stories are real, and in all cases innovation is followed by proprietary protection. 24 January 2010 http://www.ipwatchdog.com/2010/01/24/the-apple-way-repeated-innovation-patent-domination-2/id=8589/ http://www.ipwatchdog.com/2010/01/24/the-apple-way-repeated-innovation-patent-domination-2/id=8589/ Apple, Inc., the tech giant that has revolutionized how we listen to music and the functionality of a cell phone, is now seeking to expand its extremely popular iPod and iPhone products into greener pastures. Specifically, in a US patent application published earlier today Apple is seeking a patent on a solar powered electronic device, such as an iPod or iPhone. 21 January 2010 http://www.ipwatchdog.com/2010/01/21/apple-seeks-patent-on-solar-powered-ipod-and-iphone/id=8530/ http://www.ipwatchdog.com/2010/01/21/apple-seeks-patent-on-solar-powered-ipod-and-iphone/id=8530/ A patent search focuses only on whether you are likely to obtain a patent, and cannot ever be used to determine whether you are able to move forward without fear of being sued for infringement. If what you need to know is whether you are at risk for being sued for infringement what you are asking for is either called a freedom to operate opinion, or sometimes referred to as a patent clearance search. There is a dramatic difference in these two services in terms of cost. A patent search with a patentability opinion, which will determine if the patentability requirements can be satisfied, can range from $600 to $1,400, and a freedom to operate opinion would typically cost at least $10,000, and sometimes substantially more. 21 January 2010 http://www.ipwatchdog.com/2010/01/21/difference-between-patent-searches-infringement-clearance/id=8521/ http://www.ipwatchdog.com/2010/01/21/difference-between-patent-searches-infringement-clearance/id=8521/ I have been asked to create a patent curriculum that will have at a minimum 24 credit hours of patent related legal education, perhaps more. As you might expect, I have some ideas about how to fill the curriculum, but thought I might open this up for discussion here to gain the collective thoughts, wisdom and insights of IPWatchdog.com readers. 20 January 2010 http://www.ipwatchdog.com/2010/01/20/what-skills-should-new-patent-associates-have/id=8513/ http://www.ipwatchdog.com/2010/01/20/what-skills-should-new-patent-associates-have/id=8513/ With the election of Scott Brown last night a lot of things will change, and I think it makes patent reform less likely to happen. If it does happen and does get back onto the radar screen it will absolutely need to focus on tweaks and changes where there is broad consensus, such as with respect to adequately funding the Patent Office, eliminating fee diversion, enhancing the IT systems thereby allowing the USPTO to better streamline examination and other reforms aimed at making the institution that is the Patent Office operate better and more efficiently. If patent reform comes back with the same radical changes that simply cannot be tolerated by so many individuals and businesses it will be just another nail in the coffin of Democrats. 20 January 2010 http://www.ipwatchdog.com/2010/01/20/what-senator-elect-scott-brown-means-for-patent-reform/id=8504/ http://www.ipwatchdog.com/2010/01/20/what-senator-elect-scott-brown-means-for-patent-reform/id=8504/ Last week a US Patent Application No. 20100010893 published detailing an invention relating to digital advertising, and more particularly to creating video overlay advertisements suitable for use with digital videos. The owner is Google and the patent application was originally filed on July 9, 2008. It seems that the Internet giant and purveyor of the extraordinarily popular YouTube video sharing website, is attempting to make it easier to create multimedia advertisements. The screen shots in the patent application show that YouTube video is, in fact, what Google has in mind. 19 January 2010 http://www.ipwatchdog.com/2010/01/19/google-seeks-patent-on-youtube-video-advertisements/id=8493/ http://www.ipwatchdog.com/2010/01/19/google-seeks-patent-on-youtube-video-advertisements/id=8493/ The real story behind Laboratory Corporation of America v. Metabolife Laboratories is that the Supreme Court did decide to hear this case as a part of the 2005 Term, which begins in October and runs through the following summer, usually ending at the end of June or the beginning of July. Notwithstanding the Court’s decision to hear the case, and notwithstanding the fact that it was fully briefed by both sides, on June 22, 2006, the Court, without explanation, issued an order explaining that no decision would be forthcoming because the appeal was improvidently granted. So what does this mean? 18 January 2010 http://www.ipwatchdog.com/2010/01/18/bilski-tea-leaves-remembering-the-lab-corp-non-decision/id=8479/ http://www.ipwatchdog.com/2010/01/18/bilski-tea-leaves-remembering-the-lab-corp-non-decision/id=8479/ Just last week I wrote an article about district courts being increasingly reluctant to order a stay of a pending patent infringement litigation even when the United States Patent Office has granted reexamination. To quote the words of Lee Corso of ESPN College Football fame, “not so fast my friend!” Courtesy of the Docket Report daily patent litigation newsletter, I recently stumbled across the Order of the United States Federal District Court for the Southern District of Georgia in E-Z-Go v. Club Car, Inc. On January 12, 2010, the Southern District of Georgia issued a stay even though the United States Patent and Trademark Office has not yet granted the request for inter partes reexamination of the patent in suit. Holy psychosis Batman! Obviously there is a wide difference of opinion among district court judges with respect to whether to stay pending patent litigation pending reexamination. 17 January 2010 http://www.ipwatchdog.com/2010/01/17/patent-litigation-stayed-before-pto-grants-reexam-request/id=8446/ http://www.ipwatchdog.com/2010/01/17/patent-litigation-stayed-before-pto-grants-reexam-request/id=8446/ There is one thing that must be said immediately about Kodak suing Apple and RIM. Typically when large corporations sue other large corporations there is not all that much interest in taking the matter all the way through litigation to a court ordered disposition. Most times large companies sue each other for posturing purposes and to facilitate getting a better deal at the bargaining table. While there is some evidence to suggest that could be the case, with the presence of Kodak in any patent litigation one must stand up and take notice. Kodak was the defendant in the 15-year patent battle with Polaroid over instant camera technology. Kodak ultimately paid $925 million to Polaroid in 1991, and both Kodak and Polaroid spent several hundreds of millions of dollars in attorneys fees. So make no mistake, Kodak is no stranger to high stakes patent litigation. So pundits and observers can sit back and be thankful for a true heavyweight match of epic proportions could well be on the horizon and could well run for many years to come. 15 January 2010 http://www.ipwatchdog.com/2010/01/15/patent-war-declared-kodak-sues-apple-over-iphone-mac/id=8431/ http://www.ipwatchdog.com/2010/01/15/patent-war-declared-kodak-sues-apple-over-iphone-mac/id=8431/ At the end of 2009 I did a two part series setting forth what I believed to be the Top 10 Patent Stories of the Decade, see Top 10 – #1 to #5 and Top 10 – #6 to #10. Without further ado, here are 4 stories that I thought long and hard about including, but decided against: (1) Rambus and the JEDEC Saga; (2) Bilski v. Kappos; (3) The Bush Administration; and (4) The Office of Enrollment and Discipline. 14 January 2010 http://www.ipwatchdog.com/2010/01/14/patent-stories-of-the-decade-honorable-mentions/id=8413/ http://www.ipwatchdog.com/2010/01/14/patent-stories-of-the-decade-honorable-mentions/id=8413/ IPOfferings will be folded into the General Patent corporate group, and will become a wholly-owned subsidiary of IP Holdings LLC, an IP-centric merchant banking organization affiliated with GPC. Aside from his position as Vice President of GPC, Mr. Ehrlickman will continue to serve as President of IPOfferings LLC, which will function as the patent-brokerage arm of IP Holdings. 14 January 2010 http://www.ipwatchdog.com/2010/01/14/gpc-acquires-ipofferings-to-expand-patent-brokerage-business/id=8404/ http://www.ipwatchdog.com/2010/01/14/gpc-acquires-ipofferings-to-expand-patent-brokerage-business/id=8404/ Upon determining that a substantial new question of patentability (SNQ) existed, 1st Technology petitioned the Office under 37 CFR 1.181 (MPEP 2246) taking the position that the determination was ultra vires. In essence, 1st Technology urged that since Bodog was behind the anonymous filing (although this was disputed by the requester via an opposition petition), and had an opportunity to allege invalidity in Nevada and chose not to, that this issue was precluded from consideration by the USPTO on a collateral estoppel theory. 14 January 2010 http://www.ipwatchdog.com/2010/01/14/bodog-loses-again-claim-preclusion-not-applicable-in-ex-parte-reexam/id=8393/ http://www.ipwatchdog.com/2010/01/14/bodog-loses-again-claim-preclusion-not-applicable-in-ex-parte-reexam/id=8393/ Well, the loser did petition for cert to the Supreme Court, and the Supreme Court has now spoken. Unfortunately for the loser (and not a surprise to me), the Supreme Court spoke negatively on January 11, refusing to consider the Federal Circuit’s en banc ruling in Cardiac Pacemakers. 14 January 2010 http://www.ipwatchdog.com/2010/01/14/supreme-court-wont-review-cafc-ruling-that-35-usc-%C2%A7-271f-doesnt-apply-to-patented-processes/id=8386/ http://www.ipwatchdog.com/2010/01/14/supreme-court-wont-review-cafc-ruling-that-35-usc-%C2%A7-271f-doesnt-apply-to-patented-processes/id=8386/ Meanwhile, tech sector giants have been crying and moaning about how the patent system has run amok and needs to be scaled back, and continually beg for patent reform that would gut the patent system and weaken patent rights. This grumbling is picked up by patent abolitionists who say “see, even Microsoft thinks there should be no patents,” which only adds to the hysteria. Against this backdrop the corporations bemoaning patents received record numbers of patents during 2009. Obviously they talk a good game but when push comes to shove they will get as many patents as they can, but want to make it hard for small businesses and individuals to get patents. Quite curious if you ask me! 13 January 2010 http://www.ipwatchdog.com/2010/01/13/beware-those-claiming-software-patents-are-unnecessary/id=8376/ http://www.ipwatchdog.com/2010/01/13/beware-those-claiming-software-patents-are-unnecessary/id=8376/ deally, at least from the defense perspective, if a defendant were to initiate a Reexamination proceeding at the United States Patent and Trademark Office the district court would stay litigation proceedings and give the Patent Office time to sort the matter out. Increasingly that is becoming more difficult to do, hence the need to pursue a dual strategy of concurrently litigating and engaging in Reexamination. In any event, several recent decisions I came across thanks to the Docket Report, a daily newsletter that sends to your inbox dozens of recent district court orders, demonstrate the difficulty associated with convincing a district court to stay a litigation pending Reexamination. 11 January 2010 http://www.ipwatchdog.com/2010/01/11/courts-reluctant-to-stay-patent-litigation-pending-reexam/id=8307/ http://www.ipwatchdog.com/2010/01/11/courts-reluctant-to-stay-patent-litigation-pending-reexam/id=8307/ The public event is a major step forward for the Office in terms of transparency and willingness to consult. USPTO has been sharply criticized for failures in these areas over the past few years, so it is extremely important for inventors and the patent bar to meet them halfway by participating. If you cannot attend the roundtable in person, be sure to submit comments by 5 o’clock Eastern Standard Time February 25, 2010. On the other hand, I am disturbed that the Patent Office is allowing just one month to comment. Normally, agencies give the public 60 or 90 days to respond to ANPRMs. 11 January 2010 http://www.ipwatchdog.com/2010/01/11/requesting-deadline-extension-on-bpai-rules-of-practice/id=8303/ http://www.ipwatchdog.com/2010/01/11/requesting-deadline-extension-on-bpai-rules-of-practice/id=8303/ When asked what wishes pertaining to patents I have for the New Year, I began thinking about the large number of problem areas for which I wish fundamental change, improvements and solutions. The problem list grew longer but all have a single common underlying cause. All of the problems would likely not have developed had the U.S. patent office been functional and timely in granting quality patents. For the most part, past actual and perceived USPTO dysfunction stem from long-term failure to invest in our Nation’s patent examiner corps. This is the reason that for this New Year, I make my wishes for the USPTO Patent Examiner. 8 January 2010 http://www.ipwatchdog.com/2010/01/08/my-2010-wishes-for-the-u-s-patent-examiner/id=8283/ http://www.ipwatchdog.com/2010/01/08/my-2010-wishes-for-the-u-s-patent-examiner/id=8283/ For those who find math daunting, determining whether the USPTO has correctly calculated patent term adjustment under 35 U.S.C. § 154(b) can create an Excedrin size-headache. Patent term adjustment adds term to the granted patent for any “period of delay” caused by the patent prosecution process which is due to USPTO. The problem is that there can be more than one “period of delay” that goes into the patent term adjustment formula. In the end, the patentees (Wyeth and Elan Pharma) won the patent term adjustment battle in getting, respectively, 294 and 230 more days of patent term than the USPTO said they were entitled to under 35 U.S.C. § 154(b) for the respective patents. 7 January 2010 http://www.ipwatchdog.com/2010/01/07/cafc-wyeth-and-elan-pharma-win-ab-patent-term-adjustment/id=8277/ http://www.ipwatchdog.com/2010/01/07/cafc-wyeth-and-elan-pharma-win-ab-patent-term-adjustment/id=8277/ Reissue practice and reissue oaths are plagued by the tortured language of 35 U.S.C. § 251. Having suffered through 3 related reissues myself, I’ve often referred to this language in 35 U.S.C. § 251 as being something “other than English.” An expanded panel of the Patent Office Board of Appeals and Interferences (Board) in Ex parte Tanaka had to decide whether this byzantine language permitted reissue where only narrower claims were added as a “hedge” against invalidity of the original claims. Their answer was a unanimous and emphatic “NO,” an answer the Federal Circuit and its predecessor, the CCPA, had surprisingly dodged for over 45 years. 7 January 2010 http://www.ipwatchdog.com/2010/01/07/bpai-rules-reissue-improper-when-only-adding-narrower-claims/id=8254/ http://www.ipwatchdog.com/2010/01/07/bpai-rules-reissue-improper-when-only-adding-narrower-claims/id=8254/ It serves no purpose to retroactively kill patents and applications that could have satisfied the standard announced in In re Bilski, but were written to satisfy the now defunct State Street test. That is changing the rules in mid-stream and violates all ideals of fundamental fairness and due process. Erasing value and forcing applicants to have satisfied requirements that could never be envisioned and are far different than existing legal requirements is not only unfair, but likely unconstitutional. This has to violate due process. 6 January 2010 http://www.ipwatchdog.com/2010/01/06/the-fundamental-unfairness-of-retroactively-applying-bilski/id=8258/ http://www.ipwatchdog.com/2010/01/06/the-fundamental-unfairness-of-retroactively-applying-bilski/id=8258/ I am not naive, so I realize getting Congress to do anything relating to patents is nearly impossible and getting them to do anything that is actually helpful seems almost akin to believing in the tooth fairy. So the Patent Office is going to have to come up with incremental solutions on their own. From time to time I will offer solutions that will help, to one extent or another. Today I suggest that the Patent Office immediately suspend prosecution on any and all patent applications in which a Bilski patentable subject matter rejection has been or could be made. Redeploy patent examiners to other areas and dig into the backlog. Anything else is a complete waste of time. 6 January 2010 http://www.ipwatchdog.com/2010/01/06/offering-help-a-solution-for-addressing-the-patent-backlog/id=8242/ http://www.ipwatchdog.com/2010/01/06/offering-help-a-solution-for-addressing-the-patent-backlog/id=8242/ The word “wish” does not really capture the essence or depth of the magnitude of the desire I have for a few certain, industry specific events that will take place at some point during 2010. So rather than “wish” for certain things I thought it might be appropriate to beg for them instead. Thus, I beseechingly request the following: (1) a decision from the Supreme Court in Bilski that does no damage; and (2) an end to the nonsense surrounding gene patents and biologics. I wish with the utmost urgency that the City of Alexandria stop issuing parking tickets after hours. After attending the USPTO Inventors Conference I received a parking ticket at 8:27 pm, while parked at a meter requiring payment only until 5 pm. I challenged, and lost, which cost me an extra $10. Go figure! 5 January 2010 http://www.ipwatchdog.com/2010/01/05/praying-the-supremes-get-bilski-right-in-2010/id=8233/ http://www.ipwatchdog.com/2010/01/05/praying-the-supremes-get-bilski-right-in-2010/id=8233/ Last year I provided 5 wishes, 2 of which came true — Obama appointing a Patent Attorney and the withdraw of the claims and continuations rules. The Patent Office also adopted several suggestions I made throughout the year, or they came up with the same ideas on their own, who knows? So I am hoping that this year I will get at least a few of my wishes. They are: 1. Repeal KSR v. Teleflex; 2. Adequate Funding for the Patent and Trademark Office; 3. Reform Inequitable Conduct; 4. Do away with Examination Support Documents; 5. Acceleration for Those Without Multiple Applications; 6. Frivolous, Fanciful and Otherwise Non-attainable Wishes. And now for the analysis. 4 January 2010 http://www.ipwatchdog.com/2010/01/04/patent-wishes-for-2010/id=7783/ http://www.ipwatchdog.com/2010/01/04/patent-wishes-for-2010/id=7783/ This has been a good year for IPWatchdog.com. We were recognized at one of the top 100 websites for lawyers by the American Bar Association and I received press credentials from the US Supreme Court to report on Bilski (see #11 below), which were but two developments during 2009. and I want to thank the many contributors and readers who continue to visit us and read our news articles, thoughts and opinions. We look forward to many wonderful things in 2010! I am happy to report that during 2009 we had our biggest year ever in terms of traffic to IPWatchdog.com. Our top 8 articles each received over 10,000 page views, 18 articles received over 5,000 page views, 33 articles received over 4,000 page views, 62 articles received over 2,500 page views and a staggering 304 articles were viewed over 1,000 times during 2009. 4 January 2010 http://www.ipwatchdog.com/2010/01/04/ipwatchdog-com-year-end-results-for-2009/id=8178/ http://www.ipwatchdog.com/2010/01/04/ipwatchdog-com-year-end-results-for-2009/id=8178/ On December 21, 2009, I embarked upon identifying the top 10 patent stories of the decade, which ends as we usher in the new year. The Top 10 Part 1 identified what I thought were in the bottom half of the top 10, and while any top 10 list is sure to be at least somewhat controversial, it seems as if the list hasn’t created too much of a stir, at least so far. Undoubtedly, once I set out the top 5 the real debating will begin as folks suggest what they would have preferred instead. Notwithstanding, I really cannot imagine any bigger stories than the top 5 below. Please also feel free (and I am sure you will) to point out things that I missed or clearly got wrong, at least in your opinion. Without further ado, in descending order, here is Part 2 of my Top 10 Patent Related Stories of the Decade, with numbers 5 through 1. Up next, honorable mentions, which will be Part 3. 31 December 2009 http://www.ipwatchdog.com/2009/12/31/top-10-patent-stories-of-the-decade-2000-2009-part-2/id=7963/ http://www.ipwatchdog.com/2009/12/31/top-10-patent-stories-of-the-decade-2000-2009-part-2/id=7963/ This invention, which was never patented, relates generally to illuminated celebratory devices and, more specifically, to a New Year’s Ball Dropping down a vertical support pole reaching the bottom at a predetermined time. Upon reaching the bottom lights are activated on a year display sign and flashing the ball lights to announce the onset of the New Year’s Celebration. According to the patent application the invention overcame the short comings of the prior art by providing a New Year’s Ball Drop having a timing device assure the ball reaches its destination at a precise moment of celebration and lighting up a New Year display sign. I suspect the pole and ball drop set up in Times Square in New York City was the prior art, among other things. According to PAIR the application was abandoned on August 22, 2005 for failure to respond to the non-final Office Action. A notice of abandonment was mailed on August 26, 2005. 31 December 2009 http://www.ipwatchdog.com/2009/12/31/happy-new-year-new-year-patents-for-the-decade-2000-2009/id=8167/ http://www.ipwatchdog.com/2009/12/31/happy-new-year-new-year-patents-for-the-decade-2000-2009/id=8167/ What do Paris Hilton and patent law have in common? Well, virtually nothing really, or at least not until a couple days before Christmas at least. Yes, as hard as it may seem to believe Paris Hilton finds herself connected by the foot to patent law, having been alleged to infringe a design patent owned by Brooke Hollow, Inc., which does business as Gwyneth Shoes. The patent in question is United States Design Patent No. D579,642, which was filed on June 12, 2007 and issued on November 4, 2008. 30 December 2009 http://www.ipwatchdog.com/2009/12/30/paris-hilton-sued-for-design-patent-infringement/id=8078/ http://www.ipwatchdog.com/2009/12/30/paris-hilton-sued-for-design-patent-infringement/id=8078/ John Schmid, a business reporter for the Milwaukee Journal Sentinel, started investigating patent news and the negative impact the United States Patent and Trademark Office was having on the US economy starting at least as early as Spring of 2009. He detailed the problems, how they came into being and efforts to fix the patent system currently under way. He has talked with many patent attorneys, inventors and government officials, and has followed and reported on news in this niche bringing the larger consequences to the notice of the general public. Some of his work, which started appearing during the Summer of 2009, is linked below. If you have not seen Schmid’s work, I recommend you give it a read. The Milwaukee Journal Sentinel has also printed op-ed pieces as well. 29 December 2009 http://www.ipwatchdog.com/2009/12/29/best-in-patent-related-investigative-reporting-for-2009/id=8073/ http://www.ipwatchdog.com/2009/12/29/best-in-patent-related-investigative-reporting-for-2009/id=8073/ It is hard to believe that this year is almost over, and it is Christmas 2009! It seems the older I get the faster the years pass, just like my parents always warned me would be the case some day. I still remember how the minutes would drag on forever on Christmas morning waiting for my parents to get moving, make sure the lights were on and film was in the camera. Those were the days! In any event, we wish everyone a very Merry Christmas, and hope you all make some wonderful memories to last to next year and for a lifetime! Without further ado, to help facilitate the spirit in a patent sort-of way, here are some patents that fit the season, and don’t forget to check out my all-time favorite – the Santa Claus Detector, which I profiled last Christmas. 24 December 2009 http://www.ipwatchdog.com/2009/12/24/merry-christmas-christmas-and-santa-patents-2009/id=8066/ http://www.ipwatchdog.com/2009/12/24/merry-christmas-christmas-and-santa-patents-2009/id=8066/ This bill establishes, for the first time ever, a pathway to allow for U.S. Food and Drug Administration approval of biosimilars, sometimes inaccurately referred to as ‘biogenerics’. Through this provision, authored by Senators Kay Hagan (D-NC), Mike Enzi (R-WY), Orrin Hatch (R-UT) and Barbara Mikulski (D-MD), patients with devastating diseases will have increased access to safe and effective life-saving advanced therapies and can take comfort in the knowledge that this bill will accelerate the biotechnology sector’s drive toward discovering new treatments, therapies and cures for diseases that have plagued us for years. 24 December 2009 http://www.ipwatchdog.com/2009/12/24/biotech-provisions-in-senate-health-care-bill-promotes-innovation/id=8054/ http://www.ipwatchdog.com/2009/12/24/biotech-provisions-in-senate-health-care-bill-promotes-innovation/id=8054/ According to David Kappos, the Director of the USPTO and Undersecretary of Commerce for Intellectual Property: “Because of their prior experience, returning examiners will need little training and will be able to hit the ground running. These examiners can have an immediate impact on the patent examination backlog and reducing the backlog is our top priority.” In the past I have written over and over again that the USPTO should bring back former patent examiners, precisely for the reasons stated by Kappos. I am not about to claim that the USPTO listened to me, but whether they listened to me or came up with this idea on their own it is something I have thought made a lot of sense for a long time. So, not surprisingly, I think this is a wonderful idea! 24 December 2009 http://www.ipwatchdog.com/2009/12/24/uspto-to-rehire-former-patent-examiners-to-attack-backlog/id=8050/ http://www.ipwatchdog.com/2009/12/24/uspto-to-rehire-former-patent-examiners-to-attack-backlog/id=8050/ What’s $175,641,661 among friends? In reality, it is hard to characterize Abbott Laboratories as being a “friend” of who they must pay that exorbitant sum to, but I guess is does certainly pale in comparison to the $1,672,594,000 in actual damages Abbott lost to Centorcor Ortho Biotech and New York University on June 29, 2009 as a result being found to infringe U.S. Patent No. 7,070,775 with respect to its sale of the popular arthritis drug Humira. As the case moves forward it will undoubtedly take on characteristics of a heavyweight title fight, perhaps even Ali-Frazier or Balboa-Creed proportions! 23 December 2009 http://www.ipwatchdog.com/2009/12/23/abbott-labs-ordered-to-pay-175-million-pre-judgment-interest/id=8026/ http://www.ipwatchdog.com/2009/12/23/abbott-labs-ordered-to-pay-175-million-pre-judgment-interest/id=8026/ Earlier today, the Federal Circuit gave i4i an early Christmas present and delivered a big fat lump of coal to Microsoft. The Federal Circuit has upheld Judge Davis’ decision with one small exception. The Federal Circuit found the 60 day period in which the injunction was to become effective too short, instead preferring to give Microsoft 5 months to comply with the permanent injunction, which means that the permanent injunction will go into effect on January 11, 2010. Microsoft’s legal options are limited. They can and likely will seek an expedited rehearing en banc, and they can appeal to the Supreme Court. Neither appeals will be as a matter of right, so look for Microsoft to announce a “deal” with i4i in the days leading up to January 11, 2010. 22 December 2009 http://www.ipwatchdog.com/2009/12/22/i4i-victorious-at-cafc-microsoft-word-enjoined-jan-11-2010/id=8006/ http://www.ipwatchdog.com/2009/12/22/i4i-victorious-at-cafc-microsoft-word-enjoined-jan-11-2010/id=8006/ The United States Patent and Trademark Office earlier today announced in the Federal Register that they will once again attempt to modify the rules of practice and procedure in ex parte appeals before the Board of Patent Appeals and Interferences (BPAI). It seems that the working document moving forward will be those estopped Final Rules, which apparently are no longer quite so final and now open for debate. With that in mind, and to keep things as clear as possible, allow me to refer to the June 10, 2008 rules that were stopped by OMB to be “the previously Final Appeals Rule.” The Office will consider the Appeals Rules anew and seeks comment both on potential modifications to the previously Final Appeals Rules and issues of law and policy raised by those rules. 22 December 2009 http://www.ipwatchdog.com/2009/12/22/us-patent-office-seeks-to-modify-appeals-rules-again/id=7989/ http://www.ipwatchdog.com/2009/12/22/us-patent-office-seeks-to-modify-appeals-rules-again/id=7989/ It is that time of the year where we all start to look ahead to the new year, and in this case the start of a new decade. Last year I wrote an article titled Patent Wishes for the New Year, and I have been working on my wish list already and will launch the article soon, likely on December 31, as I did last year. I thought it might be interesting to contact a variety of industry news makers, policy wonks and those on the front lines to see what they wish for in the year ahead. I was lucky enough to get a handful of responses from folks with a variety of experiences. 21 December 2009 http://www.ipwatchdog.com/2009/12/21/industry-insiders-make-patent-wishes-for-2010/id=7708/ http://www.ipwatchdog.com/2009/12/21/industry-insiders-make-patent-wishes-for-2010/id=7708/ This year as we wind down and look back we not only need to look back at the previous year, but the first decade of the new century and new millennium will be ending. So at this reflective time of year it seems appropriate to take a look back at the biggest patent related news stories of the decade. As with any Top 10 list, or any ranking, there will undoubtedly be disagreements, arguments and some things that people believe should have been on the list. What follows is Part 1 of my personal Top 10 patent news related stories for the decade. 21 December 2009 http://www.ipwatchdog.com/2009/12/21/top-patent-stories-of-the-decade-part-1/id=7953/ http://www.ipwatchdog.com/2009/12/21/top-patent-stories-of-the-decade-part-1/id=7953/ So what does any of this have to do with the USPTO? Well, imagine another fumble call being made on the field by an NFL referee. Now, after the conference, imagine the referee walking to the center of the field turning on his microphone and stating “after further review, we were right” This is the level of feedback currently provided in unfavorable Pre-Appeal Brief Conference Request determinations. 20 December 2009 http://www.ipwatchdog.com/2009/12/20/what-the-board-of-patent-appeals-can-learn-from-the-nfl/id=7941/ http://www.ipwatchdog.com/2009/12/20/what-the-board-of-patent-appeals-can-learn-from-the-nfl/id=7941/ Earlier today I stumbled across US Patent No. 7,631,368, which is titled Combined concealed carry holster undergarment and outergarment with quick release and quick access mechanisms. This patent is one that offers a number of lessons, both for inventors and for those who are seeking to reform the US patent process. The lesson for inventors is a cautionary one; namely be extremely wary about representing yourself. Inventors who represent themselves always wind up with rights more narrow than they should. The second lesson relates to needless delay. This particular patent application was filed on August 11, 2004. A restriction was made on September 30, 2008, which is over 4 years after the application was filed. The application wasn’t even assigned to an examiner until June 25, 2009! So when this patent issued on December 15, 2009, it was entitled to 1218 days of additional patent term as a result of Patent Office delay. 19 December 2009 http://www.ipwatchdog.com/2009/12/19/patent-office-delay-and-inventors-representing-themselves/id=7920/ http://www.ipwatchdog.com/2009/12/19/patent-office-delay-and-inventors-representing-themselves/id=7920/ Last year, an en banc Federal Circuit ruled in the seminal case of Egyptian Goddess, Inc. v. Swisa, Inc. that the so-called “point of novelty” test was no longer valid in determining design patent infringement. Instead, design patent infringement was to be judged solely by the “ordinary observer” test from the 1871 Supreme Court case of Gorham Mg. Co. v. White. But what test should be used in determining the validity of a design patent? A Federal Circuit panel in International Seaway Trading Corp. v. Walgreens Corp. unanimously answered that the validity of design patents must likewise be judged solely by the “ordinary observer” test. 17 December 2009 http://www.ipwatchdog.com/2009/12/17/cafc-rules-validity-of-design-patent-judged-by-ordinary-observer-test/id=7842/ http://www.ipwatchdog.com/2009/12/17/cafc-rules-validity-of-design-patent-judged-by-ordinary-observer-test/id=7842/ Failure to properly fund the US Patent Office is madness, absolutely ridiculous and borders on insane. At a time when the US economy continues to struggle, has reported unemployment rate of 10% and there are worries about another dip due to commercial foreclosures, now is not the time to institute a tax on innovation. Now is the time to unleash American innovation and fund the USPTO to the point necessary to rapidly turn patent applications into assets, which would prompt the trillions of dollars sitting on the sidelines to enter the market and launch the next great US economic expansion. The Capitol Building and Congressional Offices must be home to the largest population of intellectually challenged individuals in the world! 17 December 2009 http://www.ipwatchdog.com/2009/12/17/us-congress-poised-to-implement-national-innovation-tax/id=7835/ http://www.ipwatchdog.com/2009/12/17/us-congress-poised-to-implement-national-innovation-tax/id=7835/ FY 2009 filings outpaced FY 2007 filings, which is significant because there was no recession at any point in time during FY 2007. According to the National Bureau of Economic Research, the current recession started in December 2007. According to the Wall Street Journal blog, this was determined because December 2007 marked the peak upward swing of the US economy, which started in 2001. So December 2007 marked the beginning of the decline. That means that for most of FY 2008 the US economy was in recession, and was not in recession at any point in time during FY 2007. Therefore, there is no support for the argument that the recession caused FY 2009 patent filings to be lower. 17 December 2009 http://www.ipwatchdog.com/2009/12/17/recession-not-responsible-for-dip-in-us-patent-filings/id=7818/ http://www.ipwatchdog.com/2009/12/17/recession-not-responsible-for-dip-in-us-patent-filings/id=7818/ Among the thousands of patents issued by the United States Patent and Trademark Office yesterday was an interesting one granted to Apple, Inc. US Patent No. 7,634,163, titled “Remote control of electronic devices,” gives a glimpse of what might be in store for the iPhone down the road. The patent covers a method of using a telephony device, such as an iPhone, to remotely control various tasks associated with a controlled device, such as a personal computer. Essentially, the iPhone or next generation smart phone will allow a user to control navigation of user interfaces associated with applications or an operating system residing on the second device. 16 December 2009 http://www.ipwatchdog.com/2009/12/16/apple-patents-iphone-remote-control-of-personal-computer/id=7805/ http://www.ipwatchdog.com/2009/12/16/apple-patents-iphone-remote-control-of-personal-computer/id=7805/ A group of organizations today announced that they have banded together to form the Small Business Coalition on Patent Legislation created to draw attention to current patent reform proposals that have not been addressed by established patent stakeholders and that would be uniquely harmful to small business patentees if enacted. 16 December 2009 http://www.ipwatchdog.com/2009/12/16/patent-coalition-established-to-oppose-legislation-harmful-to-small-businesses-and-individual-inventors/id=7785/ http://www.ipwatchdog.com/2009/12/16/patent-coalition-established-to-oppose-legislation-harmful-to-small-businesses-and-individual-inventors/id=7785/ A “black letter” rule of patent law is that infringement requires proof that the alleged infringing device includes all elements or limitations recited in the claim. Known alternatively as the “All Elements Rule” (AER) or “All Limitations Rule” (ALR), it behooves a patentee to make sure that each and every claim element or limitation is clearly shown to be present in the alleged infringing device. Unfortunately, in Intellectual Science and Technology, Inc. v. Sony Electronics, Inc., the patentee, or at least their expert, glossed over this “black letter” rule. What’s worse is that the alleged infringers were granted summary judgment of non-infringement because the patentee’s expert hadn’t sufficiently identified the presence of certain elements of a claimed “data transmitting means” in the alleged infringing devices. 16 December 2009 http://www.ipwatchdog.com/2009/12/16/cafc-rules-patentee%E2%80%99s-expert-failed-to-sufficiently-identify-elements-of-claimed-data-transmitting-means/id=7792/ http://www.ipwatchdog.com/2009/12/16/cafc-rules-patentee%E2%80%99s-expert-failed-to-sufficiently-identify-elements-of-claimed-data-transmitting-means/id=7792/ Congress convened in a rare session last Sunday. On that sleepy news day, the U.S. Senate passed an appropriations bill leaving the U.S. Patent and Trademark Office funding for 2010 essentially the same as 2009. President Obama should send this bill back. The USPTO is solely funded through fees. But Congress controls the purse strings. The USPTO has fewer examiners now than it did at the start of this year. The agency faces a $200 million budget shortfall. It’s instituted a hiring freeze and can’t pay for needed IT upgrades. Why Congress would leave the USPTO underfunded to the tune of $200 million – particularly during a time of nascent national economic recovery – is vexing. 15 December 2009 http://www.ipwatchdog.com/2009/12/15/us-senate-votes-to-leave-patent-office-underfunded-for-2010/id=7767/ http://www.ipwatchdog.com/2009/12/15/us-senate-votes-to-leave-patent-office-underfunded-for-2010/id=7767/ On Friday, December 11, 2009, two more patents bit the dust thanks to the ruling of the United States Federal District Court for the Northern District of California. District Judge Saundra Brown Armstrong granted Summary Judgment for the defendant in Fuzzysharp Technologies, Inc. v. 3D Labs, Inc., LTD (Case No: C 07-5948 SBA) ruling that the relevant claims of U.S. Patent No. 6,172,679 and U.S. Patent No. 6,618,047 were invalid for failure to satisfy the machine or transformation test set forth by the United States Court of Appeals for the Federal Circuit in Bilski. It seems inevitable that the Supreme Court will alter in at least some way the Bilski test, which Justice Sotomayor continually referred to as “extreme” during oral arguments and which also troubled Justice Breyer and others. In the meantime, because the Patent Office and District Courts continue to churn these cases, a lot of work will be wasted and money needlessly expended only to have to start all over with a new test. Talk about ridiculous! 15 December 2009 http://www.ipwatchdog.com/2009/12/15/more-patents-bite-the-dust-thanks-to-cafc-bilski-decision/id=7758/ http://www.ipwatchdog.com/2009/12/15/more-patents-bite-the-dust-thanks-to-cafc-bilski-decision/id=7758/ The holiday season is already upon us, and early this year. Hanukkah, or Chanukah as it is sometimes spelled, began at sundown on Friday, December 11, 2009 and will run through Saturday, December 19, 2009. Like I did last year when I wrote Happy Hanukkah, Hanukkah Patents, once again I went searching for some relevant patents for the occasion. It is certainly true that there are not many US patents that refer to Hanukkah, or Chanukah, at least not in the title, but that doesn’t deter me from making an effort. In years to come it will become more difficult no doubt, forcing me to dig deeper because there are just not that many theme relevant US patents. The most typical Hanukkah patents are design patents that in some way relate to lights or candles, including the one pictured to the left, relating to an electric Hanukkah lamp, which was filed on August 13, 1958 and issue May 1959. 14 December 2009 http://www.ipwatchdog.com/2009/12/14/holiday-patents-hanukkah-chanukah-patents/id=7749/ http://www.ipwatchdog.com/2009/12/14/holiday-patents-hanukkah-chanukah-patents/id=7749/ First up, if you hate plugging in all of your tech toys to their chargers every night, then check out Duracell myGrid Smart Charger. Your tech toy/smart phone wears either a power sleeve or power clip. At the end of the day, you just drop your tech toy onto Duracell’s charging pad. No wire, no plugging in. (about $80) Mixed religion household? If so, then you might need a HanuClaus Hat. This holiday hat that combines a dreidel from Hanukkah with the Santa hat of Christmas.(about $24) 14 December 2009 http://www.ipwatchdog.com/2009/12/14/holiday-gift-ideas-from-the-innovation-insider/id=7732/ http://www.ipwatchdog.com/2009/12/14/holiday-gift-ideas-from-the-innovation-insider/id=7732/ This is straight from the “you have to be kidding me” file, and for more reasons than immediately are apparent simply by looking at the invention. This invention is a doll urn, which allows for the storing of a human’s or a pet’s ashes. The invention comprises a doll body, a doll head, a doll top, and a voice recorder for recording or playing a message. Disposed in the doll head is an internal compartment, wherein a secure container for holding the ashes may be inserted into the internal compartment via an aperture on the doll head. The doll top comprises a stopper for fitting into the aperture so as to prevent ashes from spilling out of the internal compartment. In one particular version the name of the deceased is imprinted on one foot and the birth date and date of death are imprinted on the other foot (see Figure 6). 12 December 2009 http://www.ipwatchdog.com/2009/12/12/obscure-patent-doll-urn-issued-in-10-months/id=7712/ http://www.ipwatchdog.com/2009/12/12/obscure-patent-doll-urn-issued-in-10-months/id=7712/ This came as quite a surprise, and was even a little shocking. Last year, on Monday, September 22, 2008, the United States Court of Appeals for the Federal Circuit decided the much anticipated design patent case – Egyptian Goddess v. Torkiya. This decision is quite important because it changed the law applicable to design patent infringement in a way that has made design patents much stronger than they have ever been in the past. During fiscal year 2008 the number of design patent applications peaked at 28,217 design patent applications filed. During fiscal year 2009 there were only 25,581 design patent applications filed, for a decline of about 9.4%. 11 December 2009 http://www.ipwatchdog.com/2009/12/11/surprisingly-us-design-patent-filings-down-in-2009/id=7698/ http://www.ipwatchdog.com/2009/12/11/surprisingly-us-design-patent-filings-down-in-2009/id=7698/ I applaud Popular Mechanics for tackling the under-covered issue of patent reform in Inventors Slam Patent Reform Effort. However, I disagree with some of the magazine’s assertions. The proposed reform calls for a post-grant review process – itself controversial because some believe larger companies will be able to tie up patents with so-called serial challenges. The bill provides the ability to challenge the patent in a post-grant-review proceeding for one year following issuance based on a broad array of grounds related to patentability. 10 December 2009 http://www.ipwatchdog.com/2009/12/10/a-critique-of-popular-mechanics-patent-reform-article/id=7663/ http://www.ipwatchdog.com/2009/12/10/a-critique-of-popular-mechanics-patent-reform-article/id=7663/ If you can believe it, there are a variety of individuals across the Internet reporting that Global Findability is suing the creators of Knowing for patent infringement based on the fact that the plot of the film relates to an encoded message that is discovered to have predicted the date of every major tragedy for the last 50 years. If you have not seen the movie, to get a flavor watch the brief trailer below. Apparently, the patent haters are saying that Global Findability is suing the makers of the movie because the science-fiction plot, devices, methods and/or code referenced in the movie infringes the patent. Absolutely crazy! 10 December 2009 http://www.ipwatchdog.com/2009/12/10/science-fiction-patent-haters-and-useless-federal-complaints/id=7655/ http://www.ipwatchdog.com/2009/12/10/science-fiction-patent-haters-and-useless-federal-complaints/id=7655/ Patent and Trademark Depository Librarians read your October 25, 2009 blog entry, USPTO Designates New PTDL, But What About Online, which makes a strong and most welcome call for fully indexed access to all US Patents back to 1790. Many PTDL librarians have called for such access for the past decade. State of the art OCR of USPTO’s image files could greatly enhance field indexing, especially if it offered better search options than Google Patents, such as full Boolean and proximity search. 9 December 2009 http://www.ipwatchdog.com/2009/12/09/letter-to-the-editor-many-ptdl-librarians-support-fully-indexed-access-to-all-us-patents/id=7633/ http://www.ipwatchdog.com/2009/12/09/letter-to-the-editor-many-ptdl-librarians-support-fully-indexed-access-to-all-us-patents/id=7633/ European Union regulators on Wednesday dropped an antitrust investigation into Rambus Inc. after the company agreed to cap royalty fees for memory chip patents. In an agreement reached between EU regulators and Rambus, Rambus will not charge any royalties for SDR and DDR chip standards and to bring fees for newer versions of DDR down from 3.5 percent to 1.5 percent for five years. This settlement comes in an antitrust investigation launched by the European Commission in 2007 charging Rambus with monopolistic abuse relating to the allegedly unreasonable royalties for patents that were alleged to have been fraudulently hidden and ultimately set as industry standards. This should once and for all close the matter of whether Rambus engaged in anticompetitive conduct by participating in industry standard setting. Over the years I have been critical of Rambus, but as the whole story has unfolded I cannot help but notice that something just doesn’t add up. Either Rambus was engaged in one of the most epic patent fraud of all time, or certain government regulators on both sides of the Atlantic had it out for Rambus. 9 December 2009 http://www.ipwatchdog.com/2009/12/09/rambus-patent-related-antitrust-saga-appears-to-be-over/id=7619/ http://www.ipwatchdog.com/2009/12/09/rambus-patent-related-antitrust-saga-appears-to-be-over/id=7619/ The meaning of words often depends on the context in which they appear. That principle is also true of terms which appear in patent claims. In Ultimax Cement Manufacturing Corp. v. CTS Cement Manufacturing Corp., the Federal Circuit reaffirmed that the context matters in reversing a district court grant of summary judgment that certain patent claims were not infringed or were invalid for indefiniteness under the second paragraph of 35 U.S.C. § 112. In fact, the district court in Ultimax Cement repeatedly went astray in failing to interpret two disputed claim terms in the appropriate context. 8 December 2009 http://www.ipwatchdog.com/2009/12/08/cafc-rules-claim-terms-must-be-construed-in-context/id=7613/ http://www.ipwatchdog.com/2009/12/08/cafc-rules-claim-terms-must-be-construed-in-context/id=7613/ The USPTO has announced a pilot program to accelerate the examination of certain green technology patent applications. The announcement was short on details, which will apparently be forthcoming, but the move to accelerate green technology patents is one that can and should pay off handsomely. Under the pilot program, for the first 3,000 applications related to green technologies in which a proper petition is filed, the agency will examine the applications on an accelerated basis. According to the press release issued by the USPTO, additional details on the pilot program will be available in the Federal Register and via the USPTO’s website. 8 December 2009 http://www.ipwatchdog.com/2009/12/08/patent-office-to-accelerate-green-technology-patents/id=7609/ http://www.ipwatchdog.com/2009/12/08/patent-office-to-accelerate-green-technology-patents/id=7609/ It is that time of the year when we frantically look for gifts for Christmas or Hanukkah. Christmas comes each year predictably on December 25th, but Hanukkah moves around and this year will start at sundown on December 11th, so time is running short. With the economy the way it is, extravagant gifts are likely not going to be as popular this year in many circles, but there is no denying that there is something special about both giving and receiving this time of year. With that in mind I thought I would provide some holiday shopping tips this year. Below are some excellent gifts for any inventor, and the price for most should be attainable for almost any budget. 7 December 2009 http://www.ipwatchdog.com/2009/12/07/shopping-guide-holiday-gift-ideas-for-inventors/id=7597/ http://www.ipwatchdog.com/2009/12/07/shopping-guide-holiday-gift-ideas-for-inventors/id=7597/ This invention relates to outerwear or rain gear in the form of a cone, which is made of a substantially waterproofed material. Substantially waterproof? Who wants to buy a “substantially waterproof” raincoat? Notwithstanding, the use of that term is fine in patent law as long as it provides some relationship that can be appreciated. I don’t want to get too caught up here with legalities and miss the point that this patent covers a cone shaped garbage bag with arm holes and a face hole. In terms of commercial viability the patent explains that just about anyone would be inclined to have a spare disposable raincoat in their pocket rather than carrying around an umbrella all day long. Again, doesn’t a garbage bag work for this? Furthermore, isn’t everything disposable on some level? 6 December 2009 http://www.ipwatchdog.com/2009/12/06/obscure-patent-disposable-rainwear/id=7591/ http://www.ipwatchdog.com/2009/12/06/obscure-patent-disposable-rainwear/id=7591/ Products that compete with innovative biologics can still be introduced during the period of data exclusivity. A period of data exclusivity merely means that those who do not innovate cannot piggyback off the hard work of innovators and rely on the research conducted by the innovator company. They must conduct their own safety and efficacy research and testing to obtain FDA approval and, obviously, not infringe the patents owned by the innovator. So can we please stop using the world “monopoly”? No matter how many times it is used it will never accurately describe the protections provided. How else, for example, could Microsoft and Apple both have patent portfolios? How else could Motorola and Nokia have patent portfolios? How else could AMD and IBM have patent portfolios? And so on, and so on… 6 December 2009 http://www.ipwatchdog.com/2009/12/06/fact-vs-fiction-the-truth-on-biologics-and-biosimilars/id=7579/ http://www.ipwatchdog.com/2009/12/06/fact-vs-fiction-the-truth-on-biologics-and-biosimilars/id=7579/ Mike Drummond, the Editor of Inventors Digest, sat down for an interview with David Kappos a few weeks ago while he was in Alexandria, Virginia, attending the Independent Inventors Conference. What follows are excerpts from Drummond’s exclusive interview with Kappos. You can read the full story in the magazine’s January 2010 issue, which if you are not getting you really should! So subscribe to Inventors Digest today! Oh yes… to keep within the spirit of the obviously unconstitutional FTC endorsement guidelines that went into effect on December 1, 2009, I am endorsing Inventors Digest and suggesting you should subscribe because I think it is an excellent magazine. 4 December 2009 http://www.ipwatchdog.com/2009/12/04/sneak-peek-of-interview-with-david-kappos/id=7570/ http://www.ipwatchdog.com/2009/12/04/sneak-peek-of-interview-with-david-kappos/id=7570/ Sharing is code for permanently borrowing without remuneration (i.e., stealing) and intellectual property is code for innovation (i.e., patents). So the collective wisdom of much of the international community seems to be that individuals and businesses that have devoted substantial amounts of time, money and energy to develop new and unique innovations should simply donate those to the cause for free. As if that would encourage any further advances or the march of innovation in the future! Simply put, a terribly bad idea even if global warming were real. It is nearly criminal given that so much of this all now seems to be a hoax. 3 December 2009 http://www.ipwatchdog.com/2009/12/03/say-no-to-patent-sharing-in-wake-of-global-warming-fraud/id=7563/ http://www.ipwatchdog.com/2009/12/03/say-no-to-patent-sharing-in-wake-of-global-warming-fraud/id=7563/ Earlier today in Perfect Web Technologies, Inc. v. Infousa, Inc. the United States Court of Appeals for the Federal Circuit determined that the district court properly ruled the relevant patent claims of US Patent No. 6,631,400 were invalid as a result of being obvious as a result of being common sense. As much as I hate to say it, and as much as Congress really needs to undo the KSR obviousness test, this particular “invention” was, well obviously obvious and pretty clearly nothing more than the application of common sense. 2 December 2009 http://www.ipwatchdog.com/2009/12/02/cafc-rules-patent-claims-obviously-common-sense/id=7556/ http://www.ipwatchdog.com/2009/12/02/cafc-rules-patent-claims-obviously-common-sense/id=7556/ In probably the most significant case since In re Bilski, the en banc Federal Circuit in Ariad Pharmaceuticals v. Eli Lilly is about to ponder two questions: (1) is there a separate and distinct “written description” requirement in the first paragraph of 35 U.S.C. Sec. 112?; and (2) if there is, what does it mean? My answer to the first question is an emphatic “yes”, unless you want to overrule the 1996 case of In re Alton which clearly says that the “written description” requirement is ”distinct from the enablement and best mode requirements.” My answer to the second question is that the “written description” requirement fixes what the inventor(s) actually demonstrated and considered their invention to be at the time the patent application was filed (also known as the “what did the inventor(s) actually possess?” view). 2 December 2009 http://www.ipwatchdog.com/2009/12/02/some-heretical-thoughts-on-the-ariad-case-what-does-%E2%80%9Cany-person-skilled-in-the-art%E2%80%9D-mean-and-should-it-apply-to-the-%E2%80%9Cwritten-description%E2%80%9D-requirement/id=7550/ http://www.ipwatchdog.com/2009/12/02/some-heretical-thoughts-on-the-ariad-case-what-does-%E2%80%9Cany-person-skilled-in-the-art%E2%80%9D-mean-and-should-it-apply-to-the-%E2%80%9Cwritten-description%E2%80%9D-requirement/id=7550/ I am pleased to let everyone know that the ABA Journal has selected the IPWatchdog Blog as one of the top 100 best websites by lawyers, for lawyers. Late yesterday I received the e-mail from the ABA Journal informing me that IPWatchdog.com was included in the 2009 ABA Journal Blawg 100. Now it is time to vote your favorites in each of the Blawg 100’s 10 categories. Voting ends Dec. 31, 2009. 1 December 2009 http://www.ipwatchdog.com/2009/12/01/ipwatchdog-selected-as-top-100-blog-by-aba-journal/id=7516/ http://www.ipwatchdog.com/2009/12/01/ipwatchdog-selected-as-top-100-blog-by-aba-journal/id=7516/ The United States is taking steps to honor the United Nations Declaration on the Rights of Indigenous Peoples even though it is not binding through International Law, and even though it directly contradicts US patent law. Hurray, hurray! Of course, please don’t read the patent laws and realize that under US law traditional knowledge of peoples outside the US is in fact patentable. Please also don’t notice that implementing the new “reject based on knowledge existing outside the US” initiative directly contradicts 35 U.S.C. 102. And for goodness sakes, whatever you do don’t tell others that this will further harm a weak US economy! 30 November 2009 http://www.ipwatchdog.com/2009/11/30/us-patent-office-to-reject-based-on-traditional-knowledge/id=7502/ http://www.ipwatchdog.com/2009/11/30/us-patent-office-to-reject-based-on-traditional-knowledge/id=7502/ The primary argument is that software patents inhibit innovation, which is pure fiction of course. This devolves quickly into the substance of what they believe; namely that software should be free, which really means you create it and I steal it. But, once again, I digress. I just can’t help myself. Without further ado, here are some interesting recently granted patents, which must be far more important than software because no one is suggesting these inventions be determined to be unpatentable subject matter. 29 November 2009 http://www.ipwatchdog.com/2009/11/29/obscure-patents-these-are-so-much-better-than-software/id=7476/ http://www.ipwatchdog.com/2009/11/29/obscure-patents-these-are-so-much-better-than-software/id=7476/ It is that time of the year for Americans to give thanks for all the many things we have and enjoy — family, friends, country and of course patents! Here is hoping that everyone has a restful, peaceful and very happy Thanksgiving! 25 November 2009 http://www.ipwatchdog.com/2009/11/25/happy-thanksgiving-thanksgiving-and-turkey-patents/id=7408/ http://www.ipwatchdog.com/2009/11/25/happy-thanksgiving-thanksgiving-and-turkey-patents/id=7408/ Inventors Digest held a youth innovation essay contest, in part to celebrate National Inventors Month, last August. The four winning essays are at InventorsDigest.com. The magazine received and reviewed some 400 essays from across the country. Inventors Digest, in cooperation with IPWatchdog, is showcasing several essays deserving of honorable mention. This is the second Honorable Mention Essay. The first was written by Hannah Joy Coad and was titled Nanobots – An Invention of the Future. This and other essays illustrate the creativity and optimism of today’s youth. 24 November 2009 hhttp://www.ipwatchdog.com/2009/11/24/honorable-mention-gene-therapy-double-helix-health-care/id=7375/ http://www.ipwatchdog.com/2009/11/24/honorable-mention-gene-therapy-double-helix-health-care/id=7375/ In this release, the authors (Kaye Scholer LLP’s Patent Group) update and expand Pharmaceutical and Biotech Patent Law with new discussion of many topics, including double patenting, inequitable conduct, product by process claims, attorneys fees under Hatch-Waxman and more. 24 November 2009 http://www.ipwatchdog.com/2009/11/24/pli-update-pharmaceutical-and-biotech-patent-law/id=7367/ http://www.ipwatchdog.com/2009/11/24/pli-update-pharmaceutical-and-biotech-patent-law/id=7367/ t seems that news breaks whenever I am away on business, so it is either a conspiracy or I just travel for business too much! In any event, by now most in the patent community are likely aware that Chief Judge Paul Michel of the United States Court of Appeals for the Federal Circuit announced on Friday, November 20, 2009, that he will not be taking senior status when it is available to him and instead will be stepping down from the Federal Circuit effective May 31, 2010. As Judge Michel exits, presumably to take on a more active and vocal role in patent reform efforts, Judge Randall Rader will assume the duties of the Chief Judge of the Federal Circuit. 23 November 2009 http://www.ipwatchdog.com/2009/11/23/michel-announces-retirement-rader-era-set-to-begin/id=7358/ http://www.ipwatchdog.com/2009/11/23/michel-announces-retirement-rader-era-set-to-begin/id=7358/ In the ACLU v. Myriad case, the ACLU has alleged that the patents involved in the case cover genes found in nature. This statement is so patently (pun intended) false, that the ACLU either purposely deceived the court or is guilty of gross negligence about the facts plead in the case. As Gene points out in his post, Fired up: Challenging the Constitutionality of the Patent Act none of the claims in question cover genes found in nature. These claims are directed to screening, identifying, and isolating the BRCA1/2 genetic sequences. This is not a claim to the gene itself, but methods of screening, identifying and isolating the genes, which are processes not found in nature. This is no different than a patent having claims for screening, identifying or isolating gold. 20 November 2009 http://www.ipwatchdog.com/2009/11/20/aclu-should-be-hit-with-rule-11-sanctions/id=7351/ http://www.ipwatchdog.com/2009/11/20/aclu-should-be-hit-with-rule-11-sanctions/id=7351/ It seemed like a very creative plan, so I offered my assistance and over the span of a couple hours we put together a mock patent application for a method of getting an interview with one David Kappos. I turned to my own invention — the Invent and Patent System — to create a first draft of the application, sent it off to Carter and after the exchange of a few e-mails it was good enough for its intended purpose and I understand it was faxed to the Patent Office. It did indeed help Carter cut through the red tape and schedule an interview with Director Kappos for early next week. Mission accomplished! 19 November 2009 http://www.ipwatchdog.com/2009/11/19/method-for-getting-an-interview-with-david-kappos/id=7336/ http://www.ipwatchdog.com/2009/11/19/method-for-getting-an-interview-with-david-kappos/id=7336/ There is no denying that the assault on intellectual property rights, particularly patent rights, is a major problem and if it continues innovation will be seriously and negatively impacted. There is also no denying the fact that those boldly challenging patent rights are anti-patent and would prefer no patents at all. Therefore, while your particular innovations may not be challenged directly the assault on patent rights in one sector is and should be a concern for all innovators and patent owners. It is time for us – all to stand up for innovation and take action. 18 November 2009 http://www.ipwatchdog.com/2009/11/18/call-to-action-amici-briefs-in-aclu-gene-patent-challenge/id=7326/ http://www.ipwatchdog.com/2009/11/18/call-to-action-amici-briefs-in-aclu-gene-patent-challenge/id=7326/ As I travel cross country I will be working on a few articles I have wanted to get to for some time, but which obviously don’t require contemporaneous research. One such article is a different kind of KSR perspective. Since the infamous and horribly troubling decision by the Supreme Court in KSR I have from time to time looked at the crazy patents that continue to be issued by the US Patent Office and concluding that KSR is much ado about nothing. I thought it might be fun to identify a few inventions that clearly are not obvious, because if they were as obvious as they seem a variety of very smart people would have figured them out long ago. This is the first in what will hopefully be a fun series of obvious non-obvious inventions. 17 November 2009 http://www.ipwatchdog.com/2009/11/17/obviously-non-obvious-and-patentable-inventions-part-i/id=7319/ http://www.ipwatchdog.com/2009/11/17/obviously-non-obvious-and-patentable-inventions-part-i/id=7319/ President Obama, who is currently attending the Asia-Pacific Economic Cooperation forum in Shanghai, China, along with other world leaders announced that they no longer have ambitions of reaching a binding international agreement on climate change during the United Nations Climate Change Conference in Copenhagen, which begins December 7, 2009 and runs through December 18, 2009. This is extremely important for those who are interested in strong intellectual property protections, particular patent rights. It had been feared that in order to obtain an international agreement the Obama Administration would broker the patent rights held by US concerns and give them to third world and developing nations in exchange for them taking steps to curb carbon dioxide emissions. 15 November 2009 http://www.ipwatchdog.com/2009/11/15/no-climate-deal-in-copenhagen-good-for-green-patent-rights/id=7298/ http://www.ipwatchdog.com/2009/11/15/no-climate-deal-in-copenhagen-good-for-green-patent-rights/id=7298/ Earlier today the Chief Judge Paul Michel of the United States Court of Appeals for the Federal Circuit issued an Order declaring the pending appeal of Dr. Tafas and GlaxoSmithKline moot due to the fact that USPTO Director David Kappos has withdrawn the rules. The Federal Circuit per Judge Michel, however, denied the motion of the USPTO and GlaxoSmithKline to vacate the district court opinion authored by Judge Cacheris. Michel and the rest of the Federal Circuit (save Judge Lourie) announced in clear and direct terms that the USPTO is “the losing party in the district court action," which should help Tafas' claim for attorneys fees. 13 November 2009 http://www.ipwatchdog.com/2009/11/13/just-in-federal-circuit-denies-vacatur-in-uspto-rules-case/id=7290/ http://www.ipwatchdog.com/2009/11/13/just-in-federal-circuit-denies-vacatur-in-uspto-rules-case/id=7290/ After Monday’s oral argument, many are trying to divine how the U.S. Supreme Court will rule in the Bilski v. Kappos, and whether the Federal Circuit’s “machine or transformation” test will survive. Having now read the oral argument transcript, my own prognostication is that the Federal Circuit’s “machine or transformation” test will be trounced as too inflexible, although the Supreme Court may still retain it as a test, but not the only one, like the “teaching, suggestion and motivation” (TSM) test in KSR International v. Teleflex. I also predict that the Supreme Court will affirm the PTO ruling that Bilski’s claim on a method for hedging risks is not “patentable-eligible” subject matter under 35 USC § 101, but on the ground that it covers an “abstract idea,” as suggested by Judge Rader’s dissent in Bilski. 12 November 2009 http://www.ipwatchdog.com/2009/11/12/the-bilski-oral-argument-speaks-volume-start-with-35-u-s-c-%C2%A7-112/id=7272/ http://www.ipwatchdog.com/2009/11/12/the-bilski-oral-argument-speaks-volume-start-with-35-u-s-c-%C2%A7-112/id=7272/ Now that the Bilski oral arguments are complete and the case has been submitted to the Court for consideration the guessing game begins. The Supreme Court has been known to provide some guidance about what is not appropriate to bookend the limits of what is acceptable, then kicking a matter back down for lower courts to address the minutia. That is certainly frustrating, but in keeping with a small “c” conservative judicial approach where nothing more than is absolutely necessary has been said. If only the Federal Circuit had done that we wouldn’t be here. In trying to piece together what might happen I think we should dissect some of the patent writings of the Justices, so without further ado lets begin with Justice John Paul Stevens. 11 November 2009 http://www.ipwatchdog.com/2009/11/12/exploring-justice-stevens-patent-past-for-clues/id=7252/ http://www.ipwatchdog.com/2009/11/12/exploring-justice-stevens-patent-past-for-clues/id=7252/ The highlights: for this argument, the general admission line formed before midnight on Sunday! Only the 1st 40-50 of the 300+ people in line were admitted. The rest of the seats were taken by press, court members, and those with reservations. So, it was, even in the world of the Supreme Court, a big case. The line for admission became the 5 minute (sightseeing/tourist) line in short order. We were shuffled through, some re-cycling themselves in line so as to hear as much of the argument as they could. Real dedication here. Outside, tourists had asked what was so important that had all the people lined up; when told it was a patent case, universally none could understand why that would matter, and generate such a line! 10 November 2009 http://www.ipwatchdog.com/2009/11/10/a-birds-eye-view-of-the-bilski-oral-argument/id=7240/ http://www.ipwatchdog.com/2009/11/10/a-birds-eye-view-of-the-bilski-oral-argument/id=7240/ At 2pm ET on November 9, 2009, Chief Justice John Roberts gaveled the session to a close announcing that the case has now been submitted. The arguments were good, and the Court was most assuredly hot, peppering both sides with question after question seeking to probe the issues. At the end of the day I have to think that it does not bode well for Bilski and his method, but if the questions raised by the Supreme Court are any indication it seems like the Federal Circuit will be overruled and the software and medical industries will dodge a Bilski bullet. For more analysis be sure and check back in the coming days, weeks and months, and join me for a PLI Bilski briefing on Wednesday, November 11 at 1pm ET. 9 November 2009 http://www.ipwatchdog.com/2009/11/09/bilski-arguments-complete-at-the-us-supreme-court/id=7217/ http://www.ipwatchdog.com/2009/11/09/bilski-arguments-complete-at-the-us-supreme-court/id=7217/ Later today the United States Supreme Court will hear oral arguments in the Bilski matter. It is not an overstatement to say that the fate of much future innovation rests squarely on the Supreme Court getting this one right, so lets hope for the best and pray that they do get this one right. There is every reason to believe that the Supreme Court will accurately and appropriately reach a sensible decision relative to patentable subject matter, but there is also at least some fear that they may get it wrong, and wrong to the point where vast amounts of innovation will cease, stall and simply never develop. Because the Federal Circuit as a whole sitting en banc decided not to demonstrate judicial restraint and completely ignored long standing judicial principles associated with answering only the limited questions presented by the case, far more was said in Bilski then necessary. 9 November 2009 http://www.ipwatchdog.com/2009/11/09/argument-day-in-bilski-at-us-supreme-court/id=7209/ http://www.ipwatchdog.com/2009/11/09/argument-day-in-bilski-at-us-supreme-court/id=7209/ I have been an ardent supporter of first to invent for years, but I have been questioning my views for some time, as I speak with attorneys, inventors and others. Then several things recently caused me to realize the benefits of first to file for the independent inventor community, and then I heard USPTO Director David Kappos explain that in 2007 only 7 cases were decided in favor of an individual who invented first and filed second. Kappos explained “we already have a de facto first to file system.” All this arguing for 7 cases? Cases where once the rule changes behaviors will change to the point where some, perhaps most or even all of those 7 cases will never happen again because everyone will know they need to file rather than wait. 7 November 2009 http://www.ipwatchdog.com/2009/11/07/much-ado-about-nothing-over-first-to-file/id=7191/ http://www.ipwatchdog.com/2009/11/07/much-ado-about-nothing-over-first-to-file/id=7191/ There were many, including myself, who wondered what direction the Patent Office would take under new leadership, and while it is early to give a grade, if we are going to be honest and give an interim report card the only fair grade to give at this point is an A. From top to bottom there is an optimism that exudes from everyone I spoke to at the Patent Office. Changes that ordinarily would take months are taking weeks, and the political leadership seems to REALLY understand the importance of innovation. In fact, in video-taped comments played during lunch today Commerce Secretary Gary Locke said that the Obama Administration pledges to provide US inventors the strongest IP protection available anywhere in the world. What more could we realistically ask for at this point? 6 November 2009 http://www.ipwatchdog.com/2009/11/06/secretary-locke-promises-strongest-ip-protection-in-the-world/id=7182/ http://www.ipwatchdog.com/2009/11/06/secretary-locke-promises-strongest-ip-protection-in-the-world/id=7182/ Director David Kappos address the attendees during a lunch speech and then again during the reception at the end of the day. Congressman Dana Rohrabacher (R-CA) also spoke during the reception last night, giving a heavily pro-inventor, pro-patent speech to a very receptive audience. The one potential hot-button issue to be discussed at this conference and taken directly head on by Director Kappos was patent reform, and in particular those issues that may be seen by some as difficult to swallow in the independent inventor community. Credit definitely needs to be given to Kappos for now shying away, addressing concerns and answering questions. I think he even persuaded some in the audience, one of whom was me. 6 November 2009 http://www.ipwatchdog.com/2009/11/06/kappos-talks-patent-reform-at-uspto-inventors-conference/id=7172/ http://www.ipwatchdog.com/2009/11/06/kappos-talks-patent-reform-at-uspto-inventors-conference/id=7172/ The Center for a Stateless Society has declared me a patent twit. Yes, you read the name correctly. These folks are nothing more than anarchists who hold a grudge, which I realize is a redundant characterization. In any event, this is mighty high praise coming from an organization that describes themselves as a project “dedicated to building public awareness of, and support for, market anarchism.” So why do I care? Why do I even given them the time of day? It certainly isn’t to promote them or to even engage in a debate with them. I write only to disclose the biases of those who have an anti-patent agenda. With the ever building assault on intellectual property rights and patents in particular I think it is imperative that decision makers understand the positions and biases of those leading that anti-patent charge. 4 November 2009 http://www.ipwatchdog.com/2009/11/04/gene-quinn-declared-patent-twit-of-the-week/id=7161/ http://www.ipwatchdog.com/2009/11/04/gene-quinn-declared-patent-twit-of-the-week/id=7161/ I will be in attendance at the oral argument, which will take place after a lunch recess. I will be joined by John White , the creator of the PLI Patent Bar Review Course and patent attorney with Berenato and White. My intention is to write and post throughout the day on Monday, leading up to the oral arguments and then in the afternoon as soon as I an after oral arguments are completed. John and I will then participate in a PLI Hot Topic Briefing on Wednesday, November 11, 2009 from 1pm to 2pm ET. We will be joined on this briefing by Scott M. Alter of Faegre and Benson LLP and Douglas R. Nemec of Skadden, Arps, Slate, Meagher and Flom LLP, both of whom along with John White are co-chairs of PLI’s 4th Annual Patent Law Institute. The title of the PLI briefing is Bilski Supreme Court Arguments: Eyewitness Report and Expert Analysis, and CLE credit is available. 4 November 2009 http://www.ipwatchdog.com/2009/11/04/bilski-eyewitness-report-and-expert-analysis/id=7150/ http://www.ipwatchdog.com/2009/11/04/bilski-eyewitness-report-and-expert-analysis/id=7150/ Nevertheless, the frivolous ACLU lawsuit that seeks to use the US Constitution to declare patent claims invalid is allowed to proceed regardless of the facts and in spite of there being no justifiable statutory theory for the plaintiffs to purse. Instead, Judge Sweet is allowing the plaintiffs to cite generalized Constitutional harm, in direct and open violation of well establish standing principles. They seek to challenge patents because they want others to be able to use the Myriad Genetics techniques for free and without paying. They claim that patents control thoughts, and therefore violate the First Amendment. How ridiculous! 3 November 2009 http://www.ipwatchdog.com/2009/11/03/fired-up-challenging-the-constitutionality-of-the-patent-act/id=7144/ http://www.ipwatchdog.com/2009/11/03/fired-up-challenging-the-constitutionality-of-the-patent-act/id=7144/ In one of the worst opinions I have ever read from any federal court, the United States District Court for the Southern District of New York ruled earlier today that the ACLU challenge against the Myriad Genetics patents and the United States Patent and Trademark Office for issuing patents can proceed. Procedurally the posture was a Motion to Dismiss, which are granted only in rare and extraordinary cases. What makes this decision surprising is that District Court Judge Robert W. Sweet, the 87 year old judge who has been on senior status since 1991 and who was appointed by President Jimmy Carter, recognized that there is no valid basis to bring this lawsuit but allowed it to proceed anyway. 2 November 2009 http://www.ipwatchdog.com/2009/11/02/district-court-rules-aclu-gene-patent-challenge-may-proceed/id=7115/ http://www.ipwatchdog.com/2009/11/02/district-court-rules-aclu-gene-patent-challenge-may-proceed/id=7115/ Bob was a patent lawyer, an inventor and the founder of Franklin Pierce Law Center, where I received both my JD and LL.M. degrees. He was a fierce advocate for independent inventors, a tremendous patent attorney and world-class inventor and member of the National Inventors Hall of Fame. In the popular press he was known as the guy who chased the Loch Ness monster. Yes, he did go looking for the Loch Ness monster numerous times, famously chasing images of the creature and appearing in several popular TV documentaries on Loch Ness and Nessie. 2 November 2009 http://www.ipwatchdog.com/2009/11/02/rest-in-peace-friend-robert-h-rines-1922-2009/id=7097/ http://www.ipwatchdog.com/2009/11/02/rest-in-peace-friend-robert-h-rines-1922-2009/id=7097/ Last Monday, October 26, 2009, I had the opportunity to discuss gene patents on GritTV with host Laura Flanders. I appeared on the show via Skype video along with David Koepsell, the author of Who Owns You?, who was in the studio. I think this segment came out quite well, and Flanders did an excellent job. Before the tape started rolling she told us both that after reading the material we both submitted she didn’t know what she believed, because both sides raise good points. I think you will see she did a very even handed job, and I hope she picks up with this more in the future. It was clear she did her homework and facilitated a fair exchange, which is all you can ask for in such a format. 2 November 2009 http://www.ipwatchdog.com/2009/11/02/quinn-and-koepsell-discuss-gene-patents-on-grittv/id=7087/ http://www.ipwatchdog.com/2009/11/02/quinn-and-koepsell-discuss-gene-patents-on-grittv/id=7087/ The History of Software Patents Part I appeared in January 2009, and focused on US Supreme Court cases in the software space, namely Gottschalk v. Benson and Diamond v. Diehr. The History of Software Patents Part II appeared in April 2009 and focused on Federal Circuit development of law in Arrhythmia Research Technology, Inc. v. Corazonix Corp., and the supposed demise of the Freeman-Walter-Abele test. Part III now picks with In re Alappat. Sitting en banc in Alappat the Federal Circuit did not apply the Freeman- Walter-Abele test, rather opting for the mathematical subject matter exception. 1 November 2009 http://www.ipwatchdog.com/2009/11/01/history-of-software-patents-iii-in-re-alappat/id=7059/ http://www.ipwatchdog.com/2009/11/01/history-of-software-patents-iii-in-re-alappat/id=7059/ There are issued US patents for virtually ever occasion, and certainly for every holiday. I like to try and profile holiday patents, which are always interesting if not outright funny at times. So with no further ado, I give you some Halloween Patents! Climate adaptive halloween costume, a Halloween tree and Halloween candy carriers. Happy Halloween everyone, and safe trick-or-treating kids! 31 October 2009 http://www.ipwatchdog.com/2009/10/31/happy-halloween-halloween-patents/id=7027/ http://www.ipwatchdog.com/2009/10/31/happy-halloween-halloween-patents/id=7027/ The complaint filed by Red Bend in the United States Federal District Court for the District of Massachusetts alleges that the Google Chrome browser infringes one or more claims of the ‘552 Patent either literally or under the doctrine of equivalents. The complaint is rather bare bones, does not identify the claims that are believed to be infringed and upon initial reading I thought this type of complaint by ambush, of which I am not a fan, wreaked of a patent troll. That was my thought at least until I got to the end and see that Dwyer and Collora, a Boston law firm, are local counsel and Baker Botts is seeking admission pro hac vice. 31 October 2009 http://www.ipwatchdog.com/2009/10/31/google-sued-for-patent-infringement-over-chrome-courgette/id=7021/ http://www.ipwatchdog.com/2009/10/31/google-sued-for-patent-infringement-over-chrome-courgette/id=7021/ We each find ourselves at any point in time being where we are as a result of the journey we have taken. It is, therefore, not surprising that those who are patent attorneys will recommend that you should first file a patent application, and it is not surprising that those who are business coaches or licensing executives may recommend a different first step on the path. When I hear people say that inventors do not need to start with a patent and can wait to file a patent application I cringe. It is not that this is universally bad advice, but it certainly comes with a lot of risk. I wonder whether inventors and small businesses are informed of the associated risk, and whether they realize that by waiting they may forever lose the ability to obtain a patent. 30 October 2009 http://www.ipwatchdog.com/2009/10/30/the-risk-of-not-immediately-filing-a-patent-application/id=7014/ http://www.ipwatchdog.com/2009/10/30/the-risk-of-not-immediately-filing-a-patent-application/id=7014/ Earlier this week, on October 27, 2009, Amazon Technologies, Inc., received US Patent No. 7,610,382, which relates to a computer implemented method of marking copies of content distributed on a network. More specifically, the patent discloses and claims a variety of embodiments of a method and associated apparatus for programmatically substituting synonyms into text content distributed through a Web service. There is no doubt this is an innovation and a good example running up to the Bilski Supreme Court arguments why software innovations should be patentable if they satisfy the other patentability requirements; namely if they are new and non-obvious. 30 October 2009 http://www.ipwatchdog.com/2009/10/30/amazon-software-patent-shakespeare-copyright-infringement/id=6999/ http://www.ipwatchdog.com/2009/10/30/amazon-software-patent-shakespeare-copyright-infringement/id=6999/ Work sharing for prosecuting patent applications was suggested at the WIPO Symposium as a solution to existing inefficiencies and PPH projects were extensively discussed. It was concluded that the PCT should serve as the backbone for work sharing in relation to patent prosecution to support existing bilateral PPH agreements. Representatives of the Trilateral Offices (i.e., the European Patent Office, Japan Patent Office and United States Patent and Trademark Office) attending the Symposium all agreed in principle to integrating PCT work products, specifically the PCT international preliminary reports on patentability, into their ongoing PPH projects that are set to start in early 2010. 29 October 2009 http://www.ipwatchdog.com/2009/10/29/pph-agreements-to-leverage-pct-reports-on-patentability/id=6986/ http://www.ipwatchdog.com/2009/10/29/pph-agreements-to-leverage-pct-reports-on-patentability/id=6986/ Thirty-four members of Congress wrote a letter to Secretary of State Hillary Clinton urging her to steadfastly support strong intellectual property rights and not to given in to international demands that would weaken intellectual property rights, particularly patent rights. The concern expressed by these members of Congress centers around negotiations attempting to obtain an international agreement under the United Nations Framework Convention on Climate Change (UNFCCCC). This letter references a 432-0 vote in the United States House of Representatives on June 10, 2009, relative to an amendment to the Foreign Relations Authorization Bill, which stated that the United States should prevent any weakening of, and ensure robust compliance with and enforcement of, existing ip protections. 28 October 2009 http://www.ipwatchdog.com/2009/10/28/congress-urges-strong-ip-stance-in-un-climate-change-talks/id=6957/ http://www.ipwatchdog.com/2009/10/28/congress-urges-strong-ip-stance-in-un-climate-change-talks/id=6957/ A study released today by the Biotechnology Industry Organization (BIO) provides first-of-its-kind data on the importance of university/industry research and development partnerships to the U.S. economy. The study of university technology licensing from 1996 to 2007 shows a $187 billion dollar positive impact on the U.S. Gross National Product (GNP) and a $457 billion addition to gross industrial output, using very conservative models. 28 October 2009 http://www.ipwatchdog.com/2009/10/28/bio-study-us-economy/id=6943/ http://www.ipwatchdog.com/2009/10/28/bio-study-us-economy/id=6943/ We’ve all come across a product marked with the phrase, This product is covered by U.S. Patent No. (fill in the blank). Such marking puts the world on notice that the patent holder has exclusive rights to collect monetary damages from those who infringe their patent. While patentees are not obligated to display the patent number, the one factor they must always consider is the costly mistake of false marking. 28 October 2009 http://www.ipwatchdog.com/2009/10/28/decision-to-deceive-mismarking-products-with-bogus-patent-numbers-can-cost-you/id=6930/ http://www.ipwatchdog.com/2009/10/28/decision-to-deceive-mismarking-products-with-bogus-patent-numbers-can-cost-you/id=6930/ Apple was issued US Patent No. 7,608,775 earlier today relating to a method of changing time duration guiding a note along a beat ruler in a Graphical User Interface (GUI). This patent application was filed on January 7, 2005, the same day that several other GarageBand patent applications were filed, including US Patent No. 7,603,623, relating to methods to automatically correct timing of recorded audio in a GUI, which was issued just two weeks ago on October 13, 2009. According to USA Today, Apple’s GarageBand is far and away the most popular program for creating and recording music on the computer, since it’s free and shipped with every new Mac. GarageBand does come free with every Apple computer, and is a part of the iLife suite. If you have a Mac and do not have iLife you can download iLife ‘09 for $79. 27 October 2009 http://www.ipwatchdog.com/2009/10/27/apple-expands-patent-portfolio-relating-to-garageband/id=6912/ http://www.ipwatchdog.com/2009/10/27/apple-expands-patent-portfolio-relating-to-garageband/id=6912/ Federal funding, typically in the form of research grants, is often used to support university research. The Bayh-Dole Act also allows universities to retain title to invention rights in such research (referred to as “subject inventions”). See 35 U.S.C. § 202(c)(2). What the Federal Circuit has struggled with recently is what does “retain title” mean under Bayh-Dole, and especially where does the title to the “subject invention” initially reside. The case of Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. suggests the Federal Circuit “still doesn’t get it” on how title to “subject inventions” works under Bayh-Dole. 27 October 2009 http://www.ipwatchdog.com/2009/10/27/cafc-continues-to-struggle-with-how-title-to-subject-inventions-works-under-bayh-dole/id=6911/ http://www.ipwatchdog.com/2009/10/27/cafc-continues-to-struggle-with-how-title-to-subject-inventions-works-under-bayh-dole/id=6911/ At 6 p.m. CST on November 10, 2009, Foundation Surgical Hospital will present a live webcast of a partial knee replacement featuring the iUni® G2 Personalized Knee Resurfacing System. The live procedure will be performed by Dr. Terry Clyburn and Dr. Brian Parsley from Foundation Surgical Hospital in Houston, Texas. During the webcast, the viewing audience can email questions to the doctors. While this announcement tied together with discussion of proprietary technology is likely to capture a lot of attention for both Foundation Surgical Hospital and ConforMIS, ConforMIS has missed an excellent opportunity to tout its technology to a sophisticated audience by not including any patent numbers in the press release, and not having such information findable on its website. 27 October 2009 http://www.ipwatchdog.com/2009/10/27/webcast-of-knee-replacement-to-feature-patented-technology/id=6873/ http://www.ipwatchdog.com/2009/10/27/webcast-of-knee-replacement-to-feature-patented-technology/id=6873/ Determining what compounds are obvious under the doctrine of “structural similarity” can be a daunting challenge, even for those of us with a chemistry or pharmaceutical background. Add the doctrine of “inequitable conduct” to the “structural similarity” brew, and the plot truly thickens. But there’s enough schizophrenia about the structural differences between one prior art compound called Schmutz X and another prior art compound called Compound 24028 in AstraZeneca Pharmaceuticals LP v. Teva Pharmaceuticals, Inc. to make you reach for an antipsychotic drug like quetiapine which is at the heart of this case. 27 October 2009 http://www.ipwatchdog.com/2009/10/27/the-puzzling-difference-between-schmutz-x-and-compound-24028-in-astrazeneca/id=6866/ http://www.ipwatchdog.com/2009/10/27/the-puzzling-difference-between-schmutz-x-and-compound-24028-in-astrazeneca/id=6866/ The United States District Court for the District of Delaware handed Allergan, Inc. (NYSE:AGN) a victory last week in its patent infringement lawsuit brought against Exela PharmSci, Inc., Exela PharmSci Pvt., Ltd., Apotex, Inc. and Apotex Corp. The defendants had been seeking permission to market generic versions of Allergan’s drugs ALPHAGAN® P, which is indicated for the lowering of intraocular pressure (IOP) in patients with open-angle glaucoma or ocular hypertension. The patent infringement trial took place in March of 2009, but a final ruling was not handed down by the district court until Friday, October 23, 2009. Such a length of time between trial and handing down a decision is not uncommon, and at least several months can be expected in a patent litigation, particularly where the science is complex. 27 October 2009 http://www.ipwatchdog.com/2009/10/27/allergan-victory-in-alphagan%C2%AE-p-patent-infringemet-suit/id=6848/ http://www.ipwatchdog.com/2009/10/27/allergan-victory-in-alphagan%C2%AE-p-patent-infringemet-suit/id=6848/ The recent case of In re Lister is a painful reminder of the potential for “self-inflicted wounds” under the “printed publication” bar of 35 U.S.C. § 102(b) . Fortunately, the patent applicant in Lister was able to skirt around this hazard of his own making. The patent applicant, Dr. Richard Lister, was a Ph.D. clinical psychologist and an avid sportsman. Dr. Lister had grown weary of the “horrendously slow pace of a game of golf.” In response, he developed a method for playing recreational golf where the participant could “tee up their balls on every shot except for those taken from designated hazard areas or the putting green.” On August 5, 1996, he filed a patent application (the Lister Patent Application) for this method of playing golf. 27 October 2009 http://www.ipwatchdog.com/2009/10/27/patent-applicant-barely-avoids-%E2%80%9Cpublicly-accessible%E2%80%9D-hazard-of-own-copyrighted-manuscript-on-playing-golf/id=6852/ http://www.ipwatchdog.com/2009/10/27/patent-applicant-barely-avoids-%E2%80%9Cpublicly-accessible%E2%80%9D-hazard-of-own-copyrighted-manuscript-on-playing-golf/id=6852/ Earlier this month Technorati underwent an extreme makeover of sorts, not only with respect to the site design, but also with respect to how blogs are ranked. Technorati is now the fifth largest social media property, still well behind Facebook.com and MySpace.com, but somewhat surprisingly ahead of Twitter.com and Digg.com. The new Technorati not only focuses on trying to provide a better measure of the top blogs on the Internet at any given snapshot in time, having changed the familiar definition of what is required to obtain “authority.” In any event, I am pleased to report that IPWatchdog.com is doing quite well in the overall Technorati rankings, presently ranked #2,271 out of all blogs on the Internet, with an overall Technorati Authority of 568. 26 October 2009 http://www.ipwatchdog.com/2009/10/26/the-new-look-technorati-and-technorati-authority/id=6827/ http://www.ipwatchdog.com/2009/10/26/the-new-look-technorati-and-technorati-authority/id=6827/ Just 12 days ago I publicly resigned from the Board of Directors of the United Inventors Association over concerns I had with respect to the UIA becoming too familiar and cozy with Invent Help. Since that time I have received many e-mails and telephone calls regarding my resignation. I am writing this article because over the last 12 days it seems that many in the inventor community have been talking about my decision and then using my public resignation as an a way to bolster their own positions. I have no problem with that for the most part, but in relation to my resignation I am repeatedly hearing very negative things relating to Inventors Digest, which I think are unfair and inaccurate, so I would like to set the record straight with respect to what I believe. 26 October 2009 http://www.ipwatchdog.com/2009/10/26/my-position-on-invent-help-the-uia-and-inventors-digest/id=6821/ http://www.ipwatchdog.com/2009/10/26/my-position-on-invent-help-the-uia-and-inventors-digest/id=6821/ The United States Patent and Trademark Office a few days ago announced the designation of the Ryan-Matura Library of Sacred Heart University in Fairfield, Connecticut, as a Patent and Trademark Depository Library (PTDL). The patent and trademark depository library program began in 1871 when federal law first provided for the distribution of printed patents to libraries for use by the public. The addition of the Ryan-Matura Library to the PTDL network makes a total of 82 libraries located in 45 states, the District of Columbia, and Puerto Rico, but why is the is the US Federal Government continuing to support the PTDL initiative and why are they continuing to add PTDLs? With the growth and popularity of a global communications network called by many “the Internet” it would seem that there are far better ways to make the information resources of the USPTO accessible by everyone. 25 October 2009 http://www.ipwatchdog.com/2009/10/25/uspto-designates-new-ptdl-but-what-about-online/id=6815/ http://www.ipwatchdog.com/2009/10/25/uspto-designates-new-ptdl-but-what-about-online/id=6815/ On the same day – October 22, 2009 – that an Apple patent application relating to embedded advertisements in an operating system published, the Redmond Giant, Microsoft Corporation, had US Patent Application 20090265604 publish, which seeks to protect a method for displaying a graphical representation of the vitality of a social network. This patent application was filed on April 21, 2008, and is one of many related to social networking that Microsoft has pending presently. A search of Patent Office recordings using FreePatentsOnline.com shows there are 19 issued US patents to Microsoft containing the term “social network” or “social networking” and 279 pending US patent applications filed by Microsoft containing one or the other of those terms. This has become an all to familiar business plan for Microsoft, namely scrambling to catch up with whatever the current hot trend is. 24 October 2009 http://www.ipwatchdog.com/2009/10/24/microsoft-seeks-patent-for-graphical-representation-of-social-network-vitality/id=6784/ http://www.ipwatchdog.com/2009/10/24/microsoft-seeks-patent-for-graphical-representation-of-social-network-vitality/id=6784/ From time to time I have even written to companies and those paid to do PR for companies asking for more information, and rarely, if ever, do I hear anything back. Typically all I am looking for is a patent number, and still nothing. When I do hear back I am typically told that they will try and find the information for me, and then get back to me offering to make someone available for an interview. All I want is a patent number for goodness sake, and that information is held close to the vest as if it were some national security secret. It is unbelievable to me that any press release touting a patented invention would ever be issued without a patent number, but sadly that seems to be the norm. Earlier today, however, I was searching for some interesting news that might be fodder for a good article, and to my surprise I located several press releases that I would characterize as excellent, both touting patents and explaining the substance of a proprietary technology. 23 October 2009 http://www.ipwatchdog.com/2009/10/23/the-making-of-a-good-patent-related-press-release/id=6775/ http://www.ipwatchdog.com/2009/10/23/the-making-of-a-good-patent-related-press-release/id=6775/ Earlier today a pending non-provisional utility patent application assigned to Apple Computer published. This application, US Patent Application 20090265214, is titled Advertisement in Operating System, and covers exactly what the title implies; namely an operating system that is capable of displaying a variety of advertisements to users. You are likely to have heard of the first listed inventor, Steven Jobs, the CEO and co-founder of Apple Computer, Inc. While it is difficult to know the purpose and strategy behind a patent application, the attorneys at Fish and Richardson in Minneapolis, Minnesota, who drafted and filed the patent application certainly did a very good job describing just about every conceivable feature and alternative that could coincide with the displaying of advertisements to users of an operating system. 22 October 2009 http://www.ipwatchdog.com/2009/10/22/jobs-and-apple-seek-patent-on-operating-system-advertising/id=6761/ http://www.ipwatchdog.com/2009/10/22/jobs-and-apple-seek-patent-on-operating-system-advertising/id=6761/ The survey found that although more than 50 percent of parents rank math or science as the subjects most critical to their children’s future success, they report discomfort talking to their children about these subjects. In fact, nearly a quarter of parents who admit to being less involved in their child’s math and science education than they would like say that a key barrier is their own lack of understanding of these subjects. On top of this, last week, the National Assessment of Educational Progress (NAEP) revealed that fewer than 40% of fourth-graders and eighth-graders in the United States are proficient in math. 21 October 2009 http://www.ipwatchdog.com/2009/10/21/innovation-starts-with-math-and-science-education/id=6754/ http://www.ipwatchdog.com/2009/10/21/innovation-starts-with-math-and-science-education/id=6754/ It seems clear that Dr. Tafas does not want to stand in the way of the extremely positive and responsible decision made by Kappos, but at the same time is at least a little troubled by the possibility that the underlying district court decision issued by Judge Cacheris might be erased as if it never happened. Among other things, erasing the district court decision would likely make it impossible for Tafas to make any claim for payment of his attorneys fees as a prevailing plaintiff. 20 October 2009 http://www.ipwatchdog.com/2009/10/19/tafas-objects-to-vacatur-in-claims-and-continuations-appeal/id=6731/ http://www.ipwatchdog.com/2009/10/19/tafas-objects-to-vacatur-in-claims-and-continuations-appeal/id=6731/ Teva announced that it has filed a lawsuit against Mylan Pharmaceuticals, Inc., Mylan Inc. and Natco Pharma Ltd. for patent infringement in the U.S. District Court for the Southern District of New York. Mylan’s filing of an ANDA for what they are calling a generic version of COPAXONE® was not unexpected, as the company announced its intention to do so over a year ago. Teva received Mylan’s Paragraph IV certification notice referring to Teva’s U.S. Patents, which cover the chemical composition of COPAXONE®, pharmaceutical compositions containing it, and methods of using it. The prescribing information flyer available on copaxone.com lists the following patents as covering the drug — U.S. Patent Nos. 5981589, 6054430, 6342476, 6362161, 6620847, 6939539 and 7199098. 18 October 2009 http://www.ipwatchdog.com/2009/10/18/teva-sues-mylan-over-multiple-sclerosis-drug-copaxone%C2%AE/id=6712/ http://www.ipwatchdog.com/2009/10/18/teva-sues-mylan-over-multiple-sclerosis-drug-copaxone%C2%AE/id=6712/ I decided it was time to at least consider a Blackberry, and when I went to Verizon I quickly gravitated to the Blackberry Tour, which is a handsome phone that allegedly offers a lot of functionality. The key being the word “allegedly.” I have since learned from several others that the problems I was experiencing with the Blackberry Tour are not unique, and indeed have been experienced by many. I realize this post is off topic, but attorneys and other professionals who largely make up the IPWatchdog Blog audience have to make up the overwhelming percentage of Blackberry customers, so I thought I would share my experiences, which were not at all good. 18 October 2009 http://www.ipwatchdog.com/2009/10/18/review-blackberry-tour-not-ready-for-prime-time/id=6707/ http://www.ipwatchdog.com/2009/10/18/review-blackberry-tour-not-ready-for-prime-time/id=6707/ The press release explains that the experts, who are Harvard researchers and unidentified patent experts are adding to an emerging consensus, including the Federal Trade Commission, which has concluded that 12 years of market exclusivity for biologics is unnecessary. I suppose anyone can say anything in a press release. I am still troubled by the arrogance on display by PCMA though. Either they do not know what a consensus is, or they are simply intentionally misrepresenting the facts in order to further their own agenda. In either case it is appalling that the discourse relating to patents and exclusive rights has devolved to the point where the truth no longer matters and the masses are mislead by things that simply are not true. 16 October 2009 http://www.ipwatchdog.com/2009/10/16/anti-innovatio-chorus-continues-over-biologics/id=6704/ http://www.ipwatchdog.com/2009/10/16/anti-innovatio-chorus-continues-over-biologics/id=6704/ For nearly 18 months I have been on the Board of Directors of the United Inventors Association, and prior to that (and since) I have been a professional member of the United Inventors Association. It is with significant regret that I must announce my decision to resign from the Board and step down as Vice President of the UIA. Unfortunately, the UIA has opened a dialogue with Invent Help, who is on at least some level interested in becoming a member of the UIA. Invent Help has invited the UIA to send delegates to visit them at their headquarters for the purpose of explaining their business, what they do and dispelling the “myths” and “misperceptions” that exist about them. I have great reservations about such a meeting and I have made the difficult decision to disassociate myself with the UIA. 14 October 2009 http://www.ipwatchdog.com/2009/10/14/quinn-resigns-over-invent-help-concern/id=6474/ http://www.ipwatchdog.com/2009/10/14/quinn-resigns-over-invent-help-concern/id=6474/ Pretty much every week we hear from individuals who are interested in becoming patent agents or patent attorneys, and one of the questions that is most frequently asked relates to whether a certain degree qualifies one to take the Patent Bar Exam. I completely understand why such a question is asked, and why there is so much uncertainty associated with what really should be a relatively simple inquiry. Even though the Office of Enrollment and Discipline at the US Patent and Trademark Office provides detailed information about who can qualify, there are a lot of situations where individuals fall between the cracks and are not ideally presumptively able to take the Patent Bar Exam under Category A, and they may not neatly qualify under Category B either. Hopefully this article will shed some light on the situation. 13 October 2009 http://www.ipwatchdog.com/2009/10/13/does-my-degree-qualify-me-to-take-the-patent-bar/id=6648/ http://www.ipwatchdog.com/2009/10/13/does-my-degree-qualify-me-to-take-the-patent-bar/id=6648/ One thing I noticed that I didn’t like much was also on the News page. If you click on Federal Register Notices you are taken to a page that seems to have a long list of Notices published in the Federal Register, the top few are shown below in a screen shot. As you can see, the most recent Federal Register Notice is from January 28, 2009, which is close to 9 months ago. There have been Federal Register Notices relating to the USPTO since then, but you would not know it by looking at this page. Similarly, on the Testimony and Speeches page there are currently none showing. I am sure in time these glitches will be worked out, hopefully sooner rather than later given that disseminating timely and accurate information should be of the utmost importance. 13 October 2009 http://www.ipwatchdog.com/2009/10/13/work-in-progress-navigating-the-new-uspto-website/id=6634/ http://www.ipwatchdog.com/2009/10/13/work-in-progress-navigating-the-new-uspto-website/id=6634/ It is almost difficult to believe that 10 years ago today IPWatchdog.com first launched. At the time I was living in Orlando, Florida, and had just embarked upon what I had hoped would be a career as a full-time law school professor. Things didn’t quite go according to plan on that front, but through all my travels, teaching at various law schools, becoming associated with the PLI Patent Bar Review course in 2001 and now being a paid writer and having my own patent law practice one thing has remained constant, and that is IPWatchdog.com. Over the years we have had well over 3 million unique visitors, and perhaps over 4 million unique visitors. This year we are on pace to wind up with somewhere between 650,000 and 700,000 unique visitors. 10 October 2009 http://www.ipwatchdog.com/2009/10/10/happy-birthday-to-us-ipwatchdog-com-turns-10/id=6514/ http://www.ipwatchdog.com/2009/10/10/happy-birthday-to-us-ipwatchdog-com-turns-10/id=6514/ Now all eyes will turn and wait to see what the Federal Circuit will do. It seems virtually assured that the Federal Circuit will stand down and not continue on with the en banc hearing of the original three judge panel. The original panel ruling has been vacated, which means that presently the operative decision affecting the rules is the decision by Judge Cacheris of the Eastern District of Virginia, which can really only be characterized as a scathing indictment of how the Patent Office handled the rulemaking process and how the rules directly conflict with the governing patent statute. But what will become of the ruling of Judge Cacheris? Will it be vacated as if it never happened? This is why I wrote for months that Dudas should do the right thing leading up to the decision of Judge Cacheris. 9 October 2009 http://www.ipwatchdog.com/2009/10/09/kappos-rescinds-claims-continuations-rules-what-next/id=6495/ http://www.ipwatchdog.com/2009/10/09/kappos-rescinds-claims-continuations-rules-what-next/id=6495/ Yesterday, the Task Force on IP and Genetic Testing submitted its Final Draft Report (titled Final Draft Report on Gene Patents and Licensing Practices and Their Impact on Patient Access to Genetic Tests) to the Secretary’s Advisory Committee on Genetics, Health, and Society (SACGHS). SACGHS, in turn, voted to accept the recommendations, which will be passed on to Secretary Sebelius, Secretary for Health and Human Services. What follows is a copy of a minority opinion written by Brian Stanton, an ad hoc member of the SACGHS Task Force on Gene Patenting and Licensing Practices. This was submitted electronically to the SACGHS Chair via Sarah Carr, NIH. 9 October 2009 http://www.ipwatchdog.com/2009/10/09/minority-report-task-force-on-ip-genetic-testing/id=6499/ http://www.ipwatchdog.com/2009/10/09/minority-report-task-force-on-ip-genetic-testing/id=6499/ Today the Secretary’s Advisory Committee on Genetics, Health, and Society (SACGHS) submitted its final report to the Secretary for Health and Human Services titled Final Draft Report on Gene Patents and Licensing Practices and Their Impact on Patient Access to Genetic Tests. In this report the Committee comes to the shocking and surprisingly unfounded conclusion that 'patents do not serve as powerful incentives for genetics research in the diagnostic arena, disclosure of gene-disease associations, or development of genetic tests.' The Committee is advising that the Secretary for Health and Human Services recommend to Congress the creation of an exemption from patent infringement liability for: (1) infringement of patent claims on genes for anyone making, using, ordering, offering for sale, or selling a test developed under the patent for patient care purposes; and (2) those who use patent-protected genes in the pursuit of research. So gene patents would become like medical process patents; you can get them, just not enforce them. 8 October 2009 http://www.ipwatchdog.com/2009/10/08/hhs-assault-on-gene-patents-and-diagnostic-methods/id=6490/ http://www.ipwatchdog.com/2009/10/08/hhs-assault-on-gene-patents-and-diagnostic-methods/id=6490/ GlaxoSmithKline (NYSE: GSK) today announced that it has reached agreement with the United States Patent and Trademark Office (USPTO) to join the USPTO’s motion to dismiss its litigation over Final Regulations published in August 2007 (Triantafyllos Tafas and SmithKline Beecham Corporation, SmithKline Beecham PLC and Glaxo Group Limited vs. David J. Kappos and the United States Patent and Trademark Office). GSK and the USPTO will file a joint motion with the U.S. Court of Appeals for the Federal Circuit to dismiss the litigation and to vacate the previous decision in this case by the U.S. District Court for the Eastern District of Virginia. The USPTO is withdrawing all regulations under dispute. 8 October 2009 http://www.ipwatchdog.com/2009/10/08/uspto-agrees-to-withdraw-claims-continuations-rules/id=6485/ http://www.ipwatchdog.com/2009/10/08/uspto-agrees-to-withdraw-claims-continuations-rules/id=6485/ Simply put, if the Obama Administration gets its way US patent laws would be completely re-written and substantively changed to a greater extent than at any time since 1790. In fact, if the Obama supported patent reforms become enacted into law it would probably be much easier to simply pass legislation withdrawing all US patent laws and putting in its place the patent laws presently in existence in the European Union. If you do not believe a European style patent system is in the best interest of the United States then you had better step up to the plate, because the stars seem to be aligning and before you know it there may not be any remaining US patent laws. The steaks are high and it seems as if the once hopelessly derailed patent reform legislation is back with a vengeance, like a resurrected Jason a la Friday the 13th. 8 October 2009 http://www.ipwatchdog.com/2009/10/08/obama-administration-the-harmonization-capitulation/id=6481/ http://www.ipwatchdog.com/2009/10/08/obama-administration-the-harmonization-capitulation/id=6481/ I don’t know what is there yet in this newly revitalized patent reform discussion, but Senator Hatch who has been at the forefront of patent reform for many years is cautioning that any changes must not do harm, so I am worried. Why would Senator Hatch and the others who signed the letter feel it necessary to caution against doing harm? Why would Senator Hatch and others feel the need to request appropriate time for the Senate to consider the legislation when it comes to the full Senate? This could be really, really bad, I just don’t know. 6 October 2009 http://www.ipwatchdog.com/2009/10/06/patent-reform-obama-favors-major-changes-to-patent-law/id=6467/ http://www.ipwatchdog.com/2009/10/06/patent-reform-obama-favors-major-changes-to-patent-law/id=6467/ Milwaukee Journal Sentinel reporter John Schmid reported yesterday that in a telephone interview with Barner she explained that she is a long time associate of President Barack Obama, knows him personally and has had ties to him throughout much of his political career. According to Schmid, Barner helped Obama raise funds for an Illinois state senate race; worked on a voter registration effort; and had him speak several times at symposiums that she organized. Schmid also reports that Barner will not be relocating to either Virginia or Washington, DC, but instead will remain in Chicago and somehow fulfill her responsibilities as Deputy Director of the USPTO via telecommuting. 6 October 2009 http://www.ipwatchdog.com/2009/10/06/obama-friend-appointed-to-be-deputy-at-uspto/id=6459/ http://www.ipwatchdog.com/2009/10/06/obama-friend-appointed-to-be-deputy-at-uspto/id=6459/ I feel confident that anyone who would read what went on would have to come to the conclusion that I was directly addressing the issues, defending my positions, providing counter-arguments to what they were raising, while at the same time old and tired non-responsive comments were posted. Everyone can see what happened for themselves, but there is one thing that I think deserves to be pointed out directly and not left to be unseen in a long and tedious diatribe of comments. When all else fails and the anti-patent advocates are boxed into a corner they simply lie about reality. And yes, I can prove that definitively. 5 October 2009 http://www.ipwatchdog.com/2009/10/05/beware-the-anti-patent-misdirection-and-lies/id=6455/ http://www.ipwatchdog.com/2009/10/05/beware-the-anti-patent-misdirection-and-lies/id=6455/ The reason giant companies hate patent trolls is because they are not capable of being counter-sued. There is no deterrent effect because patent trolls do not make, use or sell anything, they just sue. So giant companies are targets in the same way that smaller companies without patents are targets of big companies with patents. No one should aspire to be a target. A simple truth is that a small business without patents might as well dress themselves up as a buck during hunting season complete with a bulls-eye pre-drawn. So here is the case for every business to get patents, particularly software patents. Ignore it if you like, but you do so at your own peril. 4 October 2009 http://www.ipwatchdog.com/2009/10/04/why-all-small-businesses-need-software-patents/id=6447/ http://www.ipwatchdog.com/2009/10/04/why-all-small-businesses-need-software-patents/id=6447/ The United States Patent and Trademark Office unveiled yesterday a series of proposals to bring significant change to the examiner “count system” – the methodology for determining the time a patent examiner has to complete a patent examination and how much credit is given for each stage of an examination. In the past I have referred to this as the examiner quota, and like so many others have been begging the Patent Office to make changes and address this matter so that it would be unnecessary, or less necessary, for examiners to manipulate the system and require needless filings (typically RCEs) by applicants and their representatives. The count system was created in the mid-1960s and hasn’t been revised since 1976, and with an ever deepening sophistication of inventions it has been woefully outdated for many years. 1 October 2009 http://www.ipwatchdog.com/2009/10/01/patent-office-proposes-changes-to-examiner-quota-system/id=6426/ http://www.ipwatchdog.com/2009/10/01/patent-office-proposes-changes-to-examiner-quota-system/id=6426/ We are at a pivotal point in the historical development of the US economy, and getting things wrong will be a disaster. The only long term viable industries that will create widespread jobs are those that leverage technology and innovation. Gone are the manufacturing jobs, and as anyone in Florida knows service industry jobs are low paying and very unstable, hanging on the thread of the overall economic strength of the nation so there are those who can afford non-essential services. It is desperately important to get the word out that the overwhelming body of evidence is against those who argue against a strong patent system. 30 September 2009 http://www.ipwatchdog.com/2009/09/30/responding-to-critics-my-view-on-patents-innovation/id=6421/ http://www.ipwatchdog.com/2009/09/30/responding-to-critics-my-view-on-patents-innovation/id=6421/ Last week I wrote an article titled Inauspicious Start to Greater USPTO Transparency, in which I wrote about how disappointed I was that some things never seem to change at the Patent Office. I was referring to the fact that a Federal Register Notice had been published on September 17, 2009, and gave until September 28, 2009, to provide comments on the interim Bilski guidelines that the Patent Office wanted in place. I also wrote about how disingenuous it seemed to be not only because of an 11 day comment period, but because the Patent Office by their own admission was already training patent examiners on the guidelines prior to receiving any comments. I am extraordinarily happy to report that the United States Patent and Trademark Office has decided to extent the comment period. I guess things really are changing at the Patent Office, and that is a very good thing and definitely something for all those in the innovation space to be happy about. 29 September 2009 http://www.ipwatchdog.com/2009/09/29/thank-you-david-kappos-uspto-extends-comments/id=6416/ http://www.ipwatchdog.com/2009/09/29/thank-you-david-kappos-uspto-extends-comments/id=6416/ Apparently, patents prevent from building onto patented technology so innovation never really advances with patents and all you can hope for is modest improvements. Never mind that the thesis ignores reality and that those with a sophisticated understanding of patent laws and a strategy understand that companies build on patented technology constantly, and that is in and of itself a strategy, and a wise one at that. Never mind that blocking patents exist in every technology and that causes fragility of a patent portfolio and causes every company to continue the invention march or risk obscurity. See, when you ignore facts and what actually happens such a thesis makes perfect sense. 29 September 2009 http://www.ipwatchdog.com/2009/09/29/reality-check-anti-patent-patent-musings/id=6410/ http://www.ipwatchdog.com/2009/09/29/reality-check-anti-patent-patent-musings/id=6410/ Will the USPTO change the exam and actually start testing relevant laws? That is a good question. No announcement has been made, which is curious in and of itself. One would think that eventually the USPTO will have to change the exam and test laws that at least approximate practice, right? Who knows, but testing a version of the MPEP that is 4 or 5 years out of date is not a long term strategy. For those patent attorneys and patent agents who are not familiar with the contents of the Patent Bar Exam, allow me to point out just how crazy this testing of a horribly outdated MPEP has become. 27 September 2009 http://www.ipwatchdog.com/2009/09/27/how-much-longer-can-the-uspto-test-an-old-mpep/id=6405/ http://www.ipwatchdog.com/2009/09/27/how-much-longer-can-the-uspto-test-an-old-mpep/id=6405/ In reaching this determination the Federal Circuit went through great deal and discussion of cases dealing with fraud, pointing out that deception must be willful to constitute fraud. The CAFC also explained very directly that the Board erred because it is inappropriate to conclude that a trademark applicant commits fraud in procuring a registration when it makes material representations of fact in its declaration which it knows or should know to be false or misleading. The Federal Circuit then went on to cite several patent cases, including Kindsdown. 24 September 2009 http://www.ipwatchdog.com/2009/09/24/cafc-makes-it-more-difficult-to-prove-fraud-on-uspto/id=6400/ http://www.ipwatchdog.com/2009/09/24/cafc-makes-it-more-difficult-to-prove-fraud-on-uspto/id=6400/ President Obama only used the word patent once in his speech. Perhaps it is overly optimistic to believe President Obama views strong and plentiful patents as the cornerstone to his envisioned innovation based economy. Many in the President’s own party do not believe patents should be granted on much, if any, technology. It is therefore conceivable that President Obama thinks innovation will occur as a result of altruistic means and in spite of patent protection. His position advocating short exclusive protection for biologics seems directly opposite to the views expressed in this speech, so there is cause for concern. But for now, saying the right things and appointing David Kappos as Director of the USPTO provides hope, so I choose to be optimistic, at least for today. 22 September 2009 http://www.ipwatchdog.com/2009/09/22/president-obama-gives-reaganesque-innovation-speech/id=6386/ http://www.ipwatchdog.com/2009/09/22/president-obama-gives-reaganesque-innovation-speech/id=6386/ Last week USPTO Director David Kappos explained during his speech at IPO that intellectual property law 'is widely recognized as the engine that drives our information age economy, maintains our competitiveness and is responsible for creating and sustaining tens of millions of U.S. jobs.' I have been beating this drum now for several years, and despite the obvious and indisputable correlation between innovation and economic expansion that leads to new jobs, the old guard at the USPTO simply couldn’t or wouldn’t understand. It would seem that the days of shuffling chairs on the Titanic are over, and if nothing else at least the USPTO has a leader that seems to understand the link between recessions, start-up companies forming and increased innovation leading to new industries that create jobs. 22 September 2009 http://www.ipwatchdog.com/2009/09/22/kappos-on-the-us-economy-music-to-my-ears/id=6378/ http://www.ipwatchdog.com/2009/09/22/kappos-on-the-us-economy-music-to-my-ears/id=6378/ Last week David Kappos addressed the IPO annual meeting in Chicago, Illinois. Kappos’ remarks were varied and really set a new tone for the future of the USPTO under his watch. Kappos continued the theme he has already established in differentiating how the USPTO will run under his regime, as compared to how it ran under the previous regime. Specifically, Kappos promises to cut pendency across the board, to develop a count system for patent examiners that does not require an endless stream of RCEs and he wants a patent system that does not favor (or disfavor) any particular technology over others. 22 September 2009 http://www.ipwatchdog.com/2009/09/22/kappos-lays-out-ambitious-agenda-for-uspto-in-speech-at-ipo/id=6318/ http://www.ipwatchdog.com/2009/09/22/kappos-lays-out-ambitious-agenda-for-uspto-in-speech-at-ipo/id=6318/ After the case of Prometheus Laboratories, Inc. v. Mayo Collaborative Services, we in the patent world may now be subjected to similar torture in determining when medical/drug dosage calibration methods qualify as statutory subject matter under 35 U.S.C §101. The district court in Prometheus ruled that a patented drug dosage calibration method was non-statutory under 35 U.S.C §101 as essentially correlations of natural phenomena, citing Justice Breyer’s dissenting opinion in Laboratory Corp. v. Metabolite Laboratories, Inc. But in the resulting collision with the machine or transformation test of In re Bilski, the Federal Circuit held, instead, that this patented method was transformative, and therefore statutory subject matter under 35 U.S.C §101. 21 September 2009 http://www.ipwatchdog.com/2009/09/21/cafc-method-for-calibrating-drug-dosage-is-transformative/id=6307/ http://www.ipwatchdog.com/2009/09/21/cafc-method-for-calibrating-drug-dosage-is-transformative/id=6307/ Dmitry Brant, a DC patent attorney at a top patent law firm, recently launched a new software product aimed at the patent market named Patent ClaimMaster. Patent ClaimMaster is a Microsoft Word plugin that helps you improve the quality of your patent documents while reducing costs. With Patent ClaimMaster you can turn cumbersome and time consuming tasks into simple tasks with only a simple click of the mouse. The long list of features will allow you to, among many other things, quickly and easily create claim charts, compare claims to identify the differences, generate a summary of the claims renumber both independent and dependent claims, identify claim terms missing support in the specification, download patents from the USPTO and run analysis on them and much more. 20 September 2009 http://www.ipwatchdog.com/2009/09/20/patent-attorney-creates-word-plugin-for-patent-applications/id=6256/ http://www.ipwatchdog.com/2009/09/20/patent-attorney-creates-word-plugin-for-patent-applications/id=6256/ Yesterday an interesting animated film opened in theaters across the United States. The film by Columbia Pictures’ and Sony Pictures is titled Cloudy with a Chance of Meatballs, and is billed as the most delicious event since macaroni met cheese. Flint comes to the rescue and creates an invention that turns water into food, which causes all sorts of food to fall from the heavens, which comes with its own unique problems, including pizza that chases you. The movie looks like it will be fun for all ages, and particularly so for those of us in the invention business. 19 September 2009 http://www.ipwatchdog.com/2009/09/19/inventing-for-kids-cloudy-with-a-chance-of-meatballs/id=6247/ http://www.ipwatchdog.com/2009/09/19/inventing-for-kids-cloudy-with-a-chance-of-meatballs/id=6247/ Yet another high profile senior level management position has been filed at the United States Patent and Trademark Office, and the trend of qualified “get it” people continues. Rob Clarke, who is currently the Director of the Office of Patent Legal Administration (OPLA), has been asked by Director David Kappos to become the new USPTO Chief of Staff. I know Rob Clarke, professionally speaking, and I believe him to be an exceptional choice for this job. Having as Chief of Staff someone who has interfaced with so many patent attorneys at various events suggests an open posture and sharp divergence with respect to how the USPTO has operated in recent years. This is all positive and a very welcome sign from Director Kappos. 18 September 2009 http://www.ipwatchdog.com/2009/09/17/rob-clarke-named-new-uspto-chief-of-staff/id=6213/ http://www.ipwatchdog.com/2009/09/17/rob-clarke-named-new-uspto-chief-of-staff/id=6213/ The Federal Circuit, in Amgen Inc. v. F. Hoffman-La Roche Ltd, has made it clear that you had better characterize an application as a “divisional” if you want to the benefit of the “safe harbor” provided by 35 U.S.C § 121. And if you don’t, you’re going face obviousness-type double patenting problems. The Federal Circuit in Amgen also went on to discuss the “muddy metaphysics” of obviousness-type patenting, including how to deal with the “time frame” issue recently raised in Takeda Pharmaceutical Co. v. Doll for overcoming double patenting of a process patent over an earlier issued product patent by presenting post-invention evidence of alternative processes of making the product. How the Federal Circuit dealt with the “time frame” issue in Amgen will need to remain another story for another day because the subject of when the “safe harbor” applies will require an Excedrin, perhaps two. 16 September 2009 http://www.ipwatchdog.com/2009/09/16/cafc-a-divisional-by-any-other-name-is-not-a-divisional/id=6140/ http://www.ipwatchdog.com/2009/09/16/cafc-a-divisional-by-any-other-name-is-not-a-divisional/id=6140/ When Judge Schall takes senior status that will raise the number of judges on the Federal Circuit with senior status to five. So come October 2009 there will be five out of sixteen Federal Circuit judges on senior status, with another eight qualifying for senior status, should they choose, within the next two years. Times are definitely changing at the Federal Circuit and whether all those judges who qualify for senior status take senior status or not, even if President Obama winds up spending only one term in Office, which is far from a foregone conclusion, his legacy may well wind up being defined by the impact he will have on innovation policy and patent law. 15 September 2009 http://www.ipwatchdog.com/2009/09/15/cafc-up-for-grabs-harmonization-and-the-us-economy/id=6132/ http://www.ipwatchdog.com/2009/09/15/cafc-up-for-grabs-harmonization-and-the-us-economy/id=6132/ On Wednesday, September 16, 2009, PLI is sponsoring a lunch briefing titled Green Technology Patent Litigation: The Future is Here. I can honestly say that no one asked me to promote this program, so this edition of shameless commerce comes directly from me because this is a topic I am quite interested in, having done some work with green innovations. Perhaps I am always chasing something interested to write about, or perhaps I am an environmentalist at heart in a true Teddy Roosevelt sense. Whatever the case may be, I am looking forward to this briefing and I will be in attendance myself. 15 September 2009 http://www.ipwatchdog.com/2009/09/15/pli-hosts-briefing-on-green-technology-patent-litigation/id=6116/ http://www.ipwatchdog.com/2009/09/15/pli-hosts-briefing-on-green-technology-patent-litigation/id=6116/ Mr. Gutierrez provides absolutely no explanation of the root cause for the backlogs or an explanation of how “harmonization” would address this root cause. Make no mistake: the big picture is clear as to the cause for the application backlog – and its not the lack of “harmonization.” It is the spectacular failure of SOME national patenting offices to grow their resources proportionately based on the economic factors that give rise to the growth of patent application filings. I have yet to see a single economic study by national patent authorities that attempts a substantive scientific method for projections of application intensity by examining the historical trends in product life-cycle shortening and the resultant exponential growth in the pace of new product introductions. 15 September 2009 http://www.ipwatchdog.com/2009/09/15/the-patent-backlog-cannot-be-solved-with-harmonization/id=6105/ http://www.ipwatchdog.com/2009/09/15/the-patent-backlog-cannot-be-solved-with-harmonization/id=6105/ The appeal in Lucent Technologies, Inc. v. Gateway, Inc. from the Southern District of California was considered in many quarters as the potentially seminal case on how to calculate damages based on a reasonable royalty using the Georgia-Pacific factors, especially the “entire market value” rule (aka factor 13). That Microsoft and others were currently on the hook to Lucent Technologies (the patentee) for approximately $357 million in damages based on the jury award definitely raised some “eyebrows” about this case. In fact, with all the “hub-bub” about altering the “entire market value” rule in the damages provision of the Patent Law Reform Act of 2009 (S. 515 and H.R. 1260), the Federal Circuit’s handling of the damages award issue in Lucent Technologies case was being watched very carefully. 14 September 2009 http://www.ipwatchdog.com/2009/09/14/entire-market-value-rule-lives-as-357-million-verdict-dies/id=6084/ http://www.ipwatchdog.com/2009/09/14/entire-market-value-rule-lives-as-357-million-verdict-dies/id=6084/ Most of the start-up companies I have come into contact with are looking for narrow niche markets. Instead of trying to change a whole area of a technology and go public, these companies are looking to develop incremental changes and be bought out by an existing company as soon as possible. I started wondering if other people in the technology world were seeing similar trends. My informal surveys centered around the question of whether this decade (2000-2009) was as innovative as the 90s. While I would say that most people I surveyed felt this decade was not as innovative as the 90s, there were people who disagreed. 14 September 2009 http://www.ipwatchdog.com/2009/09/14/the-decline-and-fall-of-the-american-entrepreneur/id=6075/ http://www.ipwatchdog.com/2009/09/14/the-decline-and-fall-of-the-american-entrepreneur/id=6075/ A little over a week ago, in a blog post written by Microsoft’s Deputy General Counsel Horacio Gutierrez started what will certainly become one of the most profound debates the patent and innovation industry has seen in a very long time, and perhaps the most profound debate that has occurred since Thomas Jefferson and James Madison argued whether the fledgling United States of America should grant strong patent protections or weak patent protections. This all could unravel before our eyes as a new push from Microsoft seeks to take patent harmonization to new heights with the ushering in of a global patent system and a global patent. The World Intellectual Property Organization will hold an international symposium in Geneva on September 17 and 18, 2009, which will focus on operational deficiencies in global IP systems. 10 September 2009 http://www.ipwatchdog.com/2009/09/10/why-a-global-patent-system-is-a-bad-idea/id=5963/ http://www.ipwatchdog.com/2009/09/10/why-a-global-patent-system-is-a-bad-idea/id=5963/ A little over a week ago, in a blog post written by Microsoft’s Deputy General Counsel Horacio Gutierrez started what will certainly become one China, a manufacturing center in world, is now becoming a hot place for outsourcing. After several years’ experiences in exporting and after the financial crisis, the surviving Chinese companies are growing up, their risk resisting ability is strengthened and their sense for innovation and development is ever growing. To be exactly speaking, after so many ups and downs, export oriented companies are now mature in their dealing with foreign counterparts. At the same time, Chinese government recently issue a series of policies like increasing the tax refund for goods export, relaxing the restrictions for loan providing with medium and small sized companies, preferential measures for service outsourcing enterprises and etc. The government backing is never so strong. 10 September 2009 http://www.ipwatchdog.com/2009/09/10/china-choose-right-supplier-at-right-time-in-right-place/id=5829/ http://www.ipwatchdog.com/2009/09/10/china-choose-right-supplier-at-right-time-in-right-place/id=5829/ It was not on the Federal Circuit Motion page, it was not on the Federal Circuit Opinions and Orders page, and I looked through the Federal Circuit PACER database, which incidentally has the most illogical set up I have ever seen, and I still couldn’t find it. I gave up and wrote Federal Circuit Grant Stay to Microsoft Injunction? I was not about to continue on a wild goose chase, and with such an important Order why would the Federal Circuit go to such lengths to hide it? I didn’t know, didn’t care and was frustrated. Then someone pointed out to me in a comment that it was on PACER, just indexed under the filing date of Microsoft’s request for the stay rather than the date it was granted, which is ridiculous enough, but then things took a much weirder turn for me. I HATE VISTA! 8 September 2009 http://www.ipwatchdog.com/2009/09/08/cafc-gives-microsoft-word-stay-and-i-hate-vista/id=5838/ http://www.ipwatchdog.com/2009/09/08/cafc-gives-microsoft-word-stay-and-i-hate-vista/id=5838/ We are all still awaiting what I suspect is the inevitable withdrawal of the claims and continuations rules, which would moot the Federal Circuit appeal. The Department of Justice really tipped the government hand asking the Federal Circuit to delay taking the case up en banc pending Kappos’ arrival and potential withdrawal of the rules. So the big question seems not to be if those rules will be recalled and the appeal mooted, but when will the announcement be made. Then the even bigger question will be what will Kappos and the USPTO do with respect to streamlining the application process and plowing through the backlog of cases? As we enter into the home stretch of fiscal year 2009 and are getting ready for the beginning of fiscal year 2010, I have a couple suggestions for Kappos’ consideration. 8 September 2009 http://www.ipwatchdog.com/2009/09/08/suggestions-for-uspto-director-david-kappos/id=5817/ http://www.ipwatchdog.com/2009/09/08/suggestions-for-uspto-director-david-kappos/id=5817/ The Federal Circuit has recently issued some highly controversial decisions, such as In re Bilski now before the U.S. Supreme Court. But possibly the strangest this year is Martek Biosciences Corp. v. Nutrinova, Inc. What makes Martek Biosciences strange is not so much the argument between the majority and dissent about whether the claim term “animal” included humans. Instead, it was the size of the Federal Circuit panel involved. Normally, the Federal Circuit sits as a panel of three judges to decide a particular case, but in this case the panel had 5 members. 7 September 2009 http://www.ipwatchdog.com/2009/09/07/the-strange-case-martek-biosciences-v-nutrinova/id=5605/ http://www.ipwatchdog.com/2009/09/07/the-strange-case-martek-biosciences-v-nutrinova/id=5605/ Perhaps you have come across this story in the popular press over the last day. It seems to be widely reported that Microsoft has convinced the United States Court of Appeals for the Federal Circuit to grant a stay of the permanent injunction issued against the Redmond, WA based company relative to its popular word processing software – Word. I cannot say that the Federal Circuit has not granted a stay, but I see absolutely no evidence that a stay has been granted. If the Federal Circuit has granted a stay they are doing a wonderful job at keeping it secret and holding it very close to the vest so that no one can actually read the Order. 4 September 2009 http://www.ipwatchdog.com/2009/09/04/federal-circuit-grant-stay-to-microsoft-injunction/id=5530/ http://www.ipwatchdog.com/2009/09/04/federal-circuit-grant-stay-to-microsoft-injunction/id=5530/ On Tuesday, September 2, 2009, the mighty 1600 pound gorilla in the room, also known as Google, was granted a design patent on the look of its search webpage found at Google.com. Yes, the United States Patent and Trademark Office awarded Design Patent No. 599,372 to Google just days ago on an application that was filed on March 6, 2006, and which was a division of an earlier filed Design Patent application filed on March 26, 2004. 3 September 2009 http://www.ipwatchdog.com/2009/09/03/google-granted-design-patent-on-search-webpage/id=5512/ http://www.ipwatchdog.com/2009/09/03/google-granted-design-patent-on-search-webpage/id=5512/ David Kappos, the Undersecretary of Commerce for Intellectual Property and Director of the Patent and Trademark Office, has as a result of Doll’s retirement announcement nominated longtime USPTO executive Robert (“Bob”) Stoll to the position of Commissioner for Patents, and has named Margaret (“Peggy”) Focarino Deputy Commissioner for Patents. Focarino was elevated to Acting Commissioner for Patents when Doll was elevated to Acting Director, all of which occurred when Jon Dudas resigned as Undersecretary and Director of the PTO the day of President Obama’s inauguration. 3 September 2009 http://www.ipwatchdog.com/2009/09/03/john-doll-announces-retirement-from-uspto/id=5507/ http://www.ipwatchdog.com/2009/09/03/john-doll-announces-retirement-from-uspto/id=5507/ t seems that Intellectual Ventures, the patent absorbing company founded by former Microsoft executive Nathan Myhrvold, is starting to head where we all knew they eventually would, which is in the direction of turning to patent litigation against those who are unwilling to cave into their licensing demands. Peter Zura, the purveyor of the 271 Patent Blog details the rumors associated with how IV handles its patent licensing efforts. It seems that Intellectual Ventures sets a deadline to have a negotiated resolution. If the deadline passes then they sell the patent to the party who they feel can best monetize the patent, with a pay-back to IV in the end. As Zura explains: “IV has allegedly started to ‘outsource’ their patent litigation.” And can you guess who is associated with a current patent litigation where the patent can be traced back to IV ownership? None other than notorious patent troll litigator Ray Niro. 2 September 2009 http://www.ipwatchdog.com/2009/09/02/the-empire-strikes-back-intellectual-ventures-style/id=5500/ http://www.ipwatchdog.com/2009/09/02/the-empire-strikes-back-intellectual-ventures-style/id=5500/ Mike Drummond, the Editor-in-Chief of Inventors Digest Magazine and a decorated journalist, has just joined the Board of Directors of American Innovators for Patent Reform (AIPR). Most recently, AIPR has opposed the Patent Reform Act of 2009, which some vocal critics have called “patent deform.” AIPR is on record as opposing proposed apportionment of damages, post grant opposition and a change to the first-to-file regime, all sensible positions and views that I personally hold myself. When reached for comment, Drummond said: “Ideally, the AIPR will be one of those bodies that becomes irrelevant – we do our job so successfully that odious versions of patent reform die and meritorious patent changes take root. It will be interesting to see what sort of posture the new head of the USPTO takes, and what sort of fight we’re in for.” 31 August 2009 http://www.ipwatchdog.com/2009/08/31/drummond-joins-american-innovators-for-patent-reform/id=5456/ http://www.ipwatchdog.com/2009/08/31/drummond-joins-american-innovators-for-patent-reform/id=5456/ As I am getting back into the swing of things and gearing up to write more about software, software patents, Parts III and IV of the History of Software Patents (see Part 1 and Part 2), I want to highly recommend The Genie in the Machine: How Computer-Automated Inventing is Revolutionizing Law and Business, written by Robert Plotkin (who not too long ago wrote Why Wishes Should be Patentable for this blog), a patent attorney located in Boston, MA, who is also an Adjunct Professor of Law at Boston University. If you are pro-software patent you need to read this book because it will likely give you some wonderful insights that you can use to help you convince non-believers, and maybe even persuade a patent examiner or two. If you are anti-software patent I would also recommend you read this book as well. Plotkin’s positions are somewhat radical in that not only does he think software should be patented, but he wishes should be patentable as well, and that is exactly what will happen as computer automated inventing becomes increasingly more realistic. 30 August 2009 http://www.ipwatchdog.com/2009/08/30/how-computer-automated-inventing-is-revolutionizing-law/id=5399/ http://www.ipwatchdog.com/2009/08/30/how-computer-automated-inventing-is-revolutionizing-law/id=5399/ I hear their commercials on ESPN radio every morning where they claim to be “America’s number one invention company” (whatever that means). I decided to take an in depth look at the Invent Help website. I cannot believe that all their whole focus is in getting your invention into the marketplace. When you look at their services, patents are not even listed, and only in a small link at the bottom of each page can you actually read anything on their site about patenting your invention. And it is only after you go to their section on FAQs, where you find any information about how they can assist you in securing patents. Nowhere on the site do they stress the importance of Patent Protection. 27 August 2009 http://www.ipwatchdog.com/2009/08/27/not-all-invention-companies-are-created-equal/id=5369/ http://www.ipwatchdog.com/2009/08/27/not-all-invention-companies-are-created-equal/id=5369/ Lets be perfectly clear, the Patent Office does not call me and ask my input regarding anything, which should be readily apparent to those who read IPWatchdog.com regularly. Notwithstanding, there is real hope in the patent community that Kappos will usher in real reform, so I have hope. In the meantime, I want to nominate a few people for the open position of Deputy Patent Commissioner for Patent Examination Policy. While I would love for cloning technology to be more advanced and for the ability to clone Judge Newman and Judge Rader, I will stay with more realistic nominations. My first two nominations are John White and Stephen Kunin. 27 August 2009 http://www.ipwatchdog.com/2009/08/27/nominations-deputy-commish-for-patent-examination-policy/id=5304/ http://www.ipwatchdog.com/2009/08/27/nominations-deputy-commish-for-patent-examination-policy/id=5304/ Three weeks ago, TechRadium, Inc., a Texas Corporation with its principal place of business in Sugar Land, Texas, sued Twitter, Inc., a Delaware corporation with its principal place of business in San Francisco, California, alleging the infringement of US Patent No. 7,130,389, issued on October 31, 2006, and US Patent No. 7,496,183, issued on February 24, 2009, and US Patent No. 7,519,165, issued on April 14, 2009. Twitter, Inc., owner of the seemingly ubiquitous microblog Twitter.com, which allows individuals to post 140 character messages, is alleged to be using systems that incorporate the proprietary technology of TechRadium, a company that develops, sells, and services mass notification systems that allow a group administrator or message author to originate a single message that will be delivered simultaneously via multiple communication gateways to members of a group of message subscribers. No doubt this sounds a lot like what Twitter does. 26 August 2009 http://www.ipwatchdog.com/2009/08/26/twitter-sued-for-patent-infringement-in-s-district-of-tx/id=5298/ http://www.ipwatchdog.com/2009/08/26/twitter-sued-for-patent-infringement-in-s-district-of-tx/id=5298/ Undersecretary of Commerce for Intellectual Property and Patent Office Director David Kappos will soon select a new DCPEP. The importance and influence that this person will bring to the future of innovation should not be underestimated. In the past, this person was selected from a pool of career executives having little practical interaction with the private sector. Perhaps it is time that a candidate is selected from the not-so-small pool of individuals who not only understand the workings of the USPTO, but who also understand the needs of private enterprise. Perhaps instead of focusing on the candidates with law degrees, it is time to focus on individuals with policy skills. 26 August 2009 http://www.ipwatchdog.com/2009/08/26/deputy-for-patent-examination-policy/id=5272/ http://www.ipwatchdog.com/2009/08/26/deputy-for-patent-examination-policy/id=5272/ UOn Friday, August 21, 2009, the United States Patent and Trademark Office posted a job opening for the position of Deputy Commissioner for Patent Examination Policy at USAJobs.gov. With the recent confirmation of David Kappos as Undersecretary of Commerce for Intellectual Property, a title that also comes along with the title of Director of the USPTO, that seems to have left John Doll in limbo, and perhaps Focarino in limbo as well. Now the USPTO is looking for a Deputy Commissioner for Patent Examination Policy, the job formerly held by John Love who retired earlier this year. In any event, it would seem that the management ranks at the USPTO are in flux. 24 August 2009 http://www.ipwatchdog.com/2009/08/24/uspto-job-opening-deputy-commissioner-for-patent-policy/id=5145/ http://www.ipwatchdog.com/2009/08/24/uspto-job-opening-deputy-commissioner-for-patent-policy/id=5145/ The plot thickens as the United States Court of Appeals for the Federal Circuit issued an Order earlier today granting Microsoft an expedited appeal of its patent infringement loss to i4i Limited Partnership. In addition to losing approximately $300 million in a decision handed down on Tuesday, August 11, 2009, Judge Leonard Davis of the United States District Court for the Eastern District of Texas also entered a permanent injunction that will become effective 60 days from the judgment date, ordering Microsoft to cease selling the ubiquitous word processing program Word. Of course, Microsoft could remove the infringing functionality from Word, which relates to the opening of a file containing custom XML. Early news reports confidently stated that Microsoft would have absolutely no difficulties accomplishing this task, which were ridiculous on their face, as evidenced by Microsoft scrambling at break-neck speed to secure an expedited hearing in extraordinary fashion. The oral arguments have been scheduled for Wednesday, September 23, 2009. 21 August 2009 http://www.ipwatchdog.com/2009/08/21/cafc-grants-microsoft-expedited-patent-appeal-in-word-case/id=5135/ http://www.ipwatchdog.com/2009/08/21/cafc-grants-microsoft-expedited-patent-appeal-in-word-case/id=5135/ Perhaps I am missing something, but I do not see a huge market for animal chastity belts. We have a dog, and we are dog lovers. We enjoy walking through pet stores and spoil her rotten. I cannot say that I have seen an animal chastity belt in any of my trips to any pet store. Maybe there is an underground market for these devices, and maybe the inventors get rich and are laughing all the way to the bank. Nevertheless, I must observe that it seems extremely likely that the inventors of these and many other similar devices are failing to ask the all important and critical question — is there a market for your invention and can you make money? 21 August 2009 http://www.ipwatchdog.com/2009/08/21/obscure-patents-chastity-belts-for-dogs/id=5125/ http://www.ipwatchdog.com/2009/08/21/obscure-patents-chastity-belts-for-dogs/id=5125/ Earlier today, Judge Garrett Brown of the United States Federal District Court for the District of New Jersey, issued an Order and Findings of Fact and Conclusions of Law in the dispute between between Merck and Teva Pharmaceuticals. Judge Brown found that the patent in question, US Patent No. 5,565,473, was valid and enforceable, and that the Teva’s Abbreviated New Drug Application (“ANDA”) filing infringed the patent. The ‘473 patent specifically relates to montelukast sodium, which is the active ingredient in the Singulair® tablets, Merck’s pharmaceutical product used for treating certain ailments, including asthma and allergic rhinitis. 19 August 2009 http://www.ipwatchdog.com/2009/08/19/merck-wins-singulair-victory-over-teva/id=5086/ http://www.ipwatchdog.com/2009/08/19/merck-wins-singulair-victory-over-teva/id=5086/ Last week I gave an interview to Mark McCarty at Medical Device Daily, which published on Monday, August 17, 2009. At one point he asked the simple question: “What should a CEO know about patents and patent law?” I almost had to pinch myself. Executives that have decision making capacity within an organization almost universally have little or no familiarity with patent practice, patent law and the maze of decisions, pitfalls and opportunities that permeate the sometimes bizarro world that patent attorneys operate in. Having at least some knowledge, even just enough knowledge to ask the right questions, would pay enormous dividends. 19 August 2009 http://www.ipwatchdog.com/2009/08/19/what-should-a-ceo-know-about-patents/id=5078/ http://www.ipwatchdog.com/2009/08/19/what-should-a-ceo-know-about-patents/id=5078/ It does not matter that the number of utility applications allowed in 2008 approximates the number of patents issued in 1999, for example. In 1999 there were 259,618 utility patent applications filed and 142,852 utility patents issued, which correlates to 55% of the number taken in were issued, which is similar to the 54.7% that existed for 1994 and the 56.7% that existed for 1988. I realize that those filed in these years were not issued in these years, but it is an interesting thing to look at this number when compared with the similar number for 2008. In 2008 there were 464,541 utility patent applications filed and 154,699 utility patents issued, which corresponds to 33%. This demonstrates definitively the maintenance fee and PTO budget problems. 17 August 2009 http://www.ipwatchdog.com/2009/08/17/more-work-less-money-for-the-pto-is-a-big-problem/id=4957/ http://www.ipwatchdog.com/2009/08/17/more-work-less-money-for-the-pto-is-a-big-problem/id=4957/ On Thursday, August 13, 2009, U.S. Secretary of Commerce Gary Locke conducted a ceremonial swearing-in of Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. Anything Kappos can do to demonstrate there is a new Sheriff in town will be welcomed by the patent bar. Perhaps top on the list for Kappos are the claims and continuations rules, which the Department of Justice has asked the Federal Circuit to hold off taking en banc until Kappos has had time to consider what the USPTO should do. Speculation is rampant that Kappos will withdraw the rules and moot the appeal, something I suggested the Office as early as December 2008. 17 August 2009 http://www.ipwatchdog.com/2009/08/17/awaiting-kappos-decision-claims-continuations/id=4899/ http://www.ipwatchdog.com/2009/08/17/awaiting-kappos-decision-claims-continuations/id=4899/ In November 2008, the entered a permanent injunction in favor of Callaway at the conclusion of a patent infringement lawsuit in which Acushnet’s Pro V1 ball was found to infringed several patents obtained by Callaway when it bought Top Flite. arlier today the United States Court of Appeals for the Federal Circuit overruled the jury verdict and various other rulings entered by the district court and remanded the case back to the District of Delaware for further consideration. In reading the decision it is clear why the Federal Circuit vacated the district court, so in this regard the decision of the CAFC was not at all surprising. On another level, the decision of the CAFC is enormously surprising. The Federal District Court for the District of Delaware is widely regarded as one of the top patent courts in the country. 14 August 2009 http://www.ipwatchdog.com/2009/08/14/callaway-golf-loses-jury-verdict-at-the-federal-circuit/id=4872/ http://www.ipwatchdog.com/2009/08/14/callaway-golf-loses-jury-verdict-at-the-federal-circuit/id=4872/ The patent explains that several types of bird feeders have been designed for preventing unwanted animals such as squirrels from eating the bird food in the feeder. The purpose of this invention, however, is not to get rid of the unwanted animal, such as a squirrel, but rather to toy with the squirrel. The patent explains that the prior art repelling devices are inappropriate for use by the person who does not wish to repel the squirrels from the bird feeder. The individual who desires to tease or play with the squirrel without necessarily repelling the squirrel should try this invention. 13 August 2009 http://www.ipwatchdog.com/2009/08/13/obscure-patent-squirrel-teasing-bird-feeder/id=4866/ http://www.ipwatchdog.com/2009/08/13/obscure-patent-squirrel-teasing-bird-feeder/id=4866/ Leonard Davis, a United States District Court Judge in the Eastern District of Texas, ordered Microsoft Corporation to stop selling Word, an order that becomes effective in 59 days (i.e., 60 days from yesterday). The permanent injunction issued after the conclusion of a patent infringement lawsuit brought by i4i Limited Partnership, a litigation where Microsoft was found to infringe U.S. Patent No. 5,787,449, which is titled Method and system for manipulating the architecture and the content of a document separately from each other. The permanent injunction ordered by Judge Davis states (in part) that Microsoft must stop selling Word 2003, 2007 and any Word product not more than colorably different. 12 August 2009 http://www.ipwatchdog.com/2009/08/12/patent-injunction-microsoft-ordered-to-stop-selling-word/id=4849/ http://www.ipwatchdog.com/2009/08/12/patent-injunction-microsoft-ordered-to-stop-selling-word/id=4849/ I am a member of the Board of Directors for the United Inventors Association, which is a national 501(c)(3)non-profit organization. Since 1990 the UIA has been dedicated to inventor education and support. August is National Inventors Month, which coincidentally was was started in 1998 by the United Inventors Association of the USA, the Academy of Applied Science, and Inventors Digest magazine. To coincide with this celebration of inventors the UIA has launched a Membership Drive. With that in mind, members of the Board of Directors are reaching out to our professional contacts to introduce the UIA and to encourage membership in our worthwhile organization. 12 August 2009 http://www.ipwatchdog.com/2009/08/12/united-inventors-association-membership-drive/id=4844/ http://www.ipwatchdog.com/2009/08/12/united-inventors-association-membership-drive/id=4844/ The Practising Law Institute has a number of patent programs coming up during in the last quarter of 2009. Among them are two patent bar review courses (NY and San Francisco), the Advanced Patent Prosecution Workshop, USPTO and CAFC Perspectives on Prior Art, Advanced Patent Licensing 2009, Patent Litigation 2009 and a special program on Pharma and Bio-tech Patent Law. 10 August 2009 http://www.ipwatchdog.com/2009/08/10/upcoming-pli-patent-programs/id=4827/ http://www.ipwatchdog.com/2009/08/10/upcoming-pli-patent-programs/id=4827/ Each year, the Federal Circuit Yearbook provides a concise, comprehensive review of every patent decision published by the U.S. Court of Appeals for the Federal Circuit during the preceding year. The 2009 Federal Circuit Yearbook is now available, and includes all the information you need to catch up with what the Federal Circuit has been doing over the previous year. Covering everything from utility to claim construction, nonobviousness to infringement, inequitable conduct to inventorship, the Yearbook brings you readable summaries packed with authoritative commentary on the CAFC’s legal analysis and its current thinking on pivotal patent concerns. 9 August 2009 http://www.ipwatchdog.com/2009/08/09/pli-publishes-2009-federal-circuit-yearbook/id=4823/ http://www.ipwatchdog.com/2009/08/09/pli-publishes-2009-federal-circuit-yearbook/id=4823/ Last month the seminal PLI Treatise, Mechanics of Patent Claim Drafting, was updated with information on claim drafting tips and techniques post Bilski, and a few other juicy items. Long time aficionados of the treatise will recall that this treatise was once upon a time called Landis on the Mechanics of Patent Claim Drafting, or simply the Landis Treatise. Landis has long since been deceased, and Robert C. Faber of Ostrolenk Faber LLP has been updating the text for many years now. About a year or so ago, PLI decided to change the title from Landis to Faber. It is the same great text that we are all familiar with, but now Robert Faber gets the credit he has been due for so many years. 9 August 2009 http://www.ipwatchdog.com/2009/08/09/faber-on-mechanics-of-patent-claim-drafting-updated/id=4820/ http://www.ipwatchdog.com/2009/08/09/faber-on-mechanics-of-patent-claim-drafting-updated/id=4820/ With no notice to the public, and after the Senate was reported to have adjourned for their August recess, on Friday, August 7, 2009, David Kappos was confirmed as Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. While I applaud the quick action by the Senate to get Kappos confirmed, I must admit that I am at the same time shocked and saddened. In my opinion, Kappos is the right person for the job, so I am glad he was confirmed. I think getting him in place sooner rather than later is exactly the right thing to do. Nevertheless, I am not a fan of government rushing so fast that they forget basic principles of open government. 8 August 2009 http://www.ipwatchdog.com/2009/08/08/david-kappos-confirmed-as-uspto-director/id=4813/ http://www.ipwatchdog.com/2009/08/08/david-kappos-confirmed-as-uspto-director/id=4813/ Earlier today the Senate Judiciary Committee voted to advance the nomination of David Kappos, former Vice President and Assistant General Counsel for IBM, to be Undersecretary of Commerce for Intellectual Property, a job that also comes with the title of Director of the Patent and Trademark Office. The vote in the Judiciary Committee was unanimous, with all Democrats and Republicans present voting in the affirmative. The hearing was held beginning at 10:00am this morning, with Judiciary Committee Chair, Senator Patrick Leahy (D-VT) stalling so he could get a quorum necessary for a vote. 6 August 2009 http://www.ipwatchdog.com/2009/08/06/kappos-nomination-unanimously-forwarded-to-full-senate/id=4795/ http://www.ipwatchdog.com/2009/08/06/kappos-nomination-unanimously-forwarded-to-full-senate/id=4795/ On August 4, 2009, the Federal Circuit decided Exergen Corp. v. Wal-Mart Stores, Inc., et al., Case Nos. 2006-1491, 2007-1180 (Fed. Cir. 2009). In a post to this blog several months ago, I argued that Congress, the Supreme Court or the Federal Circuit should reform the doctrine of inequitable conduct this year, to rein in the resurgent plague of inequitable conduct claims in patent infringement cases. The Federal Circuit’s ruling in this case may do more to restrain use of the doctrine than any of the substantive reforms under discussion. The case starts with what should be seen as the unremarkable proposition that Federal Rule of Civil 9(b) applies to the inequitable conduct defense, meaning that it must be pled with particularity. This proposition has long been followed in the district courts, and was endorsed by the Federal Circuit in Central Admixture v. Adv. Cardiac Solutions, 482 F.3d 1347, 1356-1357 (Fed. Cir. 2007). But, it would not be an understatement to say, Exergen gives the Rule 9(b) requirement real teeth. 5 August 2009 http://www.ipwatchdog.com/2009/08/06/inequitable-conduct-ruling-gives-pleading-rules-real-teeth/id=4789/ http://www.ipwatchdog.com/2009/08/06/inequitable-conduct-ruling-gives-pleading-rules-real-teeth/id=4789/ All too often inventors feel that the assistance of a patent attorney is really not necessary. That is an opinion shared by many unfortunately. It is not unfortunate for the patent attorney really, but rather it is unfortunate for those who hold the belief because invariably those who represent themselves obtain rights that are so narrow that they are practically useless. Never forget that the Patent Office’s job is to examine what you present, not to help you obtain the broadest protection possible, or even protection that would be at all useful. On top of that, there are many things that can be hopelessly compromised at the outset of the patent application process, which will make it impossible to obtain a patent of any kind, or at the very least force you to file another patent application to correct the deficiencies present. If you do have to re-file you will then be giving up your original filing date, which can prove fatal. 4 August 2009 http://www.ipwatchdog.com/2009/08/04/inventor-pitfalls-what-is-the-patentable-feature/id=4769/ http://www.ipwatchdog.com/2009/08/04/inventor-pitfalls-what-is-the-patentable-feature/id=4769/ One thing that we can do to at least attempt to help is seek patents in countries where patents can actually be granted in a reasonable time frame. Having at least one patent would allow for inventions to be lawfully claimed to be patented, and if a patent is issued in one jurisdiction then that would seem to make it far more likely that a US patent will issue, at some point. Perhaps this will be enough to encourage at least some investors and venture capitalists to invest with some confidence in the newness of the invention and the likelihood of obtaining a patent. With that in mind, perhaps consider South Africa, New Zealand or Singapore. 4 August 2009 http://www.ipwatchdog.com/2009/08/04/patent-quickie-getting-a-quick-patent-can-help/id=4765/ http://www.ipwatchdog.com/2009/08/04/patent-quickie-getting-a-quick-patent-can-help/id=4765/ A patent does not need to be a blueprint, but it needs to direct. For example, you do not need to provide the code for the scripts, although that is certainly one way to make sure it is described adequately. What you need to do is provide enough description so that someone who is skilled in the art, which is a legal term that refers to those who would be expected to possess the knowledge and understanding appropriate to comprehend the invention, can make and use the invention after reading the patent application. In order to satisfy the patent law description requirements the explanation of the software in a patent application must give the programmer enough information to be able to sit down and know how to write the code having only read the description contained in the software patent or patent application. 31 August 2008 http://www.ipwatchdog.com/2008/08/31/writing-software-patent-applications/id=193/ http://www.ipwatchdog.com/2008/08/31/writing-software-patent-applications/id=193/