Yesterday I wrote about the petition for en banc rehearing that I recently filed in Plasmart v. Kappos. See Petition for Rehearing en banc filed in Plasmart v. Kappos. The case arose from what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. The patent examiner ultimately concluded that claims 20-33 were patentable. The Board agreed that claims 20-33 were patentable as not being obvious, but also determined that claim 1 was patentable as well. Then at the Federal Circuit, in a nonprecedential decision, the panel determined that none of the claims were patentable.
I question whether it is appropriate to have a nonpredential opinion after the USPTO has gone through the time and expense of an inter partes reexamination. Based on the decision I specifically raised as an issue whether the original panel provided proper deference to the Board’s finding of facts, or instead merely substituted their own view. A view that I don’t believe was properly explained with the required specificity under KSR.
I have been doing a lot of research and writing on obviousness and KSR v. Teleflex lately, but not for publication on the blog so far. Last Friday, July 6, 2012, I filed a petition for rehearing en banc in Plasmart v. Kappos. I represent the Appellee-Patentee. The case arose out of what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. The patent examiner found some of the claims allowable, the Board found all of the claims allowable, and then in a nonprecedential opinion the Federal Circuit overturned the Board.
This case intrigued me from the start because it seemed rather odd that there should be a nonprecedential opinion in an appeal to the Federal Circuit necessitated by a completely adjudicated inter partes reexamination at the United States Patent and Trademark Office. Moreover, the original panel concluded that the combination of known elements resulted in a predictable result. The problem with that reasoning, however, is that not all of the elements were found within the prior art. In fact, the Board found that there are no fewer than three (3) meaningful structural differences between the invention as claimed and the prior art.
Lounge chair and cooler combination, US Patent No. 7,475,889
It is still extraordinarily hot throughout most of the United States today. Some relief is on the horizon for tomorrow, at least for the greater Washington, DC and Northern Virginia area, with even more relief next week. After getting up early to go for a long walk with my 5 pound weights in each hand (yes, trying to lose weight) and it was 88 degrees first thing in the morning I knew I had to return to the topic of cool or cold inventions.
Alright… alright… I know I’m a geek, a nerd and extremely corny! But after the article from yesterday about Cool Wearable Innovations, I couldn’t resist writing an article titled “Cooler Innovation.” That double entendre lured me into its clutches. You see, these are “cooler” innovations because they all relate to the field of keeping perishable items and beverages cool, not because they are “cooler” in a hip sort of way.
The idea for the article initially came to me yesterday when I was searching for “cool” or “cold” inventions that will help keep people comfortable during the extreme heat we are facing in the United States. I realized after a while I was leaning toward wearable innovations, but the personal air conditioning system (U.S. Patent No. 7,246,505) made the cut. It was the only one that was not wearable, at which point the double entendre first occurred to me. Yes, I crack myself up… you know in that not funny at all patent attorney kind of way!
Chicago has set a new record with the third straight day of 100+ degree heat. Temperatures in Illinois are expected to hit as high as 104 degrees before relief finally arrives on Sunday. Washington, DC hit 100 degrees today, and is expected to be even hotter on Saturday, with Baltimore, Richmond and Philadelphia all expecting 100+ degrees for Saturday. See Bloomberg. The DC area has also had its ninth straight day has had heat in excess of 95 degrees. Indeed, it is fair to say that the eastern half of the United States is experiencing prolonged heat like few can ever remember.
With that in mind I thought it might be an interesting time to take a look at some of the innovations that attempts to beat summer heat have lead to over the years. The theme here is wearable coolness.
So sit right back in your chair, hopefully in a heavily air conditioned office or home, and get in touch with your inner inventor. These individuals came up with something patentable, and necessity is certainly the mother of innovation. Admittedly, some are more practical than others, but who knows, perhaps this prolonged heat agony will lead to a who new crop of gadgets associated with keeping one cool and refreshed during the dog days of summer.
The World Intellectual Property Organization (WIPO), in conjunction with INSEAD, released the 2012 Global Innovation Index (GII) on July 3, 2012. The GII model included study of 141 economies, which represent 94.9% of the world’s population and 99.4% of the world’s GDP (measured in US dollars). Once again, for the second year in a row, Switzerland, Sweden and Sinagpore top the list, which measures overall innovation performance. The report ranks countries on the basis of their innovation capabilities and results. The United States ranked 10th.
The study shows that the dynamics of innovation continue to be affected by the emergence of new successful innovators, as seen by the range of countries across continents in the top twenty, as well as the strong performances of emerging countries such as Latvia (30th), Malaysia (32nd), China (34th), Montenegro (45th), Serbia (46th), Republic of Moldova (50th), Jordan (56th), Ukraine (63rd), India (64th), Mongolia (68th) and Armenia (69th), all of which were in the top half of those 141 countries studied.
Qualcomm Incorporated (NASDAQ: QCOM), a developer and innovator of advanced wireless technologies, products and services, announced last week that it plans to modify its corporate structure. The corporate structure changes are being implemented, among other reasons, in order to enhance Qualcomm’s ability to quickly deliver products to its customers, while further protecting and insulating its valuable patent portfolio from any claims resulting from actions and activities by portions of the company other than the Qualcomm Technology Licensing Division (QTL). According to the company this is not a restructuring in anticipate of spinning off either the QTL or QCT business, nor is this change in response to any third party actions or claims.
Qualcomm is indeed an innovator of note, as well as an aggressive filer of patent applications worldwide. For 2011, Qualcomm ranked as the 6th most prolific filer of international patent applications filed under the auspices of the Patent Cooperation Treaty (PCT). Qualcomm filed some 1,494 international patent applications in 2011. See International Patent & Trademark Filings Set New Record in 2011. For 2010, Qualcomm ranked 37th overall in terms of the number of U.S. patents obtained, receiving 772 according to the Intellectual Property Owners Association. See Top 300 Organizations Granted U.S. Patents in 2010 (page 2).
It was less than two weeks ago that AOL announced that it completed a $1.056 billion patent transaction with Microsoft Corporation (NASDAQ: MSFT). At the time of the announcement of the Microsoft transaction AOL explained that the company expected to provide additional details to shareholders by the end of June. Earlier today, AOL Inc. (NYSE: AOL) announced that it has commenced a modified Dutch auction tender offer to repurchase shares of its common stock up to an aggregate purchase price of $400 million, making good on its earlier promise to shareholders. Indeed, this announcement is being touted by the company as a first step in returning 100% of the proceeds of its recent patent transaction to its shareholders by the end of calendar 2012.
The Microsoft patent transaction included the sale of over 800 AOL patents and their related patent applications, and granted Microsoft a non-exclusive license to its retained patent portfolio for an amount totaling $1.056 billion in cash. AOL continues to hold a significant patent portfolio of over 300 patents and patent applications spanning core and strategic technologies, including advertising, search, content generation/management, social networking, mapping, multimedia/streaming, and security among others.
Last week, on Friday, June 15, 2012, Merck (NYSE: MRK) announced the U.S. District Court for the District of New Jersey (Judge Peter G. Sheridan) ruled against the company on the issue of patent infringement in its suit against Apotex Inc. and Apotex Corp. See Non-Published, Redacted Opinionand Court Order. The patent at issue in the decision was U.S. Patent No. 6,127,353, which covers the active ingredient in Nasonex® and which provides exclusivity the expiration of the patent on April 3, 2018. The District Court decision did, however, confirm the patentability of the claims in question, finding Apotex’s challenges for anticipation and obviousness unpersuasive.
The case at issue in the Merck announcement was styled Schering Corporation v. Apotex, Inc. 3:09-cv-06373. So why was Merck announcing this adverse decision? In November 2009, Merck completed a $41 billion acquisition of Schering-Plough. See Merck completes acquisition of Shering-Plough. This acquisition, making Schering a fully owned subsidiary, was reportedly part of an attempt to diversify as they seek to weather the recession and cope with the unpredictability of drug development. See Merck to buy rival for $41 billion.
In a complaint filed December 18, 2009, Schering claimed that the Abbreviated New Drug Application (ANDA) filed by Apotex constitutes patent infringement of the ‘353 patent, which was issued to Schering on October 3, 2000 and claimed priority of an international patent application first filed pursuant to the Patent Cooperation Treaty (PCT) on September 6, 1991.
Konarka Technologies, Inc., a leading developer of thin-film solar panels, has filed for bankruptcy protection under chapter 7 of the Federal bankruptcy laws. Under chapter 7 proceedings, the company’s operations cease and a trustee is tasked with liquidating the company’s assets for the benefit of creditors.
Howard Berke, chairman, president and CEO of Konarka, said, “Konarka has been unable to obtain additional financing, and given its current financial condition, it is unable to continue operations. This is a tragedy for Konarka’s shareholders and employees and for the development of alternative energy in the United States.”
While this is certainly bad news for shareholders, employees and creditors, it is an all to common occurrence for alternative energy companies. Yes, the allure of renewable energy is irresistible, but the technology is just not where it needs to be yet in order to make renewable energy a mainstream alternative to more cheaper, conventional forms of energy. Even exciting science and a strong patent position is not enough to hold back the economic realities of the marketplace.
The mobile app economy is estimated to have created nearly 466,000 jobs in the United States alone as of the beginning of 2012, up from zero jobs in 2007. See New ‘App Economy’ Creates Nearly 500,000 Jobs. Further, mobile app downloads are expected to hit 76.9 billion in 2014. This growing technology based industry, like so many other similar growing industries, is facing increased threat of patent infringement claims, which are hampering the process of bringing new mobile innovations to market.
In order to attempt to combat the use of dubious patents against mobile app developers, Article One Partners (AOP), the world’s largest patent research community, today announced the formation of a partnership with the Appsterdam Legal Foundation, a global trade organization for mobile software developers.
Typically I am not one to say that patent infringement lawsuits are responsible for stunning the growth of an industry, but with respect to mobile app developers there is something quite different than what we have witnessed in the past. Many mobile app developers are individuals or truly small businesses. When faced with threats of patent litigation or demands to pay licensing fees, many of these mobile app developers leave the market. Still more are simply not entering the marketplace out of fear.