http://www.ipwatchdog.com Patents, Software Patents, Patent Applications & Patent Law Wed, 19 Jun 2013 14:00:24 +0000 en-US hourly 1 http://wordpress.org/?v=3.5.1 http://www.ipwatchdog.com/2012/09/19/remembering-nuijten-and-comisky-5-years-later/id=27727/ http://www.ipwatchdog.com/2012/09/19/remembering-nuijten-and-comisky-5-years-later/id=27727/#comments Wed, 19 Sep 2012 11:25:49 +0000 Gene Quinn http://www.ipwatchdog.com/?p=27727 Related posts:

1. Broad Claims to Signals & Computer Program Products in EPOThe good news is that signal claims and broad claims to computer program products are obtainable in Europe. However, such claims are only grantable if the necessary language is present in the European application or the International application as filed, otherwise objection will arise under a.123(2) EPC. Further, the EPO rules on priority are strict, and if the necessary language is missing from the US provisional or utility application from which priority is claimed, then signal or unrestricted computer program product claims will not benefit from priority. It is at the time of US filing that the necessary language must...
2. AMP v. USPTO Remand: Déjà Vu as Federal Circuit Majority Reaffirms Myriad’s Isolated DNA Sequences Are Patent-Eligible*The other point that also bears repeating (and quoting) from the majority opinion in the AMP remand is Judge Lourie’s response to the so-called “preemption” question: "Plaintiffs argue here that they are preempted from using the patented DNA molecules. The answer to that concern is that permitting patents on isolated genes does not preempt a law of nature. A composition of matter is not a law of nature. Moreover, as indicated earlier, a limited preemption is inherent in every patent: the right to exclude for a limited period of time."...
3. Killing Industry: The Supreme Court Blows Mayo v. PrometheusThe sky is falling! Those who feel the Supreme Court's decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. is terrible are right, although many won't likely fully apprehend the gravity of the situation at first. Those in the biotech, pharmaceutical and chemical industries have just been taken out behind the woodshed and summarily executed by the Supreme Court this morning. An enormous number of patents will now have no enforceable claims. Hundreds of billions of dollars in corporate value has been erased. But that might be a good thing. Immediate attention now must turn to Congress. Thank goodness that...

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1. Patent Litigation Treatise Gets Important UpdatesThe PLI Patent Litigation treatise edited by Laurence Pretty has just been updated and includes updates of five chapters, providing you with the information and strategies you need to litigate patent cases successfully. Contributors for this release are John M. Skenyon (chapter 2), Andrei Iancu, Lisa Partain, and Kenneth Weatherwax (chapter 3), Brian E. Ferguson [...]...
2. Microsoft Wins at CAFC, 25% Reasonable Royalty Rule DiesWhile the Federal Circuit ruled that Microsoft did infringe and the patent claim in question (claim 19 of U.S. Patent No. 5,490,216) was valid, it was Microsoft who was the big winner here. The damages awarded by the jury to Uniloc were $388 million, which was set aside by the district court, a ruling that the Federal Circuit affirmed. The Federal Circuit also agreed there was no willful infringement. So while Uniloc has won at least something from Microsoft as a result of its infringement of a valid patent claim, it seems like it will be far less than the...
3. Apple v. Samsung: Jury Verdict Lacks Sufficient Detail To Support Enhanced DamagesThe relative paucity of design patent jurisprudence regarding the legal remedy of damages and the equitable remedy of an accounting for the infringer’s profits, makes clear that while an award of damages for patent infringement may be enhanced under 35 U.S.C. § 284 for willful infringement, and award of profits under 35 U.S.C. § 289, may not be enhanced under Section 284. While this distinction may appear important to one who wishes to obtain an enhancement of the damages award for willful infringement, the jury verdict form in Apple v. Samsung leaves one clueless as to whether the monetary award...

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1. CAFC Muddle: Deciphering the Marine Polymer En Banc Ruling*Where the en banc decision gets particularly interesting (and adversarial) is with respect to the second question, namely when does “intervening rights” apply to reexamined claims? By a 6 to 4 vote, (and a reversal of the panel decision), a majority of the en banc Federal Circuit also concluded “as an alternative ground for affirmance” of the district court’s judgment that “intervening rights do not apply to claims that have not been amended and are not new.” The majority opinion by Judge Lourie (the dissenter in the panel decision) was joined by Chief Judge Rader, and Judges Newman, Bryson, Prost,...
2. CAFC: Intervening Rights for Claims Unamended During Reexam*I like writing about esoteric patent law topics and the question of “intervening rights” in reexaminations/reissues is one of the more esoteric. See my 1998 JPTOS article entitledIntervening Rights: A Potential Hidden Trap for Reexamined Patent. The case of Marine Polymer Technologies, Inc. v. HemCon, Inc. is one of those rare instances in this esoteric area of patent law where the Federal Circuit announced a new “wrinkle” on when “intervening rights” apply in reexamination. Unfortunately, the rule announced by the majority in Marine Polymer Technologies (“intervening rights” apply to unamended claims based on statements made during reexamination) is squarely in...
3. A Winning Patent Infringement Defense: Reexamination Creates Intervening Rights, Erases $29.4 Million VerdictCompanies accused of patent infringement are increasingly looking at patent reexamination at the Patent Office as an attractive avenue for challenging the patent’s validity. Reexamination offers a number of well-known advantages as a forum for such validity challenges over District Court, among them the absence of a presumption of validity and a lower burden of proof. Less well-known, however, is the potential for reexamination to eliminate an accused infringer’s liability for past damages – even if the PTO confirms the validity of a patent in reexamination, the accused infringer might be entitled to “intervening rights,” effectively eliminating past damages, if...

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1. KSR the 5th Anniversary: One Supremely Obvious MessOn Monday, April 30, 2007, the United States Supreme Court issued its final decision in the matter of KSR v. Teleflex, which overruled the Federal Circuit's application of the so-called "teaching, suggestion, motivation" test (or simply TSM) as it applies to determining whether an invention is obvious. At least for the last generation (and likely longer) no other Supreme Court case in the patent arena has been nearly as influential as the Court’s decision in KSR v. Teleflex. This is because obviousness is where the rubber meets the road for the patentability of inventions. This 5th Anniversary of the ruling...
2. Another KSR RetrospectiveOn that fateful day some 27 months ago, April 30, 2007 to be precise, the United States Supreme Court decided that the well established and functional bright line rule for obviousness was too rigid.  No longer must there be a teaching, motiviation or suggestion to render an invention unpatentable for obviousness reasons.  No in this [...]...
3. Obviousness When All Elements Not Present in Prior Art?The Tokai and Ritchie rationale seems to have never been cited by any other panels of the Court. While this may be due to many reasons, the fact that this reasoning could so easily invalidate virtually any claim in any patent, combined with the fact that it has only scarcely been utilized by the Court, suggests that this is an extraordinarily important issue for the Court as a whole to consider....

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1. UNH Law Once Again in Top 10 IP Law SchoolsMany readers of IPWatchdog.com know that I hold two degrees from the former FPLC, both my Juris Doctor and my Master of Laws in intellectual property, and continue to have a special place in my heart for the institution and the people affiliated with the institution. It is good to see that the UNH School of Law continues the tradition of Franklin Pierce Law Center. UNH-FPLC has been ranked each and every year since U.S. News began their specialty law school rankings began in 1992....
2. UNH School of Law Opens Franklin Pierce Center for IPIndeed, the new Franklin Pierce Center for Intellectual Property at the University of New Hampshire School of Law will formally open with a bang! Chief Judge Randall Rader of the United States Court of Appeals for the Federal Circuit will deliver remarks at a dinner hosted by UNH Law on Friday, September 30, 2011, and will participate in a Judge's panel on Saturday, October 1, 2011. Rounding out the Judges' panel will be Judge Pauline Newman and Judge Arthur Gajarsa, both also of the Court of Appeals for the Federal Circuit. Three Federal Circuit Judges at the opening event for...
3. Exclusive Interview: Chief Justice John BroderickOn January 28, 2011, the recently retired Chief Justice of the New Hampshire Supreme Court, John Broderick, became the Dean and President of the University of New Hampshire School of Law. The new UNH School of Law is the law school formerly known as Franklin Pierce Law Center, renowned around the world for its intellectual property program. On January 31, 2011, I had the opportunity to chat with Chief Justice Broderick, who prefers to go by his first name these days....

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1. UNH Law Honors Newman, Gajarsa Named Distinguished JuristThere is much to write about the event, but I will start my week long coverage with an overview of the event. As the week progresses I will delve into some interesting substantive discussions that took place over this Intellectual Property weekend in the Granite State, including: (1) Chief Judge Rader tell me during the Judges' panel: "You aren't making any sense..."; (2) Chief Judge Rader daring anyone to come up with proof that the Supreme Court's decision in KSR did anything to change previous Federal Circuit case law on obviousness (I'll take that challenge!); and (3) Jon Dudas, the...
2. UNH Law Once Again in Top 10 IP Law SchoolsMany readers of IPWatchdog.com know that I hold two degrees from the former FPLC, both my Juris Doctor and my Master of Laws in intellectual property, and continue to have a special place in my heart for the institution and the people affiliated with the institution. It is good to see that the UNH School of Law continues the tradition of Franklin Pierce Law Center. UNH-FPLC has been ranked each and every year since U.S. News began their specialty law school rankings began in 1992....
3. USPTO Opens Patent & Trademark Resource Center at UNH LawThe United States Patent and Trademark Office (USPTO) today announced that the University of New Hampshire School of Law Library, which was designated as the Concord Patent and Trademark Resource Center (PTRC.) on January 30, 2012, is now open to serve the intellectual property (IP) needs of the public....

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1. A Winning Patent Infringement Defense: Reexamination Creates Intervening Rights, Erases $29.4 Million VerdictCompanies accused of patent infringement are increasingly looking at patent reexamination at the Patent Office as an attractive avenue for challenging the patent’s validity. Reexamination offers a number of well-known advantages as a forum for such validity challenges over District Court, among them the absence of a presumption of validity and a lower burden of proof. Less well-known, however, is the potential for reexamination to eliminate an accused infringer’s liability for past damages – even if the PTO confirms the validity of a patent in reexamination, the accused infringer might be entitled to “intervening rights,” effectively eliminating past damages, if...
2. CAFC Muddle: Deciphering the Marine Polymer En Banc Ruling*Where the en banc decision gets particularly interesting (and adversarial) is with respect to the second question, namely when does “intervening rights” apply to reexamined claims? By a 6 to 4 vote, (and a reversal of the panel decision), a majority of the en banc Federal Circuit also concluded “as an alternative ground for affirmance” of the district court’s judgment that “intervening rights do not apply to claims that have not been amended and are not new.” The majority opinion by Judge Lourie (the dissenter in the panel decision) was joined by Chief Judge Rader, and Judges Newman, Bryson, Prost,...
3. Bio/Pharma Amici Brief Filed in Marine Polymer Reexam AppealOn September 26, 2011, the a three-judge-panel of the United States Court of Appeals for the Federal Circuit issued a ruling in Marine Polymer Technologies, Inc. v. HemCon, Inc., which found intervening rights due to certain patent claims due to the fact that Marine Polymer made arguments about claim language during reexamination, but without actually amending the claims. See Marine Polymer vacated opinion. On January 20, 2012, the full Federal Circuit decided to hear this case en banc and ordered that the original panel decision be vacated and the appeal reinstated. No additional briefing by the parties was requested, but...

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1. Doctrine of EquivalentsOn May 28, 2002, a unanimous United States Supreme Court issued its decision in the much anticipated case of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., LTD. The Supreme Court vacated and remanded the case, reaffirmed Warner Jenkinson, and perhaps most importantly the Court rejected the complete-bar approach to the doctrine of equivalents adopted [...]...
2. CAFC: Intervening Rights for Claims Unamended During Reexam*I like writing about esoteric patent law topics and the question of “intervening rights” in reexaminations/reissues is one of the more esoteric. See my 1998 JPTOS article entitledIntervening Rights: A Potential Hidden Trap for Reexamined Patent. The case of Marine Polymer Technologies, Inc. v. HemCon, Inc. is one of those rare instances in this esoteric area of patent law where the Federal Circuit announced a new “wrinkle” on when “intervening rights” apply in reexamination. Unfortunately, the rule announced by the majority in Marine Polymer Technologies (“intervening rights” apply to unamended claims based on statements made during reexamination) is squarely in...
3. Bio/Pharma Amici Brief Filed in Marine Polymer Reexam AppealOn September 26, 2011, the a three-judge-panel of the United States Court of Appeals for the Federal Circuit issued a ruling in Marine Polymer Technologies, Inc. v. HemCon, Inc., which found intervening rights due to certain patent claims due to the fact that Marine Polymer made arguments about claim language during reexamination, but without actually amending the claims. See Marine Polymer vacated opinion. On January 20, 2012, the full Federal Circuit decided to hear this case en banc and ordered that the original panel decision be vacated and the appeal reinstated. No additional briefing by the parties was requested, but...

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1. Canon Sued for Infringing Noise-Reduction Camera PatentOn Friday, September 21, 2012, Canon, Inc. (NYSE: CAJ) was sued for patent infringement by Yama Capital, LLC, which is a limited liability company organized under the laws of the State of Delaware.  The complaint, which alleges Canon infringes U.S. Patent No. 6,069,982 (“the ‘982 patent”) was filed in the U.S. District Court for the Southern District of New York. The '982 patent was originally assigned to Polaroid. According to the complaint, Canon has known about the patent for at least 10 years and believes there is infringement based on certain statements contained in the Canon EOS System Summer 2012 brochure. Specifically,...
2. CAFC Denies Writ of Mandamus in PTO Interference ProceedingAllvoice sought a remand of the Holt application to the examiner for further prosecution or to issue an order requiring AVRS to show cause why judgment should not be entered against the Holt application. Without requiring AVRS to even file a response, the Federal Circuit, per Chief Judge Rader, explained that there was simply no justification for the issuance of a writ of mandamus because there was no showing that an ordinary appeal wouldn't suffice after the PTO finally disposed of the interference proceeding. Of course, that doesn't take into consideration the need for Allvoice to quite title to proceed...
3. No $5.4 Trillion Bounty for False Patent Marking Bounty HunterIn Perquignot v. Solo Cup Co., the stakes were truly mind-boggling: about $10.8 trillion in total. Approximately $5.4 trillion of that bounty would be the federal government’s share which the Federal Circuit characterized as “sufficient to pay back 42% of the country’s total national debt.” High stakes indeed! But unfortunately for the bounty hunter (Pequignot) in Perquignot, the Federal Circuit affirmed a district court grant of summary judgment that there was no “deceptive intent” on the part of the patentee (Solo Cup), thus no approximately $5.4 trillion bounty was owed....

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1. Judge Kathleen O’Malley Finally Confirmed by Senate for CAFCJudge Kathleen O'Malley was confirmed by the United States Senate earlier today. O'Malley's confirmation, along with the confirmation of 18 others in recent days, is the result of a deal between Senate Democrats and Republicans that ensured passage of 19 nominations in exchange for an agreement not to move forward with other controversial nominations, including the hotly challenged nomination of Goodwin Lui, who is Associate Dean and Professor of Law at University of California Berkeley School of Law. ...
2. Chief Judge Rader Takes on Lobbying White House and SCOTUSThe discussion was lively, perhaps even explosive. You could nearly see sparks fly when Chief Judge Rader continued to pepper Seth Waxman with question after question about his opinion on the propriety of parties lobbying the White House in order to obtain a favorable amici brief from the Department of Justice. Rader zeroed in on the slippery slope and obviously is not pleased with the mixing of law and politics, saying: "this is a cause for concern... Politics and law have a divide." It is indeed troubling that the White House under both President Bush and President Obama have allowed...
3. Interview Exclusive: Judge Richard Linn Part IIIn Part I of the interview we discussed Judge Linn’s early interest in patent law and how he found himself appointed to replace the recently deceased Judge Giles Sutherland Rich. We then discussed engaging as a lawyer with civility while still zealously representing clients. That brought us to a topic near and dear to the Judge’s heart — the Inns of Court and the many patent focused Inns across the country that together make up the Richard Linn Inn Alliance. In Part II of the interview we pick up with the discussion of the Inns of Court and further discuss...

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1. How About a Patent Attorney for the Federal Circuit?In looking at the cases filed at the Federal Circuit during 2010, 42% of the docket for the CAFC were patent cases. At the moment, the three judges who are patent attorneys on the Federal Circuit are all on active status, and by that I mean are not on senior status. Judges Newman and Lourie, however, currently qualify to move to senior status or retire, and in a matter of a few years Judge Linn could elect senior status, or to retire, as well. Thus, moving forward in the not too distant future there could be a time when none...
2. Part 2: Don Dunner on CAFC Judges & Future CAFC CandidatesIn this second installment of my interview with Don Dunner, the dean of CAFC appellate advocates, we talk about which judges on the Federal Circuit ask the most difficult questions, who he thinks are capable candidates for future federal circuit vacancies, why the Federal Circuit was created as a specialty court, continued hostility toward a purely specialty court and Congressman Issa's attempt to create a pseudo-specialty trial court for patent issues. We also touch upon the familiar fun questions and learn that one of Dunner's favorite movies is a well known courtroom comedy....
3. Michel Announces Retirement; Rader Era Set to BeginI am just getting back from a week in San Francisco, California teaching the PLI Patent Bar Review Course at PLI’s California Headquarters in downtown San Francisco.  I am back in the office after having taken the red-eye, with a stop over in Long Beach, California before the cross country trek to DC.  As has [...]...

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1. News, Notes & AnnouncementsIn this edition of News, Notes & Announcements, happy birthday wishes to IPWatchdog.com for celebrating our 11th year online and a heartfelt thank you to all our readers. Additionally, the TiVo patent used to sue Echostar, the litigation at question in the en banc review at the Federal Circuit, survives reexamination at the USPTO. Professor Thomas Field (UNH) publishes the 21st edition of his IP casebook, which is now online in royalty free version; the USPTO is hosting the National Trademark Expo this Friday and Saturday on campus in Alexandria; the USPTO is hosting the 15th Annual Independent Inventors Conference...
2. AIPLA Honors Chief Judge Paul Michel with Board of Directors’ Excellence AwardThe Executive Director of the AIPLA, Q. Todd Dickinson, then took the stage to introduce a video that was dedicated to this year's AIPLA Board of Directors' Excellence Award. This year the award was given to the Honorable Chief Justice Paul R. Michel, who retired earlier this year. Dickinson explained the award was being given to him "in recognition of his extraordinary leadership and service to the United States Government and in particular his leadership of the Court of Appeals for the Federal Circuit as Chief Judge while having a distinguished career marked by intellect, integrity, and an unwavering commitment...
3. AIPLA Meeting: David Kappos Q & A with Q. Todd DickinsonOne question in particular that stood out to me was the question about hiring at the USPTO. Director Kappos was asked to give us an idea on what the plans are for hiring examiners to the USPTO. Kappos started with "We want YOU to come work for the USPTO." Laughter abounded. Dickinson quickly picked up on this saying: "Uncle Sam wants YOU!" More laughter all around. Kappos went on to explain that they are seeking experienced, well seasoned patent attorneys to come work for the USPTO. They want to hire another 1000 examiners. Dickinson then joked "Ah, so you weren't...

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