After the Federal Circuit issued its en banc decision on May 10, 2013 in CLS Bank v. Alice Corp, the patent owner Alice Corp must be feeling like Alice in Alice in Wonderland, bewildered and frightened by the fantastical situation in which they find themselves:
(1) “bewildered” because an equally divided Federal Circuit affirmed the district court’s holding that Alice’s claimed system to tangible machine components including a first party device, a data storage unit, a second party device, a computer, and a communications controller, programmed with specialized functions consistent with detailed algorithms disclosed in the patent, constitutes a patent ineligible “abstract idea;”
(2) “frightened” because, as Judge Moore puts it, “this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents” (Moore Op. at 2); and
It has been an interesting year for us at IPWatchdog.com, from getting sued in January 2010, to exclusive interviews with the likes of Chief Judge Randall Rader, Chief Judge Paul Michel, Former U.S. Senator Birch Bayh, USPTO Director David Kappos and former USPTO Directors Todd Dickinson and Nick Godici and others, we have stayed busy. We have put more emphasis this year on reporting live from industry news events, such as from the BIO 2010 International Convention and the AIPLA Annual Meeting. Of course, the familiar opinion commentary that I so love to write has also been a mainstay.
The big news for us is just coming in as of today. I am pleased to announce that IPWatchdog.com was selected by the readers of the ABA Journal as their favorite IP Law blog for 2010. See ABA Journal Blawg 100 IP Law category for 2010. I am also pleased to announce that for 2010 we had over 2,000,000 visits, delivered nearly 11.8 million pages, our homepage was viewed 3.06 million times and we averaged over 67,000 unique monthly visitors! Thanks to all our readers for coming back day after day, and thanks to all of our Guest Contributors!
I am pleased to announce that the Editors of the ABA Journal yesterday announced they have selected IPWatchdog.com as one of the top 100 best law blogs by lawyers, for lawyers. Now readers are being asked to vote on their favorites in each of the 4th Annual Blawg 100’s 12 categories. IPWatchdog.com is in the “IP Law” category. To vote, please visit The 2010 ABA Journal Blawg 100. You do need to register to be able to vote, but registration is free (and they don’t seem to send any unsolicited e-mails, which is nice). If you are already registered all you have to do is sign in and vote. Voting ends at close of business on December 30, 2010.
At 7:30, Friday evening, October 22, 2010, many of those who had attended the AIPLA Annual Meetinghad gathered outside of the ballroom where a black tie preferred dinner was to be served. It was a very well attended event, I would venture to guess maybe 300 or so. Many of the top names in intellectual property were in attendance including David Kappos, Chief Judge Randall Rader, Q. Todd Dickinson and Chief Judge Paul Michel. The ball room was eloquently decorated and a small jazz band played through the beginning of dinner. I sat one table over from Judge and Mrs. Michel, Judge and Mrs. Rader and Q. Todd Dickinson.
I am in beautiful San Diego, California today, enjoying the beach and near perfect weather today (yesterday was absolutely perfect, but I spent the day working). Last night I spoke at the San Diego Intellectual Property Lawyers Association monthly meeting and had a great time. The topic was “The Perils and Profits of Patent Blogging: How to stay out of trouble while still being read and still generating clients and connections.” Look for more on that next week when I get back to the office and into full swing. In the meantime, in the latest edition of News, Notes & Announcements, IBM enters the blogosphere with an IP blog, Myriad Genetics files its appeal brief and Patent Docs have some excellent early analysis, UCLA Professor Doug Lichtman interviews Chief Judge Randall Rader and the USPTO will host the 15th Annual Independent Inventors Conference at the end of next week. Two more days out of the Office for me attending, speaking at and reporting live from the USPTO Conference. A busy week no doubt.
Friday afternoon I attended the second day of the AIPLA annual meeting. I got to the Marriott Wardman Park hotel at 9:00 am and was there until after 11:00 pm, for a full day of activities. I met so many interesting people while there, including the current Chief Judge Randall Rader for the Court of Appeals for the Federal Circuit, who I encountered at the AIPLA Excellence Award dinner, which honored Chief Judge Paul Michel. Throughout the afternoon there where many different topics of discussions and presentations. The one I could not wait to attend was the session on blogging titled “Blog On! Thoughts on Patent Blogging from Inside and Outside the Blogospere.” I was particularly interested because the panel was to address the case where IPWatchdog as a company and Gene Quinn and I as individuals were sued by an invention promotion company that didn’t like what we had written about them. See Settlement Announcement: Lawsuit Against IPWatchdog Over.
Several weeks ago TiVo filed its brief in the matter of Tivo, Inc. v. EchoStar Corp., which will be heard en banc by the United States Court of Appeals for the Federal Circuit on Tuesday, November 9, 2010. The dispute between TiVo and EchoStar dates back to 2004 when TiVo sued EchoStar in the United States District Court for the Eastern District of Texas, alleging that its receivers infringe “hardware” claims (claims 1 and 32) and “software” claims (claims 31 and 61) of US Patent No. 6,233,389. The jury found there was willful infringement and the district court entered an injunction ordering EchoStar to cease infringing. It is this injunction that now is at the root of the dispute to be heard by the Federal Circuit. TiVo did not believe EchoStar lived up to the Order of the district court. The district court, seemingly out of an abundance of caution, decided not to utilize its summary contempt powers but held a year long proceeding to determine if infringement was ongoing. The district court found EchoStar was violating the injunction Order and acted accordingly. EchoStar appealed and argued that only a full patent infringement trial would suffice. The panel sided with TiVo over a strong dissent by Judge Rader, now Chief Judge of the Federal Circuit, who felt the summary proceedings were inadequate. For more see Looking Ahead to TiVo v. Dish at the Federal Circuit. So as the full Federal Circuit hears this case it is anticipated that the inherent powers of a district court to enforce their own Orders and administer justice will be front and center.
In this edition of News, Notes & Announcements, the mother of all patent trolls, Acacia Research Corporation, scores two more licensing agreements, one with IBM the other with US Cellular. Samsung Electronics and Stanford Law School are combining forced to co-sponsor a patent prize for excellent writing about patent law, with real money awarded to the winner and runners-up; $10,000 and $5,000 respectively. AIPLA announced that David Kappos will give the keynote speech at the annual meeting on Thursday, October 21, and Judge Gajarsa will speak on Friday and Chief Judge Rader will participate in a panel on the amicus process. The Wall Street Journal is reporting about new challenges to cookies tracking our every move online, and BIO is the charter sponsor of a new weekly public affairs television program called BioCentury This Week, which premiered yesterday and is available on the web.
The United States Court of Appeals for the Federal Circuit announced back in May that they would take up the matter of Tivo, Inc. v. EchoStar Corp. en banc, and then subsequently set the oral argument date for Tuesday, November 9, 2010. November 9, 2010 will be a busy day for the Federal Circuit indeed. On this first anniversary of the Bil ski oral arguments at the United States Supreme Court the Federal Circuit has scheduled two en banc hearings. Second up on November 9, 2010 will be Tivo v. EchoStar, first up will be Therasence v. Becton, both cases of great importance. We will be following both cases closely, and I will be in attendance in the gallery and offering eyewitness accounts that afternoon. In the meantime, however, let the punditry, analysis and gossip begin. First up — TiVo v. Echostar, which will decide the limitations (if any) on a district court’s ability to use contempt proceedings to enforce a permanent injunction in a patent case when there is an alleged work-around.
On August 2, 2010, a panel of the United States Court of Appeals for the Federal Circuit consisting of Chief Judge Rader and Judges Bryson and Moore summarily denied a petition for writ of mandamus filed by Allvoice Developments US, LLC. On July 12, 2010, Allvoice petitioned the Federal Circuit asking that court to issue a writ of mandamus directing the United States Patent and Trademark Office’s Board of Patent Appeals and Interferences to vacate its decision declaring an interference between Allvoice’s patent, US Patent No. 5,799,273 (“the Mitchell patent”) and Patent Application No. 09/351,542 (“the Holt application), which is a continuation of Patent Application No. 08/566,077, which was filed November 13, 1995. Advanced Voice Recognition Systems Inc. (AVRS) is the assignee of the Holt application.
After days, weeks, and months of anxious waiting, the U.S. Supreme Court (finally) issued its ruling in Bilski v. Kappos. Not surprisingly (and as many predicted, including me), the Federal Circuit’s “machine or transformation” test was relegated to “second class” status as too inflexible, much like the “teaching, suggestion and motivation” (TSM) test in KSR International v. Teleflex. Also not surprising (and as predicted), the U.S. Supreme Court affirmed the PTO ruling that Bilski’s claimed method for hedging risks was not “patent-eligible” under 35 U.S.C. § 101 because it was an “abstract idea,” as was suggested by Judge (now Chief Judge) Rader’s dissent in Bilski.
So much for the easy (and predictable) part of Justice Kennedy’s opinion for the Supreme Court in Bilski. Where this decision takes on a surreal quality is how the various Justices viewed the impact of 35 U.S.C. § 273 in determining whether “business methods” (which Bilski’s claimed method was characterized as) are patent-eligible. (After all, Bilski, asked this very question in his petition for certiorari.) In my view, Justice Kennedy and 4 other Justices (Roberts, Alito, Thomas, as well as Scalia by implication) were very CORRECT that 35 U.S.C. § 273 is an implicit, if not explicit, recognition and acceptance by Congress that “business methods” (however you characterize them) ARE patent-eligible subject matter under 35 U.S.C. § 101. Conversely, Justice Stevens and 3 other Justices (Ginsburg, Breyer and Sotomayor) are completely WRONG in treating 35 U.S.C. § 273 as if this statute doesn’t exist.
Yet another day has come and gone without the United States Supreme Court issuing a decision in Bilski v. Kappos. According to Cover It Live, via the SCOTUS Blog, Chief Justice Roberts announced that the Court will have its final opinions on Monday, June 28, 2010, and that the Court’s term will close with the exception of remaining Orders in pending cases. (see 10:39 am mark of discussion at SCOTUS Blog). This is widely being interpreted as confirmation that Bilski will be issued on Monday, June 28, 2010, which admittedly seems extraordinarily likely, but call me crazy, I have a strange feeling something odd may be boiling behind the scenes.
Allow me to point out that everyone I have spoken to believes that Bilski will be decided this term and with only one day remaining everyone to a person believes the decision will be announced next Monday shortly after 10:00 am Eastern Time. But why wouldn’t the Chief Justice just come out and say that all pending cases will be decided and no cases will be held over until the next term? Why must he say things in ways that leave open the possibility that one or more cases could be held over? For example, the Court could have its “final opinions” issue on Monday, June 28, 2010 and the Court’s October 2009 Term could come to an end, and Bilski still not issue. That would make what Roberts said today true, and we would still have a case held over.
Bounty hunters make their living by capturing fugitives from justice for a monetary reward (bounty). A more recent, modern day version of the bounty hunter is one who pursues patentees for false patent marking under 35 U.S.C. § 292. The recent Federal Circuit case of Forest Group, Inc. v. Bon Tool Co. has made such false patent marking bounty hunting lucrative by saying that each falsely marked item is an “offense” under 35 U.S.C. § 292, and thus subject to a penalty of “up to $500,” with the bounty hunter getting half of the awarded penalty and the federal government the other half. As a result, a rash of such cases (upwards of at least 100 at the moment) have been filed by such modern day bounty hunters as qui tam actions against various patentees alleged to be falsely marking their products.
In 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.
Many years ago (seven to be exact), I wrote about why patentees should worry if they procrastinate in filing a patent infringement suit after threatening a potential infringer. See Guttag, “Laches and Estoppel: The Patentee Who Procrastinates in Filing Suit May Be Lost,” AIPLA Quarterly Journal, Vol. 31, No. 1 (Winter 2003). The patentee in Aspex Eyewear Inc. v Clariti Eyewear, Inc. might have done well to heed my warning. 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.
Exhibit Hall at BIO International Convention; showing about 5% of the square footage.
On Sunday, May 2, 2010, I left home for Dulles International Airport, abbreviation IAD. It has always seemed strange to me that the abbreviation wasn’t DIA, but maybe that is too close to DOA, and I doubt any airport would want that association. In any event, I was on my way to Chicago for my first trip to the BIO International Convention. I was excited and a bit apprehensive, having booked my hotel room through Hotwire. I keep telling myself that I won’t do that any more, but the low prices keep luring me in I suppose. After all, I am a patent attorney, and that means by nature I am quite conservative and frugal in most things, although not when it comes to the NFL Sunday Ticket via Direct TV, but that is another matter entirely.
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.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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