Once again I find myself traveling for PLI, this time I am in an airplane heading for Oakland, California, with the final destination of San Francisco, California via taxi. This will be the last live location for the PLI Patent Bar Review Course for 2009. John White and I will be in San Francisco teaching at PLI headquarters downtown starting Wednesday and running through Sunday. There is always a home study course available for those who want to take the course between now and our next live course, which will be from January 6-10, 2010 in Washington, DC. So 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. For example see Crazy Patents in an Era of Alleged Patent Quality. Of course that is not really true, but the Supreme Court KSR decision did replace the previous objective test and supplanted it with a subjective test that literally requires inventors to demonstrate they undertook a fools errand because they knew their invention could not work. The only way that makes any sense logically is if it could be used to prevent trivial, perhaps stupid patents. That hasn’t happened though, so what good did KSR do? None, but it has and will cause harm. Notwithstanding, 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.
Everyone views the world through a prism, and the prism I look through is different than the prism others look through. That should hardly come as a surprise given that 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 to what will hopefully be success. I do not begrudge anyone their point of view, or suggest that there is but one right way to successfully get from point A to point B, but I do know that with every choice there are associated risks. 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.
I want to thank Mr. Quinn for graciously inviting me to write a post on my forthcoming book The Decline and Fall of the American Entrepreneur: How Little Known Laws and Regulations are Killing Innovation, which should be available on Amazon.com in December 2009.
This book started as a project based on my observations. I deal with technology start-up entrepreneurs everyday as a patent attorney. I noticed a difference between the sort of projects my clients were undertaking since the technology downturn of 2000-2001 and the previous decade. Clients, in the 90s, would come into my office with plans to build businesses that were disruptive or revolutionary. The underlying technologies of these companies often held the potential to completely redefine a market. This energy was infectious and the potential implications of their work was mesmerizing. However, the technology downturn of 2000-2001 forced a reevaluation of these aggressive business plans. I expected that after a couple years of the technology market taking a breath, I would again be working with companies trying to change the world.
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. Those familiar with patent law will realize that it is technically not appropriate for a district court to find that a patent is valid, and rather should have declared the patent not invalid, but the point remains that as a result of his 100+ page ruling Judge Brown has handed Merck a large victory and Teva Pharmaceuticals a significant setback.
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. Originally, Callaway Golf Company brought suit against Acushnet Company, alleging that Acushnet had infringed various claims of four golf ball patents owned by Callaway. These four patents were referred to as “the Sullivan patents,” taking this designation from the named inventor. The four Sullivan patents in question in the litigation were U.S. Patent Nos. 6,210,293, 6,503,156, 6,506,130 and 6,595,873. At issue are claims 1, 4, and 5 of the ’293 patent, claims 1–3 of the ’156 patent, claim 5 of the ’130 patent, and claims 1 and 3 of the ’873 patent. Earlier 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. See Callaway Golf Co. v. Acushnet Co. (Fed. Cir., August 14, 2009).
On 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 new brave world we need to go case by case and determine for every invention whether it would be within the common sense knowledge base of someone of skill in the art. But what is common sense exactly? If the teaching, suggestion and motivation test was viewed by the high court as being inappropriate, how could any rational individual who is informed about the patent process think that a “common sense” based test would be better? Patent examiners are skilled at reviewing prior art and interpreting claims, but the overwhelming majority are not lawyers, and even if they were attorneys, a test that means different things to different people is hardly calculated to lead to uniformity and similarly situated people being treated similarly. The last time I checked that is still what the US Constitution requires, unless I missed something tucked away in some legislation that wasn’t read before voted on and signed into law.
So much has been made about the United States Supreme Court’s decision in KSR v. Teleflex, which happened just over 2 years ago. Occasionally I like to take a look at how the Patent Office is handling KSR. Admittedly, this is not a scientific study, and is more aimed at having fun and perhaps also explaining so we never forget just how absurd the Supreme Court’s decision in KSR actually was. Those familiar with the KSR decision and history will recall that the non-patent experts on the Supreme Court, including Justice Antonin Scalia who openly admitted he didn’t understand patent law during oral arguments — calling patents “gobbledygook,” decided to completely do away with an objective, understandable and repeatable test in favor of a completely subjective test without any concrete boundaries. Yes, in their infinite wisdom the Supreme Court decided that the law of what is obvious should be conducted on a case by case analysis and an invention is obvious if it is “common sense.”
Last week I was in Arlington, Virginia, teaching the PLI Patent Bar Review Course, so I was a bit out of touch with what was happening in the patent world as I tried to help a number of would-be patent attorneys and agents get through the PLI immersion course. Like clockwork, during this time out of the office the United States Court of Appeals for the Federal Circuit got into a real battle between and among the judges of the court over what to do with the requested rehearing petition filed in In re Comiskey. On Tuesday, January 13, 2009, as we were starting the patent bar course, in the decision on the petition for rehearing en banc, the Federal Circuit granted a very limited rehearing en banc, which was not a rehearing en banc at all. The majority voted to allow the original panel to withdraw the original decision and issue a new opinion. This lead to heated a heated and vigorous dissent written by Judge Moore, who was joined by Judges Newman and Rader. Judge Newman added her own unique dissent as well, and Judges Newman, Mayer, Rader, Bryson and Moore would have granted a full rehearing en banc with briefing and argument. Talk about a divided court!
Did you know that on Tuesday, November 18, 2008, a carry out food container was patented? I discussed this patent in a post last week titled Unequal Treatment at the US Patent Office, where I discussed the unfair and inequal treatment that seems to be plaguing the Patent Office. After all, how could the USPTO, which is always congratulating itself for quality, issue a patent like this and refuse to issue patents to commercially relevant inventions? I don’t know and I hope someone does something about it, but I am not holding my breath. In any event, I just couldn’t leave this only mentioned in the aforementioned post, but rather I had to add it to the Museum of Obscure Patents.
Something is seriously wrong at the United States Patent & Trademark Office, and it is becoming increasingly difficult to believe anything other than that there is ongoing unequal treatment of inventors who file patent applications. In the United States everyone is supposed to enjoy the same rights and privileges, and this concept manifests itself in the ideal that everyone is entitled to equal treatment under the laws. As the United States Supreme Court has explained, the Fourteenth Amendment requires that all persons subjected to legislation shall be treated alike, under like circumstances and conditions, both in the privileges conferred and in the liabilities imposed. When those who appear similarly situated are nevertheless treated differently, the Equal Protection Clause requires at least a rational reason for the difference, to assure that all persons subject to legislation or regulation are indeed being treated alike, under like circumstances and conditions. When it appears that an individual is being singled out by the government, the specter of arbitrary classification is fairly raised, and the Equal Protection Clause requires a rational basis for the difference in treatment. I see a lot of unequal treatment of patent applicants, and I see absolutely no rational basis for the difference, so I must conclude that the Patent Office is violating the law.
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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