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Hubbell argued that obviousness-type double patenting is not appropriate where the application and the conflicting claim (1) share common inventors but do not have identical inventive entities, (2) were never commonly owned, and (3) are not subject to a joint research agreement. The Patent Office countered that: (1) whether the application and patent were ever commonly owned is immaterial to the policy of preventing harassment by multiple assignees; (2) identity of inventorship is not required where there is an overlap in inventors; (3) Hubbell did not establish any grounds for being allowed to file a terminal disclaimer; and (4) two-way obviousness analysis is not required because Hubbell admitted that he partially is responsible for the delay that caused the ’685 patent claims to issue first. The CAFC agreed with the Patent Office on each point.

There is a tremendous amount of unrealized (“un-monetized”) value in the patent portfolios of many large companies. Yet, for one reason or another, such companies have chosen over the years not enforce their patents in court or through a licensing campaign. In recent times, however, a few of these companies have, one-by-one, started to transfer their patent rights to patent holding companies that are quite willing to enforce those patents. What does the large company receive in return for its patents?

Do patent applicants appealing a rejection of their claims from the Patent Trial and Appeals Board have a chance of success at the Court of Appeals for the Federal Circuit? What about patentees appealing to the CAFC from rejections in reexamination proceedings? The candid answer is not much of a chance. Of course, every case is different and needs to be considered on its own merits. Yet, the standards for review of Board decisions, followed by the CAFC, significantly favor affirmance of those decisions.

Something a bit out of the ordinary occurred earlier this month in the ITC investigation Certain Devices for Mobile Data Communication, 337-TA-809. There, Unwired Planet had accused Apple and Research-In-Motion of infringing four patents related to data transmission with cellular phones. A trial before the ITC’s Administrative Law Judge Gildea was scheduled to begin October 15, but shortly before that date, Unwired withdrew its Complaint and filed a motion with the Judge Gildea to terminate the investigation. Unwired’s problem was that the Judge had previously construed the asserted claims to require that the mobile devices do not contain “a computer module,” thereby precluding a finding of infringement by the accused devices that do contain module computers. Unwired, however, has not entirely given up on its infringement allegations against Apple and RIM – rather, Unwired continues to pursue those claims in a parallel infringement action in Delaware.

A story of such potential liability is now playing out in Taser International v. Stinger, (Case No. 2:09-cv-289 (D. Nev.)). Taser, the developer of the TASER weapon for use by law enforcement, originally sued Stinger Systems for selling devices that infringed a number of Taser patents. In the course of the action, however, Stinger issued a series of press releases regarding its patent dispute with Taser, among them a press release reporting on a parallel reexamination proceeding. In a second action, Taser accuses Stinger, Stinger’s CEO and Stinger’s attorney of various business torts, all centering on allegations that Stinger, ita CEO and its attorney issued misleading press releases, damaging Taser’s reputation and stock price. According to Taser, one press release issued by Stinger in May 2007, caused its stock price to drop $40,000,000.

Just over one week ago Justice Antonin Scalia of the United States Supreme Court was interviewed by Piers Morgan of CNN. See Scalia transcript.  During the interview Justice Scalia said that the hardest decision he has had to make in his time on the Supreme Court was in a patent case. I received a few responses from those who did not opine as to what case Justice Scalia might be referring to, but rather commented generally about the interview and what Justice Scalia said relative to patent cases being difficult, dull and insignificant.  What follows below are those musings from industry insiders.

On Friday, July 6, 2012, the United States Court of Appeals for the Federal Circuit issued a decision in General Electric Co. v. ITC. The Federal Circuit, per Judge Newman with Chief Judge Rader and Judge Linn, did not give GE a total victory, but victory enough over Mitsubishi. The Federal Circuit affirmed in part and reversed in part the original decision of the ITC, and remanded the case for further proceedings consistent with the decision. Ultimately, the Federal Circuit ruled that claim 15 of the ‘985 patent, correctly construed, covers the domestic industry turbines. Of note, the CAFC continues to interpret “connected to” and “coupled to” as not requiring physical separation.

It is that time of the year where we all start to look ahead to the new year, perhaps making some New Year resolutions that are sure to last for at least a few days. Resurrecting something done two years ago, I once again contacted some of my friends to get them to go on the record with their patent and innovation related wishes for 2012. I was lucky enough to get a number of very thoughtful responses from individuals with a variety of experiences.

The CAFC’s split panel decision this past week – In re Construction Equipment Company – extends the PTO’s authority to reexamine a patent even where its validity has already been adjudicated and confirmed by the courts. Yet the CAFC once again fails to explain how a PTO reexamination finding that a patent is invalid effects an earlier judicial determination that the same patent is valid and infringed.

Over the years IPWatchdog.com has continued to try and add additional perspectives from a wide variety of guest contributors, ranging from well respected practicing attorneys and agents to high profile academics to inventors and pro-patent lobbyists. It is hard to imagine providing such depth of analysis on such an array of topics without having truly wonderful guest authors. So we take this moment to say a very special thank you and to shine the spotlight on them. Each deserve to share in any recognition of IPWatchdog.com. Without further ado, here are the guest contributors in alphabetical order, along with their contributions for 2011.

Companies 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 the patent owner amends its claims to distinguish its invention over the prior art. This possibility of “intervening rights” received a big boost last week with the CAFC’s decision in Marine Polymer Techs. v. HemCon, finding that such rights may be created even without an amendment of the claims if the patent owner presents arguments in reexamination that “effectively amend” the claims.

In almost all cases, inter partes reexamination is better than ex parte reexamination, except of course where the requester wants to stay anonymous or the application from which the patent issued was filed before November 1999. The opportunity to reply to the patentee’s arguments and to address the specific concerns of the examiner is quite valuable. This is especially true where the examiner cites his or her own prior art. Issues commonly evolve over the course of reexamination, so that arguments in an ex parte request often are no longer persuasive by the end of the proceeding. I would add that some of the frequent users of reexamination, such as Apple and Google, almost always select inter partes reexamination when it is an option.

The focus of the litigation now shifts to the Patent Office. How Allen’s patent claims will fare in that forum is unknown, but certainly his odds of maximizing the monetary value of his patent portfolio are diminished. Reexamination has been ordered by the PTO for all four Allen patents, and in one (the ‘314 patent), a non-final rejection has issued. Had Allen chosen a different court and his cases not been stayed, his patents would still be in reexamination. Yet, his court trials would likely be completed before the reexaminations, with obvious advantages for him.

Typically the Patent Office allows patent owners and third parties to sort out whether a reexamination is necessary. The thought process is that there is no need to waste precious examining resources to reexamine a patent that no one cares about or is enforcing. Thus, something out of the ordinary happened here, although what exactly is impossible to tell. Perhaps the Patent Office was taking some heat on Capitol Hill for these types of patents or perhaps someone just stumbled on something that made them scratch their heads and wonder. It is all just a matter of speculation.