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Posts in Guest Contributors

Granville Woods and Induction Telegraphy

There are some who say that the number of patents Woods obtained is at least 60, may be even much higher. But from Professor Fouché’s book, I’ve only identified 45 patents for Woods which is still a pretty awesome figure. These patents may be divided into essentially 4 technology categories: (1) induction telegraphy of which there are 8 patents; (2) electrical railways of which there are 20 patents; (3) other electrical devices of which there are 13 patents; and (4) 4 patents on “other inventions” that don’t fall into any specific category. This article focuses only the first category of inventions, induction telegraphy, for which Woods is most famous for. So why is induction telegraphy important? Well…

The Black Edison: Granville T. Woods

Granville Woods is often referred as “The Black Edison.” Woods and Thomas Edison went to court twice over what were apparently invention disputes. Both times, Woods won. There’s even a story, perhaps “folklore,” that Edison asked Woods to work for him, but Woods turned down Edison’s offer. Admittedly, Edison, with close to 1100 patents to his name, is far better known than Woods. But the parallels between these two inventive giants are striking in many respects. Both were from Ohio. Each came from very humble or modest family backgrounds. Each was primarily self-taught and highly entrepreneurial. Their scientific intellect was keen and often focused on electrical technologies. The scope of their inventive discoveries was also quite varied, and extremely prolific.

Federal Circuit Review – Issue 6 – 01-29-2014

In this issue of the Federal Circuit Review: (1) Supreme Court Holds Patentee Always Bears Burden on Infringement, Even in Declaratory Judgment Action

Does University Patent Licensing Pay Off?

Patent licensing or creating new companies is not a get rich quick path for schools despite the occasional blockbuster invention or Google spin-out. Indeed, enriching universities is not the goal of the Bayh-Dole Act which spurred the rapid growth of TTO’s. Still, every state now sees its research universities as key parts of their economic development strategy shows that it’s not just the traditionally dominant R&D universities that are making significant contributions under Bayh-Dole… AUTM estimates the impact from sales of products based on licensed academic research in 2012 totaled $80 billion dollars – that’s double the entire federal investment in university research. Another study found that university patent licensing supported 3 million jobs between 1996-2010 (that’s an average of 200,000 jobs per year).

Are Your Corporate Transactional Attorneys Harming Your Future IP Strategy?

Entering into a corporate transaction without a careful review of the intellectual property (IP) involved can have negative consequences on an enterprise’s future IP strategy. This is especially true when IP owners do not adequately supervise the corporate attorneys who are preparing the “customary” documents for a merger, acquisition, joint venture formation, equity investment, bridge loan or any other type…

Novartis v. Lee: The Unfortunate and Unintended Impact of the PTA Statute on Continuation Practice

In Novartis, this Federal Circuit panel (opinion by Judge Taranto, joined by Judges Newman and Dyk) ruled that the second exclusion from PTA in the “B period” portion (i.e., 35 U.S.C. § 154(b)(1)(B)(ii)) excludes from PTA any time consumed by a Request for Continued Examination (RCE), even if that RCE is filed more than 3 years after the “actual filing date” of the patent application. Not only is this ruling a questionable interpretation of 35 U.S.C. § 154(b)(1)(B)(ii) for reasons I’ll discuss below, but it creates an unfortunate, and surely unintended impact on RCEs specifically, as well as continuation practice generally. And the more I dig into the PTA statute, the more problematical this ruling in Novartis becomes.

Protecting Innovation is not ‘Satanic Genocide’: Intellectual Property Policy in South Africa

South Africa currently faces a stark choice between protecting and incentivizing innovation and stymying life-saving therapeutic breakthroughs. Policymakers must choose between shoring up the protections that encourage the development of medicines that enhance and extend life, or sabotaging innovation through the weakening of the patent system. South Africa is purported to have the highest number of people living with HIV in the world, people who have the most to gain from breakthrough therapies. Innovative medicines have contributed to the 85 percent decline in the death rate from HIV/AIDS since 1995. The benefits of future medicines will become a reality only if these medicines are incentivized and developed. Strong, effective IP protection is essential to that process.

Federal Circuit Review – Issue 5 – 01-22-2014

In this issue of the Federal Circuit Review: (1) Written Description Controls Breadth of “Adapted To” Limitation; (2) Contempt Order Vacated for Lack of Claim Construction; (30 Court Considers What Constitutes Publicly Available Prior Art and Attorney’s Diligence in Reduction to Practice and (4) PTO Miscalculated Patent Term Adjustment for Applications with Request for Continued Examination

Why the Supreme Court in the CLS Bank v. Alice Case Should Not Answer the Question on Computer-Implemented Invention

Article written by Martin Goetz… Over the years the term “software” has been terribly abused when a patent application has a computer in its specifications. We hear the terms abstract, ideas, laws of nature, mathematical algorithms when those against “software patents” argue their case. But true inventions — whether specified in hardware, software, solar power, gears, or what have you — must stand on their own two feet and meet the test of an invention as specified in the US Patent law. Additionally, the USPTO states that an invention is defined in its claims and not by its specification. Unfortunately, many USPTO examiners have been issuing patents for very questionable inventions that only computerize (or automate) a manual process or computerize a new, but obvious, use of a computer.

Federal Circuit Review – Issue 4 – 01-15-2014

In this issue of the Federal Circuit Review: (1) Court Adopts “Principles” of Prosecution History Estoppel for Design Patents.

Federal Circuit Review – Issue 3 – 01-09-2014

In this issue of the Federal Circuit Review: (1) Denial of Attorneys’ Fees Vacated for Consideration of Additional Facts Under “Exceptional Cases” Statute; (2) BPAI’s Obviousness Determination Unsupported by Substantial Evidence; and (3) Extraterritorial Injunction Under State Unfair Competition Law Vacated After Court Finds Appellate Jurisdiction to Hear Case.

What happens to IP law in 2014?

I prophesy that the best we can hope for is a Bilski-esque vague instruction (wherein our top court opined that some business methods are patentable, citing the machine or transformation test as one viable test, without pointing to other valid tests and without enlightening the confused public.) The Court is once again likely to limit software patentability in some arcane way that harms job creation and stifles economic growth. The bright side is that the Court’s failure to protect our largest growth industries may help spur the legislative branch into further action. A decade of intermittent patent reforms has created a permanent cadre of patent lobbyists very willing to focus their considerable efforts and talents on a new patent issue. It would be advantageous to the patent system if that attention were productively channeled to specifically include our emerging technologies in our patent statutes, and to legislate patent eligibility in a manner that treats 101 as the broad filter it was intended to be, while employing the other patent statutes, such as 112 and 103, to correctly provide the narrower filters.

Undermining Innovation in Health Care is Bad for Patients

Even if one disregards the categorical distinctions between over-ruling the ITC order and foreign compulsory licenses, there are differences in the specifics as well. For example, the Administration’s decision rested heavily on the fact that the patent being violated was part of an industry standard. A patent that is critical to an industry standard can convey market power (and possibly monopoly power) on that patent holder. The Administration focused on and justified its decision based on avoiding abuse of that market power. Patents on medicine are completely different. There is rigorous competition, new medicines can be invented to treat the same malady, and there is no need for the types of industry standards that are more common in electronics. But it is those health care patents that foreign governments are undermining.

Standing Up to the Anti-Patent Beanball

“Patent trolls have a surprising ally: universities” ran in the Washington Post on November 30, 2013. Two days later “Techdirt” threw the follow up: “Patenting University Research Has Been A Dismal Failure, Enabling Patent Trolling. It’s Time to Stop.” Their titles and parallel arguments suggest that both articles arise from shared talking points. Both immediately set up their victims by linking them with patent trolls. Casting anyone as an “ally of patent trolls” after huge amounts of money have been invested vilifying the term in the public mind is meant to quickly knock opponents to their knees and drive them from the field. Ostensibly the focus of their wrath is university patent licensing, but the real target is the patent system itself.

The CAFC Got it Wrong in Soverain v Newegg

Open Market grew rapidly, went public, made acquisitions, and outlived about 15 of its competitors, but was hit hard by the bursting of Internet Bubble 1.0 in 2000. The eCommerce software part of Open Market’s business, called “Transact”, and the related patents were acquired in 2003 by Soverain Software, which still develops and supports Transact and its customers today. Soverain also filed a number of patent lawsuits, and settled or won all of them, up until this year. On September 4, the United States Court of Appeals for the Federal Circuit (CAFC), which is the appeals court responsible for patent cases, confirmed its January opinion that certain claims of the ‘314 patent (and some others) were invalid as obvious. Soverain has filed a petition for the case to be heard by the Supreme Court, and I hope it is accepted, because I think the CAFC got it really wrong.