Patent Law Blog (Patently-O)

Challenging USPTO Decisions in the Courts

Last year the Board of Patent Appeals and Interferences decided over 7,000 ex parte cases. In about half of those decisions, the examiner rejections were entirely affirmed. After losing at the Board, an applicant has two primary avenues for challenging the Board's decision: (1) Appeal to the Court of Appeals for the Federal Circuit under 35 U.S.C. § 141; or (2) File a civil action in district court under 35 U.S.C. § 145.

By the time that the BPAI appeal is complete, the average applicant will have spent over $25,000 on the application and prosecution process. That substantial figure is an indicator that the potential patent right is probably seen as valuable. It turns out, however, that that well under 1% of applicants who have a right to further action actually exert their right to appeal or to a civil action.

There are several likely reasons why the rate is so low:

• BPAI Rehearing: The first reason for low appeals is likely that the BPAI has been fairly good at granting rehearing requests when there is a clear and easily identifiable mistake in their opinion.
• Low Likelihood of Success: Under Zurko, the Federal Circuit is required to give deference to the USPTO's findings of facts and only overturn those findings when "unsupported by substantial evidence." This standard is difficult to overcome. In the district court, new evidence is reviewed de novo.
• Money & Expertise: Both appeals to the Federal Circuit and civil actions in the district court can be quite expensive relative to ordinary prosecution costs. In addition, because most patent prosecutors have only limited federal court experience, a litigation or federal circuit specialist would likely need to be brought onboard the team.
• Alternative Approach: The courts are typically asked to answer a yes/no question on claim validity. However, patent applicants recognize that a patent with slightly narrower scope (through amendment) may be almost just as valuable as the original broad claims. With that in mind, many applicants return to the original examiner with proposed claim amendments that lead quickly to allowance.

What other reasons explain the low rate of using the courts to challenge USPTO decisions.

US Patent Office and the Government Shutdown

Many patent applicants have expressed some concern regarding the potential federal government shutdown after Friday, April 8th. The basic problem is that a federal agency is not supposed to spend any money without congressional authority to spend the money. This limit comes directly from the US Constitution, which says "No Money shall be drawn from the Treasury, but in Consequence of Appropriations made by Law." Article I, Section 9. That said, it is generally thought that essential federal employees can continue to work. For the most part, however, USPTO employees would not qualify as "essential."

Although the USPTO is fully user-fee funded, the agency still sends its revenue the Treasury and then draws money from the Treasury when needed. Thus, the USPTO will clearly be affected by the shutdown.

I contacted USPTO leaders regarding their contingency plain. The Office has crafted a short-term solution based on the fact that a portion of their monies-in-hand are not linked to the current fiscal year budget. Therefore, the lack of appropriations for the rest of FY2011 does not limit the USPTO's right and ability to spend that money. The Office's projection is that this funding source can take the agency through six business days. If the shutdown occurs at COB Friday, then the office would have funds through Monday, April 18. After that, the Office intends to continue to accept new application electronically.

The Office does not intend to offer any grace period for applicant deadlines missed during the shutdown.

Update: Press Release

Confidentiality Designations in Federal Circuit Appeals

By Jason Rantanen

In re violation of Rule 28(D) (Fed. Cir. 2011) (precedential order) Download 11-m976 order
Panel: Dyk (author), Prost, and Moore

Patent litigations, by their nature, often invove commercially sensitive information.  Unsurprisingly, parties are frequently reluctant to reveal the innermost workings of their manufacturing processes or valuable financial data.  To preserve the confidentiality of this information, parties enter into agreed-upon protective orders that help ensure that their proprietary information is not disclosed outside the confines of the litigation.

The difficulty arises when it comes time for judicial resolution of the dispute.  Although parties can readily agree to keep materials they exchange among themselves confidential, once that information must be presented in court or placed into a judicial opinion, it is much more difficult to prevent public access.  In part this is due to practical realities (for example, although it is a possible approach, clearing a courtroom during a trial or hearing is a cumbersome process), but it is also due to the public's right of access to court proceedings, as recognized in Nixon v. Warner Commc'ns, Inc., 435 U.S. 589, 597-99 (1978).

The difficulty of maintaining the confidentiality of particular information becomes even greater when the lawsuit is on appeal.  Federal Circuit Rule 28(d) does permit the use of confidentiality markings in briefs, but in general the Federal Circuit has demonstrated a dislike for the overuse of confidentiality designations, especially when it would interfere with the preparation and dissemination of its opinions.

The Federal Circuit's view on confidentiality designations is particular apparent in a recent precedential order imposing a monetary sanction on Sun Pharmaceutical Industries, Ltd. and Caraco Pharmaceutical Laboratires, Ltd. (collectively "Sun") for the extensive use of improper confidentiality markings.  Sun  was apparently so concerned about revealing the contents of a confidential license agreement and proposed consent judgment that it marked vast swaths of its brief as confidential, including essentially all of its legal argument. 

Following oral argument, the CAFC issued an order instructing Sun to show cause why it should not be sanctioned for the violation of Rule 28(d).  In response, Sun attempted to justify its use of extensive confidentiality designations, an approach that did not sway the court.  Even leaving aside the question of whether the the agreements were properly designated, Sun's designations nevertheless fell far on the side of error.

Particular concerning to the court was Sun's designation of its legal arguments.  This type of material is generally afforded little, if any, protection:

The marking as confidential of legal argument concerning the propriety of a decision by the court is generally inappropriate given the strong presumption of public access to court proceedings and records. Rule 26(c)(1)(G) is limited to commercial information that has competitive significance. The marking of legal argument as confidential under Rule 26(c)(1)(G) cannot be justified unless the argument discloses facts or figures of genuine competitive or commercial significance. That is certainly not the case here, and there is no claim that it is.

...

Further, much of the material marked as confidential does not even disclose the nature of the triggering event. For example, legal argument regarding the preclusive effect of consent judgments was marked as confidential in the briefs submitted by Sun. See Addendum at i–ii. One of the most blatant examples of improper confidentiality markings involves case citations and parentheticals describing the cited cases which are used to support the proposition that “parol evidence should have been examined to resolve the ambiguity and determine the intent of the parties.” See id. at iii–iv.

Slip Op. at 14.  Due to the severity of the improper confidentiality designations, the CAFC imposed a sanction of $1,000 on counsel for Sun.  Although perhaps a relatively small monetary sanction, the CAFC rarely imposes such a penalty, suggesting that the conduct in this case was particularly troubling to the court.  For those interested in examples of improper confidentiality markings in Sun's brief, the court included an addendum containing relevant quotations.

Patently-O Bits & Bytes by Lawrence Higgins

Google Places a bid on Nortel Patents

• Google has placed a $900 million cash offer bid for the rights to Nortel patents. Google's bid is just the starting point, against which others bid prior to the auction that will take place in June. Nortel has about 6,000 patents and patent applications, which cover many areas of technologies including wireless, internet search, computer science, and online social networking. Nortel was once a telecom powerhouse, but filed for bankruptcy in 2009. As part of the bankruptcy, Nortel must auction off all patents that they hold. It has been reported that Google wants to purchase the Nortel patents as a defensive tactic, to decrease the amount of lawsuits filed against them. [link]

New Patent Blog!

• Written Description is a blog that reviews recent scholarship on patent law, IP theory, and innovation. The blog is intended to provide useful content for law professors, law students, practitioners, and anyone else interested in patent law. The blog is written by Lisa Larrimore Ouellette, who has a Physics Ph.D. from Cornell and is a current 3L at Yale Law School.

Apple Doesn't Have to Pay $625.5 Million in Patent Case

• Apple was sued in 2008 by Mirror Worlds LLC; Mirror Worlds was founded by Yale University Professor David Gelernter. [Complaint] Mirror Worlds claimed that Apple's Mac computers infringed its patents relating to the way documents are displayed on a computer. The main focus of the trial was Apple's Spotlight and Time Machine technology. The case was decided in Mirror Worlds favor in October, and the jury award $625.5 million in damages. However, Apple appealed and a federal judge in Texas agreed with Apple and stated that, Apple did not infringe any patent owned by Mirror Worlds LLC and closed the case. [Link]

John Duffy to Join Virginia Law School

• IP scholar John Duffy will be at the University of Virginia next fall, currently Duffy is a Professor at George Washington School of Law. Duffy has been named as one of the 25 most influential people in the field of IP by the American Lawyer. Duffy was co-counsel in the important Supreme Court case KSR v. Teleflex, which was the first Supreme Court Case in decades on the standard of nonobviousness. [Link]

Patent Jobs:

• Muir Patent Consulting is seeking to hire a patent attorney with a degree in electrical engineering and 2-5 years experience. [Link]
• Mannava & Kang is searching for a patent attorney or patent agent with a degree in electrical engineering and at least 3 years in preparing and prosecuting patent applications. [Link]
• Roberts Mlotkowski Safran & Cole is looking for a patent attorney with 2-4 years experience and a chemical degree. [Link]
• Baker Donelson Bearman Caldwell and Berkowitz is searching for a patent attorney or patent agent with a PhD and 1-4 years patent experience. [Link]

Upcoming Events:

• The 2^nd Annual John Marshall Review of Intellectual Property Law Symposium will be held on April 15^th. The symposium will discuss biotechnology and health-related issues in IP law. Guest speakers include Peter Yu, Lawrence Pope, and the keynote speaker Ananda Chakrabarty. [Link]
• AIPLA Spring Meeting will be held May 12-14 in San Francisco. [Link]
• San Francisco Intellectual Property Law Association (SFIPLA) will be hosting its spring seminar June 3-5 in Yountville, California. This event will discuss various topics, such as Copyright and the Cloud, Patent Year in Review, and Patent Litigation to name a few. Guest speakers include Peter Menell, Marc Greenberg, Madhavi Sunder, and David Franklyn. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

A Few More Patent Law Students at the University of Missouri

Every year I have a great group of about ten patent law focused students.  It is a bit crazy, but our quite small regular law school faculty includes three patent attorneys and several adjunct professors. We offer a wide variety of intellectual property courses – including patent law, patent prosecution, patent licensing, and a number of soft-IP and technology law courses.  I'm excited that starting this fall, our introduction to intellectual property course will be taught by Federal Judge Nanette Laughrey who has presided over dozens of patent lawsuits.

A good number of my patent law students end up working with me on various independent study projects. And one (Lawrence Higgins, 2L) now writes for Patently-O.

Bottom Line: I would really enjoy having four or five more patent law students.  For what its worth, current tuition at Mizzou is about $17,000 and out-of-state tuition is typically waived for 2L and 3L students and for 1Ls with a fairly high LSAT score. 

Now, in the current market, I don't want to be seen as encouraging folks to attend law school who would have otherwise continued working as an engineer or scientist.  However, if you are planning on law school, then please take a look at Missouri.

• Apply here: http://law.missouri.edu/admissions/
• Feel free to send me a note if you want more info: dcrouch@patentlyo.com

 

Senate Confirms Jimmie V. Reyna to the CAFC

 By Jason Rantanen

On Monday, the Senate confirmed the nomination of Jimmie V. Reyna to the U.S. Court of Appeals for the Federal Circuit.  Reyna's expertise in international trade will serve the Federal Circuit well, as the court's jurisdiction includes appeals from the Court of International Trade (CIT) and International Trade Commission (ITC).  In addition to heading the international trade practice area at the Williams Mullen firm, Reyna has also published a slew of articles and two books on the subject.  Reyna is an active member of the Hispanic legal community and will be the first Hispanic judge on the Federal Circuit.

Fast Track 12-Month Examination Begins May 4, 2011 - $4,000 fee

The new prioritized examination system known as "Track One" will begin on May 4, 2011. For a $4,000 fee, the USPTO will prioritize the handling of your patent application with a goal of reaching a final disposition within twelve months. A prioritized application is "accorded special status and placed on the examiner's special docket throughout its entire course of prosecution before the examiner until a final disposition is reached." Here, of course, "final disposition" means that the application is either allowed, abandoned, or is subject to a "final rejection" (which can then be appealed).

Qualification criteria:

• Application must be filed on or after May 4, 2011 using the the USPTO's electronic filing system;
• Application must be "complete;"
• The request for prioritized application must be filed with the application itself;
• Application may contain no more than four independent and thirty total claims; and
• The $4,000 fee must be paid in addition to the normal filing fees. Without congressional legislation, the USPTO asserts that it cannot offer a small-entity discount.

Due to resource constraints, the PTO is limiting the track one initiative to 10,000 applications for the May-Sept 2011 period (the remainder of FY 2011).

The $4,000 fee was set after the USPTO estimated the average cost to the Office of performing the service. Of course, we live in a market economy where higher prices tend to lower demand. In thinking about the potential demand for expedited examination, I surveyed Patently-O readers who handled some aspects of patent prosecution and filing decisions and asked them what percent of their applications they would expedite based upon a $4,000 fee. (That time, I used software to largely eliminate the potential for multiple-voting.) The following histogram shows that the bulk of responses would expedite fewer than 5% of their cases. More than half indicated they would expedite less than 2% of their cases.

The EPC offers the PACE program that allows applicants a cost-free acceleration of processing. In that system, fewer than 5% of applicants request accelerated examination. As one response indicated, many applicants are "generally happy to wait for a patent to issue. 'Patent Pending' status is good for marketing, implies new product development. The market we are in is not one where patent speed is important."

Documents:

• USPTO Press Release
• Federal Register Notice of Implementation

The Thesaurus of Claim Construction

Several years ago, Stuart Soffer told me about his claim construction thesaurus project. At the time, I thought that the result would be amazing, but that the project was clearly too ambitious. I was both surprised and happy when Oxford Press sent me the completed 1,000 page volume. The book, co-authored by Robert Kahrl (author of Patent Claim Construction), includes over 7,000 claim terms that have been construed by courts over the past decade. Following the introductory chapters explaining the source of definitions from the book and the process of claim construction, the book quickly jumps into the definitions. Here is an example:

Downloader: A computer that retrieves web pages and embedded objects from the internet. 6,864,904 (715/760) Filed: 2000. Girafa.com Inc. v. Amazon Web Service LLC et al. 07-00787 (D. De. September 15, 2009) Stage: Claim Construction.

I am quoted on the book cover as follows:

Claim language and claim construction are probably the most frequently debated legal issues in patent prosecution and patent litigation respectively. This book offers an invaluable resource and desk reference for parties to those debates.

Soffer maintains a database of the claim terms which he uses for his work as a technical expert.

Oxford Press has compiled an impressive group of practical patent law books. My problem with the series the cost Oxford lists the book at $295. Amazon sells them for $270. 

 

Federal Circuit Hears Myriad Gene Patent Case

At 10 am this morning, the Court of Appeals for the Federal Circuit will hear oral arguments in high profile gene-patent case of Association for Molecular Pathology, et al. v. USPTO.  In a sweeping opinion, Southern District of New York Judge Robert Sweet held the Myriad Genetics gene patent claims invalid as merely claiming products of nature.  

The patents cover the BRCA1 and BRCA2 gene mutations that, when present, indicate a high likelihood of developing breast cancer.  In addition to claims to the isolated genes themselves, challenged claims are also directed toward methods of isolating  the genes in order to test for whether the mutation is present. These patents have led to more than a billion dollars in revenue for Myriad Genetics and the University of Utah.

The court rejected the patentee's claims to have invented the isolated BRCA1/2 gene as a product of nature — holding that the “isolated” form does not alter the fundamental quality of DNA as it exists in the body nor the information that it encodes.  In addition, the court found the methods of comparison invalid under the Federal Circuit's now defunct machine or transformation test.

In an e-mail, Hal Wegner correctly suggested that the key threshold question for this case will be whether Federal Circuit will reject the case on jurisdictional grounds.  The ragtag group of declaratory judgment plaintiffs is led by the ACLU and the Public Patent Foundation.

More than two-dozen friend-of-the-court briefs were filed.  Most notably, the U.S. Government in its brief argues that isolated but otherwise unmodified genomic DNA is not patentable.

Patent Reform Survey Results on the “Pulse of the Patent Bar”

Survey and Disclaimer: I thought that I had solved this, but the survey software that I used for last week's survey failed by allowing individuals to post multiple times and without recording their IP addresses. However, based on the diversity of responses, there are reason to believe that the survey results were not overwhelmed by multiple-voting. In addition, the divide between those for and against a first-to-file system mimics prior survey results. The survey was open for about 20 hours and received 500 during that time.

Results: The first chart below shows the almost even-split between those who support a first-to-file regime as compared with those who do not. Interestingly, most respondents had a strong opinion – with 70% expressing either strongly negative (voting "1") or strongly positive (voting "5"). Self identified patent prosecutors tended to show less support to first-to-file than self-identified patent examiners and patent litigators. Regardless of the level of support for the first-to-file regime, the vast majority of responses indicated support for retaining a filing grace period for an inventor's own pre-filing activities.

Most responses also indicated support for allowing third parties to submit prior art and commentary during prosecution and to limit false marking litigation. There was little support for special rules that would govern the litigation business method patents (such as limiting venue and providing for interlocutory appeals).

Perhaps most interesting, very few of the responses supported the use of "secret" prior art in analyzing the question of obviousness. As I have previously discussed, most countries around the world only use publicly available prior art to judge the question of obviousness or inventive step. Rather, around the world, prior art that was not publicly available at the time of filing is used only for novelty and priority issues. In the US, secret prior art is regularly used for obviousness analysis. The primary source of the secret prior art is currently defined under Section 102(e) of the Patent Act and covers patent applications that were pending, but not yet publicly available. Any true effort at international harmonization would deal with this issue as well. Several responses explicitly indicated that, if adopted, the US first-to-file regime to attempt to be uniform with Europe. "The hybrid approach will only complicate and cost more in lawyer fees"; "The SECRET PRIOR ART would be a total disaster !!! and make the US one of the least patent friendly jurisdictions on the planet."

Few responses offered support for giving the USPTO substantive rulemaking authority. However, there was strong support for greater fee setting authority. Examiners were most in-favor of heightened USPTO authority while patent prosecutors were the most wary.

Finally, as many know, the current reexamination system has been criticized because it only allows reexaminations based on patents and published documents. Responses showed a lukewarm support for broad post-grant review system that could reach "any patentability question."

FTC Report Gives NPEs a new name (PAE), Recommends That Courts and the PTO improve Patent Notice and Damages

This is a guest post by Professor Colleen Chien of Santa Clara University School of Law. The FTC relied heavily on Professor Chien's empirical work for several aspects of its report.

While most of the focus right now is on Congress, the Federal Trade Commission (FTC) has recently weighed in on the patent system through its publication of "The Evolving IP Marketplace." Though readers of the entire 302-page report may be limited in number, if the past is any indication of the future, they are likely to be well-placed. The report's 2003 prequel, "To Promote Innovation" has been cited by the Supreme Court (in Ebay), the Solicitor General (in the US brief in KSR), and in Congress, and by lower courts, amicus briefs, and observers of the patent system. That report was a landmark, underscoring the need to strike a balance between competition and innovation, and drawing attention to the problem of "questionable patents." A number of its recommendations, in some form, have been adopted (elevation of the wilfulness standard, changing the obviousness standard) or are under consideration (post-grant opposition, modifying the presumption of validity). As with the 2003 report, this report bases its findings on hours of public testimony, provided over nine days of hearings and a workshop, by many members of the patent community.

The impetus for the current report has been changes in the patent marketplace, through which inventions may be transferred prior to the invention's commercialization, ex ante, or licensed after the technology has been put into practice, ex post. The report notes that of these, ex ante transfers are increasingly important as more and more innovation comes from small and younger firms. In 1981, 70% of US R&D came from large companies (25K+ employees), and only 4.4% from companies with less than 1,000 employees; in 2005, the proportions were 37.6% and 24.1%, respectively. (p.36-7). The report is less sanguine about ex post transactions, which it criticizes for distorting competition in high-tech industries and deterring certain kinds of innovation. In noting that such transactions are increasing, the report gives certain kinds of NPEs - those focused on buying and asserting patents, rather than developing and transferring them - a new name: patent assertion entity (or "PAE"). (Side note: I have used this term in my own work, and agree with others that the relationship between PAEs and practicing entities is complex: as I describe, like PAEs, practicing entities also buy and sell into the marketplace, sue in areas in which they don't operate, and in some cases, may stealthily partner with PAEs in their activities).

To improve the efficiency of the patent system vis a vis both ex ante and ex post transactions, the report says, patent notice and patent remedies both need to be addressed. What's notable is not only what the report recommends, but, as described below, who the report says should implement its recommendations.

Multi-Dimensional Patent Notice Problem. The report describes the problem of a lack of patent notice, particularly in high-tech industries, with reference to many aspects of the patent system. Companies can't clear their rights at the product planning stage because they can't sift through a multitude of patents. Even when particular patents are identified, their boundaries are unclear, and can also change a lot between publication and issue. You can't necessarily tell who owns a patent because patentees don't have to record their transfers. To cure these problems, the report recommends, for example, bolstering enforcement of 112 para. 1 and requiring recording of transactions as well as identification of the real parties in interest to a transaction.

Replicating the Market Reward. The FTC adds its voice to the chorus of those who believe that remedies law, in particular damages law, needs repair, but also articulates the principles and theory it believes should guide change. Patent remedies should reflect the economic value of inventions, and replicate the reward provided by the marketplace. The report provides a point by point analysis of the factors that district courts and the ITC consider in awarding remedies, setting forth "an economically-grounded approach" to remedies.

Post-Ebay Injunctions: In a side analysis, the report addresses the sense that, post-Ebay, it's much more difficult for non-practicing entities to get permanent injunctions. The report indicates that that's not necessarily true: through March 2010, district courts granted about half of the requests for injunction they received from non-practicing entities (seven of thirteen, or a rate of 54%, as compared to a general grant rate at 72-77%) (p.217). The successful requests tended to come from universities and research and development organizations (p.262-4), however, who arguably don't fit the definition of "PAE."

Recommendations - Differentiated Roles for the PTO, courts, Congress, and the Public: What the FTC recommends, and who it says should implement its recommendations are both worth noting. Congress' list of to-do's, for example (shoring up PTO funding and requiring recordation of assignments - neither of which are in the current bills), is notably short. The bulk of the work has instead been assigned to courts, which, as Dennis detailed before Congress have taken the laboring oar in reforming patent law. The FTC tasks district courts and the Federal Circuit with fixing damages law, carefully considering injunctions, and enforcing 35 USC 112 para. 1. Many suggestions are also aimed at the PTO, who the report says should work alone or together with the public to, for example, foster uniformity in software inventions, put examiner interviews on the record, and press applicants for improved disclosure. As the Federal Circuit's Uniloc decision, and the PTO's recently introduced supplementary 112 guidelines show, their work is well underway.

Colleen Chien, Assistant Professor at Santa Clara University Law School

Patently-O Bits & Bytes by Lawrence Higgins

Google signs deal to Translate European Patents

• The European Patent Office (EPO) and Google signed an agreement, in which the EPO will use Google's Translate technology to offer translation of patents on its website. The EPO will translate patents on its website into 28 European languages, as well as into Chinese, Japanese, Korean, and Russian. The partnership between the EPO and Google will enable free, real-time translation of millions of patents granted in European countries, China, Japan, Korea and Russia. [Link]

Monsanto sued over transgenic seeds

• Farmers, agricultural organizations, seed businesses, and others filed suit against Monsanto over Monsanto's transgenic seed patents. The plaintiffs, led by the Public Patent Foundation, state that they brought suit to protect themselves from ever being accused of infringing patents on transgenic seeds, because contamination is bound to happen. [Link] Plaintiffs contend that since they have no intention to infringe they should not be sued for patent infringement if such contamination occurs. The plaintiffs claim that Monsanto's transgenic seed patents are not valid for several reasons. One reason being that Monsanto's transgenic seeds are injurious to the well being, good policy, and threatens to poison people. (Quoting Justice Story's 1817 Lowell decision). [Complaint]

U.S. International Trade Commission (ITC) decides more patent cases

• The ITC job is to settle disputes over imported products and in recent years the ITC has seen an increase in patent cases, particurly in mobile technology. Plaintiffs can file these suits even before the alleged infringement has occurred in the U.S., which can be a big incentive to keep the alleged infringing products out of the market. The increase can be seen as a consequence of the decision in eBay v. MercExchange, in which the court stated that an injunction should not automatically issue based on a finding of patent infringement, but a court must use the four factor analysis. This eBay decision does not have to be followed in ITC cases and therefore the ITC can grant an injunction based solely on the finding of patent infringement. [Link]

Patent Jobs:

• Shay Gleen is searching for patent attorneys with either 1-2 years or 4-5 years patent prosecution experience. [Link]
• Washida & Associates is looking for an electrical U.S. patent attorney for their Tokyo office. [Link]
• McDonnell Boehnen Hulbert & Berghoff is seeking a patent agent with 2-4 years experience to work in their electrical arts group. [Link]
• Kramer Levin Naftalis & Frankel is seeking a patent agent with a mechanical engineering background. [Link]

Upcoming Events:

• The Florida Bar will hold its 2^nd Annual Intellectual Property Symposium in Fort Lauderdale on April 14^th & 15^th. The symposium will take a look at the story behind the $21 Million Verdict in Powell vs. Home Depot, the Gene Patent Controversy, Licensing and Endorsements in Sports (and Entertainment), Intellectual Property Protection vs. The First Amendment and Bankruptcy. Guest speakers include Lori Andrews, Felix Wu, Ury Fischer, Chris Holman, and Robert Stoll. [Link]
• American University Washington College of Law will host the first annual Global Congress on Public Interest Intellectual Property August 25-27 in Washington DC. The Global Congress on Public Interest Intellectual Property will serve as a site for the sharing of research, ideas and policy proposals for how international intellectual property law should be constructed to better protect the full range of global public interest concerns. [Link]
• The 3^rd Annual Corporate IP Counsel Forum will be held May 24-25 in New York. The Corporate IP Counsel Summit is the premier forum to hear about solutions to maximize IP assets, avoid costly litigation, create and maintain efficient infrastructure, fully integrate IP strategies into business plans, prepare for anticipated patent law changes, and much more. Guest speakers include Michael Bishop, Mony Ghose, Mark Costello, Michael Springs, Charles Kwalwasser, and Timothy Wilson. Patently-O readers will receive a $100 discount by using promo code FZA884. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Electronic Filing and Automatic Decisions for Common Petitions to the Patent Office

Petitions practice before the Patent Office has long been something of a quagmire. The Office has been working on several initiatives to shed more light on the process and to ensure that decisions are released in a much more timely fashion. In this vein, the Office has created a set of automated electronic forms for submitting the most common types of petitions through its new "e-Petition system." The selected petitions are then decided automatically and the result will be almost immediately entered into the file history.

Patent Reform 2011: House of Representatives Bill No. H.R. 1249

Representatives Lamar Smith, Bob Goodlatte, and Darrell Issa have introduced their version of the America Invents Act (AIA) to the House of Representatives. H.R. 1249. [AIA.pdf] The AIA closely tracks the Senate's bill on comprehensive patent reform (S. 23) that was passed in the Senate earlier this year on a 95-5 vote. Parallel changes include a switch to a first-to-file system (with the retention of a limited one-year grace period); establishment of a modified inter partes reexamination and post grant opposition system; providing USPTO with fee-setting authority; neutering of the false marking provision; allowing pre-issuance submissions by third-parties; creating a supplemental examination system to correct inequitable conduct; and elimination of best mode failure as an invalidity defense.

The statute continues to include a substantial error in its codification of the grace period. Namely, the grace period only applies to “disclosures” and not to other commercialization activities such as sales and offers for sale.  In addition, it is unclear whether the grace period would apply situations such as the original public use case of Pennock v. Dialogue, 27 U.S. 1, 23, 7 L. Ed. 327 (1829).  In that case, the Supreme Court ruled that the inventor could not obtain a patent on its hose-making process because the inventor had sold the product (hoses) for several years before filing for patent protection. 

Some key differences from the Senate version that will lead to substantial debate include: 

1. Details of the Post Grant Opposition Provisions…
2. Prior User Rights: Whether “prior user rights” should be expanded to accompany the switch to a first-to-file regime. This issue arises when, for instance, a manufacturing company is using a particular process as a trade secret before another party invented and patented the process.  Under our current first-to-invent regime if the prior-user was sued for infringement, the patent would likely be invalidated under Section 102(g). See  Dunlop Holdings Ltd v. Ram Golf Corp., 524 F.2d 33 (7th Cir. 1975).  The invention-date priority contests of Section 102(g) are eliminated in a first-to-file system, raising the question of whether a non-patent-filing manufacturer should be given some prior user rights that would continue to allow these trade-secret uses. Currently, the patent statute also has a prior user right codified in Section 273. That section, however, is limited purely to business method patents. The proposed legislation would expand Section 273 to cover all patents.
3. Special Business Method Proceedings, venue restrictions, interlocutory appeals, and attorney fee shifting.
4. Automatic stay of litigation for inter partes reviews.
5. Elimination of Tax Strategy patents (by considering the subject matter within the prior art).
6. Codification of Knorr Bremse (failure to present advice of counsel cannot be used as evidence of willful infringement). 

Read the Bill: File Attachment: 033011_America Invents Act.pdf (266 KB)

Federal Circuit Refuses to Require Examiners to Articulate a Claim Construction as Part of the Examination/Rejection Process

In re Jung (Fed. Cir. 2011)

Ed Jung is a co-founder of intellectual ventures and Dr. Lowell Wood is a world renowned technologist. In 2004, the pair filed a patent application for a photo-detector array system. The examiner rejected the claims as obvious and the BPAI affirmed. Jung appealed to the Federal Circuit arguing that "(1) the examiner failed to make a prima facie case of anticipation, and (2) the Board acted as a 'super-examiner' by performing independent fact-finding and applying an improperly deferential standard of review to the examiner's rejections."

Prima Facie Case: The patent office has the initial burden of presenting a prima facie case of invalidity. A prima facie case is adequately articulated by notifying the applicant of the reasons for its rejections so long as the explanation is not "so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection." Chester v. Miller, 906 F.2d 1574 (Fed. Cir. 1990). This requirement comes straight from Section 132 of the Patent Act. 35 U.S.C. §132(a).

Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application.

Once a prima facie case is presented, the burden shifts to the applicant for rebuttal.

In Jung, the Federal Circuit ruled that the examiner presented a prima facie case of invalidity based on his explanation that Jung's broadly drafted claim encompassed the prior art.

Here, the examiner's discussion of the theory of invalidity (anticipation), the prior art basis for the rejection (Kalnitsky), and the identification of where each limitation of the rejected claims is shown in the prior art reference by specific column and line number was more than sufficient to meet this burden.

In the appeal, Jung argued that the articulation of a prima facie case should involve more than the notice of rejection outlined in § 132. Jung asked for a claim construction of the disputed claims – similar to what would be required of a court. The Federal Circuit rejected that argument – seeing "no reason to impose a heightened burden on examiners beyond the notice requirement of § 132."

There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. This court declines to create such a burdensome and unnecessary requirement. "[Section 132] does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection. Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence." Chester, 906 F.2d at 1578 (internal citation omitted). As discussed above, all that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132. As the statute itself instructs, the examiner must "notify the applicant," "stating the reasons for such rejection," "together with such information and references as may be useful in judging the propriety of continuing prosecution of his application." 35 U.S.C. § 132. Here, the examiner's discussion of the theory of invalidity (anticipation), the prior art basis for the rejection (Kalnitsky), and the identification of where each limitation of the rejected claims is shown in the prior art reference by specific column and line number was more than sufficient to meet this burden.

Jung's argument was clearly a long-shot in this case and not well presented if the sole intent was to make sure that Jung gets this patent. Of course, Intellectual Ventures is now one of the largest patent holders in the world and its actions are almost always strategic in nature.

MBHB Snippets

My former law firm MBHB just released its quarterly snippets Review of Developments in Intellectual Property Law. A group of new associates started snippets around the time I started at the firm nine years ago (hard to believe). I have a short article in the newest volume discussing "Patent Data, Prior Art, and Operational Transparency at the USPTO." Kevin Noonan of Patent Docs has written an interesting discussion of the advantages of trade secret protection (in certain situations). Other articles include (1) an international comparative analysis of software patents and (2) a discussion of some limits of KSR.

snippets 9:1, Table of Contents:

• Considerations for Software Patent Claims in the United States, Europe, and Canada by Michael S. Borella, Ph.D., Daniel R. Bestor and Alan W. Krantz
• Where (and Even When) Does KSR Belong in Obviousness Arguments? by Daniel P. Williams and Christopher D. Butts
• While Not Right for Every Invention, Trade Secret Protection Has Its Appeal by Kevin E. Noonan, Ph.D.
• Patent Data, Prior Art, and Operational Transparency at the USPTO by Dennis D. Crouch

Download it while it's hot (PDF). You can fill-out a form to receive a hard copy.

High Rate of Patent Throughput Continues in 2011

By Dennis Crouch

The chart above shows the number of original utility patents issued each calendar year. Reissue, design, and plant patents are excluded. The figures for 2011 go through March 29, 2011 and the projection assumes that the average weekly count of patent grants from Q1 2011 will continue through the rest of the year.

To be clear, the rise in patent grants does not seem to be based on PTO rubber-stamping applications.  As the chart below shows, the number of abandoned applications each year is also at an all-time high. (Chart below uses fiscal years instead of calendar years).

Although down slightly in FY2009 - FY2010, US provisional patent applications continue to be popular for us-originated patent applicants. There are about three provisional patent applications filed for each us-originated utlility patent application.

In re Verizon Business Network Services Inc.

By Jason Rantanen

In re Verizon Business Network Services Inc. (Fed. Cir. 2011) Download 10-m956 order
Panel: Lourie, Gajarsa, and Linn (author)

The Federal Circuit continues to grant mandamus petitions relating to venue transfer where the basis for denying the request is tenuous.  In Verizon, the defendants requested a transfer from the Eastern District of Texas to the Northern District of Texas, Dallas Division.  Although several party witnesses resided within 100 miles of Dallas, and no witness resided within 100 miles of Marshall, the district court declined to transfer venue on the basis that several years earlier the court had handled a lawsuit involving the same patent and had construed 25 of the patent's terms.

Given that it was clear that trial in Dallas would be more convenient for the witnesses, the crux of the writ turned on whether the district court's familiarity with the patent was a plausible basis for denying transfer.  The CAFC concluded it was not.  Distinguishing its recent ruling in In Re Vistaprint Ltd., 628 F.3d 1342 (Fed. Cir. 2010), the panel held that "[t]o interpret § 1404(a) to hold that any prior suit involving the same patent can override a compelling showing of transfer would be inconsistent with the policies underlying § 1404(a)." Slip Op. at 6.  The court continued:

In Vistaprint, we denied mandamus to overturn a denial of transfer and determined that the district court properly considered both its previous experience construing claims of the patent at issue and co-pending litigation before the district court involving the same patent and underlying technology. In this case, there is no assertion that there is an additional pending lawsuit in the Eastern District involving the patent and technology. Absent that, we deem the Eastern District's previous claim construction in a case that settled more than five years before the filing of this lawsuit to be too tenuous a reason to support denial of transfer.

Consequently, the court granted the petition.

Improper Cross Appeals

By Jason Rantanen

Aventis Pharma S.A. v. Hospira (Fed. Cir. 2011) (precedential order) Download 11-10181047 order
Panel: Prost, Mayer, and Moore (author)

The Federal Circuit has repeatedly warned about improper cross-appeals.  Last week, the court issued a precedential order expressing its frustration with appellees who engage in this practice in violation of the court's clear rules, threatening sanctions should future parties continue to disregard its warning. 

Aventis is in the process of appealing a judgment finding all of the asserted claims of the patents involved in its infringement suits against Apotex and Hospira invalid for obviousness and unenforceable due to inequitable conduct.  In response, Apotex filed a cross-appeal to preserve its ability to challenge the district court's ruling that some of the asserted claims were not invalid on another ground, double-patenting, and to argue noninfringement.  After Apotex declined to withdraw its cross appeal, Aventis filed a motion to dismiss.

The motions panel was unsympathetic to Apotex.  "Our precedent consistently warns against the improper use of a cross-appeal to reach issues that do not otherwise expand the scope of the judgment. A cross-appeal may only be filed “when a party seeks to enlarge its own rights under the judgment or to lessen the rights of its adversary under the judgment.”"  Slip Op. at 3 (quoting Bailey v. Dart Container Corp., 292 F.3d 1360, 1362 (Fed. Cir. 2002).  Apotex's conduct was particularly egregious because it was exactly the type of cross-appeal that the court previously ruled improper in TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1157 (Fed. Cir. 2004).  That rule, the CAFC noted, is clear.  "Where [] the district court has entered a judgment of invalidity as to all of the asserted claims, there is no basis for a cross-appeal as to either (1) additional claims for invalidity or (2) claims of noninfringement."  Slip Op. at 4, quoting TypeRight at 1157.

After concluding that Apotex's attempts to distinguish TypeRight were without merit, the court issued a strongly-worded warning about the practice of filing improper cross-appeals: 

As Apotex points out, we have not sua sponte struck every improperly filed cross-appeal. This infrequent leniency is not an invitation to flaunt our practice and precedent, and the improper use of a cross-appeal directly contrary to our precedent may meet with sanctions. We understand Aventis plans to seek attorneys’ fees and costs incurred in connection with the motion to dismiss Apotex’s improper cross-appeal, and will evaluate its request in due course.

Slip Op. at 5.

Why do parties file cross appeals?
Although parties may file improper cross appeals because they are legitimately concerned about waiving the ability to challenge a district court ruling, cross-appeals also give appellees procedural benefits.  In a typical Federal Circuit appeal, the appellant is permitted to file a 14,000 word opening and a 7,000 word reply brief while the appellee may file one 14,000 word opposition brief.  When a cross-appeal is involved, the appellee may file a 16,500 word opposition brief and a 7,000 word cross-appeal reply (the appellant is allotted 14,000 words for its reply).  This give the appellee an extra 9,500 words - a precious commodity - along with the last word on the cross-appeal issues.  But obtaining this advantage in contravention of the rules constitutes gaming the system - and as the court in Aventis noted, "this is neither fair to the appellant nor an efficient use of the appellate process."  Slip Op. at 3.

Apotex likely got off lucky.  If the court had waited until the briefing was complete, Apotex could have had its cross-appeal arguments disregarded altogether, even those it could have raised as alternate grounds for affirmance.  As the court noted, however, Apotex will now be able to make those arguments in its appellees' brief if it so chooses.  And should the court decline to grant Aventis's request for attorneys' fees and costs, its opinion may have little deterrant effect - unless the court steps up enforcement or imposes some noteworthy sanction for blatantly improper cross appeals, appellants may continue to flaunt its practice in order to gain the procedural advantage a cross-appeal offers.

Paying Maintenance Fees

A patent's twenty year term is cut short when a patent holder fails to pay regular maintenance fees. In the US, maintenance fees are due 3.5, 7.5, and 11.5 years after issuance. The USPTO provides an additional 6-month grace period before the patent is considered abandoned. The current fee schedule requires a payment of $980 for the first maintenance fee; $2480 for the second fee; and $4,110 for the third fee. Qualified "small entities" receive a 50% reduction in fees. Small entities typically include universities, non-profit organization, and businesses with fewer than 500 employees.

Although the USPTO does not provide any ongoing services to patent holders, the maintenance fee revenue is used to fund ongoing patent office expenses (such as the examination of new patents). In fact, more than one-third of the USPTO's two-billion-dollar annual revenue comes from maintenance fee payments. For manufacturers and non-patent-holders, the maintenance fees are useful because they encourage patent holders to drop their patent rights.

Using USPTO records of maintenance fee payments, I looked at how fee payments have varied over time. The graphs below show the percentage of patents abandoned four years after issuance. These are patents that issued and then the patentee failed to pay the first maintenance fee due. In order to better visualize the trends, I used a 12-month moving average in the charts -- thus, the data point for January 2011 represents abandonments for February 2010 through January 2010. The second chart divides the results between small and large entities.

Two initial thoughts on these results:

• Over the past two years, the abandonment rate has been rising. This rise is more notable for patents held by large entities. For large entities, the abandonment rate is the highest in the past decade.
• Even though they have much lower maintenance fee charges, small entities are much more likely to abandon their patent applications.