August 31, 2007
The Patent Reform Act of 2007 is all but defunct. Yesterday, leading House Republicans wrote Nancy Pelosi, House Majority Leader, and solicitously requested to knock it off. It's all over but the lobbying.
An End to Denial
The Eolas patent infringement win over Microsoft, for infringing 5,838,906, garnered a $520 million damage award, and became a cause célebre for those howling that the patent system had run amok. In alchemic transformation, amok turned into bucks.
August 29, 2007
Egyptian Goddess (EGI) sued Swisa for infringing design patent 467,389, covering an ornamental nail buffer. The district court found Swisa's product lacking the point of novelty in summary judgment. Egyptian Goddess futilely appealed as a CAFC panel constructs a controversial new test for design patent novelty.
The USPTO has become venomously anti-patent. John Sullivan and Findlay Russell discovered a rattlesnake antivenom. The patent office appeals board turned a deaf ear to declarations of novelty. On appeal in court, the CAFC struck back.
August 28, 2007
On Monday, Polaris IP pulled its lever on the patent slot machine, suing AOL, Google, Yahoo!, A9, Borders, Amazon, and others in the Eastern District of Texas for infringing 6,411,947, which claims automated email message classification using a combination of a case base knowledge engine and rule base.
Despite efforts of health activists to portray the world community as accepting - even endorsing - Thailand's conduct, there is growing appreciation that trampling patents to allow a middle-income nation to cut its spending on drugs seriously threatens the world's system of protections for innovation.
August 27, 2007
In a letter to Sen. Harry Reid, Senate Majority Leader:
IEEE-USA, which represents the interests of more than 215,000 engineers, scientists and allied professionals in the U.S., opposes the Patent Reform Act of 2007 (S. 1145). We believe that much of the legislation is a disincentive to inventiveness, and stifles new businesses and job growth by threatening the financial rewards available to innovators in U.S. industry. Passage of the current patent reform bill language would only serve to relax the very laws designed to protect American innovators and prevent infringement of their ideas.
The bipartisan money-grubbing-from-IT-corporate-lobbyists legislation commonly known as the Patent Reform Act of 2007 is "hitting resistance," according to the Wall Street Journal, "because of concerns the U.S. might be exposed to greater foreign competition." It seems that some members of Congress have been reading The Patent Prospector, and more ought to.
August 26, 2007
Ormco asserted four orthodontic software and appliance patents in the same family against Align Technology (5,447,432; 5,683,243; 6,244,861 and 6,616,444). Align counterclaimed with 6,554,611 and 6,398,548. All asserted claims by both parties were found unenforceable. Ormco and Align appealed.
August 25, 2007
Clear As Mud
Courtenay Brinckerhoff of Foley & Lardner: "The USPTO believes that the new rules [limiting examination] will improve the patent examination process and relieve the overwhelming backlog of pending patent applications, but may have underestimated the substantive impact the rules will have on patent Applicants. While the USPTO promotes the rules as promoting “certainty and clarity” in the examination process, the rules themselves and the effects of their interrelationships are clear as mud."
August 24, 2007
Inventorship by Jury
Frank Shum is an optical engineer. In the late 1990s, Shum worked with Jean-Marc Verdiell. The relationship soured. Shum alleged that Verdiell fraudulently misappropriated technology developed by Shum. When Intel acquired Verdiell's company, and its patents, for $409 million in stock, Shum sued.
Bifurcate the Patent System?
Patent Hawk and I both believe in the value of the patent system for the United States. More specifically, I don't think it absurd to suggest that the phenomenal industrial growth we've seen in the United States since the 19th century has been due in part to the incentives created by the patent system. Where Patent Hawk and I may disagree, however, is on the question of whether uniformly stronger patents are good for our economy. In particular, I believe that the recent Supreme Court cases and PTO rulemaking cutting back at the scope of patent protection may be beneficial for some high-growth markets in our economy.
August 23, 2007
Mark Lemley, professor at Stanford Law School, "widely recognized as a preeminent scholar of intellectual property law," toots of the new rules for examination limits: "The idea that this would be any sort of significant restriction on patent owners is ludicrous to me. It will affect 10 applications a year, maybe 50, out of 450,000."
As Nutty As Squirrel Poo
Having attended the USPTO webinar on the new rules limiting examination, said limits applying both to the number of continuations/divisionals/RCEs for a patent family, and claims examined within each patent family, the interplay intricacy aimed at confounding prosecutors and thereby hobbling invention by said rules leads inexorably to a singular conclusion: my head hurts.
Instantly taking umbrage at the USPTO's new Byzantine rules for limiting examination, uppity Greece-born inventor Dr. Triantafyllos Tafas filed suit in the home court of the PTO, the Eastern District of Virginia, against the agency and its head honcho, Jon Dudas. According to Tafas, the new rules violate the Constitution, the Patent Act of 1952, and, in the run-up to promulgation, the rule-making procedures of the Administrative Procedure Act (APA).
August 22, 2007
Waiving Under Willfulness
Seagate appeals an order to disclose what would ordinarily be privileged attorney-client communications between it and trial counsel. The springboard for waiving the privilege by the district court is a finding of willful patent infringement. The issue before the appeals court is proper scope of discovery when relying upon advice of counsel, and the advice sours. But the CAFC goes far beyond that: in a unanimous en banc reversal of its own precedent of waiving privilege, the appeals court gratuitously furthers the recent judicial trend in eviscerating patent enforcement, redefining willful infringement without provocation, an issue orthogonal to that which it put before itself.
Reduction to Priority
The Patent Board of Appeals and Interferences (BPAI) refused to acknowledge an Australian patent for priority date, even though the PCT filing was correct. The error by the BPAI was misplaced focus on conception, not reduction to practice.
Broadest Reasonable Interpretation
August 21, 2007
Promoting the Progress of Science
United States Constitution, Article 1, Section 8, on "Powers of Congress": "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries"
Today, the Federal Register announces a significant step in the opposite direction: limiting inventors the exclusive right to their discoveries. At least the USPTO feels it is conveniencing itself. After all, what could be more important than a government agency making life easy for itself by limiting its services (fully paid services, no less)?!
August 20, 2007
David Vandagriff of Helius figures that the major players in the push for "patent reform" realize a net gain if patent enforcement is gutted: "None of the major backers of the current patent reform legislation have any real stake in improving the patent system. Microsoft, Intel and Cisco don't owe any of their success to the patent system. Each of these companies grew large without relying on patents to do so. While they may currently have patent portfolios, these companies have created and maintained those portfolios for defensive purposes."
New PTO Rules Webcast
The U.S. Patent and Trademark Office (USPTO) will hold a special webcast on Thursday, August 23, 2007, at 1:00 p.m. Eastern/10:00 a.m. Pacific on new claims and continuations rules that will allow the agency to continue to make the patent examination process more effective and efficient by encouraging applicants to use greater clarity and precision in describing the scope of their inventions. The new rules will be published in the Federal Register August 21, available at www.uspto.gov after 12:00 PM on August 21, 2007 and will be effective on November 1, 2007.
To Be Continued
"I wanted to share the good news with you that the final rules on claims and continuations are expected to be published in the Federal Register tomorrow (Tuesday, August 21, 2007). These rules are part of USPTO's overarching goal to improve patent quality and the effectiveness of the patent examination process." - John Doll
August 19, 2007
Patent bill jeopardizes life sciences innovation
Sidney Taurel of Eli Lilly writes in the Indianapolis Star: "The Patent Reform Act of 2007 would greatly limit the damages many inventors could receive when their patents are violated, and create a new administrative process for attacking patents via the U.S. Patent and Trademark Office - without court protection."
August 17, 2007
Worldwide Patent Picture
The World Intellectual Property Organization (WIPO) has released its 2007 edition of worldwide patent activity, with built-in pendency: the report covers 2005 and earlier. The upshot - "Trends in patent activity are a reflection of the transition currently occurring in worldwide industrial activity. Very high growth rates in the use of the patent system can be observed in North East Asian countries, particularly the Republic of Korea and China."
Every Penny Counts (EPC) is suing Bank of America (BOA) in Florida for infringing 6,112,191, which claims automated account transfer of "excess funds" with a retail transaction. EPC wanted hundreds of thousands of documents as part of discovery. BOA agreed to roll them out gradually, but then stalled. Judge Sheri Polster Chappell told BOA to bust a move, giving it until the end of the year to get it done. BOA ought to pay attention; and their attorneys, even closer attention; take Qualcomm as a very bad example.
The Seattle PI newspaper ran an article by Susan Schreter on what it takes for software companies to obtain venture capital funding, with no mention of patents. A reader asked about the omission. The turnaround: "Angel investors and venture funds are unapologetic in their quest to back entrepreneurs who have a "sustainable and unfair advantage" in the marketplace." With USPTO examination rigor post-KSR, it's even harder to get a software patent, which makes one even more valuable, as a granted patent is much less likely to be found obvious than before, and thus more likely to be enforceable.
August 16, 2007
The patent office is running a pilot program of sending electronic office actions, using Private PAIR, with notification by email, replacing the paper version. The USPTO is letting a limited number of new participants into the program beginning August 31. This initiative looks a winner in terms of convenience for all involved, and is likely to be an option for all prosecutors in the not too distant future, when the pilot successfully concludes.
August 14, 2007
Slow on the Draw
"The value of effort is timeliness." - Lao Tzu
Microsoft got sued for patent infringement for the upteenth time; this time, by Computer Acceleration Corporation (CAC), a unit of Acacia. The horse CAC rode was 5,933,630, carrying cargo that reduces program launch time. Microsoft aimed to hog-tie the rider, and shoot the horse, but was a tad tardy.
August 13, 2007
In the wake of public humiliation for sordid corporate behavior during patent litigation in a court decision early last week, and yet another last Friday, Qualcomm general counsel Lou Lupin resigned today. The aggressiveness that characterized Qualcomm on the legal front, which Lupin signified, may now be tempered.
Out of the Loop
Patent attorney Michael Teschner (pictured below) had a patent he had a hand in prosecuting go down to inequitable conduct, on failure to disclose prior art. Teschner fruitlessly appealed to step in and clear his name.
August 12, 2007
In reporting its second-quarter earnings Thursday, Vonage let slip that it was well on its way to non-infringing workarounds to the Verizon patents it was found infringing. Subscriber growth has sputtered.
Predating the Verizon-Vonage spat that has garnered much ink, Sprint sued Vonage in October 2005 over seven patents related to interfacing a old-style PSTN telephone network with the Internet variety (VOIP). Vonage filed a sloppy summary judgment motion, which Kansas district court Judge Lungstrum pitched. Trial starts in September.
August 10, 2007
Eugene Markush (shown) appealed his rejected chemical claims. In a landmark 1924 decision, the Commissioner of Patents approved the type of claim that would take the Markush namesake.
Markush claims recite groups of workable alternatives. As such, relative to other claim types, Markush claims are intrinsically complex. Markush claims easily mushroom into a plethora of possible permutations. Hence, Markush claims present a considerable examination challenge: namely, searching prior art for the possible alternatives. To attempt to rein in the inherently unruly, the USPTO is proposing new rules governing Markush claims.
This Lawsuit's For You
Unless you're a Pabst Blue Ribbon lowlife, you've doubtlessly marveled over the new Budweiser beer bottles, with shiny printing on both sides of the label. It's enough to make you guzzle. Why, that label is so chillin' that it's patented; alas, not by Bud brewer Anheuser-Busch. On Thursday, a Quebec company uncorked a cool complaint in East Michigan for infringing 6,852,191.
August 9, 2007
Johnson & Johnson (J&J) is suing the American Red Cross (ARC) for trademark infringement, contending that the Red Cross has broken the law by licensing the emblem to other businesses, which are using the symbol on their products. [Yes, this is a patent weblog, but this story is too interesting to be left untold to Patent Prospector readers.]
The USPTO announces a "Complex Work Units (CWUs) Pilot Program" scheduled to begin towards the end of the year. The agency seeks volunteer participants to provide input and feedback. The goal of the project is to better figure out how to regularize complex figure and table data, such as used to illustrate chemical structures, mathematical formulae, and protein crystals.
August 8, 2007
The appeals court settles a three-way squall for inventorship, inadvertently highlighting the senseless Byzantine complexity of the first-to-invent scheme that only the United States clings to, the entire rest of the world long ago having seen the folly of, and gone to the simple first-to-file system. In this episode, we learn that you can swear your invention date back to something you didn't invent, but not if it wasn't done for you.
August 7, 2007
Bad day for Qualcomm.
First, President Bush turned a deaf ear to Qualcomm's plea to overturn an ITC injunction against importing chips infringing Broadcom patents. Now Qualcomm is heading back to the appeals court for a stay, to let it plead some more.
Second, in a separate battlefront, Qualcomm had asserted two video compression patents (5,452,104 & 5,576,767) against Broadcom that covered the H.264 standard, set by the Joint Video Team (JVT). By adopting the standard, Broadcom infringed, Qualcomm snorted; a jury found otherwise. In Southern California Judge Rudi Brewster ruled Monday that Qualcomm engaged in "aggravated litigation abuse" by concealing over 130,000 documents during discovery. Qualcomm lawyers "participated in an organized program of litigation misconduct and concealment throughout" the case, as well as "widespread and undeniable misconduct of Qualcomm." The judge granted attorneys fees to Broadcom. Fooling the standards committee (JVT) in the first place cost Qualcomm its right to enforce the patents, Brewster ruled.
In a detailed 43-page decision, Judge Rudi Brewster in San Diego district court pitched the $1.5 billion damage award to Alcatel-Lucent from Microsoft for two MP3 audio patents, 5,341,457 and RE39,080. Judge Brewster overruled the jury verdict, finding non-infringement in one patent, and a question of ownership on the other. "The jury's verdict was against the clear weight of the evidence," Brewster wrote.
August 5, 2007
USTPO Obviousness Guidelines
Hal Wegner thinks he snagged an unofficial copy of the summary of the PTO examiner guidelines for determining obviousness. It may not be the train, but it sure looks to be where the tracks are being laid. Here it is.
August 4, 2007
This Pendulum Swing
Once upon a time, erstwhile inventive companies grew fat, smug, and arrogant. Though a few created revenue streams from patents, all were constantly pestered with infringement assertions. Mega-corporations banded together, finding common cause in pouring money into poisoning the patent well - trying to gut patent enforcement, make the so-called "sport of kings" an even higher-stakes "spoils of the mighty."
Guardian Media unleashed a rash of declaratory judgment suits related to its patents for parental content control for TV programs; from Sony, Mitsubishi, JVC, Matsushita, and Thomson. After consolidation, Guardian got the district court to dismiss for lack of controversy. The appeals court disagreed, finding all the ingredients for an adjudicatable dispute.
August 1, 2007
Good patents carry a charge. 3M sued Sony and others just this past March for infringing its lithium-ion battery cartridge patents. 3M shot both barrels: district court and ITC; asking for damages, an injunction, and attorneys' fees. Sony just settled.
Whichever Way It Folds and Holds
Icon Health & Fitness appealed to the CAFC a BPAI reexamination ruling invalidating 5,676,624, which claimed a folding treadmill that used a gas stabilizing spring to hold itself in place. No surprises were sprung.
Any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. - KSR