August 31, 2008
Phoning It In
800 Adept successfully sued Targus for two patents routing 800 number calls to a local service location. A 24-day jury trial spat a $18 million patent infringement award, attorneys fees for it being an exceptional case, permanent injunction, and Targus "liable under state law for tortious interference with Adept's business relationships," worth $7 million. Found willful, the award ballooned to $49 million. Targus' 10 counterclaim patents, covering much the same territory, bit dust. Overturned on appeal on claim construction, and other trial court errors.
August 29, 2008
USPTO Deputy Commissioner for Patent Examination Policy John J. Love took it upon himself to interpret 35 U.S.C. §101 for software method claims. Months ago in an internal memo to examiners, Love encouraged 101 rejections for method claims that merely recite computer usage in the preamble. Love wants software process claim steps tied to a system or apparatus, and transformation of the underlying subject matter. Now he has backing from the PTO appeals board. Herein, a BPAI ruling bombastic in its vacuity, disingenuous dissembling of case law to drive process patentability into the ditch.
August 28, 2008
Lexion Medical sued Northgate for infringing 5,411,474 and 6,068,609, which claim techniques for heating a patient's gut in preparation for laparoscopic surgery. '609 was stomped by Obzilla JMOL, while '474 eked out $721,662 in jury-awarded damages. On appeal, an overturned claim construction vacated the award, but Obzilla remained triumphant.
Microsoft and Nikon have consummated a photo finish to a patent cross-licensing agreement, though the picture is fuzzy. Details went undisclosed, other than indicating that Microsoft is being compensated by Nikon for its gorilla hug. Since Microsoft started banging its patent drum at the end of 2003, it has wrestled over 500 licensing agreements.
August 27, 2008
In 2002, Immersion sued Microsoft & Sony for patent infringement. In 2003, Microsoft settled, with Microsoft paying Immersion $26 million. In a secret codicil, Immersion was to pay a kickback to Microsoft from the proceeds of successfully suing Sony for the same infringement. Sony settled with Immersion in March 2007. Immersion sat pat. So, in June 2007, Microsoft sued Immersion for reneging on the kickback.
August 26, 2008
High Stakes High Definition
Orinda has filed against Sony for its Blu-ray high-definition DVD players. 5,438,560 claims basic optical disk recording, accounting for bad disk sectors. Complaint filed in the Eastern District of Texas.
The application of statistics is relatively simple. Statistics is taught at college for many fields. But properly applying statistics seems to elude many. A recent patent reexamination analysis by lawyers is exemplary: a small sample size of biased data, rendering it rather meaningless. But the statistically-challenged authors reported the results as conclusive. Another study, on civil lawsuit settlements, suffers the same flaw. There at least the authors admit the data base as flawed, but regardless paint a brave face on tainted data.
August 25, 2008
In a touchstone ruling, Star Scientific v. R.J. Reynolds, the CAFC resets the high bar for inequitable conduct:
The burden of proving inequitable conduct lies with the accused infringer. The patentee need not offer any good faith explanation unless the accused infringer first carried his burden to prove a threshold level of intent to deceive by clear and convincing evidence. If a threshold level of intent to deceive or materiality is not established by clear and convincing evidence, the district court does not have any discretion to exercise and cannot hold the patent unenforceable regardless of the relative equities or how it might balance them. Even if a threshold level of both materiality and intent to deceive are proven by clear and convincing evidence, the court may still decline to render the patent unenforceable.
August 24, 2008
By the Book
Responding to definitions of terms in a reexamination Examiner's Answer, an Appellant filed a reply that included dictionary definitions, to rebut the examiner's construction. The reply brief was refused entry, on the ground that the dictionary definitions constituted "new evidence." A petition to overturn was denied.
Any competent statistician will tell you that sample size is telling. So why do Andrew S. Baluch and Stephen B. Maebius just look at the first 30 of 308 inter partes reexaminations since late 1999, when the practice began? From the smattering, the two Foley & Lardner attorneys find reexamed claims downed a whopping 73% of the time. 43% of the time, the patent holder didn't even bother to reply. The authors term it "surprising efficacy." A sense of perspective would call it numbers that tell you nothing noteworthy.
The Power of Arsy
Patent examiners have been getting a bad rap in the patent blogosphere. Insults attacking their competence, work ethic, intelligence, moral character, and English skills are flung. In moments of weakness, this author has occasionally chimed in. But examiner incompetence should not be so easily disparaged. It should instead be respected and appreciated as better than the alternative.
August 23, 2008
Pennies Saved, Patent Lost
5,883,964 and 6,035,027 patented computerized phone callback, a scheme for lower international phone bills, because foreigners want a pretty peso for a phone call. Enforcing the patents was spent because the patentee sold out before patenting.
August 22, 2008
DSW sued Shoe Pavilion for infringing 6,948,622 and D495,172, claiming a shoe display rack. Shoe Pavilion responded by removing the offending racks. The district court booted the case. The CAFC booted the district court, for importing a limitation into claims unjustifiably, and not properly awarding damages. Shoe Pavilion owed for the time it was infringing. "Because patent infringement is a strict liability offense, the nature of the offense is only relevant in determining whether enhanced damages are warranted."
August 21, 2008
Leggett & Platt sued VUTEk for infringing 6,755,518, which claims inkjet printing, in particular, cold curing of the ink to affix it. '518 was baked in the oven of invalidity. One heat source was prior art, namely prior VUTEk patents. No scorched-earth prior art search needed.
From the appeal are mined jewels of anticipation, including the irrelevance of "teaching away," and applying the gauze of inherency: "a prior art reference may anticipate when the claim limitation or limitations not expressly found in that reference are nonetheless inherent in it." Mere mention is insufficient: "the fact that a claim limitation may be present in a reference does not establish that the reference inherently discloses that limitation." To be inherent, the supposed novel limitation must be one of the embodiment "possibilities" disclosed in the prior art.
August 20, 2008
Dead Cash Cow Still Milks
Astrazeneca sued Apotex and Impax for infringing patents of "pharmaceutical preparations containing omeprazole, the active ingredient in Prilosec." Filing ANDAs prompted the patent assertion. The patents expired, but that didn't moot the suit. Drug patent law provides an extra six months of exclusive sales to reap the profits of an expired patent. Also herein, CAFC confirmation that experimental use to reduce to practice is okay.
The Marshall Plan
Crucial reading for those interested in the notable docket of rocket, the Eastern District of Texas, in this week's Texas Lawyer. With 232 patent cases filed in Marshall in the past year, trial dates for filing there are now running to 2012. Judge T. John Ward's patent litigation mill is slowing, but faring.
Dealing with KSR Chat
K&L Gates is hosting a webinar on "Strategies for Dealing with Obviousness Rejections by the PTO in the Aftermath of KSR." If you haven't gotten enough tips on playing cards with Obzilla from the Patent Prospector, sign up.
PDFs of Revision 7 of the Eight Edition of MPEP are now available. These are July 2008 changes from the September 2007 r6. The HTML version, this prosecutor's preference, is pending. Wish they provided a specific change list.
August 19, 2008
In a shocking, unprecedented ruling, one branch of government stands up for another. Cooper Technologies had a continuation patent subjected to inter partes reexamination. Cooper carped that wasn't kosher, as the original (first) application was filed in 1993, and the law stated that "the inter partes reexamination procedure is available for "any patent that issues from an original application filed in the United States on or after" November 29, 1999." Apparently paid by the word, the CAFC reminded Cooper that "original" was just a word, subject to interpretation, and government agencies, such as the USPTO, have interpretation presumption on their side.
August 18, 2008
Hal Wegner cited "an informed source" that John Doll is likely to be the Acting Director of the USPTO in 2009, upon the expected departure of political hack and pathetic sack Jon Dudas. "A nonstatutory arrangement between Commerce and the PTO makes the Commissioner for Patents the Acting Director in the absence of a superior political appointee."
Inventor Gary Odom, founder of Patent Hawk, has asserted 7,363,592 against Microsoft. '592 claims a feature of the tool groups used in the Office 2007 tool ribbon. '592 has a priority date of November 2000. Complaint filed in the Eastern District of Texas. Odom is represented by Susman Godfrey.
In the Aorta
Dr. Jan K. Voda, M.D., sued Cordis for infringing two catheter patents: 5,445,625 & 6,083,213, getting a 7.5% royalty, and even enhanced damages and attorneys fees for willfulness. In light of eBay, Voda overreached for a permanent injunction. In a ruling replete with succinct case law infusions, appeal of most everything found the district court ruling in the right vein, except, most notably, willfulness in light of Seagate.
GraphOn has sued Google in the Eastern District of Texas for infringing four patents related to network servers: 6,324,538; 6,850,940; 7,028,034; and 7,269,591. GraphOn has sued before with this portfolio, and wrestled a settlement recently out of hapless AutoTrader.com. Other defendants, including Yahoo! and Match.com, fight on.
August 17, 2008
An anonymous reader at Slashdot, the e-gathering place for philosophic technology sophisticates, worries:
I am a developer for a medium-sized private technology company getting ready for an IPO. My manager woke up one morning and decided to patent some stuff I did recently. The problem is, I'm strongly opposed to software patents, believing that they are stifling innovation and dragging the technology industry down (see all the frivolous lawsuits reported here on Slashdot!). Now, my concern is: what kind of consequences could I bring on myself for refusing to support the patent process?
August 16, 2008
Todd Brady came up with "a building construction assembly that allows a header in a wall some vertical freedom of movement relative to the studs, such that stresses applied to the assembly do not result in wall cracks. Such a configuration is useful when stresses vary in a wall, for example, through accumulation of snowfall or from an earthquake." Hence 5,127,760. After losing in claim construction during an infringement assertion, Brady attempted correction, 12 years after issuance. The reissue couldn't stand the stress.
August 15, 2008
Prasco got so paranoid about infringing patents from competitors Medicis Pharmaceutical and Imaginative Research Associates that it filed a declaratory judgment motion. The problem for Pasco was that Prasco wasn't even on the defendants' radar screens. The district court pitched the case, and the appeals court concurred.
August 14, 2008
The USPTO has promulgated its final rule for CFR changes of authorized activities and sanctions for patent and trademark agents. The comments warn that being a patent agent does not cover activities, not necessary to prosecution, which would constitute practicing law.
Whalen et al faced PTO patent board appeal on a chemical composition for embolizing an aneurysm. In a precedential opinion, the BPAI clarified the boundaries of inherency, and reinvigorated the seemingly orphaned stepchild of Queen KSR, grande dame TSM.
August 13, 2008
With breathtaking alacrity for legislative enactment, President Bush signed into law revision of 35 U.S.C., the patent law, and the Trademark Act (of 1946), transferring authority of appointing administrative patent and trademark judges to the Secretary of Commerce. An unconstitutional 1999 law had let the USPTO director appoint the judges. Further, the Commerce secretary may retroactively repair the breach by waving a wand of approval over the current crew of judges.
August 12, 2008
Acacia subsidiary Digital Security Systems likes the high-definition Blu-Ray DVD technology so much, it wants a piece of the action. 6,052,780 claims copy protection which the patent holder considers incorporated into Blu-Ray players. Complaint filed in the Eastern District of Texas, seeking reasonable royalty. Defendants for the action flick include Samsung, Best Buy, Denon, Funai, LG, Matsushita, Panasonic, Phillips, Pioneer, and Sharp.
August 11, 2008
Walk This Way
According to NationalJournal.com, Senate Minority Whip Jon Kyl has his own vector for patent reform, divergent from the Leahy-Hatch cluster fun. Kyl reportedly spent months in meetings "with critics of the Leahy bill, including representatives from the pharmaceutical and life-sciences industries, small tech firms, and other companies whose business models depend on patent licenses. Noticeably absent from the talks were the major high-tech and media firms that belong to the Coalition for Patent Fairness and officials from the financial services sector who championed Leahy's bill."
Business as Usual
The hoary adage "where there's smoke, there's fire" seems to apply. Law.com reported on USPTO favoritism for RIM and against NTP during their lawsuit, with apparent continuing punishment of NTP by malign neglect.
In its Small Business section, The Wall Street Journal today used three anecdotes to survey the patent scene. The article "Caught in the Crossfire," stated "the clash:" "Big companies that pay for patent licenses and small companies that generate revenue by licensing patents are increasingly at odds."
August 10, 2008
Young James McDonough displayed inexperience in an interview in the Wall Street Journal. McDonough blamed patent trolls for the USPTO tightening examination, when it was media coverage of carping by patent-infringing computer technology corporations that provoked a PTO political response. To blame enforcers of their IP rights is like a bad omelet cook blaming chickens for laying eggs.
August 8, 2008
Kazuhiro Okada, inventor of 6,512,364, assigned the patent to Saitama, Japan-based Wacoh last month. '364 claims methods for testing sensors. Wednesday, Wacoh filed a complaint in the Western District of Wisconsin against auto makers GM, Ford, Chrysler, BMW, Mercedes-Benz, Volkswagen, Honda, Mazda, and Suzuki. Toyota is notable by its absence. The prayer for relief is "no less than a reasonable royalty."
August 7, 2008
Uniloc sued Microsoft for infringing 5,490,216, claiming an anti-piracy software registration system. Microsoft's product activation system was accused. The district court judge granted summary judgment of non-infringement despite concession by Microsoft.
Just the Fax
The USPTO "is proposing to revise the rules of practice to limit the types of correspondence that may be submitted to the Office by facsimile." The successful 1988 trial program is now deemed not so successful. The office recommends its web-based EFS (Electronic Filing System). [from the Federal Register]
August 6, 2008
Considering that USPTO management spawns from Congressional aides, payback in the form of a junket to Copenhagen, Denmark should raise eyebrows only for its destination, not its blatant toadying. The Washington Post:
"The purpose of the trip," Jefferson D. Taylor, chief of the USPTO office of congressional relations, says in his invite, sent to aides on the Senate and House Judiciary subcommittees on intellectual property, "is for discussions on issues related to intellectual property rights" and such and to "meet with local patent and trademark office representatives, members of industry" and American businessmen in Denmark, and -- our favorite -- to "visit with students and staff of the Copenhagen Business School, University of Denmark."
Bag Lady, Technologist
In 2006, IBM instituted a "worldwide policy, built on IBM's long-standing practices of high quality patents," disavowing "business methods without technical merit." 7,407,089, granted to IBM, issued yesterday, claims storing customer preference for paper or plastic bags. So, when you go to the supermarket and make your bagging selection, feel assured, whichever way you choose, it has "technical merit."
August 5, 2008
Proveris Scientific sued Innovasystems for infringing 6,785,400, claiming a device for evaluating drug delivery aerosol sprays. "As part of its defense, Innova invoked the safe harbor provision of the Hatch-Waxman Act." The district court had no safe harbor for Innova, finding infringement, no damages, but a permanent injunction. On appeal, the CAFC found a narrow safe harbor that excluded Innova.
August 4, 2008
2006 World Patent Review
The World Intellectual Property Organization (WIPO) has published its 2008 statistical review. 2008 is the publication date. The statistics are for 2006. The highlights: a 4.9% rise in patent filings from 2005 to 2006, mostly in China, South Korea, and the U.S. Pendency, in other words, patent office inability to deal with workload, an increasing problem. Statistically more computer-related patent filings relative to biotechnology. 6.1 million patents in force in 2006, with increased opposition and validity challenges.
The USPTO has unveiled a new electronic "portrait gallery" "highlighting past and present individuals who have made a contribution to America's intellectual property (IP) system." Included are "digital electronic portraits of United States Presidents Thomas Jefferson and James Madison; famous inventor Thomas Edison; National Inventors Hall of Fame Inductees Helen Free, who developed home testing for diabetes, and Steve Wozniak, the inventor and co-founder of Apple Computer; and Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas."
August 3, 2008
The United States has a foolish first-to-invent priority date system for U.S. applicants, but refuses to recognize the filing or invention date of foreign applications for the purposes of prior art, with the infinitesimal exception of the inscrutable 102(e)(2).
Novo Nordisk sued Sanofi-Aventis for infringing 7,241,278. Novo then motioned for a preliminary injunction. Denied. Affirmed on appeal because Novo "failed to show a reasonable likelihood of success on the merits." Sanofi had "raised substantial questions," including whether claim construction would go Novo's way. In other words, in order to get a preliminary injunction, the plaintiff has to demonstrate a clear-cut case, while the defendant merely has to raise doubt.
August 2, 2008
Sollami sued Kennametal over three patents. Kennametal was granted a stay pending USPTO examination of a reissue application of one of the asserted patents. Sollami appealed. In a non-precedential decision, CAFC ruled that a stay is not appealable, unless it puts the patent owner "out of court."
Proving inequitable conduct requires jumping "a high bar." There are two prongs to inequitable conduct: the materiality of omission (failing to disclose relevant information to the patent office), and intent to deceive. The Eisai CAFC ruling last week elucidated the current standard, with the contentious Aventis ruling in May shedding heat and light. For prosecutors, here's a checklist to guard against a patent going rancid.
August 1, 2008
There Is No Arizona
Whether Arizona has a functioning patent court remains an open question. Research Corporation Technologies (RCT) sued Microsoft for infringing its halftoning six-pack patent portfolio. After RCT won summary judgment of infringement, the case was transferred to a different judge, who reversed the ruling and granted Microsoft's motion of non-infringement, without opinion. At Microsoft's behest, the judge then scrapped the scheduled jury trial, and ran a kangaroo court for inequitable conduct. Appeal turned the tables once again.