July 29, 2010
Becton tried to stick Tyco with infringing syringe patent 5,348,544. It did. But Tyco got the district court judge to grant a new trial on infringement, because Becton changed its infringement theory at trial. Tyco lost the second trial. Tyco appealed. The CAFC plunged into contentious claim construction.
July 28, 2010
Eli Lilly markets cancer drug Gemzar®, the active ingredient of which is gemcitabine. 4,808,614 claims gemcitabine, and a method for treating viral infections using gemcitabine. 5,464,826 claims using gemcitabine to treat cancer. Both patents, in the same family, are owned by Lilly. Lilly did not file a terminal disclaimer for '826. That would become a terminal mistake.
July 27, 2010
The USPTO today issued revised interim §101 guidelines in light of the SCOTUS Bilski decision. "The machine-or-transformation test remains an investigative tool and is a useful starting point." Other stated criteria include: applying laws of nature (versus the laws themselves), and more than "a mere statement of general concepts," for which examples are given (e.g., mental activity). Examiners "should avoid focusing on issues of patent-eligibility under 35 U.S.C. §101 to the detriment of considering" other avenues of rejection (§§ 102, 103, and 112).
July 22, 2010
Lock on Obzilla
Wyers sued Master Lock for infringing 6,672,115, 7,165,426, and 7,225,649, applicable to hitch pin locks for trailer towing. A jury found the patents nonobvious. Wyers secured an injunction along with $5.35 million in reasonable royalty damages. Master couldn't break the lock to obviousness post-trial, so it appealed. Herein, a thorough discussion of KSR, and case law that will be cited for years to come.
July 19, 2010
Paradox Security Systems sued ADT and other home security companies for infringing RE39,406, which claims a telephone line coupler circuit. Paradox's expert was waylaid by defendants for not explaining how the accused products met a means-plus-function limitation. The district court judge ruled non-infringement as a matter of law. Appeal found the same short circuit.
July 14, 2010
Congress is a cesspool of corruption, offering its members a variety of tricks to feather their own nests, and pay back those cronies who help finance the con job commonly called democracy. One legislative sleight of hand is a rider bill, which is a bill attached to a different, typically unrelated bill, in a furtive attempt to pass the rider without attracting scrutiny. Rider bills nearly always cater to a special interest, and commonly involve a pork allocation to the patron. Sen. Patrick Leahy of Vermont, where IBM has roots, has failed at least five years running to get patent deform passed. This year's attempt is a sneak attack: a rider onto a small business loan funding bill. In the interest of compact passage, what was never a hit has been reduced to a tidbit.
July 8, 2010
Behind the Times
In the interest of less-than-compact prosecution, the USPTO is, for the time being, adhering to the ancient military supply rule: "smoke 'em if you got 'em." The day Bilski rolled out of the Supreme Court, Robert Bahr, Poobah for Patent Examination Policy, pooted forth a letter on the ruling, directing examiners to stick to the old standby machine-or-transformation test, whereupon giving "the applicant" "the opportunity to explain why the claimed method is not drawn to an abstract idea."
July 7, 2010
You don't need to have a novel invention to get a US patent. You just need to beat the clock, a clock rigged to America as superior to inferior foreigners, a patent xenophobia most unbecoming. "Domestic and foreign filing dates stand on entirely different footings." Peter J. Giacomini and his pals tried rigging the clock for their computer data cache patent application. The BPAI upheld the examiner's § 102(e) rejection over 7,039,683 (Tran). Giacomini did not dispute Tran as invalidating if prior art. Giacomini argued Tran was not prior art, even though Tran claimed priority to a provisional application. Giacomini's problem was that Tran's provisional was a US application.
July 6, 2010
Telcordia sued Cisco for infringing network data transfer patents 4,893,306; 4,835,763; and RE36,633. '306 was knocked out by noninfringement in summary judgment. '763 and '633 ran the gauntlet through trial to a $6.5 million damages award. The district judge then tacked on prejudgment interest, an accounting for interim sales, and "ordered the parties to negotiate the terms of a royalty that would apply to the accounting and to post-judgment sales." Telcordia appealed the '306 claim construction. Cisco cross-appealed '306 and '763 validity, as well as the post-trial damages award and ongoing royalty negotiation dictate.
July 3, 2010
What can we patent?
Chris O'Brien, news columnist at the Silicon Valley Mercury News, who surely never squeezed a patentable invention out of his pea brain, asks the title question about the SCOTUS Bilski decision. "How crazy is this?" O'Brien opines in his abject failure to comprehend what § 101 as "a threshold test" means. A garden-variety mainstream press putz scratches his noggin and concludes "we're back to square one having to figure out how to move forward since the Supreme Court decided not to do it for us."
July 1, 2010
The BPAI and Obzilla are regular dance partners. So far this year, they've held two public balls: two precedential opinions in 2010, both ostensibly about obviousness, but as much about Board review procedure and scope. The most recent decision, Ex parte Magnus Quist was from an appeal rehearing request. Quist's claimed invention had been found obvious. Rehearing request denied. The upshot of how the BPAI works: "the Board panel must consider anew all the relevant evidence of obviousness, both for and against, in view of the argument on the issue."