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Tag Archives: Patent Docs

Federal Circuit Heightens Inequitable Conduct Standards, But Does it Increase Unethical Behavior?

Posted in Legal News

Yesterday, the Federal Circuit handed down its anticipated en banc decision in Therasense, Inc. v. Becton, Dickinson & Co., increasing the standards for inequitable conduct.  The 6-5 majority held that: 

  1. an omitted reference is material only if the claim or patent would not have issued, but for omission of the reference;
  2. specific intent to deceive must be shown by clear and convincing evidence;
  3. courts can no longer employ a "sliding scale" of intent and materiality, both must be showng by clear and convincing evidence; and
  4. courts should apply equity to ensure that the remedy is not based upon conduct "immaterial to the issuance of the patent." 

Patent Docs has an excellent explanation of the opinion and the case background.  And there is plenty of commentary about the opinion (see links below).  My initial reaction was that the heightened standards will not actually reduce the number of inequitable conduct claims that are filed, although it may reduce the number of inequitable conduct findings. 

So, while the overall outcomes may change, the general cost and complexity of patent litigation will likely remain the same.  But when I said as much on Twitter (@rdd), I got an interesting reaction from what appears to be an anonymous patent lawyer.  This anonymous person suggested that the heightened standard would actually embolden inventors and patent prosecutors to omit references and hide information from the Patent Office because they are now less likely to be charged with inequitable conduct.  My inclination is to dismiss this theory based upon my operating presumption that most patent prosecutors, and most inventors, are, or at least intend to, zealously advocate for their clients, or themselves, within the Patent Office’s rules and the relevant ethics standards.  Of course, I have seen exceptions, and they can be severe.  But my experience is that those are the exceptions, not the rule.  I am curious to hear what others think about this.  Am I wrong?

Here is a round up of some of the blog posts about the decision:

Bislki: More of the Same

Posted in Legal News

This post comes more than a week after the Supreme Court decided Bilski.  Last Monday when the decision came down I was struggling with what value I could add to the many reports that would fill the intellectual property blogosphere, and was leaning towards waiting a few days (which also allowed me to deal with various client commitments and new opportunities).  Then a good friend praised me for being the lone IP blog who had not said a word about Bilski on the day of the decision, after receiving an email of the blog’s content for the day.  That comment cemented it for me.  I decided to give myself some time to think about the decision before posting here.  Of course, that means that much of what can be said already has been.  So, links to many excellent commentaries are below. 

At its heart, the Bilski decision continues the Supreme Court’s patent law trend moving away from bright line rules and allowing the flexibility to adapt the law to future situations.  The business method in Bilski was struck down, but the Court did not strike down all business methods.  And the justices made clear that the machine-or-transformation test was not the only option for determining patentability, increasing the law’s flexibility even more.  Having preserved at least some business methods, the Court obviously left software patents intact as well.  So, Bilski was not the death of business methods or software.  And just as after KSR (obviousness) and eBay (injunction standard), the decision injects uncertainty into the law that will take 18 – 24 months to sort out, first in the district courts and then more slowly in the Federal Circuit.  The one thing you can be sure of is that you will see lots of Bilski-based motions over the next year.  And I am sure I will be writing about Northern District Bilski decisions during that time.

Here is some of the commentary from across the blogosphere:

Patent Reform Act Has False Marking in its Sites

Posted in Legal News

A few weeks ago, I discussed how the Northern District of Illinois had become the false patent marking capitol of the world (okay, the United States) and how the Local Patent Rules may be playing into it. But Congress may be stepping in to limit false patent marking suits – click here for a Patent Docs post showing that similar amendments have been introduced in both the House and the Senate patent reform bills. The current versions of the amendments would require that false patent making plaintiffs have suffered competitive injury. And most significantly, the amendments would apply the standing requirement to both pending and future false patent marking cases. If passed and signed into law, these amendments would effectively end the vast majority of the 100+ false patent marking cases filed this year, including more than 50 filed in the Northern District of Illinois.

The Public Patent Foundation – a false patent marking plaintiff itself – has come out in opposition to the amendments. Presumably, most industry segments support the competitive injury requirement which still gives the false patent marking statute plenty of teeth.

Bilski: Reading the Tea Leaves

Posted in Legal News

The Supreme Court heard oral argument in the Bilski case Monday afternoon.  Click here for a transcript of the arguments.  Here are a few of the highlights from Bilski’s argument:

JUSTICE GINSBURG: But you say you would say tax avoidance methods are covered, just as the process here is covered. So an estate plan, tax avoidance, how to resist a corporate takeover, how to choose a jury, all of those are patentable?

MR. JAKES: They are eligible for patenting as processes, assuming they meet the other statutory requirements.

JUSTICE BREYER: So that would mean that every — every businessman — perhaps not every, but every successful businessman typically has something. His firm wouldn’t be successful if he didn’t have anything that others didn’t have. He thinks of a new way to organize. He thinks of a new thing to say on the telephone. He thinks of something. That’s how he made his money.

And your view would be — and it’s new, too, and it’s useful, made him a fortune — anything that helps any businessman succeed is patentable because we reduce it to a number of steps, explain it in general terms, file our application, granted?

MR. JAKES: It is potentially patentable, yes.

* * *

JUSTICE BREYER: So you are going to answer this question yes. You know, I have a great, wonderful, really original method of teaching antitrust law, and it kept 80 percent of the students awake. They learned things – (Laughter.)

JUSTICE BREYER: It was fabulous. And I could probably have reduced it to a set of steps and other teachers could have followed it. That you are going to say is patentable, too?

MR. JAKES:  Potentially.

And here are some of the highlights from the government’s argument:

JUSTICE SOTOMAYOR: No ruling in this case is going to change State Street. It wasn’t looking at process or the meaning of "process." It was looking at something else.

* * *

CHIEF JUSTICE ROBERTS: Mr. Stewart, I thought I understood your argument up until the very last footnote in your brief. And you say this is not –simply the method isn’t patentable because it doesn’t involve a machine. But then you say but it might be if you use a computer to identify the parties that you are setting a price between and if you used a microprocessor to calculate the price. That’s like saying if you use a typewriter to type out the — the process then it is patentable. I — I — it — that takes away everything that you spent 53 pages establishing.

* * *

CHIEF JUSTICE ROBERTS: But if you look at your footnote, that involves the most tangential and insignificant use of a machine. And yet you say that might be enough to take something from patentability to not patentable.

MR. STEWART: And all we’ve said is that it might be enough; that is, hard questions will arise down the road as to where do you draw the line, to what extent must the machine or the transformation be central –

CHIEF JUSTICE ROBERTS: So you think it’s a hard question. If you develop a process that says look to the historical averages of oil consumption over a certain period and divide it by 2, that process would not be patentable. But if you say use a calculator, then it — then it is?

MR. STEWART: I think if it’s simply using a calculator for its preexisting functionality to crunch numbers, very likely that would not be enough. But what we see in some analogous areas is that the computer will be programmed with new software, it will be given functionality it didn’t have before in order to allow it to perform a series of calculations, and that gets closer to the line. And again –

CHIEF JUSTICE ROBERTS: Well, your footnote — I don’t mean to dwell on it — it says to identify counterparties to the transactions. So that if what you’re trying to get is the — the baker who sells bread, because you are going to hook him up with the grocer who sells, you know, in the grocery store, if you punched in in your search station, you know, give me all the bakers in Washington, that would make it patentable?

MR. STEWART: Again, we are — we are not saying it would be patent eligible. We would have to review those facts, and the PTO would have to review those facts in the context of an actual application.

I guess the point I’m trying to make is simply that we don’t want the Court, for instance, in the area of software innovations or medical diagnostic techniques to be trying to use this case as the vehicle for identifying the circumstances in which innovations of that sort would and would not be patent eligible, because the case really doesn’t present any — any question regarding those technologies. And therefore, we –

If those highlights, left you wanting more, check out the following posts that give some additional context to the cold transcript or read the tea leaves, as we all wait for a decision, likely this spring:

Patentability at the Supreme Court: Bilski Oral Arguments

Posted in Legal News

The Supreme Court hears oral argument today in Bilski v. Kappos.  The Court will decide the proper test for Section 101 patentability and will either decide or at least significantly impact the patentability of software and business method patents.  Here are the questions presented:

  1. Whether the Federal Circuit erred by holding that a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing ("machine-or-transformation" test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for "any" new and useful process beyond excluding patents for "laws of nature, physical phenomena, and abstract ideas." 
  2. Whether the Federal Circuit’s "machine-or-transformation" test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect "method[s] of doing or conducting business." 35 U.S.C. § 273.

For more on the history of both the Bilski case, check out my recent article with my colleague Mike Grill in the Northwestern Journal of Technology and Intellectual Property.  Patently-O has compiled the amicus briefs — click here for the briefs supporting Bilski or neither party, and here for the briefs supporting the government.  The briefs supporting the government include a brief by a group of Internet Retailers that, I am proud to say, cites my law review article arguing for an even application of the Twombly pleading standard as to both patent plaintiffs and patent defendants — click here for the amicus brief and here for my article from the John Marshall Review of Intellectual Property Law.

Click here for the SCOTUSBlog’s preview of the argument.  For post-argument CLE options, click here for a list of courses compiled by Patent Docs and here for information on a CLE from IPWatchdog’s Gene Quinn, who plans to attend oral arguments.

Top Patent Blogs

Posted in Legal News

Gene Quinn has done some great work in developing a list of the top 50 patent blogs at IPWatchdog, based on a combination of objective and subjective criteria — click here to read the post.  With all of the usual caveats about the value of top blog lists and competitions, I am proud that the Chicago IP Litigation blog came in at number 28 and the top regional US patent blog.  I am honored to be among the top regional patent blogs, including Washington State Patent Blog, California Biotech Blog,* and Georgia Patent Law.  I am also proud to be among the numerous Chicago patent blogs that made the list, including Patent Docs, Orange Book Blog and the 271 Patent Blog.

Here is the top 50:

  1. Patently-O
  2. IPWatchdog.com
  3. IP Kat
  4. Spicy IP
  5. Patent Baristas
  6. Intellectual Property Watch
  7. Patent Docs
  8. 271 Patent Blog
  9. BlawgIT
  10. Patent Prospector
  11. The Invent Blog
  12. IP Think Tank and The Prior Art
  13. -
  14. Orange Book Blog
  15. IPJUR and European Patent Caselaw
  16. -
  17. Promote the Progress
  18. IP NewsFlash
  19. Anticipate This!
  20. Patentably Defined
  21. India Patent
  22. Intellectual Asset Management
  23. Against Monopoly
  24. Patent Circle
  25. I/P Updates
  26. PHOSITA
  27. IP Spotlight
  28. Chicago IP Litigation
  29. The IP Factor
  30. Patent Arcade and File Wrapper
  31. -
  32. Securing Innovation
  33. Patents 101 and IP Estonia
  34. -
  35. PatLit
  36. Just An Examiner
  37. The Business of Patents
  38. Patentability
  39. Inventive Step
  40. Holman’s Biotech IP
  41. Washington State Patent Law
  42. California Biotech Law
  43. Patent Infringement Updates and Patent Assassins
  44. -
  45. Russian Patents
  46. Georgia Patent Law
  47. Patentnapsis
  48. Honoring the Inventor
  49. OC Patent Lawyer
  50. Nanomedicine & IP

*  Another blog by LexBlog.

More Bilski Commentary

Posted in Legal News

The patent blogosphere loves a cert grant in a patent case.  A patent case pending before the Supreme Court gives months of blog material and lots to debate, not to mention months of law review articles like the one I have slated for publication later this summer.  So, it is no surprise to see some strong commentary lighting up the patent blogs.  Here are two of the most thorough and interesting:

  • Patent Docs (predicting that the Supreme Court moves away from the Federal Circuit’s "bright line" machine-or-transformation test and questioning whether the Court will address the patentability of diagnostic method claims as raised in Justice Breyer’s dissent from the Court’s dismissal of Cert in Labcorp v. Metabolite); and
  • The Prior Art (handicapping the Supreme Court’s eventual decision, including a brief look at  appointee Judge Sotomayor’s potential impact on the decision).

Patent News: Patent Reform & Bilski

Posted in Legal News

The legal blogosphere is full of analysis and commentary regarding the Patent Reform Act, here is more of the best:

And the Bilski amicus briefs began coming into the Supreme Court today.  Click here for Dennis Crouch’s post with links to many of the amicus briefs.  And here for Crouch’s post discussing the PTO’s Bilski guidance to Examiners.

Patent Reform Act of 2009

Posted in Legal News

As promised, the new Patent Reform Acts were introduced in Congress this week — click here for the Senate bill and here for the House bill.  While I have not yet done a comprehensive review, I understand that the bills are largely similar.  Here are some highlights of the bills:

  • They move from the current first to invent system to the international norm, first to file.
  • Expanded reexamination and a new period of post-grant review.
  • Damages provisions require that the specific contribution over the prior art be considered and allow consideration of licensing terms for similar noninfringing substitutes.  As Dennis Crouch points out, for alternatives in the public domain the comparable license could be free.
  • Specifically allows for Federal Circuit jurisdiction of interlocutory claim construction appeals where the district court approves the appeal.
  • Federal Circuit judges would no longer be required to live within fifty miles of the District of Columbia.
  • The venue provisions are changed to narrow possible venues.

There is plenty of commentary in the blogosphere.  Here are some of the best:

  • 271 Patent Blog (giving highlights, noting changes from the last version and do not miss Peter Zura’s blog makeover);
  • Patent Docs (discussing the Senate press conference announcing the Senate bill and noting BIO’s response to the bills); and
  • Patently-O (giving highlights and noting changes from the most recent attempted reforms) and here (reposting comments from Google’s Head of Patents and Patent Strategy, Michelle Lee).

Patent Reform & Another Commerce Secretary

Posted in Legal News

Here are several important, national patent and trademark stories:

  • Via Patent Docs (which has a new web address — http://www.patentdocs.org) a new patent reform bill (perhaps the first of three) may be issued as early as Monday, March 2 — click here to read the Patent Docs post.
  • President Obama has nominated Gary Locke to be the next Secretary of Commerce, which would  put Locke in charge of the PTO.  Locke, formerly the Governor of the state of Washington, is currently a partner in Davis Wright Tremaine’s Seattle office.  For more on the appointment from the Chicago Tribune’s Swamp blog, click here.  In his speech announcing the nomination, President Obama pointed out that among Locke’s many impressive credentials and accomplishments, he is an Eagle Scout.  As an Eagle myself, I am always glad to see another succeed.

Most Read Patent Blogs

Posted in Legal News

IPWatchdog Gene Quinn recently published his list of the top 26 patent blogs, based upon Technorati rankings (Quinn only considered blogs in the top 1M of the Technorati rankings) — click here to read Quinn’s post.  Quinn manually determined which blogs counted as patent blogs, and did nice work.  Although I would add the IP ADR Blog to the list.  While I do not place much weight in blog rangings, the list identified a few new blogs that I plan to follow, and it is gratifying to see that the Chicago IP Litigation Blog has a strong reader base in the patent world.

Here are Quinn’s rankings:

  1. Patently-O - Technorati Rank 21,202
  2. Patent Baristas - Technorati Rank 61,134
  3. IPWatchdog - Technorati Rank 80,245
  4. Against Monopoly - Technorati Rank 80,245
  5. Patently Silly – Technorati Rank 90,082
  6. Chicago IP Litigation Blog - Technorati Rank 117,073
  7. PHOSITA - Technorati Rank 101,726
  8. Spicy IP - Technorati Rank 129,347
  9. PLI Patent Practice Center - Technorati Rank 132,753
  10. Duncan Bucknell Company’s IP Think Tank - Technorati Rank 136,348
  11. Patent Prospector - Technorati  Rank 152,448
  12. Securing Innovation - Technorati Rank 162,007
  13. Peter Zura’s 271 Patent Blog - Technorati Rank 163,794
  14. The Invent Blog- Technorati Rank 167,214
  15. Promote the Progress - Technorati Rank 198,166
  16. I/P Updates- Technorati Rank 213,371
  17. IP NewsFlash- Technorati Rank 221,777
  18. Orange Book Blog - Technorati Rank 221,777
  19. The IP Factor - Technorati Rank 250,588
  20. Philip Brook’s Patent Infringement Updates- Technorati Rank 273,434
  21. Patent Docs - Technorati Rank 300,413
  22. Antiticpate This! - Technorati Rank 351,677
  23. Patent Fools (now operated by IPWatchdog.com) – Technorati Rank 351,092
  24. Patentably Defined - Technorati Rank 614,978
  25. Steve van Dulke’s Patent Blog –  Technorati Rank 676,101
  26. IP Spotlight - Technorati Rank 752,199

IP-Centric Blawg Review

Posted in Legal News

This week’s Blawg Review #185 is up at Duncan Bucknell’s IP Think Tankclick here to read it.  It will be no surprise to Bucknell’s readers (including me) that his theme is global intellectual property.  Of course, Bucknell focuses on the Bilski decision — for example, IP Blawg and IP Spotlight.  Bucknell also looks at some posts regarding how the changing administration will impact IP law, including two posts from Patent Docs (click here and here) and the IAM Blog.

Election Day

Posted in Legal News

This is not directly related to IP law, and is not legal advice or an endorsement of any candidate.  I am supporting a blog initiative to get state voting rules on the web, as a public service to blog readers. The following information comes from the Cook County Clerk’s Office election site, a great place if you have voting or election questions. Also, early voting ends tomorrow evening. After that, you must vote on election day, Tuesday, November 4 or by absentee ballot. Finally, to provide an IP connection to this post, click here for an interesting Patent Docs post outlining each presidential candidate’s respective positions on patent law issues.

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Northern District & IP Legal News

Posted in Legal News

Several stories and updates that are worth a mention, but do not warrant a separate post:

  • I was going to write a post explaining new Federal Rule of Evidence 502, but Beck & Herrmann at Drug & Device Law beat me to it and did an excellent job (actually, they did not, but their colleague David B. Alden of Jones Day  did) — click here to read the post.  Every litigator should read FRE 502 for themselves and then read the Drug & Device Law post or some other guide.  It is a significant rule, even though it codifies much of what was already the standard practice.
  • Anne Reed at Deliberations provides a series of links to the most recent edition of The Jury Expert — click here for Reed’s post.  If you do not already subscribe to The Jury Expert, do it now.  This is a fabulous publication.  My favorite article is by Oklahoma State’s Edward Burkley and Darshon Anderson, discussing translating the science of persuasion into the courtroom.  Anyone who makes it their business to persuade judges, juries, colleagues or even their spouse should read this article.  Much of the article will not be new to anyone who studies the art of persuasion.  But at a minimum it is an excellent distilling of important persuasion techniques and everyone will learn or rethink a few things. 
  • Patent Reform is back, or at least Minority Whip Senator Kyl (R-AR) has introduced a new patent reform bill.  It is hard to imagine there is much traction in the midst of a presidential election and all of the economic unrest swirling around Washington.  But you can read more about the bill at Patent Docs and the 271 Patent Blog.

Chicago Connections to Managing IP’s Top 50

Posted in Legal News

Managing Intellectual Property published its annual list of the fifty most powerful people in the international IP community (hat tip to Patent Docs for pointing it out).  Click here for the list (subscription or two week free trial sign up required).  There were two honorees with Chicago connections:

These IP luminaries share the honor with Second Life avatars (#1), the PTO’s Director John Dudas (#4), the Federal Circuit’s Judge Michel (#9), Harry Potter (#14),and  blogger and Google copyright counsel William Patry, of the Patry Copyright Blog.

Quanta v. LG: Patent Exhaustion

Posted in Legal News

Quanta Computer, Inc. v. LG Elecs., No. 06-937, 553 U.S. ___ (2008).

The Supreme Court concluded its latest review of the patent laws Monday when Justice Thomas delivered the Court’s succinct, unanimous decision in Quanta v. LG.  Client obligations this week prevent me from providing a detailed analysis today.  But, no surprise, there is plenty of commentary out there already.  For more about decision, check out:

Chicago’s Biggest Patentees

Posted in Legal News

IPO recently published its list of 2007′s 300 most prolific patentees.*  Chicago-area companies had a large presence on the list.  Here they are, along with each entity’s rank on the list:

*  Hat tip to Patent Docs for identifying the IPO’s list.

Chicago’s Most Prolific Patentees
28 Motorola (631 patents)
47 Boeing (428)
82 ITW (259)
289 Abbott (54)

Northern District & IP News: Pro Bono & Patent Reform

Posted in Legal News

Tomorrow I will be back to case analysis, but there is some Northern District news and some excellent IP and litigation blog posts worth reading, here they are:

  • Ninth Annual Pro Bono and Public Interest Awards – The Northern District and the Federal Bar Association are seeking nominations for excellence in pro bono and public interest work. Nominations should be based upon work performed in civil cases before the Northern District which are no longer pending. Send nominations by March 28 to:

Amy Rettberg, Executive Law Clerk

Email: amy_rettberg@ilnd.uscourts.gov

Chambers of the Chief Judge James F. Holderman

219 South Dearborn Street, Suite 2548

Chicago, Illinois 60604

  • Patent Reform is Moving Forward — The Senate is preparing to vote on the Patent Reform Act after its spring recess (yes, it is spring already in DC).  Here is some additional coverage of the Act’s status:

271 Patent Blog — looking at the latest amendments to the Act.

Maryland Intellectual Property Blog — looking at the latest amendments and questioning whether proponents have the sixty votes necessary for cloture, thereby avoiding a filibuster.

Patent Docs – taking sides, but asking you to call your Senators regardless of which side you take.

  • Check out the newest entry to Chicago’s law blog scene, the Lean & Mean Litigation Blog.  It is not IP-focused, but it is an interesting read for any commercial litigator or litigant.
  • William Patry at Patry on Copyright has an interesting post about the difficulties of serving corporate entities based upon a District of the District of Columbia case involving a pro se plaintiff.  The best advice, of course, is to hire counsel because if you do not get the party served properly, you have no case.
  • The Seventh Circuit affirmed Judge St. Eve’s ground breaking opinion in the CLC v. Craigslist case.  The Seventh Circuit held that an ISP is exempt from cases based upon user content when the case attempts to treat the ISP as a publisher of the content.  This is considerably narrower than most of the other circuits, which have held that Section 230 exempts ISPs from essentially all suits based upon user content.  For more coverage, check out the WSJ Law Blog (which erroneously elevates Judge St. Eve to the Seventh Circuit), Internet Cases, and the Technology & Marketing Law Blog (very detailed analysis of Judge Easterbrook’s opinion).

Patent Reform: It’s Baaaaaaaaack!

Posted in Legal News

The Patent Reform Act is on the Senate’s calendar and is expected to be voted on in February. The version voted out of the Senate Judiciary Committee is different than the version passed by the House. Experts expect that, instead of forming a joint committee to resolve the differences which generally requires a second vote by both chambers, the House will vote on any version of the Patent Reform Act passed by the Senate.

That means that it is time to take a close look at the Senate version of the Patent Reform Act. The damages and venue provisions continue to be some of the most significant and hotly-contested. And it is no surprise that the various stakeholders are making their positions heard loudly again. I considered analyzing each provision of the current Senate bill, but Patent Docs beat me to it and did an excellent job:

Several other blogs are also keeping a close eye on the stakeholders and the sausage-making aspects of the Patent Reform Act, among the best:

Chicago’s 37Signals One to Watch in 2008

Posted in Legal News

Lots of blogs have been doing top ten lists or posts pondering their past year or resolving to do more in 2008. That is not my style.* But Wired’s top ten list of startups to watch in 2008 caught my eye because of a Chicago connection – click here for the entire list. Second on the list (alphabetically) is Chicago company 37Signals, a company that makes a suite of personal and business management software. I am trying out their web-based calendar and organization tool Backpack and, so far, I have been impressed.  Here is what Wired says about 37Signals:

There’s a reason nobody ever uses the phrase, "It’s as simple as computer programming." But Chicago’s 37Signals has made life simpler for programmers and small businesses alike with products such as Basecamp (project management software) and an increasingly popular open source web framework called Ruby on Rails. The company ditches the philosophy of "more features, more better" in favor of simplicity and accessibility: Focus only on the most important features and make things easier to use. The company itself embodies its keep-it-simple philosophy: Fewer than 10 staffers, working from humble offices, create programs quickly and nimbly adapt them based on user feedback. 37Signals released version 2.0 of Ruby on Rails in December, which should give many programmers a happy new year.

Founders: Jason Fried, Ernest Kim, Carlos Segura

Funding: Undisclosed sum from Bezos Expeditions

Employees: 8

For some other good IP-related top ten or end of the year lists, check out:

  • Patent Docs (Top fifteen Patent Docs stories of the year, 11-15, 6-10 and 1-5)
  • Patently-O (Hal Wegner’s top ten 2008 patent cases)
  • TinyTech IP (Top ten nanotechnology patents)

* I will say that the Blog’s top two stories of the year were without question the Patent Reform Act and Trading Technologies v. eSpeed.

Blawg Review #133

Posted in Legal News

Last week the intellectual property world obsessed over injunctions – specifically, a preliminary injunction hearing in the Eastern District of Virginia resulting in an injunction against the U.S. Patent & Trademark Office’s (“PTO”) new continuation rules. There was a lot of analysis about the injunction, including live blogging by Patent Practice Center Patent Blog and a lot of post-injunction analysis by, among others: 271 Patent Blog; FileWrapper; Patent Baristas; Patent Docs (and here); Patent Prospector; PHOSITA; Patently-O; WSJ Law Blog; and Washington State Patent Law Blog. For those of you who have no idea what a continuation is or just do not care about the particulars of the rules, I promise that I am done with patent continuations for this post. Honestly, I find the rules rather tedious myself. I prefer to focus on litigating patents, rather than the PTO’s prosecution rules. So, today we talk about injunctions:

According to TechCrunch, Patent Monkey received a permanent injunction when it was sold to the Internet Real Estate Group. But Patent Monkey’s patent search technology will see its injunction lifted when it is used on www.patents.com. Hopefully, for those like me who enjoyed it, Patent Monkey’s Infinite Monkey Theorem Blog will also see its injunction lifted.

Virtually Blind has an interesting report on Second Life’s* new Patent & Trademark Office, the SLPTO. No word on whether the SLPTO and the Second Life legal system generally will allow for any permanent injunctions. Right now it appears that the SLPTO will be heavily skewed toward copyright and trademark, which makes sense in a virtual world. And before we learn whether the SLPTO has any enforcement mechanisms, Blawg IT is offering to represent virtual clients before the SLPTO. I would get a retainer up front Brett – virtual clients can be difficult to track down when the bills are due.

The Patry Copyright Blog shows why Second Life injunctions may be necessary. Six Second Life players have sued a Queens man in the Eastern District of New York for trademark and copyright infringement based upon sales of goods in Second Life. I wonder if the trademarks and copyrights were registered with the SLPTO or the US PTO/Copyright Office. And does the E.D.N.Y. have authority to issue cyber-injunctions?

Promote the Progress provides an interesting piece on the long-term effects of last week’s injunction against the PTO on shaping patent reform.

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Continuation Rules Would Cause GSK Irreparable Harm

Posted in Legal News

Yesterday, I blogged briefly about the Eastern District of Virginia’s injunction preventing the PTO’s new continuation rules from taking effect today, November 1st.  But the Court’s order was not available yet.  The order has been issued — click here for a copy — and it is very interesting.  The Court held that plaintiff GSK had shown a likelihood of success on the merits regarding several issues:

  • That limiting the number of continuations a party can file violates 35 U.S.C. Section 120, which states that later filed applications have the same effect as their parent applications.
  • That the new rules are impermissably retroactive because the limits on numbers of claims and continuations will change the terms of the bargain struck between inventors currently prosecuting their applications and the PTO when those inventors filed their applications, prior to the new rules going into effect.
  • That the requirements for Examination Support Documents ("ESD") are impermissably vague because they do not sufficiently define the paramters of the search required.

The Court also held that GSK would be irreparably harmed by implementation of the rules because GSK has about 2,000 pending applications and GSK’s rights in each of those applications would be materially altered by the new rules. 

[Updated with more links after the jump.]

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House Patent Reform Act Explained

Posted in Legal News

On Friday, I promised an explanation of what was included in the Patent Reform Act passed by the House.  As I was preparing to write it, I found that Patent Docs had done it already.  Patent Docs’ strong feelings about the Act shine through their analysis, but whether you agree with their position or not, their explanation of the Act’s various components is very thorough.  Thanks for doing my work for me Mr. Noonan.

Patent Reform Act Hits a Snag?

Posted in Legal News

When the Patent Reform Act of 2007 was unveiled, the conventional wisdom was that the law would be enacted and remain largely intact, unlike the 2006 version which was never sent to the White House.  But it has hit its first delay, shortly after its first public hearings last week.  Earlier this week, five Senate Judiciary Committee (which is considering the Act) members — Tom Coburn (R-Oklahoma), Jeff Sessions of (R-Alabama), Chuck Grassley of (R-Iowa), Jon Kyl (R-Arizona) and Sam Brownback (R-Kansas) — sent a letter to the Committee’s Chair Senator Patrick Leahy (D-Vermont) and its Ranking Member Arlen Specter (R-Pennsylvania).  The Senators sought a delay in voting on on the Act and reporting it out of the Committee to allow time for additional hearings to explore, among other issues:

  • Apportionment of damages;
  • Post-grant opposition procedures;
  • Granting the USPTO broad rulemaking authority;
  • How to improve patent quality; and
  • "[E]xamining the problem of speculative litigation and alternatives to stopping unnecessary and costly litigation."

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