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Usually I post a holiday-related patent on major holidays (which Halloween is in my house). But in light of today’s Eastern District of Virginia preliminary injunction hearing regarding whether to allow the PTO’s new continuation rules to take effect tomorrow, November 1, as planned, I thought a post on the continuation rules was more appropriate. The patent world, and more particularly the patent prosecution world, has been busy analyzing and preparing for the new continuation rules for several months. For analysis of the new rules check out the Maryland Intellectual Property Law Blog (click here and here) and the 271 Patent Blog (click here).
While most were just probing the rules for loopholes or preparing to comply with them, two also filed suits in the Eastern District of Virginia seeking to enjoin enactment of the new rules — Triantafyllos Tafas v. Dudas, No. 07 C 846 (E.D. Va.) and SmithKline Beecham Corp./GSK v. Dudas, No 07 C 1008. Click here for Patent Docs’ excellent coverage of the SmithKline/GSK suit.
The two suits were consolidated and a preliminary injunction hearing has been set for today — click here and here to download the briefs at Patently-O. Numerous entities have taken sides, filing amicus briefs — click here for a list of the briefs and links to some of them at the PLI Patent Practice Center Blog. And for those of you who cannot wait to read the result here shortly after it comes out and who are not busy with legal work or preparing for tonight’s trick or treating, click here for the PLI Patent Practice Center Blog’s live blogging coverage of the PI hearing.
Happy Halloween.
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Continue Reading Trick or Treat: Have a Preliminary Injunction to Eat

I, along with many others, blogged last week that the Patent Reform Act had stalled in Congress. But Congress has changed its mind and today the House is debating its version of the bill (available here). And experts expect some version of the bill to be passed by the House at the end of today’s debate. You can find an excellent summary of key amendments to the House bill at Tech Daily Dose. If you want a list of each amendment to the bill, by Congressperson, go to the House website. And it should come as no surprise that with the Patent Reform Act moving forward again both the MSM and blogs are full of commentary. Here is some of the best:
Chicago Tribune surveys the opinions of some Chicago-area companies.
271 Patent Blog weighs in with the President’s view and a survey of news stories on the Act.
FileWrapper says that the House will likely pass some form of the Patent Reform Act today, but that the Senate is not expected to consider it until October.
IP Central is watching the House debate on CSPAN and says that most of it centers on procedural issues, not substance.
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Continue Reading It’s Alive: Patent Reform Act Being Debated in the House

My recent story about Ebert’s use of his “Two Thumbs Up” has been receiving a lot of attention (and I even scooped the Sun-Times):
Likelihood of Confusion — Ron Coleman agrees with E. Leonard Rubin, interviewed in the Chicago Tribune today, who says that the written “Two Thumbs Up” mark is pretty strong.
Robert Feder of the Chicago Sun-Times — Feder says that the “Two Thumbs Up” mark is “the most powerful and influential symbol in movie marketing.”
The fact that the Patent Reform Act has stalled in Congress, which I discussed earlier this week, has been picked up by several blogs:
Maryland IP Law Blog — Citing my post.
Patently-O — Dennis Crouch says that the Patent Reform Act is not just stalled, it is dead.
271 Patent Blog — Leads with a great Simpsons’ quote in saying the Act is on hold.
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Continue Reading Chicago IP Blog in the News

Last Thursday, the Senate Judiciary Committee began marking up the Patent Reform Act. At the beginning of the Committee’s public markup session, Committee Chairman Leahy (D-Vt.) stated that he wanted to finish the markup Thursday, vote on the bill and send it to the full Senate. The Committee, however, only got through two amendments, one of which was a “manager’s amendment” which just includes technical/clerical revisions.” And Leahy, prodded by several Republican senators and Dianne Feinstein (D-Ca.), agreed to provide the Committee additional time to consider the Act further. The one substantive amendment (which you can read here) further limited venue in patent cases. The amendment was strongly worded stating that in any patent case:
. . . a party shall not manufacture venue by assignment, incorporation, or otherwise to invoke the venue of a specific district court.
This preamble language is very interesting. It has the potential to lead to a big increase in initial motion practice in which defendants argue that whatever entity sues them was created to create venue in the jurisdiction. But this problem is seemingly resolved because in almost all cases plaintiff’s principal place of business or state of incorporation will not create venue, it will almost always be based upon defendant’s footprint and infringing activities. The amendment goes on to specify that venue would be proper:
1. where defendant has a principal place of business or is incorporated;
2. where defendant has committed “substantial” infringing acts and maintains a physical facility constituting a “substantial portion” of defendant’s operations; or
3. where plaintiff resides, if plaintiff is a university or an individual inventor.
The 271 Patent Blog also has a good post on the markup.
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Continue Reading Patent Reform Act: Senators Limit Venue

Peter Zura has an excellent post at his 271 Patent Blog about the latest statistical analysis of patent litigations by Professor Paul Janicke of The University of Houston Law Center — you can read Prof. Janicke’s study here or get a copy of his related PowerPoint slides here. Of particular note to readers of the Blog, the Northern District remains in the top five districts based upon the number of patent filings, with almost 5% of the nation’s patent cases filed here. Zura also notes that the median verdict was $4.2M, which is almost the median cost litigants pay to take a $25M+ patent case to trial ($4.5M according to the 2005 AIPLA survey). Finally, post-eBay permanent injunction are denied 25% of the time, as opposed to 16% pre-eBay.
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Continue Reading Northern District of Illinois is a Top Five Patent District

KSR v. Teleflex, 550 U.S. __ (2007).

A unanimous Supreme Court rolled back the Federal Circuit’s teaching, suggestion or motivation obviousness test in favor of the Court’s prior, and substantially broader, test as set forth in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).  Justice Kennedy delivered the Court’s…

Yesterday, Senators Leahy (D-Vt) and Hatch (R-Utah), and Representatives Berman (D-Calif.) and Smith (R-Texas) announced their new Patent Reform Act.  You can read their press release on the Act here.  The Act is very far reaching and is worth review, in order to prepare for it and/or inject yourself into the debate over it.  Here are the the portions of the Act I found to be the most interesting (the other major changes follow in a list after the jump):

  • Expands reexam procedures and allows third parties to file “petitions for cancellation” with the Patent Trial and Appeal Board asserting issues pursuant to 35 U.S.C. Section 282(a)(2) & (3).  This proceeding will include a discovery mechanism and the patent will not be afforded a presumption of validity.
  • Limits venue to districts in which either party resides or in which defendant committed infringing acts and has a regular place of business. 
  • Gives the Federal Circuit jurisdiction over interlocutory claim construction appeals.

Each of these is a major change.  Petitions for cancellation could develop into another fast-track strategy for plaintiffs, like ITC proceedings for goods shipped internationally.  And the lack of presumption of validity could make the proceedings very popular.  The venue limits, though perhaps not surprising, could have a big impact.  They will likely reduce the number of pre-answer, non-substantive litigation skirmishes that "venue shopping" results in.  And they could be harmful to some communities, like Marshall, Texas, that have developed cottage industries around patent litigation.  Finally, giving the Federal Circuit jurisdiction for interlocutory claim construction appeals may save money by reducing discovery, dispositive briefing and trials that are overruled by claim construction reversals.  But it could also dramatically increase the Federal Circuit’s docket, if it has to see most cases twice, thereby doubling the volume of briefing, instead of once.Continue Reading Congress Turns to Patent Reform

The big news in patent law this week is the Supreme Court oral argument in Microsoft v. AT&T.  Microsoft exports software from the United States to various countries.  The software code alone cannot infringe AT&T’s patents until it is combined with the hardware, which only occurs after the software has left the United States.  So, exporting the software is not an act of infringement.  The issue, therefore, is whether, pursuant to 35 U.S.C. Section 271(f), exporting the software constitutes:

suppl[y] . . . from the United States . . . [of] all or a substantial portion of the components of a patented invention . . . in such manner as to actively induce the combination of such components outside of the United States,” as well as the “suppl[y] . . . from the United States [of] any component of a patented invention that is especially made or especially adapted for use in the invention.

For more on the issues, you can find the briefs at Patently-O. 

The case has received substantial media attention both because it was granted cert and because the case could have effects far beyond the international exportation of software.  The oral arguments were interesting (transcript here) and both the main stream media and blogs are frantically reading the tea leaves.Continue Reading Reading the Tea Leaves: Microsft v. AT&T Oral Arguments