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:
an omitted reference is material only if the claim or patent would not have issued, but for omission of the reference;
specific intent to deceive must be shown by clear and convincing evidence;
courts can no longer employ a “sliding scale” of intent and materiality, both must be showng by clear and convincing evidence; and
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:
Peter Zura’s 271 Patent Blog “rejoices” that the heightened standards give prosecutors added protection;
Life Sciences Law;
Orange Book Blog;
Patently-O ;
PharmaPatents; and
PLI Blog.

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

Next week, June 21-23, Chicago plays host to IAM’s IP Business Congress 2009. IAM promises that attendees will include “Chief IP Officers from Fortune 500 companies, heads of IP at other major companies, global IP thought leaders and senior policy makers.” And the conference also will include an impressive list of bloggers, including Peter Zura, the anonymous editor of Blawg Review and me, using a generously offered press pass. The faculty for the event is very impressive, including the following confirmed speakers:
Marshall Phelps, Corporate VP for IP Policy and Strategy, Microsoft
Ruud Peters, CEO, Philips IP & Standards
Carl Horton, Chief IP Counsel, GE
Scott Frank, President and CEO, AT&T Intellectual Property
Todd Dickinson, Executive Director, AIPLA
Ciarán McGinley, Head of the Controlling Office, European Patent Office
Beatrix de Russé, Executive VP of IP and Licensing, Thomson
Keith Bergelt, CEO, Open Invention Network
Sherry Knowles, Senior VP and Chief IP Counsel, GlaxoSmithKline
Marcella Watkins, Managing Counsel, IP, Shell Oil Company
Don Merino, General Manager Acquisitions, Intellectual Ventures
Damon Matteo, Chief IP Officer and VP IP, Palo Alto Research Center
For more information on the event and to register, click here. You can still register and if you register online using the code WC10, you will get a reduced rate of $1,350, 10% off of the full $1,500 rate.
Finally, whether or not you can make it to the conference, if you are in Chicago Tuesday night, June 23, come to Meet the Bloggers VI at the world famous Billy Goat Tavern. It will be a great chance to meet law bloggers from Chicago and around the world, and to discuss insights gained at the conference. I hope to see you at both the conference and the Billy Goat.

Continue Reading IP Business Congress Comes to Chicago

The Administrative Office of the U.S. Courts has issued its 2008 annually report* analyzing the federal court case load for fiscal year 2008. The Northern District of Illinois remains an important IP court, ranking fourth in IP case filings for 2008, with 385 cases filed, behind the Central District of California, the Southern District of New York and the Northern District of California.
Nationwide, patent and trademark case filings remained steady with only slight increases, but copyright case filings fell over 25%. One other interesting note, almost four percent of patent cases terminated in 2008 went through a trial. That is a relatively large amount of trials in the federal courts where an average of 1% of cases are tried. The 3% difference is not enough to show a post-eBay trend of increasing trials, but it could be the beginning of such a trend.
For more analysis of the report check out Peter Zura’s 271 Patent Blog and Patently-O.
* Click here to read the report.

Continue Reading Northern District of Illinois Continues as a Top IP Court

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).

Continue Reading Patent Reform Act of 2009

Here are a few stories and announcements from the Chicago IP world:
Hinshaw & Culbertson LLP has launched a new blog: Practical Ediscovery. The blog is written by a team of the firm’s attorney and focuses on practical considerations and approaches for handling issues arising with the production of electronically stored information. Check out Evan Brown’s first post here.
Anne Reed has a post that every patent litigator should read at Deliberation — click here to read it. Reed looked at the issue of ho and hen to introduce technical jargon to juries. Reed makes to important points: 1) trust juror’ intelligence, people like to learn; and 2) despite that, do not teach the jargon both unless and until it is relevant to the jury.
There is an interesting new paper out arguing for a revised venue statute by Sidney Rosenzweig, a visiting fellow at the Progress and Freedom Foundation. Rosenzweig argues for the following rewording of the venue statute:*
Notwithstanding subsection 1391(c) of this title, any civil action for patent infringement may be brought against a corporation only in a judicial district:
(1) where the defendant has its principal place of business or where the defendant is incorporated;
(2) where the defendant has committed a substantial portion of the acts of infringement and has a regular and established physical facility that it controls;
(3) where any defendant has committed a substantial portion of the acts of infringement and has a regular and established physical facility that it controls, if there is no other district in which the action may be brought under subsections (1) or (2); or
(4) where any defendant has its principal place of business, where any defendant is incorporated, where any defendant may be found, or where any defendant has committed acts of infringement, if there is no other district in which the action may be brought under subsections (1), (2) or (3).
* Click here to read the report. And a hat tip to Peter Zura for identifying the paper.

Continue Reading IP 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:
Patently-O – Technorati Rank 21,202
Patent Baristas – Technorati Rank 61,134
IPWatchdog – Technorati Rank 80,245
Against Monopoly – Technorati Rank 80,245
Patently Silly – Technorati Rank 90,082
Chicago IP Litigation Blog – Technorati Rank 117,073
PHOSITA – Technorati Rank 101,726
Spicy IP – Technorati Rank 129,347
PLI Patent Practice Center – Technorati Rank 132,753
Duncan Bucknell Company’s IP Think Tank – Technorati Rank 136,348
Patent Prospector – Technorati Rank 152,448
Securing Innovation – Technorati Rank 162,007
Peter Zura’s 271 Patent Blog – Technorati Rank 163,794
The Invent Blog- Technorati Rank 167,214
Promote the Progress – Technorati Rank 198,166
I/P Updates- Technorati Rank 213,371
IP NewsFlash- Technorati Rank 221,777
Orange Book Blog – Technorati Rank 221,777
The IP Factor – Technorati Rank 250,588
Philip Brook’s Patent Infringement Updates- Technorati Rank 273,434
Patent Docs – Technorati Rank 300,413
Antiticpate This! – Technorati Rank 351,677
Patent Fools (now operated by – Technorati Rank 351,092
Patentably Defined – Technorati Rank 614,978
Steve van Dulke’s Patent Blog – Technorati Rank 676,101
IP Spotlight – Technorati Rank 752,199

Continue Reading Most Read Patent Blogs

Here are several Northern District and IP news stories that did not warrant separate posts:
The Northern District’s new Rockford courthouse is being named for retired Judge Roszkowski. Judge Roszkowski was the first federal judge permanently seated in Rockford and served for over twenty years.
Blawg Review #198 is up at the East Central Illinois Criminal Law & DUI Blog (click here to read it). As you might expect based upon the blog’s subject matter, there is not a lot of IP content. But there are several Illinois-specific stories that Blog readers may find interesting. For example, My Law Life warns that an Illinois statute makes it illegal to jog (or walk) on Illinois roadways where sidewalks are available — click here to read the post.
Several blogs are reporting that patent reform may be back on in Congress this year: Patently-O; and 271 Patent Blog.

Continue Reading Northern District IP News

Yesterday, President Obama announced that he was appointing Senator Judd Gregg (R-N.H.) to become the next Secretary of Commerce, a significant position in the intellectual property world. As Secretary of Commerce, Gregg will oversee the PTO and have a strong voice in any patent reform that might occur while he is Secretary. The blogosphere and mainstream media are slowly providing background regarding Gregg:*
Peter Zura’s 271 Patent Blog (highlighting this Congressional Quarterly article which points out that Gregg once voted to abolish the Department of Commerce).
Washington Post’s 44 Blog.
* I will update this post with more links if I see anything especially valuable.

Continue Reading Senator Judd Gregg (R-NH) Nominated Commerce Secretary

The Bilski analyzers are moving away from the opinion itself, and toward the practical impacts of the decision and the unanswered questions it left, as opinions always do. Here are several of the best:
271 Patent Blog (asking whether a method for swinging on a swing meets the Bilski standard);
Maryland IP Law;
Patently-O (and here and here and here and here); and
The Prior Art.

Continue Reading More Bilski News

In re Bilski, __ F.3d __ (Fed. Cir. 2008) (en banc).*
Chief Judge Michel, writing for a nine judge majority, affirmed the Board of Patent Appeals and Interferences’ finding that Bilski’s invention — a commodities trading method for hedging risks — did not meet the 35 U.S.C. § 101 patentable subject matter requirement. The Federal Circuit overturned State Street’s “useful, concrete, and tangible result” test as insufficient to determine patentability. The Federal Circuit held that the Supreme Court’s “machine-or-transformation” test was the only test for determining patentability:
A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.
I found Judge Dyk’s concurrence tracing the history of the “machine-or-transformation” test back to the Patent Act of 1793 especially interesting:
In fact, the unpatentability of processes not involving manufactures, machines, or compositions of matter has been firmly embedded in the statute since the time of the Patent Act of 1793, ch. 11, 1 Stat. 318 (1793).
As with any major appellate decision, we will need eighteen to twenty four months of district court and Federal Circuit decisions to flesh out and fully understand Bilski’s implications. While we argue those cases and await the decisions, there will be plenty of law review and blog analysis. Here are some of the first (I will update with additional posts as they come):**
* 271 Patent Blog (glad to see Peter Zura back in the blogosphere);
* IP ADR Blog;
* Likelihood of Confusion;
* Patent Baristas;
* Patently-O (with Crouch’s usual, in-depth analysis);
* The University of Chicago Law Faculty Blog (Randy Picker has an exceptionally detailed take on the opinion); and
* WSJ Law Blog (saying experts are torn as to whether Bilski will make it to the Supreme Court).
* Click here for the opinion.
** I have updated the list of Bilski blog posts with some new ones.

Continue Reading Bilski: Some Business Method & Software Patents Survive