I attended the 14th annual Rocky Mountain IP & Technology Institute at the beginning of June. This panel looked at the PTAB case law and related Federal Circuit decisions over the last year.  Here are the highlights:

  • Institution trends
    • 87% institution rate in fiscal 2013 trending downward and settling in fiscal 2015-16 around two-thirds

Congratulations to Sharon Barner, a Chicagoan and the head of Foley & Lardner’s IP practice. Barner has been nominated to become the next Deputy Director of the Patent & Trademark Office. Based upon reputation and my limited contact with Barner, including among others speaking on a panel at Northwestern with her, the administration made an excellent choice. For more on the nomination, check out Patently-O and Chicago Law.

Continue Reading Chicagoan to Become Deputy Director of the Patent Office

The legal blogosphere is full of analysis and commentary regarding the Patent Reform Act, here is more of the best:
FileWrapper;
Patent Baristas (surveying industry responses to the Act);
Patent Docs (discussing the witness list for Patent Reform Act hearings);
Patently-O (damages provisions analysis), and here and here;
Washington State Patent Law Blog.
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.

Continue Reading Patent News: Patent Reform & Bilski

Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, Slip Op. (N.D. Ill. Jan. 9, 2009) (Cox, Mag. J.).*
Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony following the reasoning of a previous opinion in a related case about the same expert — click here to read about that opinion in the Blog’s archives. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.
* Click here for more on this case and related cases in the Blog’s archives. Also, note that the Court continues the progressive use of footnote citation.

Continue Reading Patent Expert Allowed on Limited Subjects

Blawg Review #176 is hosted by Legal Literacy — click here for the Review — on the United Nations’ International Literacy Day. Literacy is worthy of far more than a single day of focus, and it turns out that the United Nations agrees. Apparently, we are halfway through the Literacy Decade (running from 2003 until 2012).
Legal Literacy’s Review is full of great content, including some interesting IP-related topics. Thomas Colson at Securing Innovations (another LexBlog site) has a very interesting post (click here) on a new series of commercials by the PTO and Invent Now, among others, aimed at encouraging 8 – 11 year old boys and girls to invent. Colson is concerned that the commercials feed gender stereotypes and links to A Girl Named Pants his series of children’s books that motivate young girls to overcome gender stereotypes.
I can see the stereotype concerns to a degree, but the ads that I found were pretty powerful and funny. Click here for the LA Times article Colson links to containing a video of one add — I would love to add a suction bike to my bike collection. And to the extent that there is stereotyping, I think it is far outweighed by the potential good of the program. Having said that, I am impressed by Colson’s books and vision. When my daughter is old enough, I will be reading to her about the adventures of Pants.

Continue Reading Blawg Review #176 — Fighting for Literacy

Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. May 6, 2008) (Moran, Sen. J.).*
After a two-day hearing and two rounds of briefing, Judge Moran held that defendants (collectively “eSpeed”) had not met their burden of proving that plaintiff Trading Technologies (“TT”) engaged in inequitable conduct before the Patent & Trademark Office (“PTO”). The Court held that one of the TT patent’s inventors engaged in commercial use between the priority dates for the patent’s provisional and parent applications. But the Court held that TT was not required to disclose the commercial use to the PTO because it was not material to patentability. First, TT sought priority from its provisional application in good faith and had a reasonable belief that priority from the provisional was warranted. The reasonableness of the belief was born out when both the jury and the Court determined that the patent could claim priority from the provisional application. Because the commercial use happened after the patent’s critical date (based upon the provisional application), it was not material.**
Additionally, TT did not commit inequitable conduct when it responded to the Examiner’s request for, among other things, “any use of the claimed invention” with a series of brochures and presentations that described the software’s features, but without identifying the inventor’s commercial use. TT argued that the Examiner was seeking an explanation of all of the features of TT’s software because it had identified anticipatory prior art from TT’s website in a prior Office Action. The Court held that this was a reasonable reading of the Examiner’s request because the Examiner accepted TT’s response which did not address whether the software had been in use. Had the Examiner wanted an answer to that question, he could have asked again, instead of allowing the patent to issue.
Many readers will be wondering what is next. The Court has a few more pending motions, and a motion for reconsideration would not be surprising in this case. But for the most part, I suspect that this case is now on a fast track to the Federal Circuit, where the Court predicted it was going months ago. As always, I will keep you updated as the case develops, both in the Northern District and at the Federal Circuit.
* Click here to read much more about this case in the Blog’s archives and click here for this opinion.
** Click here and here for more on the determination of the appropriate priority date in the Blog’s archives.

Continue Reading Trading Technologies v. eSpeed: No Inequitable Conduct

Se-Kure Controls, Inc. v. Vanguard Prods. Group Inc., No. 02 C 3767, 2008 WL 169054 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.).*
Judge Cox denied plaintiff’s motion to exclude defendants’ patent law expert witness, but placed limits on the expert’s testimony. The Court held that a patent expert’s testimony could aid the Court’s understanding of Patent Office procedures and of what would have been material to a reasonable patent examiner. But the patent law expert was not allowed to testify as to any legal conclusions. And the testimony would be given outside the jury’s presence to avoid any prejudice. Because the Court decides inequitable conduct, there was no need for the jury to hear the expert’s testimony.
* Click here for more on this case and related cases in the Blog’s archives. Also, note that this opinion also uses footnote citation.

Continue Reading Patent Law Expert Allowed to Opine re Patent Office

Aharonian v. Gutierrez, No. 07-1224, 2007 WL 9282064 (D.D.C.) (Robertson, J.).
The District Court for the District of Columbia (“D.D.C.”) recently dismissed a suit seeking the dismissal of the PTO’s Deputy Director Margaret Peterlin for lack of sufficient experience. The D.D.C. held that the Act establishing Ms. Peterlin’s position did not create a private cause of action for removal and the Administrative Procedure Act did not allow for review of the appointment.
There is little I can say about the decision that has not already been said. For more check out:
271 Patent Blog
I/P Updates
Maryland IP Blog
Patently-O
But I can add a human element to the issue. I know Ms. Peterlin. I have met her in social settings (she and my wife were law school classmates). My limited interactions with her made clear to me that while she may not have the IP-specific experience that might be ideal, Ms. Peterlin is as capable as anyone without that background to learn the law and do a good job.

Continue Reading Court Will Not Dismiss PTO’s Deputy Director

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.
The balance of hardships weighed in GSK’s favor. The PTO’s losses were sunk costs — updating computer systems and training staff. But if the PTO wins the suit and later implements the continuation rules, the new computer systems and the employee training will still be valuable. On the other hand, the entry of the continuations rules will materially limit GSK’s rights in its 2,000 pending patent applications.
Finally, the public interest is in maintaining the status quo, rather than allowing the implementation of a new set of rules which could be reversed by the Court in a matter of months.
For more on the preliminary injunction and thoughts about whether the PTO will file an emergency appeal with the Federal Circuit, check out:
Patently-O
FileWrapper
271 Patent Blog
WSJ Law Blog
Patent Practice Center Patent Blog
I will continue to update this post with coverage of the injunction and any appeals throughout the day.

Continue Reading Continuation Rules Would Cause GSK Irreparable Harm

This morning, the Eastern District of Virginia held a hearing on SmithKline’s motion for a preliminary injunction against the PTO to prevent the new continuation rules from becoming effective tomorrow, November 1st — click here for the Blog’s coverage of the case this morning. Gene Quinn and John White of the PLI Patent Practice Center Blog, who attended the hearing, are reporting that the Court preliminarily enjoined the PTO from making the new continuation rules effective. Of course, the injunction is only preliminary so there is no way to tell what the ultimate result will be. But everyone that was busy trying to file one last continuation today and worried about whether the PTO’s e-filing system would crash under the weight of all of the last minute filings, can put down their pens and rest easy. The deadline may still come, but it is no longer today.

Continue Reading PTO Preliminarily Enjoined From Using New Continuation Rules