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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

Farag v. Defense Threat Reduction Agency, No. 07 C 1688, 2007 WL 2404625 (N.D. Ill. Aug. 15, 2007) (Hart, J.).
Judge Hart dismissed for lack of subject matter jurisdiction plaintiff’s suit seeking that the Court order the PTO to place a secrecy order on plaintiff’s patent application for a process of separating an isotope from uranium for use in nuclear applications. Plaintiff’s application is about to be published and plaintiff believes that publication of the application would allow use of his process for illicit purposes that might threaten national security. The Invention Secrecy Act provides a patent applicant the right to appeal the issuance of a secrecy order, but not the right to appeal the denial of a secrecy order. See 35 U.S.C. Section 181; 35 C.F.R. Section 5.4. The Invention Secrecy Act also permits a suit for compensatory damages, but only based on damage created by a secrecy order, not the absence of one. Finally, the Court noted that plaintiff might have a claim pursuant to the Administrative Procedure Act (the “APA”), but the APA requires that the plaintiff by harmed by the agency (PTO) action. The Court noted that potential threat to national security based upon a review of plaintiff’s patent application was too remote and general to create standing pursuant to the APA. As a result, the Court dismissed plaintiff’s complaint. It is also interesting to note, the Court instructed plaintiff to file any appeal with the Seventh Circuit, instead of the Federal Circuit despite the fact that the case is focused on PTO procedure.
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Continue Reading Court Cannot Force PTO to Issue a Secrecy Order

I received an email from the PTO this week asking that I post about a webcast the PTO is doing this Thursday, August 23 from 12:00 pm – 2:00 pm CT. The webcast will explain the new rules (just published today) that become effective November 1st. You can register for the webcast here. The PTO’s press release is reprinted below:
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Continue Reading PTO Webcast re New Claims and Continuation Rules

Intel’s General Counsel, Bruce Sewell, had an interesting commentary piece in yesterday’s Wall Street Journal: Patent Nonsense (because it is from the Op/Ed pages, I do not think a subscription is required). On the day that the Senate Judiciary Committee renewed its consideration of the Patent Reform Act of 2007, Sewell makes many of the arguments that led to the changes proposed by the Act. Sewell argues that the number of patent law suits is increasing, damages awards are rising (he states that there have been at least four settlements or judgments in excess of $500M in the last five years) and the more and more “questionable, loosely defined patents” are being issued. Sewell’s remedies to these problems include:
limiting damages to the patented component not the entire product (i.e., a patentee’s damages should be based on its patented engine component, not the entire car);
strong post-grant PTO review;
strengthening of venue requirements so that suits must be brought in a forum with an actual connection to the alleged infringement; and
requiring a showing of actual bad faith for a willfulness finding.
Sewell also argues that the allegedly increasing number of “questionable, loosely defined patents” chills research and development in technology areas covered by the patents. But I am not sure this argument is correct. In my experience, a patentee, assignee or exclusive licensee with a broad patent tends to assert its patent when the technology is developed and a large chunk of the research investments have already been made. That is the point when the alleged infringers have developed a market and, therefore, potential damages. So, while I am all in favor of careful examination by the PTO (as are most people involved in this debate, I think), I am not sure that the problem with the broad, questionable patents is that they chill research and development investment.
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Continue Reading The Case for Patent Reform

Murata Mfg. , Ltd. v. Bel Fuse, Inc., No. 03 C 2934, 2007 WL 781252 (N.D. Ill. Mar. 8, 2007) (Cole, Mag. J.).

Judge Cole held that plaintiff’s inequitable conduct defense did not waive its privilege and, therefore, denied defendant’s motion to compel privileged documents.  Defendant asserted that plaintiff engaged in inequitable conduct by failing to disclose an allegedly material piece of prior art during prosecution of the patent-in-suit.  Defendant’s defense was essentially that their counsel and inventors fully understood their disclosure obligations and chose not to disclose the alleged prior art because  it was not material or even similar to the patent-in-suit.  Defendant argued that plaintiff waived its privilege when its 30(b)(6) deponent testified that:  1) he had been told that plaintiff’s in-house counsel instructed its prosecuting attorneys to disclose all relevant prior art to the PTO; and 2) that he was confident that the inventors understood their duties of disclosure based upon their past experience as patentees and the fact that they had each had several conversations with plaintiff’s prosecution counsel.  But the Court held that disclosure of the occurrence of these conversations, without disclosing any of the contents did not act as waiver.   The Court noted that if disclosure of the existence of these conversations without elaboration constituted wavier, then the exchange of privilege logs would also constitute waiver.Continue Reading Inequitable Conduct Defense Does Not Waive Privilege

Big Dipper, Inc. v. Wells’ Dairy, Inc., No. 05 C 5395, 2006 WL 2711843 (N.D. Ill. Sept. 20, 2006) (Manning, J.).

In this trademark action, Judge Manning denied defendant’s Rule 11 motion without considering it on the merits because defendant failed to comply with Rule 11’s "safe harbor period."  Rule 11(c) requires that before filing a Rule 11 motion, the party serve the motion on its opponent and give the opponent at least 21 days to correct the issues raised in the motion.  Defendant’s Rule 11 motion was also defective because defendant combined its Rule 11 motion with its response to plaintiff’s motion to strike. As the Court noted, a Rule 11 motion must be filed as a separate, standalone motion.  Continue Reading Rule 11: You Must Follow the Procedures