View James Drake's profile on LinkedIn

Friday, November 14, 2008

The Dog Ate My Infringement Opinion

In Honeywell v. Universal Avionics, the District Court of Delaware has further expounded on the In re Seagate standard (which eliminated the affirmative duty of care by stating that no affirmative obligation to obtain opinion of counsel exists) by stating that reklessness can be refuted if a defendant unrefutedly states that an opinion of counsel was sought and given, but that no copies exist. Universal didn't even bother to get the outside counsel who allegedly provided that opinion on the stand, instead relying on the testimony of a mid-level commercial manager. Let the "my dog ate my infirngement opinion" defense begin!

Thursday, October 30, 2008

Collection of First Impressions on the In Re Bilski decision

In re Bilski was decided today. Like many such landmark cases, it will probably take a while for the lower courts to parse the decision and apply it to specific cases. But for now, it looks as though business method patents and software patents are dead in the United States. Below are initial reactions from some of the major IP bloggers:

Patently-O - The Federal Circuit has affirmed the PTO's Board of Patent Appeals (BPAI) finding that Bilski's claimed invention (a method of hedging risks in commodities trading) does not satisfy the patentable subject matter requirements of 35 U.S.C. § 101. In doing so, the nine-member majority opinion (penned by Chief Judge Michel) spelled the "machine-or-transformation" test for patentability of a claimed process.

Peter Zura's 271 Patent Blog - State Street still good law, but methods must be implemented on a machine.

PLI Patent Blog - Federal Circuit Decides Software No Longer Patentable

WSJ Law Blog
- Speculates as to whether this will be granted a writ of certiorari by the Supreme Court.

Wednesday, October 22, 2008

PTO Allowance Rates

This graphic says it all. I simply cannot believe that applications have suddenly become so poor that this kind of drop can be explained merely by poor prosecution, which seems to be the PTO's consistent position on the subject:

Tuesday, October 21, 2008

Design Patent Resurgence

With the new life breathed into design patents by the Egyptian Goddess ruling (wherein the judges agree that the 1871 Gorham "ordinary observer" test is the "sole test for determining whether a design patent has been infringed"), now is a good time to remind ourselves of famous design patents from the past. Many people are unaware that our own Statue of Liberty was granted a design patent in 1879!

Monday, October 20, 2008

Four Corners test for Anticipation Clarified

The CAFC in Net MoneyIn v. Verisign has established a clearer standard for determining novelty under Section 102. Anticipation is not created simply by finding all elements of a claimed invention in a prior art document. Rather, it is necessary for the finder of fact (including Examiners?) to show that the reference teaches "all of the limitations arranged or combined in the same way as recited in the claim." As explained by the court:

Section 102 embodies the concept of novelty—if a device or process has been previously invented (and disclosed to the public), then it is not new, and therefore the claimed invention is "anticipated" by the prior invention. . . . Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements "arranged as in the claim."

Patent Term Extensions Become Meaningful?

Great post from Dennis Crouch at Patently-O on a recent decision by the District Court of Washington D.C. which would mandate calculating patent term extensions based on both a broad "guarantee of no more than 3-year application pendency" and a more narrow focus on the timeliness of individual PTO actions. Previously, these calculations were made separately and then the longer of the two was used, in order to avoid double counting. The court has ruled that this is impermissible as long as the same delay is not counted twice in contravention of the double counting prohibition. The case awaits appeal to the CAFC.

Monday, October 13, 2008

President Bush Establishes IP Czar Position

As reported over at CNET, the Prioritizing Resources and Organization for Intellectual Property Act has been signed into law by the President, adding another cabinet-level position for the next President to choose. The position's full job description is not fully fleshed out, but, among other aspects, Gizmodo reports that the new IP Czar will:

The cabinet position will give a single point of authority to a job now handled by a scattered handful of different agencies and committees. It also calls for increased strength to prosecute and punish IP offenders. A provision that hoisted the responsibility for civil (in addition to criminal) prosecutions for IP cases on the Justice Dept. had to be thrown out first, as it would have effectively gave the already over-burdened folks at the DoJ the added enjoyment of being the entertainment companies' civil trial lawyers.

Trolls Return to Europe

As with other endangered species, it appears that even imaginary creatures are returning to areas once abandoned by them.

In this case, patent trolls have come to Germany. From the October 2008 edition of IP Law & Business comes this article reporting that IPCom GmbH & Co., a patent holding company in Pullach, Germany, is suing Nokia for damages that would total out at 12 billion euros for infringement of its patents on mobile telecom technology. As the article points out:

Sabine Rojahn, a partner in Taylor Wessing's Munich office, says German law tends to work very much in favor of the patent owner. IPCom has an advantage in bringing the suit in Mannheim's regional court, which specializes in patent infringement cases, Rojahn notes. The Mannheim court rules on whether a patent has been infringed before the federal patent court in Munich decides on validity. In addition to seeking damages, patent owners have an automatic right to an injunction if infringement is found-before the federal court has ruled on validity, says Rojahn. Also, "if a patent troll wins damages, the infringer can be forced to pay back its gross revenues for a product as damages," she says, "and not just its net profit.
Although any decision will apply only to Germany, it is being closely watched as a potential harbinger of pan-European decisions that may follow.

Tuesday, September 30, 2008

Patent or Not a Patent?

Mental Floss has a great quiz set up to guess whether a described product is a rejected patent or a SkyMall product. Post your scores!

Monday, September 29, 2008

Patenting Patent Mapping?

Interesting note over on Slashdot regarding a recently published IBM patent application for "Methodologies and Analytics Tools for Identifying White Space Opportunities in a Given Industry". Basically it appears to be a method for carrying out the typical in-house patent portfolio management task of patent mapping, i.e., finding areas where no patents exist that may be exploited as keystone components for a particular industry. Although the author expresses the view that this seems counter to IBM's stated goal of increasing patent quality, it may simply be an expression of Big Blue's desire to become a more business services-oriented business.

Thursday, September 18, 2008

Patent Quality Doesn't Start at the PTO?

Interesting study done by Patently-O, showing that, while the number of citations in issued patents has dramatically increased over the past 35 years, the number of citations made by examiners has remained relatively static. What does that mean? Hard to say, but it would seem to indicate that shifting more of the searching onus onto inventors and their attorneys does not necessarily correlate with increased patent quality, which is the avowed goal of many intiatives currently supported by the PTO. Also noted is that the ratio of patent prior art to non-patent prior art has remained relatively constant even as the overall number of citations has increased.

Wednesday, September 17, 2008

Patent Exhaustion a Defense, Not a Cause of Action

Patent Prospector has a good summary of the recent ExcelStor v. Papst decision by the CAFC. Excelstor licensed technology from Papst and alleged that Papst failed to notify it of a concurrent license of the technology with another licensee. Rather than file a complaint against Papst for fraud or contract breach, Excelstor alleged as a cause of action patent exhaustion. The argument was that Papst had already fully exhausted its rights in the patented technology by previously licensing it, so the CAFC had jurisdiction of the appeal. The CAFC affirmed the District Court's decision that the federal courts lacked subject matter jurisdiction, holding:

ExcelStor's claims fail to meet either prong of the Christianson test. First, patent law does not create the cause of action in this case. In arguing that it does, ExcelStor's appeal fundamentally misunderstands the nature of the patent exhaustion doctrine. As the district court held, patent exhaustion is a defense to patent infringement, not a cause of action.

Friday, September 12, 2008

"Paralyzing uncertainty" not enough for Declaratory Judgment Action

Great summary over at Patent Baristas of the recent CAFC case, Prasco v. Medicis Pharmaceutical (07-1524). The court found that, after Prasco sent samples of its new product to Medicis, along with a demand for a covenant not to sue, Medicis's silence did not create the necessary set of circumstances articulated by the Supreme Court under Medimmune, namely, there was no "substantial controversy, between the parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment." By not responding to Prasco, Medicis did not create a case or controversy, despite Prasco's contention that Medicis's silence created "paralyzing uncertainty" from fear that Medicis will bring an infringement suit against it at some future date.

Study Says Intellectual Property System Should Die

This article over at TorrentFreak summarizes a recent study by "The Innovation Partnership", which, in turn, appears to operate under the auspices of the Center for Intellectual Property Policy at McGill University in Canada. The article concludes:

A recently released study has claims that the current ‘Intellectual Property’ situation in the world is not working well. Driven by a fear of losing out, and bolstered by an attitude that profit is the aim of IP, progress is hampered. Not only by the entertainment industry, also in biotechnology where medicines are sometimes restricted or withheld, causing deaths.

Calling this report a "study" attempts to convey a level of scientific inquiry that is unwarranted. As stated in the beginning of the report:

An international and interdisciplinary research team has convened for the last seven
years in an attempt to better understand the mechanisms of intellectual property in biotechnology innovation, and to suggest improvements to the role of intellectual property in that system. This report represents the research team’s core finding and recommendations.

This betrays a complete lack of understanding regarding the meaning of the term "research". What this report based itself on was the conclusions of a group of self-appointed experts from the International Export Group who sat around reading about and thinking about intellectual property fro six years, and then making up some recommendations. You or I could do the same thing, but it is not research and it is certainly not the basis for data-driven decision making.