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Thursday, September 16, 2010

How to Read a Patent

I think that this is a great primer for the general public.  Focuses you in on the truly important part of the patent - the claims!  From the post:

Step 3: Skip the abstract

In other fields, the abstract is your best friend: a short, direct summary of the major points of a paper.  Patent abstracts are at best meandering and hard to read, and at worst deliberately misleading (so you think you’re in the clear, do whatever you planned to do, and then get sued anyway because the abstract has no bearing on the enforceability of the patent).

Thursday, September 2, 2010

Two IP Trolls Have A Dialogue

“There’s four of ‘em, see?  Like the Horsemen of the Apocalypse, right?  Patent, Copyright, Trademark and Trade Secret.  And they’re intangible.  Can’t touch ‘em.  Can’t even tell where one ends and the other begins.  Or where their boundaries are sometimes.  And that’s a problem, ‘cause if you cross into their turf, they’ll end you, man.”

“You mean like that RIAA thing?”

“Damn straight.  MPAA too.  They have lots of freelancers workin’ for ‘em.  Those two run with Copyright’s crew.  Now Patent and Trademark, they got themselves a headquarters that both of ‘em use.  But Copyright has his own place.  Doesn’t bother with Examiners, either.  Just registers everything that comes in and catalogs it.  I think his underboss National Archive keeps it all somewhere.  And he’ll come after you.  Doesn’t care about what’s in it.  He just eyeballs what you’re doin’ and says it’s a copy o’ somethin’ in his register and shuts you down.  And that’s for every single copy there is.  Adds up and pretty soon you’re payin’ him more than the original was worth.”

“Come on, now, that ain’t possible.  How you gonna know if you copied somethin’ or just came close?”

“He’s got all the judges in his pocket, see?  They look at it and say “Eh, it’s substantially similar, close enough.”  And then they drop the punishment.”

“Don’t start me on trade secret, neither.  That’s a scary spook right there.  Never tells nobody nothin’.  But if you try tellin’ somebody else after you told him you wouldn’t, he’ll cut you.  Goes state by state, too, so’s you can’t never know how he’s gonne come at ya.”

“Sounds like you never see him comin’!  Best bet is probably to zip your lip and not push it.  But what about the major syndicates?  Don’t they got turf boundaries and whatnot?  They’re too big to jus’ go takin’ out guys right and left with no reason right?”

“Now the two big dogs you’re talkin’ about are Patent and Trademark.  Yeah, Patent posts everything like an OG (Official Gazette) every Tuesday.  He expects you to read it all and know it too.  You mess up and cross one of the “claims” he sets out and he’ll get you for triple the normal penalty.  In his younger days he used to just think stuff up.  “Flash of Genius” he called it, but he’s tightened up his standards, ‘specially after that big Bilski fight.  He works both sides of the street, too.  He can’t buy a judge he’ll go to the ITC and stonewall foreign gangs from comin’ in, even if they didn’t cross the claim here.  He’s got a syndicate, worldwide, the PCT.  He still plays by his own rules, though.  Gives everybody a one year grace period to get “protection”.  And once you are in with the PCT, they all gotta protect you, long as you pay “issue fees” and “maintenance fees”.  Pretty standard protection racket, but they’re mostly civilized and you gotta pretty good idea if you cross the line with him.”

“I heard about that Trademark, man.  He’s tryin’ to expand his territory, goin’ after sounds, colors, maybe even smells!”

“Yeah, he kinda lost it after Madrid.  Started thinkin’ every slogan, stylized initial or anything else that showed where somethin’ came from was his.  Even started movin’ in on Patent’s little cousin, Design.  He’s not as predictable as Patent, either.  He even thinks that somebody else would mistake what you’re doin’ for one of his registered “marks” (Calls it “likelihood of confusion”), that’s all it takes.  He comes after you hard.  Makes you destroy everything with your “mark” on it and start all over.  Got an underboss named trade dress who’s really crazy.  Doesn’t register “marks” or anythin’.  ‘Long as it’s “instantaneously identifiable in the mind of the purchaser”, he’ll come lookin’ for ya.”

“Sounds like I need to be real careful ‘bout crossin’ any of those bosses.  I’m gonna see one o’ them IP private eyes to keep me straight.  Right now, I gotta go get my girl a new orchid.  Guy behind the florist says they’re unique hybrids – no one else has anything like ‘em.”

“Hey wait, I didn’t tell you about Patent’s crazy cousin, Plant!”

Wednesday, September 1, 2010

Patent Marking - Next Target for Trolls?

Yesterday's decision by the CAFC effectively means that the penalty for false marking has evolved from $500 per product to $500 per individual piece!  Will be curious to see whether the Supreme Court takes this one on.  From the Wall Street Journal's Law Blog:

The ruling could pave the way for hundreds of similar suits against major companies to move forward. A separate ruling by the Federal Circuit in December raised the stakes in such cases, potentially exposing product makers to huge liabilities.

Thursday, August 5, 2010

Prosecution History Estoppel Not So Clear

The CAFC's decision in Intervet v. Merial provides a useful discussion of prosecution history estoppel in overturning the District Court decision that Such an estoppel precluded arguing that an equivalent found in the patent examples should be within the scope of the claims.  In particular, the Court stated:

Whether prosecution history estoppel applies to a particular argument, and thus whether the doctrine of equivalents is available for a particular claim limitation, is a question of law. Bai v. L & L Wings, Inc., 160 F.3d 1350, 1354 (Fed. Cir. 1998); Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc). Where an amendment narrows the scope of the claims, and that amendment is adopted for a substantial reason related to patentability, the amendment gives rise to a presumption of surrender for all equivalents that reside in "the territory between the original claim and the amended claim." Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 740 (2002) (Festo VIII). This presumption can be overcome by showing that "at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent." Id. at 741. One way to make this showing is to demonstrate that "the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1368 (Fed. Cir. 2003) (en banc) (Festo IX). Although there is no hard-and-fast test for what is and what is not a tangential relation, it is clear that an amendment made to avoid prior art that contains the equivalent in question is not tangential. See Pioneer Magnetics, Inc. v. Micro Linear Corp., 330 F.3d 1352, 1357 (Fed. Cir. 2003).
The applicability of prosecution history estoppel does not completely bar the benefit of the doctrine of equivalents from all litigation related to the amended claim. See Festo VIII, 535 U.S. at 73738 ("There is no reason why a narrowing amendment should be deemed to relinquish equivalents . . . beyond a fair interpretation of what was surrendered.") The scope of the estoppel must fit the nature of the narrowing amendment. A district court must look to the specifics of the amendment and the rejection that provoked the amendment to determine whether estoppel precludes the particular doctrine of equivalents argument being made.
      Bottom line is that prosecution history estoppel may not be the absolute bar that it has been thought to be since Festo VIII.