Posts in Courts

Bilski: Eyewitness Report and Expert Analysis

On Monday, November 9, 2009, the United States Supreme Court will hear oral arguments in the much anticipated Bilski case, which could well decide once and for all whether business methods and software remain patentable in the United States. I will be in attendance at the oral argument, which will take place after a lunch recess.

History of Software Patents III: In re Alappat

Several years after Arrhythmia, the Federal Circuit seemingly abandoned the Freeman-Walter-Abele test. Sitting en banc in Alappat the Federal Circuit did not apply the Freeman- Walter-Abele test, rather opting for the mathematical subject matter exception.

CAFC Continues to Struggle with How Title to Subject Inventions Works under Bayh-Dole

Federal funding, typically in the form of research grants, is often used to support university research.  The Bayh-Dole Act also allows universities to retain title to invention rights in such research (referred to as “subject inventions”).  See 35 U.S.C. § 202(c)(2).  What the Federal Circuit has struggled with recently is what does “retain title” mean under Bayh-Dole, and especially where…

The Puzzling Difference Between Schmutz X and Compound 24028 in AstraZeneca

Determining what compounds are obvious under the doctrine of “structural similarity” can be a daunting challenge, even for those of us with a chemistry or pharmaceutical background.  Add the doctrine of “inequitable conduct” to the “structural similarity” brew, and the plot truly thickens.  But there’s enough schizophrenia about the structural differences between one prior art compound called Schmutz X and…

CAFC Rules Patent Applicant’s Own Copyrighted Manuscript Not Publicly Accessible

The recent case of In re Lister is a painful reminder of the potential for “self-inflicted wounds” under the “printed publication” bar of 35 U.S.C. § 102(b) .  Fortunately, the patent applicant in Lister was able to skirt around this “hazard” of his own making. The patent applicant, Dr. Richard Lister, was a Ph.D. clinical psychologist and an avid sportsman.  Dr. Lister had grown…

Tafas Objects to Vacatur in Claims and Continuations Appeal

Late this evening attorneys representing Dr. Triantafyllos Tafas filed a Reply to Motion for Dismissal of Appeal and Request for Remand. In this filing Tafas points out that the decision made by USPTO Director David Kappos to withdraw the claims and continuations rules does moot the appeal, there is a difference between mooting an appeal and vacating an underlying district…

Kappos Rescinds Claims & Continuations Rules, What Next?

By now most are likely aware of, or rapidly becoming aware of, the fact that the United States Patent and Trademark Office has finally done the right thing and has scrapped the claims and continuations rules that have divided the patent community for the last 26 months.  It is impossible not to recognize the new and refreshing tone set by…

USPTO Agrees to Withdraw Claims & Continuations Rules

PRESS RELEASE: GlaxoSmithKline (NYSE: GSK) today announced that it has reached agreement with the United States Patent and Trademark Office (USPTO) to join the USPTO’s motion to dismiss its litigation over Final Regulations published in August 2007 (Triantafyllos Tafas and SmithKline Beecham Corporation, SmithKline Beecham PLC and Glaxo Group Limited vs. David J. Kappos and the United States Patent and…

CAFC Makes it More Difficult to Prove Fraud on USPTO

At the beginning of August 2009 the United States Court of Appeals for the Federal Circuit issued its decision in Exergen Corp. v. Wal-Mart Stores, Inc., et al., Case Nos. 2006-1491, 2007-1180 (Fed. Cir. 2009), a decision that changed the playing field with respect to charges of inequitable conduct in patent litigation. Essentially, the Federal Circuit decided that since inequitable…

CAFC: Method for Calibrating Drug Dosage Is Transformative

Legend has it that Zeus punished Prometheus by binding him to a rock while having his regenerating liver eaten daily by a great eagle. After the case of Prometheus Laboratories, Inc. v. Mayo Collaborative Services, we in the patent world may now be subjected to similar torture in determining when medical/drug dosage calibration methods qualify as statutory subject matter under…

CAFC: A Divisional By Any Other Name Is Not a Divisional

The Federal Circuit, in Amgen Inc. v. F. Hoffman-La Roche Ltd, has made it clear that you had better characterize an application as a “divisional” if you want to the benefit of the “safe harbor” provided by 35 U.S.C § 121. And if you don’t, you’re going face obviousness-type double patenting problems.  The Federal Circuit in Amgen also went on…

CAFC Up for Grabs, Harmonization and the US Economy

Several weeks ago, as summer was winding down and most of us were enjoying some slow times and gearing up for back-to-school, preparing for Labor Day festivities, on vacation or studiously studying fantasy football player projections, Law.com published a very interesting piece titled Slot Opens on Federal Circuit Bench, More Vacancies to Come? The article started out by discussing how…

Entire Market Value Rule Lives As $357 Million Verdict Dies

The appeal in Lucent Technologies, Inc. v. Gateway, Inc. from the Southern District of California was considered in many quarters as the potentially seminal case on how to calculate damages based on a reasonable royalty using the Georgia-Pacific factors, especially the “entire market value” rule (aka factor 13). That Microsoft and others were currently on the hook to Lucent Technologies…

CAFC Says “Patented Invention” Does Not Include Methods

In the 1972 case of Deepsouth Packing Co. v. Laitram Corp, a bare majority of the Supreme Court ruled that exporting three separate boxes of parts that could be assembled abroad into a patented deveining machine in less than an hour was not actionable under 35 U.S.C. § 271(a). In response, Congress in 1984 enacted 35 U.S.C. § 271(f) to…

CAFC Gives Microsoft Word Stay, and I HATE Vista!

By now most probably know that the United States Court of Appeals for the Federal Circuit granted Microsoft a stay of the injunction against Word pending its expedited patent appeal.  The Federal Circuit granted the stay of the permanent injunction on September 3, 2009, but I had a very difficult time finding the ruling.  Being ever suspicious of the popular…