Posts in IP News

Unfortunately, the ACLU appears to have found an “ally” in Judge Sweet, who is the district court judge handling the AMP case. In my view, Judge Sweet has either been duped by the ACLU, or is more likely complicit in accepting the ACLU’s warped view of what these patents cover. That became evident when Judge Sweet denied the motions by Myriad and the USPTO to dismiss this case for lack of subject matter jurisdiction, lack of personal jurisdiction, and failure to state a claim upon which relief can be granted.

When embarking on a software development project it is critical to understand that in order to maximize the chance of obtaining a patent you need to approach the task with an engineering mind set, as well as a healthy familiarity with Murphy’s Law. Anything that can go wrong will go wrong, and once you release the process to end users a human element will complicate what should otherwise be a predictable, linear, machine driven response. Embrace the uncertainty and challenges because the fact that software rarely, if ever, works like it should is what makes a working process patentable.

On Tuesday, March 23, 2010, Ropes & Gray filed a motion seeking to dismiss a malpractice claim brought against the firm by Cold Spring Harbor Laboratory (CSHL). The complaint filed against Ropes & Gray also names patent attorney Matthew P. Vincent, who allegedly engaged in plagiarism by copying 11 pages of text from a patent application filed by another scientist, Dr. Andrew Fire. CSHL alleged that the copying of this material led to the United States Patent and Trademark Office concluding that the work of Dr. Hannon (of CSHL) was indistinguishable from Dr. Fire’s work and, therefore, unpatentable. The problem with this theory, as was pointed out in the Ropes & Gray motion to dismiss, copying text out of other patents and patent applications is done all the time.

One of the proposals in the pending patent reform legislation is a change from first to invent to a first to file system. The trouble is that an interference proceeding, the proceeding that would take place to determine who is entitled to receive the patent between the alleged first to invent and the first to file, costs about $600,000. Not many independent inventors or small businesses are going to be able to foot that bill for sure. Nevertheless, I thought it might be good to take a look at this thing called an interference proceeding, which if patent reform is successful would become a relic of US patent law.

Nothing in the appealed issues in Pressure Products (claim construction, denial of motion for JMOL, leave to amend answer) even remotely hints at or suggests the basis for this five judge panel. In fact, Pressure Products has all the markings of a fairly ordinary, garden variety patent infringement case. So why not the standard three judge panel? Not a word of explanation.

Whatever your opinion of the business model, it is impossible to ignore the fact that Cheryl Milone has turned Article One Partners a major player in the patent research field. Article One is attracting big name members to the Board of Directors, they have started a patent quality review blog and Milone was recently invited to the White House to participate in a round-table event, which she talks about in our conversation. So, without further ado, here is my conversation with Cheryl Milone. We talk patent reform, reexamination, patent litigation, improved patent search and IT databases, claim construction and more.

The victories selected represent a diverse array of wins, which a press release announcing the Top 10 list says is due to “the differing objectives of IP litigation today.” These victories range from multimillion-dollar jury verdicts, including the biggest patent award ever, which was won by Johnson & Johnson’s Centocor Ortho Biotech unit against Abbott Laboratories, to the i4i injunction win blocking the distribution of Microsoft Word editions having a popular XML feature.

Sitting by designation in the United States District Court for the Eastern District of Texas, soon to be Chief Judge of the Federal Circuit, Judge Randall Rader, granted summary judgment to Google Inc. and AOL LLC in the case brought by Performance Pricing, Inc., which alleged infringement of U.S. Patent No. 6,978,253. Judge Rader ruled that there was no infringement and summary judgment was appropriate because there were no genuine issues of fact in dispute. More specifically, Rader determined that AdWords does not contain a price-determining activity.

This year individuals seeking registration before the United States Patent and Trademark Office (Office) as patent attorneys and agents can take the exam at the USPTO on July 13 or July 14, 2010. The deadline for applying to take the exam in person at the USPTO is Friday, May 14, 2010. While the last time the Patent Office released Patent Bar Examination results is well over 3 years ago, over the preceding decade some 30,609 administrations of the exam, with 16,266 individuals passing the exam and becoming either patent attorneys or patent agents, which corresponds to an overall pass rate of 53.1%.

Notwithstanding the above, I am conflicted in my feelings. It seems that one of the deals included in the Health Care Bill, provisions aimed at biotechnology, are unquestionably good. This is not the type of deal where residents of Nebraska get the rest of us to pay for them, or where seniors in Florida get to keep prescription coverage courtesy of the federal government while seniors everywhere else lose. The provisions favorable to the biotech community will spur innovation, lead to new cures and undoubtedly prolong life. If only Congress could have passed these provisions and scrapped the rest.

The last thing you want to do is spend a lot of money preparing and filing an application when there is easy to find prior art that will prevent a patent, or at the very least make any patent that is obtained extremely narrow. Careful review of the patent search report, any opinion or assessment provided by a patent attorney and thoughtful consideration of the patents that are found is critical. Unfortunately, a lot of inventors only give a cursory review of the patents found, thereby missing a great.

There is absolutely no reason why we cannot change from a first to invent system to a first inventor to file system that would still retain a real and substantial grace period and still retain the right for patent applicants to swear behind references to demonstrate an earlier date of invention, at least with respect to pieces of prior art that are not the progeny of earlier filed patent applications. So the currently proposed revisions to 102 need to be amended prior to passage of S. 515. It should define the term “disclosure,” do away with “otherwise available” under proposed 102(a) and retain the grace period relative to third party actions.

It is about that time of the year where our calendar really starts to heat up. This course, which happens every year during law school spring break, finds us in Chicago during St. Patrick’s Day festivities and the start of the NCAA College Basketball tournament. Once our Spring school tour is over then we will be back on the road teaching courses in New York City (May), Southern CA (June), Boston (July), Chicago (August), New York City (September) and San Francisco (November). We are indeed heading into our busy season!

The Biotechnology Industry Organization (BIO) has just announced that David Kappos, Director of the U.S. Patent and Trademark Office and Under Secretary of Commerce for Intellectual Property, will be a featured speaker at the Intellectual Property Super Session taking place during the 2010 BIO International Convention. The May 3 event, entitled “Leveraging IP to Spur Global Biotechnology Innovation, Investment and Jobs,” will examine the role that intellectual property systems play in attracting biotech investment and how some countries are successfully leveraging their patent policies to foster economic growth.

The buzz continues about Lindsay Lohan’s suit against E*TRADE over its use of the name “Lindsay” to identify a “milkaholic” character in the latest in its ongoing series of talking-babies commercials. Not coincidentally, shortly before the Academy Awards broadcast—Army Sergeant Jeffrey S. Sarver brought suit in the District of New Jersey, alleging that the lead character of the film The Hurt Locker, which subsequently won the Best Picture Oscar, was a depiction of him, for which he was owed compensation.