A Different Kind of Battle At the USPTO Over 35 U.S.C. 101

Back in 2005 (just prior to today's "great patentable subject matter debate"), a certain buzz was created when Andrew Knight began promoting the idea of "storyline patents" and followed up by filing applications (e.g., 10/722,463) in pursuit of his goal of establishing a new form of intellectual property. An exemplary claim from his application:

1. A process of relaying a story having a timeline and a unique plot involving characters, comprising:

indicating a character's desire at a first time in said timeline for at least one of the following:

a) to remain asleep or unconscious until a particular event occurs; and

b) to forget or be substantially unable to recall substantially all events during the time period from said first time until a particular event occurs;

indicating said character's substantial inability at a time after said occurrence of said particular event to recall substantially all events during the time period from said first time to said occurrence of said particular event; and

indicating that during said time period said character was an activeparticipant in a plurality of events.

It turns out that the "storyline" application recently received a first office action, and the PTO is taking the matter quite seriously: almost 8 pages of the office action are directed to constitutional arguments (including prior restraint of expression under the 1st amendment), 4 pages on section 101, and an interesting 103(a) argument, rejecting the claims "over any movie recorded on a DVD."

From the Office Action:

It should also be pointed out that storylines are not subject to improvement. Storylines may be changed, but not improved. Adding a plot element involving a white rabbit in a top hat would not improve Huckleberry Finn; it would merely make it different. Nothing in a storyline patent application can be used by other practitioners to advance the storytelling art. Thus storyline patents would not carry out the constitutionally mandated purpose behind the patent laws - i.e., to promote the progress of science and the useful arts.

Under current law, if a potential author reads a Narrative of the Most Extraordinary and Distressing Shipwreck of the Whale-Ship Essex and thinks he can do a better job telling the story, he may make an attempt. Thus the public gets two versions of the story from which to choose - Owen Chase's or Herman Melville's. But under the proposed scheme, it is unlikely that the public would have either version. Instead of writing the great American novel, existence of a storyline patent would create an incentive for potential authors to write the great American patent application. This is hardly the result that the framers of the Constitution had in mind.

Also, under a footnote:

Some people are critical of the patent system because there are people who have patents for invention they have no intention of making or using. Examiner will not join in this debate, but will make two observations:

(1) To the extent that this represents a problem, it would be unwise to add to the problem by creating yet another class of intellectual property to be held by those who are not going to make or use their invention.

(2) In defense of the holders of patents for inventions currently patentable, they at least provide an increase in human knowledge upon which others can improve. If A. Lincoln invents a device for lifting boats over shoals, others can improve upon the invention - whether Lincoln builds such a device or not. Thus science and technology advance. Storyline patents, on the other hand, are not amenable to "improvement".

Read the Office Action in its entirety here.

Read Knight's (68 page) Response here.

Disclaimer From Familial Patent Nullifies Infringement

Heuft Systemtechnik GMBH v. Industrial Dynamics Co. (07-1417) June 25, 2008 (noprecedential)

Industrial Dynamics Co. (IDC) appealed a district court claim construction which led to a finding of infringment. The patent-in-suit was a divisional application directed to a "method and apparatus for inspecting rotating container," having a thin prosecution history. The parent application, however, contained numerous amendments and arguments regarding the prior art.

IDC argued that the claimed feature of "stably arranging containers" did not include devices having exit angles less than 30 degrees due to prosecution disclaimer in the parent application. Heuft countered that the prosecution history was silent as to the measure of the exit angles, and that any disclaimer that may have arisen in the parent application did not apply to the claims of the patent-in-suit.

Prosecution disclaimer occurs when a patentee, either through argument or amendment, surrenders claim scope during the course of prosecution. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007). Amendments or arguments that are merely vague, ambiguous, or subject to other reasonable interpretation are not sufficient to surrender claim scope. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003). Rather, in order for prosecution disclaimer to attach, the patentee’s actions must be "clear and unmistakable." Id. at 1326.

After reviewing the prosecution history, the CAFC decided that the parent application disclaimed angles less that 30°:

We agree with IDC that in the ’408 patent [the parent], Heuft disclaimed "arranging . . . containers . . . stable" or "means for the stable arrangement of . . . containers" using angles less than 30°. This is because its actions during prosecution were clear and unmistakable.

* * *

[T]hroughout the course of prosecution of the ’408 patent, Heuft not only repeatedly distinguished its claims over the [prior art] on the basis of the large exit angle’s ability to stably arrange the containers, it also amended all of those claims to require an exit angle between 30° to 100°, a span which directly tracks the only discussion in the specification indicating an appropriate range for stably arranging containers. Under these circumstances, we have little difficultly concluding that Heuft clearly and unmistakably disclaimed exit angles less than 30°, at least with respect to the ’408 patent.

With regard to the disclaimer "flowing" from the parent to the divisional,

It is well-settled that "prosecution disclaimer may arise from disavowals made during the prosecution of ancestor patent applications." Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1314 (Fed. Cir. 2007) (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1333 (Fed. Cir. 2003)). "When the application of prosecution disclaimer involves statements from prosecution of a familial patent relating to the same subject matter as the claim language at issue in the patent being construed, those statements in the familial application are relevant in construing the claims at issue." Id.

[T]he statements Heuft made during prosecution of the ’408 patent related to the same subject matter that is at issue in the relevant claim limitations of the ’974 patent—namely, "arranging . . . containers . . . stable" and "means for the stable arrangement of . . . containers." Consequently, the arguments and amendments Heuft made during prosecution of the ’408 patent also operate to disclaim exit angles less than 30° in the claims of the ’974 patent.

REVERSED

Company Files Defamation Action Against Patent Holding Company

Cognex Corporation v. VCode Holdings, Inc. (a.k.a. Acacia), No. 06-cv-01040, (D. Minn.)


Cognex has established a reputation for aggressively defending itself against patent infringement from holding companies. Back in 2005, the company successfully defended itself against Lemelson and invalidated 14 patents asserted in the action.

Recently, Cognex has been involved in a battle-royale with Acacia subsidiaries VCode Holdings and VData LLC in the district of Minnesota. In May, Judge Joan N. Ericksen held on Summary Judgment that one of the patents-in-suit ("the '524 patent"), claiming a system for capturing and reading 2D symbology codes, was both invalid and unenforceable due to inequitable conduct by the defendants during the procurement of the patent (read the order here).

Interestingly, Cognex asserted that Acacia's actions in the case were a violation of the Minnesota Uniform Deceptive Trade Practices Act, and that certain Acacia statements made to Cognex's customers were defamatory. While the district court dismissed the deceptive trade practices claim, the court denied Acacia's motion for summary judgment on the issue of defamation.

Recently Cognex filed a second amended complaint and a motion for summary judgment, claiming that Acacia published false and defamatory statements:

24. Upon information and belief, since the filing of Cognex’s original Complaint in this action, an authorized representative of Acacia has informed at least two alleged infringers of the ‘524 patent, who have raised this action as a reason to decline or defer taking a license under the ‘524 patent, that Cognex, as recently as last summer, offered to buy the ‘524 patent (along with a related patent, U.S. Patent No. 4,924,078 (the "’078 patent")) for an eight figure sum.

25. Specifically, in an e-mail dated April 27, 2006 to a Proctor and Gamble representative, the Acacia representative, Tisha DeRiamo, stated:

Your information regarding Cognex is very interesting. I hope their attorney told you that as recently as last summer, Cognex attempted to buy the ’078 and ’524 patents from Veritec for an eight-figure purchase price. In other words, they saw value in having the patents back then. But now, as Veritec has emerged out of bankruptcy and is able to enforce its rights regarding the patents, Cognex alleges that the patents are invalid. It’s incongruous. (emphasis in original).

26. Upon information and belief, Ms. DeRiamo also stated to at least one of these alleged infringers, Allison Payment Systems, a customer of Cognex for its data matrix symbol reader products, that Veritec was in possession of a letter of intent evidencing Cognex’s alleged offer to purchase the ‘524 and ‘078 patents for an eight figure sum.

27. These statements made by Ms. DeRiamo are false. Cognex never offered to buy the ‘524 and ‘078 patents for any sum, let alone one with eight figures.

The move by Cognex is also noteworthy in light of the SCOTUS decision in Quanta v. LG Electronics - since licenses "purchased" from patentees extinguish certain rights, patent holders will be restricted in selling a company a license, and suing the company's customers (see Law.com article here).

Hat tip: Groklaw (read more details here)

Read Cognex's 2nd Amended Complaint here

Motion for Summary Judgment (link)

Acacia's Memorandum in Opposition (link)

CAFC: Misrepresentation Does NOT Have to Bear on Patentability For Inequitable Conduct

Scanner Tech. Corp. v. ICOS Vision Systems Corp. N.V. , (2008-1081), June 19, 2008

During prosecution, Scanner became convinced that a new product launched by ICOS was infringing on the claims of a patent application. Accordingly, Scanner filed a Petition To Make Special, pursuant to MPEP 708.02.

The petition contained all the PTO prerequisites, including a statement that a "rigid comparison" of the alleged infringing method with the claims of the application had been made, and that some of the claims are "unquestionably infringed." The petition was accompanied by a statement from the applicant and assignee describing the claimed invention, as well as certain interactions between Scanner and ICOS. The PTO granted the petition, and the application ultimately issued a short time later.

The district court took issue with Scanner's statement in the petition that a "rigid comparison" was made on the ICOS product, which appeared in a trade show. The court found that the ICOS product was not on "open display," but in a "black sealed box" that was not amenable to close inspection. Thus the district court held that the petition statements "were intended to mislead the PTO into believing" that ICOS copied the claimed device.

On appeal, Scanner argued that the district court abused its discretion because the court "misapplied the law relating to materiality by incorrectly concluding that any statement in a petition to make special is per se material if the petition is granted."

Relying on General Electro Music Corp. v. Samick Muic Corp., 19 F.3d 1405, 1411 (Fed. Cir. 1994), the CAFC stated:

It is true that many of our cases, before and after General Electro, examine materiality in the context of whether the alleged inequitable conduct bore directly on patentability of the claims in suit. That fact does not undercut the continuing force of the test for materiality in the setting of a petition to make special, or in other settings where an alleged misrepresentation to the Patent Office resulted in some action other than issuance of a patent . . . [W]e must reject Scanner's view that inequitable conduct cannot be shown absent a misrepresentation that bears on the patentability of the claims in the application. When the setting involves a petition to make special, as is the case here, we reaffirm that a false statement that succeeds in expediting the application is, as a matter of law, material for purposes of assessing the issue of inequitable conduct.

However, the CAFC reversed the district court's finding of inequitable conduct, noting that the district court erroneously failed to give due weight to inferences rebutting inequitable conduct.

Whenever evidence proffered to show either materiality or intent is susceptible of multiple reasonable inferences, a district court clearly errs in overlooking one inference in favor of another equally reasonable inference. All reasonable inferences must be drawn from the evidence, and a judgment then rendered on the evidence as informed by the range of reasonable inferences. Where the rule is breached, no inequitable conduct may be found. The rule is necessary, for without it findings of inequitable conduct, with the punishment of unenforceability of the entire patent, could wrongly stand.

NOTE: From footnote 3 in the opinion:

We note that not all false statements or misrepresentations contained in a petition to make special are necessarily material even if the applicant succeeded in receiving expedited treatment for his or her application. Rather, in evaluating whether a false statement or misrepresentation in a petition to make special is material, a court must determine whether the false statement was likely a but-for cause of the grant of the petition. If not, a threshold level of materiality has not been established.

- This has been an "inequitable-conduct-heavy" week for CAFC opinions:

Nilssen v. Osram Sylvania (07-1198), June 17, 2008 - attorney fees for inequitable conduct affirmed, based on a multitude of alleged misrepresentations and litigation conduct. Newman dissent: "The statutory authority to award attorney fees was intended to 'prevent gross injustice,' not to shift the economic balance against the unsuccessful plaintiff."

Synthon IP v. Pfizer (07-1344), June 17, 2008 (Nonprecedential) - affirming the findings of inequitable conduct and exceptional case, and the award of attorney fees.

Thursday Shorts: Asia Patent White Papers, EPO Pendency Continues To Grow

Chinese Patent Statistics - research and analytics company Evaluserve released a white paper titled "Patenting Landscape in China - History, Growth and Utility Model", which discusses various statistics on Chinese patent practice, as well as strategies utilized by patent filers:

Some Chinese companies have adopted a strategy that involves filing 10-year patent applications and 20-year patent applications for the same invention on the same day, thereby ensuring the same priority date with the SIPO. Since a 10-year patent application is granted within a year (without substantive examination), the company can start producing, marketing and selling its “patented” product in China. If the corresponding 20-year patent is granted by the SIPO, the Chinese company can simply abandon the 10-year patent and enjoy a longer period of protection, whereas if the corresponding 20-year patent application is not granted by the SIPO after a substantive examination, then the Chinese company can still continue producing and marketing its product on the strength of the utility model it owns (unless it is challenged by another party and the 10-year patent is re-examined by the SIPO).

Download a copy of the white paper (free registration required) here.

Patenting Landscape in India - Evalueserve also released a white paper on patents in India, and takes a close look at who is filing what in the IPO. Interestingly, of the top 50 patent filers at the IPO, only four Indian organizations appear in the top 50 list. Realizing that the lack of awareness among domestic Indian companies, the Ministry of Industry of India recently announced its plans to launch a "national IP awareness campaign."

Download a copy of the India white paper (free registration required) here.

EPO Filers Seething At Delays - from a recent report from the BBC:

Delays in Europe of up to 10 years have left somewhere between five and ten million inventions globally queuing for approval, according to the head of European Patent Office, Alison Brimelow. She said the delays were bad for business and created uncertainty for innovators . . . patents in Europe were supposed to be granted in 36 months but often took four to five years. Some were dragged out for a decade.

Read "Patent delays frustrate inventors" (link)

USPTO: PCT Fees Going Up

From the latest Federal Register:

Title 37 of the Code of Federal Regulations, part 1, is proposed to be amended as follows:

Section 1.445: Section 1.445(a)(1) is proposed to be amended to change the transmittal fee from $300.00 to $415.00. Section 1.445(a)(2) is proposed to be amended to change the search fee from $1,800.00 to $2,225.00. Section 1.445(a)(3) is proposed to be amended to change the supplemental search fee from $1,800.00 to $2,225.00.

Download the notice here.

Obama On the USPTO: Reading from the CPF Playbook?

Excerpt from interview with Senator Obama from the WSJ:

As I mentioned during the speech, there may be programs that no longer work. There's certainly all kinds of previsions [sic] in our tax code that are antiquated and are not spurring economic growth. We've got offices like the patent office that are outdated to take advantage of new discoveries here in the United States. We need to retool our government so that it works with a 21st century economy and in some ways our campaign has shown what happens when you retool political campaigns to a new requirement. I think we need to do the same thing with government as well.

Read the interview in its entirety here.

Interesting choice of words: "outdated to take advantage of new discoveries"? The patent system certainly has flaws, but not many practitioners have categorized patent reform as a necessary mechanism for improving an "outdated" system (at least not between themselves). The notable exception here is the Coalition for Patent Fairness, which appears to make this issue a consistent and central theme in their call for patent reform. To wit, from their recent press releases:

• "The country's system of granting patents for inventions, last revised some 50 years ago, needs updating . . ."

• "Our nation's outdated patent system curtails creativity and innovation . . ."

• "Our current patent system is woefully outdated and threatens to curtail creativity and innovation . . ."

• "Washington hasn't redrawn the rules in a major way since the 1950s . . ."

• "The days when typewriters reigned supreme are in fact the last time our nation's patent laws were updated . . ."

• "Patent law hasn't had an overhaul since the 1950s. It's time to bring it into the 21st century."

A nod of the head for "CPF-style" patent reform in 2009? You decide.

Study: 53% of Pharma Patents Approach Expiration Before Litigation Strategies are Implemented

A new study developed by market intelligence firm Cutting Edge Information reveals that the majority of pharmaceutical companies are waiting until their patents on drugs are nearly run out before they start to work on patent litigation strategies.

According to the study:

• 66% do not begin counter-generics planning until at least two years after product launch.

• Some companies do consider generics problems relatively early – 23% of surveyed companies conduct generics planning while drugs are still in clinical trials, and another 11% initiate counter generics strategy during launch.

• A majority of responding companies report first considering generics within four years of patent expiration (33% of companies reported to looking into litigation as a strategy while two to four years remain on the patent. Another 13% of companies began looking into litigation to protect their drugs while four to six years remained on the patent).

Download a summary of the 153-page report here (free registration required).

Purchase a copy of the report ($7695.00) here.

Danforth: FTC Patent Reform Is Needed

Last month, John Danforth, former general counsel of Rambus and legal adviser published an article in the Legal Times that was highly critical of the FTC's "much ballyhooed but misguided antitrust case against Rambus Inc." that was recently overturned by the DC Circuit (see earlier 271 coverage here).

Last week, the FTC filed a Petition for Rehearing En Banc seeking reversal of the DC Circuit opinion that rejected antitrust sanctions against Rambus for its alleged non-disclosures in a standard setting organization (“SSO”) called ‘JEDEC.’ This move by the FTC set off another response from Danforth who states that the petition "clearly and inherently evidences the need for reform," citing four ways in which the FTC is overstepping its bounds against Rambus in the petition:

(1) The FTC continues to “aggressively” overstate its case,
(2) The FTC takes an aggressive approach to other parts of the record in the case,
(3) The FTC’s en banc petition is merely the latest example of the FTC’s inability to acknowledge that its theory against Rambus did not hold up -- and has been overwhelmed by new developments and more recently discovered facts, and
(4) The FTC has added the potential for yet further delay in its six year old, now-very-stale case.

Notes Danforth:

Litigators litigate. Zealotry is often regarded as a virtue. But when, as with the FTC, the prosecutor and the judge are one and the same, restraint and reassessment should be built into the process. This is even more true when, as in the Rambus matter, the FTC has interests in a case relating to its budget and the scope of its own agency mission. There needs to be accountability and some level of detachment. There cannot be reliance on the donated legal work of self-interested third parties. There need to be occasional checks and balances on cases as they progress through discovery. In the end, there ought to be a policy – or perhaps a new law passed by Congress -- that important FTC antitrust cases be litigated in Federal courts, just as important DOJ antitrust cases already are.

Read Danforth's draft paper here.

Read the FTC's petition here.

See HP, Cisco & Sun Microsystems Motion for Leave and Invitation to file Amicus Curiae Brief In Support of the FTC (link).

See also S.M. Oliva's recently-filed Amicus brief opposing Rehearing En Banc (link). From the brief:

The FTC is not protecting the competitive process, but rather forcing the market to reach particular outcomes, namely the avoidance of patented technologies by SSOs or, alternatively, licensing of patents on terms that the Commission deems “reasonable.” The “but for” analysis that the Commission relies upon for its remedy is nothing more than an attempt to re-write market outcomes to satisfy the personal preferences of the commissioners. This far exceeds the constitutionally permissible scope of Commission conduct.

Dudas Issues Letter to Congress In Response to Berman's Questions

On April 29, Howard Berman, Chairman, Subcommittee on Courts, the Internet, and Intellectual Property sent a letter to USPTO Director Jon Dudas, asking very direct questions on USPTO management and practice (see earlier 271 coverage here).

Dudas has now responded, and his response and supporting documentation have been posted on Greg Aharonian's website (link - .zip format).

For anyone looking for a "gotacha!" moment, this does not appear to be it. On its face, the response is unremarkable, although there is some interesting information:

USPTO Meetings With RIM During NTP Reexam - according to the letter, RIM approached the PTO to support them as amicus curiae in a petition for rehearing that RIM was seeking with the CAFC:

The subject of discussion was RIM's request that the United States support its position in the Court of Appeals for the Federal Circuit that patent infringement not be found when alleged infringement includes acts outside the United States. Citing the USPTO's policy of not discussing any aspect of a pending USPTO reexamination, Ms. Dana and all other government representatives in attendance refused to discuss or listen to statements, questions, or arguments regarding any matter pending in reexamination. The govemment did not make the amicus filing that RIM requested.

As stated, the USPTO's policy prohibits ex parte communications that directly relate to matters pending on reexaminations. This policy does not prohibit contacts with anyone with respect to matters that are not at issue in proceedings before the USPTO. Thus, for example, the USPTO officials regularly meet with patentees and members of the patent bar, even though those parties may be pursuing matters before the Office. In such conversations, consistent with the policy followed during the meeting with RIM representatives, its officials do not discuss particular matters
pending before the Office.

Examiner Attrition - According to Dudas, the attrition rate for Patent Examiners in FY 2007 is 8.5 percent which is lower than the attrition rate for Federal workers as determined by OPM(8.9%) and BLS(9.2%) in the same time period.

Also, the letter stated that attrition hits examiners hardest when they have only 0-3 years experience with the Office - the average attrition rate for examiners with 0-3 years experience is 15.5%, while average attrition for examiners with 3-30 years experience is 3.95%.

Wednesday Shorts: Patent Tools, Enforcement Company Updates, and More

More Patent Tools (Part 1): Rolf Claessen, who is a partner at the German firm von Kreisler Selting Werner, and proprietor of the wonderful IPNewsflash website, has added a patent PDF download tool covering numerous countries. To try it out, click here.

More Patent Tools (Part 2): A new website called PatentRetriever has also issued a PDF download tool that allows "download of US, European and PCT patent applications as PDF fileswithout annoying user registration or logos inserted on pages." To try it out, click here.

Patent Enforcement Company Update #1: from the Politico.com news site:

Last week, Rep. Pete Sessions (R-Texas) and two other Texans on the House Financial Services Committee asked the Government Accountability Office to investigate the company “and the potential impact of DataTreasury Corp.’s litigation” against nearly 60 U.S. banks.

The three members requested that the agency check into the backgrounds of DataTreasury’s founders, investors, lawyers and patents. In the past, financial services lobbyists have raised questions about the company executives backgrounds and the fees paid to the company’s two law firms: Nix, Patterson and Roach and Provost and Umphrey.

Patent Enforcement Company Update #2: Plutus IP is a notorious patent holding company that allegedly has a multitude of affiliate companies formed under its umbrella (e.g., Taurus IP, Gemini IP, Caelum IP, Phoenix IP, Orion IP, Constellation IP). Currently, DaimlerChrysler is seeking up to $4 million in legal fees against Plutus IP in the Western District of Wisconsin after prevailing on a jury verdict for breach of contract. Apparently, Daimler previously paid a $2.3 million dollar settlement on a portfolio of patents in a broadly construed "no-more-lawsuits" arrangement with Plutus. After patents were shuffled among the affiliates, Daimler was sued not once, but three more times by affiliates. The Wisconsin jury ruled that this was a no-no. Read the complete story at The Prior Art.

Patent Troll Tracker Litigation: Joe Mullin has the latest - click here.

USPTO Issues Controversial New Rules For Patent Appeals

"Smithers had thwarted my earlier attempt to take candy from a baby, but with him out of the picture, I was free to wallow in my own crapulence."

- Mr. Burns, episode #2F20, "Who Shot Mr. Burns? (Part 2)"

Like it or not, they're here - the new BPAI procedures for ex parte appeals. Overall, they are the same as the rules previously proposed last July, including 30-page limits on briefs, waivers of non-argued claims, and possible sanctions against appellants that fail to comply with an applicable rule.

The new rules, which go into effect on December 10, 2008, require that appeal briefs must contain the following items:

(1) Statement of the real party in interest - an identification of the name of
the real party in interest.

(2) Statement of related cases - identify related cases by (1) application number, patent number, appeal number or interference number or (2) court docket number. The statement would encompass "all prior or pending appeals, interferences or judicial proceedings known to any inventors, any attorneys or agents who prepared or prosecuted the application on appeal and any other person who was substantively involved in the preparation or prosecution of the application on appeal."

(3) Jurisdictional statement - statement of (1) the statute under which the appeal is taken, (2) the date of the decision from which the appeal is taken, (3) the date the notice of appeal was filed, and (4) the date the appeal brief is being filed. If a notice of appeal or an appeal brief is filed after the time specified in the rules, the appellant also would have to indicate (1) the date an extension of time was requested, and (2) if known, the date the request was granted.

[EX] ‘‘The Board has jurisdiction under 35 U.S.C. 134(a). The Examiner mailed a final rejection on August 1, 2006, setting a three-month shortened statutory period for response. The time for responding to the final rejection expired on November 1, 2006. Rule 134. A notice of appeal and a request for a one-month extension of time under Rule 136(a) was filed on November 15, 2006. The time for filing an appeal brief is two months after the filing of a notice of appeal. Bd.R. 41.37(c). The time for filing an appeal brief expired on January 16, 2007 (Monday, January 15, 2007, being a Federal holiday). The appeal brief is being filed on January 16, 2007.’’

(4) Table of contents - identify the items listed in Bd.R. 41.37(e) along with a page reference where each item begins.

(5) Table of authorities - listing of (1) court and administrative decisions (alphabetically arranged), (2) statutes, and (3) other authorities, along with a reference to the pages of the appeal brief where each authority is cited.

(6) Reserved.

(7) Status of amendments - (1) No amendment was filed after final rejection; (2) An amendment filed [date], was not entered by the examiner; (3) An amendment filed [date], was entered by the examiner; (4) An amendment filed [date 1], was not entered by the examiner, but an amendment filed [date 2], was entered by the examiner.’’

(8) Grounds of rejection to be reviewed - requires an appeal brief to set out the grounds of rejection to be reviewed, including the claims subject to each rejection.

(9) Statement of facts - Appellant will set out in an objective and non-argumentative manner the material facts relevant to the rejections on appeal, preferably in numbered paragraphs.

A fact would be required to be supported by a reference to the page number of the Record. Where appropriate, the citation should also be to a specific line or paragraph and to a drawing figure and element number of the Record. Statements of facts should be set out in short declarative sentences, and each sentence should address a single fact.

(10) Argument - Analysis explaining, as to each rejection to be reviewed, why the appellant believes the examiner erred. The analysis would have to address all points made by the examiner with which the appellant disagrees.

Where an argument has previously been presented to the examiner, the analysis would have to identify where any argument being made to the Board was made in the first instance to the examiner. Where an argument has not previously been made to the examiner, an appellant would be required to say so in the appeal brief so that the examiner would know that the argument is new.

When a ground of rejection applies to two or more claims, the claims may be argued separately(claims are considered by appellant as separately patentable) or as a group (claims stand or fall together). When two or more claims subject to the same ground of rejection are argued as a group, the Board may select a single claim from the group of claims that are argued together and decide the appeal on the basis of the selected claim alone. Any doubt as to whether an election has been made would be resolved against the appellant and the claims would be deemed to have been argued as a group.

Appellant would waive all arguments which could have been, but were not, addressed in the argument section of the appeal brief.

(11) Appendix - A clean copy of all claims pending in the application or reexamination proceeding on appeal. The claims section in the appendix would include all pending claims, not just those under rejection. The status of each claim would have to be indicated.

The Appendix would additionally include a (a) claims section, (b) claim support and drawing analysis section, (c) means or step plus function analysis section, (d) evidence section, and (e) related cases section (this part is a real nightmare - see attached rules below).

NOTES:

- The previous rule required that Appellants type their briefs in 14 point Times New Roman font. This has been withdrawn, and 12 point font will be allowed

- The BPAI may impose sanctions on appellants that fail to comply with an order, advance or maintain "a misleading or frivolous request for relief or argument" or engage in "dilatory tactics."

- The PTO is apparently impressed by the speed and diligence in which law firms operate, and are under the impression that "[l]ittle additional cost is associated with the new appeal brief requirements." For example, commenting on the preparation of the Table of Contents and Authorities, the Office states:

"Assuming that virtually all applicants create their documents with a word processor, it would add 5 to 10 minutes to the preparation of the brief to insert the table of contents and table of authorities."

No further details were given on the software tool used by the PTO that would provide such capabilities.

- Additional comments provided by David Boundy, VP, AGC IP Cantor Fitzgerald:

The new Appeal Rule 41.39(b) provides "No new ground of rejection. An examiner’s answer shall not include a new ground of rejection." First of all, this is illegal - it is not a "logical outgrowth" of the rule as published in the Notice of Proposed Rule Making (recall this is one of the grounds on which Judge Cacheris preliminarily enjoined the PTO's Continuations and Claims rules in October). Second, this was the rule during the period 1998-2004. However, the Board refused to enforce the rule during the time it was in effect, Ex parte Brissette, 2002 WL 226585 (BPAI May 19, 2000); Ex parte Deacon, 2002 WL 226993 (BPAI 2000), so as a practical matter, examiners were free to throw in new grounds of rejection at any time, and applicants were constrained in their ability to reply.

Download a copy of the new rules here.

Supreme Court Reverses CAFC in Quanta: Method Patents Exhaustible

Quanta Computer, Inc. v. LG Electronics, Inc., No. 06-937, June 9, 2008.

LGE holds a number of patents related to computer technology. LGE licensed the patents to Intel, authorizing them to manufacture and sell microprocessors and chipsets using the LGE Patents. A separate agreement with LGE (Master Agreement) required Intel to give its customers written notice that the license does not extend to a product made by combining an Intel Product with a non-Intel product.

Quanta purchased microprocessors and chipsets from Intel. Quanta then manufactured computers using Intel parts in combination with non-Intel parts, but did not modify the Intel components. LGE sued, asserting that this combination infringed the LGE Patents.

On appeal, the CAFC held that the patent exhaustion doctrine does not apply to method patents, which describe operations to make or use a product; and concluding, in the alternative, that exhaustion did not apply because LGE did not license Intel to sell the Intel Products to Quanta to combine with non-Intel products.

SCOTUS Holding:

Because the doctrine of patent exhaustion applies to method patents, and because the License Agreement authorizes the sale of components that substantially embody the patents in suit, the exhaustion doctrine prevents LGE from further asserting its patent rights with respect to the patents substantially embodied by those products.

Off the bat, the SCOTUS noted that "nothing in this Court's approach to patent exhaustion supports [the] argument that method claims, as a category, are never exhaustible." Noted the Court:

A patented method may not be sold in the same way as an article or device, but methods nonetheless may be "embodied" in a product, the sale of which exhausts patent rights. The Court has repeatedly found method patents exhausted by the sale of an item embodying the method . . . Eliminating exhaustion for method patents would seriously undermine the exhaustion doctrine, since patentees seeking to avoid exhaustion could simply draft their claims to describe a method rather than an apparatus. On LGE’s theory here, for example, although Intel is authorized to sell a completed computer system that practices the LGE Patents, downstream purchasers could be liable for patent infringement, which would violate the longstanding principle that, when a patented item is "once lawfully made and sold,there is no restriction on [its] use to be implied for the [patentee’s] benefit," Adams v. Burke, 17 Wall. 453, 457.

The extent to which a product must embody a patent in order to trigger exhaustion:

Relying on United States v. Univis Lens Co., 316 U. S. 241 (1942), the Supreme Court reiterated that "the authorized sale of an article which is capable of use only in practicing the patent is a relinquishment of the patent monopoly with respect to the article sold." Thus, a sold (but incomplete) item that is "without utility" until it is in a final, usable (and infringing) form, would qualify for exhaustion. Added the Court:

A microprocessor or chipset cannot function until it is connected to buses and memory. And here, as in Univis, the only apparent object of Intel’s sales to Quanta was to permit Quanta to incorporate the Intel Products into computers that would practice the patents.

Additionally, the Court added that method claims may be exhausted if they "embodie[d] essential features of [the] patented invention":

[T]he Intel Products constitute a material part of the patented invention and all but completely practice the patent. Here, as in Univis, the incomplete article substantially embodies the patent because the only step necessary to practice the patent is the application of common processes or the addition of standard parts.

Exhaustion accross different patents:

With regard to LGE’s argument that exhaustion does not apply across patents, we agree on the general principle: The sale of a device that practices patent A does not, by virtue of practicing patent A, exhaust patent B. But if the device practices patent A while substantially embodying patent B, its relationship to patent A does not prevent exhaustion of patent B . . . While each Intel microprocessor and chipset practices thousands of individual patents, including some LGE patents not at issue in this case, the exhaustion analysis is not altered by the fact that more than one patent is practiced by the same product. The relevant consideration is whether the Intel Products that partially practice a patent—by, for example, embodying its essential
features—exhaust that patent.

* * *

The authorized sale of an article that substantially embodies a patent exhausts the patent holder’s rights and prevents the patent holder from invoking patent law to control postsale use of the article.

REVERSED

Download the slip opinion here.

NOTE: In footnote 7, the Court left open the possibility of filing a breach of contract claim for LGE in light of the circumstances:

We note that the authorized nature of the sale to Quanta does not necessarily limit LGE’s other contract rights. LGE’s complaint does not include a breach-of-contract claim, and we express no opinion on whether contract damages might be available even though exhaustion operates to eliminate patent damages. See Keeler v. Standard Folding Bed Co., 157 U. S. 659, 666 (1895) ("Whether a patentee may protect himself and his assignees by special contracts brought home to the purchasers is not a question before us, and upon which we express no opinion. It is, however, obvious that such a question would arise as a question of contract, and not as one under the inherent meaning an effect of the patent laws").

CAFC: Extrinsic Evidence OK When Patentee Chooses Inconsistent Claim Language

Helmsderfer v. Bobrick Washroom Equipment, Inc. (2008-1027), June 4, 2008

The patentee appealed the claim construction for the term "partially hidden from view" on a patent related to baby diaper changing stations. The district court construed the term to mean "hidden from view to some extent but not totally hidden from view."

In contrast, the patentee agued that the plain meaning of the term "partially" would include "totally hidden." In support of its argument, patentee pointed to the written description which stated that a top surface is "generally hidden from view."

The CAFC disagreed with the patentee. Looking to the claim language, the court noted that the terms "generally" and "at least" were used elsewhere in the claim. Applying CAFC precedent, "[i]n absence to evidence to the contrary, [it must be presumed] that the use of these different terms in the claims connote different meanings." Since there was no evidence to rebut the presumption, the court declined to give "partially" the same meaning as "generally" or "at least partially."

In addition, the CAFC found the district court's use of dictionaries proper when construing the term:

Here, partially is not defined in the specification. In fact, the phrase "partially hidden from view" does not even appear in the written description. The district court’s statement that there is no clear meaning of the term "partially hidden from view" apparent from the intrinsic record is correct.

The patentee also argued that the district court's construction was erroneous because it excluded both the preferred embodiment and every illustrated embodiment from the claims. Again, the CAFC disagreed:

Our case law generally counsels against interpreting a claim term in a way that excludes the preferred embodiment from the scope of the invention . . . It is true that the plain meaning of "partially hidden from view" does not include totally hidden from view, and that therefore claims 6-7 do not cover the preferred embodiment or the other illustrated embodiments. However, this does not mean that these embodiments are all excluded from the scope of the invention, but rather that they are excluded from the scope of these particular claims. Without opining on the construction of claims not at issue in this appeal, we note that none of the other independent claims of the ’928 patent recite the term "the platform top surface is partially hidden from view." Therefore, our construction of claims 6-7 leaves open the possibility that claims not at issue in this appeal encompass omitted embodiments. It is often the case that different claims are directed to and cover different disclosed embodiments. The patentee chooses the language and accordingly the scope of his claims.

Moreover, Brocar’s proposed construction is not consistent with any plain meaning of the term "partially" as interpreted in light of the specification. In this case there is only one ordinary meaning attributable to the word "partially" and this meaning does not include "totally." As Brocar did not act as its own lexicographer and alter the ordinary meaning of the term "partially," we cannot construe these particular claims to encompass the preferred embodiment or other illustrated embodiments. Courts cannot rewrite claim language.

AFFIRMED

(Another) Challenge to the Constitutionality of BPAI Appointments

Aldor Solutions Corp. v. Dudas, (1:08cv897), U.S. District Court for the District of Columbia

Plaintiffs are the co-owners of patent application Serial No. 09/694,095, ("the '095 application") titled "On-line System For Memorial, Legacy, Funeral and Remembrance Arrangements, Services and Transactions." During prosecution, the examiner rejected the application under 102(e)/103 using various combinations of 9 prior art references. On appeal, the BPAI upheld the rejections.

Pursuant to 35 U.S.C. § 145, an appeal was filed in the United States District Court for the District of Columbia. Of course, the complaint challenged the rejections as being improper. In addition, the complaint alleges:

14. [T]he Board that issued the March 27, 2008 Decision on Appeal was improperly constituted under the appointments clause of the United States Constitution. In particular, upon information and belief, at least one of the three judges that constituted the members of the Board that issued the March 27, 2008 [sic] were appointed by the PTO director on or after March 2000.

15. The judges who sit on the Board qualify as "inferior officers" under the appointments clause of the United States Constitution. The appointments clause of the United States Constitution requires that inferior officers be appointed either by the President of the United States, the courts of law or heads of departments. The PTO director is not a head of a department within the meaning of the appointments clause.

For anyone following this issue, Professor John Duffy previously wrote an article for Patently-O challenging the constitutionality of the current system for appointing administrative patent judges. The Patent Act (35 U.S.C. §6) requires the Director of the PTO to appoint BPAI judges. In contrast, Article II of the Constitution provides that appointment of “inferior officers” such as BPAI judges may only be delegated as far as a “Head of Department.” In the case of the PTO, the head of department would be the Secretary of Commerce, and not the PTO Director.

In a different case, Translogic Technology separately filed a petition for certiorari with the Supreme Court last month seeking resolution on the same issues. However, there is at least some doubt whether the Court will grant review, as the issue was not raised until a rehearing request at the CAFC.

For more information, see

John Duffy, "Are Administrative Patent Judges Unconstitutional?" (Patently-O) (SSRN)

Patently-O: "Challenge to BPAI Appointments Moves to Supreme Court" (link)

Law.com: "Could Constitutional Flaw Unravel Eight Years of Patent Board Rulings?" (link)

Patent Enforcement Companies Keep Trying to Skirt eBay v. MercExchange

Say what you will about patent enforcement companies (i.e., "patent trolls", "non-practicing entities", etc.), but they certainly aren't short on creative ideas when it comes to getting new angles on patent litigation strategy. Since the Supreme Court's decision in eBay v. MercExchange, patent holding companies have been looking for ways to tip the scales of the four-factor injunction test in their favor.

In mid-2007, the E.D. Texas heard CSIRO v. Buffalo Technology, Inc., where the court recognized "research institutions" as participants in the research group market, thus qualifying them for injunctive relief. Accordingly, companies like Wi-LAN began forming "research and development teams" that complemented their patent holdings in an effort to get move favorable treatment in the jurisdiction on injunctions. According to a CNNMoney article:

In addition to providing Wi-LAN with future patents . . . the firm's research
and development activities and university funding may also help the firm obtain
permanent injunctions in litigation, as the courts could recognize the firm's
status as a research and development organization (see earlier 271 Blog coverage here).

Rembrandt IP has taken a few creative steps of their own. When litigating contact lens-related patents against CIBA Vision and Bausch & Lomb (who competes with CIBA), Rembrandt allegedly tendered to Bausch & Lomb (B&L) a unique settlement offer: purchase rights in the patent so that Rembrandt keeps monetary damages, but B&L obtains the right to seek an injunction against CIBA if Rembrandt prevails at trial. In earlier coverage from the Troll Tracker Blog (no longer accessible), CIBA noted with the district court that this arrangement would "effectively cause" B&L to switch sides in the case, and "[b]y purporting to transfer the right to seek an injunction to B&L, Rembrandt Vision hopes to improve its chances of obtaining an injunction." While it is unclear whether this strategy will prove successful, it is worth noting that Rambrandt recently obtained a $41 million dollar verdict in the case.

Not sitting still, Rembrandt recently made news again when it was reported that the company teamed with a small Taiwanese cable modem manufacturer to make "Rembrandt" cable modems (branded "Remstream") to complement ongoing patent litigation against a multitude of cable companies. According to a court filing by defendant Comcast, “Rembrandt has endeavored to become a supposed market participant or direct competitor of the MSOs and/or DOCSIS-compliant equipment manufacturers for the sole purpose of seeking injunctive relief and/or lost profits in its infringement suits.” Additional parties have alleged that Rembrandt's “sham” attempts to portray itself as a cable-modem vendor violated antitrust regulations.

See Multichannel News, "Operators, Vendors Accuse Patent Firm Of Modem 'Sham'" (link)

See DowJones Newswire: "New Strategy To Obtain Injunction Alleged In Patent Dispute" (link)

See Forbes, "Patent Payday" (link)

USPTO Looks to Revise Fees for FY 2008

SUMMARY: The United States Patent and Trademark Office (Office) is proposing to adjust certain patent fee amounts for fiscal year 2009 to reflect fluctuations in the Consumer Price Index (CPI). The patent statute provides for the annual CPI adjustment of patent fees set by statute to recover the higher costs associated with doing business.

DATES: Written comments must be received on or before July 3, 2008. No public hearing will be held.

View the Federal Register Notice here.

(UPDATE - the link should work now)

FTC Looking to Break Down "Patent Walls" For Standardized Technologies

Federal Trade Commission (FTC) Commissioner J. Thomas Rosch presented a speech before the Newport Summit on Antitrust and Economics on May 31, where he discussed the effect of "patent trolls", standardized technologies, and potentially anticompetitive "patent walls", where

[A] firm independently develops and manufactures a product that competes in what constitutes a relevant market for antitrust purposes, and then files multiple patent applications covering certain features of the product and the patents issue. After competing products are brought to market, the firm acquires additional patents from third parties. It then uses those patents, and its prior existing patents, to threaten its present and potential competitors with litigation and “build a wall” around the market, eliminating competition and preventing entry.

According to Rosch, the FTC has been looking more closely at two "viable enforcement tools"to curb such activities: Section 5 of the FTC Act, and Section 7 of the Clayton act and Sherman Act.

Under the Supreme Court's ruling in FTC v. Sperry & Hutchinson Co., section 5 of the FTC Act was given an expansive reading to empower the Commission to “define and proscribe an unfair competitive practice, even though the practice does not infringe either the letter or spirit or the antitrust laws” and to “proscribe practices as unfair . . . in their effect on competition.” While previous section 5 FTC actions dealt more with "invitation to collude" situations and facilitating practices, the FTC clearly has now started focusing more on patent practices, particularly in the context of standardized technologies.

In January of 2008, the FTC filed a complaint against company Negotiated Data Solutions ("N-Data") for allegedly charging "excess" licensing royalties for patents related to Ethernet technology in violation of Section 5 of the FTC Act. N-Data obtained the Ethernet-related patents from National Semiconductor Corp, who previously agreed to let the IEEE incorporate them into its Ethernet Standard in exchange for one-time royalties of $1,000 per license. After N-Data tried to "renege" on the original agreement, and tried to increase the royalty payment, the FTC decided to take action. According to the complaint:

N-Data reneged on a prior licensing commitment to a standard-setting body and thereby was able to increase the price of an Ethernet technology used by almost every American consumer who owns a computer. Based on the facts developed by staff during the investigation, we find reason to believe that this conduct violated Section 5 of the FTC Act.

(See earlier 271 Blog coverage here). The Commission emphasized that it was the standard setting context that was crucial to its finding of an unfair method of competition, and that a mere departure from a previous licensing commitment is unlikely to constitute an unfair method of competition. However, according to Rosch, "[s]tandard setting displaces the normal give and take of competition, thus any subversion of that process can have extremely detrimental effects on competition."

Regarding "patent wall" situations, Rosch suggested that "Section 7 of the Clayton Act and the Sherman Act are viable law enforcement tools in this scenario."

In fact, this is not a new scenario. In United States v. Singer Manufacturing Co., the Supreme Court held that, in the context of a broad monopolistic scheme, the transfer of a patent from a Swiss manufacturer to its U.S. licensee to facilitate bringing infringement actions against Japanese competitors violated Section 1. Similarly, in Kobe, Inc. v. Dempsey Pump Co., the Tenth Circuit found the acquisition, nonuse and enforcement of "every important patent" in the field with a purpose to exclude competition, together with other anticompetitive acts, constituted a violation of Section 2. And in Xerox Corp., the Commission entered into a consent decree with Xerox settling a Commission challenge to Xerox's acquisition of the Battelle patents on plain paper copiers allegedly with the purpose and effect of monopolizing the plain paper copier market.

While acknowledging that such actions aren't "bullet-proof" and that additional policy concerns exist, Rosch suggested that the FTC would consider filing such actions after a “careful, intense factual investigation" reveals that "anticompetitive combinations of innovation efforts” are afoot.


- Read Rosch's speech in its entirety here.

- See Rosch's speech from April 2007 on Pharmaceutical Antitrust issues here.

- See FTC study "To Promote Innovation: The Proper Balance of
Competition and Intellectual Property Law and Policy" (Oct. 2003) (link)