PTO Extends Comment Period for 101 Interim Examination Instructions

After releasing the interim examination instructions for evaluating patent subject matter eligibility under 35 U.S.C. 101 on August 29, the USPTO issued a notice on Sept. 17 requesting comments from the public. Strangely, the PTO only provided 11 days for the public to submit all comments (Sept. 28). The USPTO has now extended the comment period to October 17. From the the latest notice:

The USPTO is extending the comment period to ensure that members of the public have sufficient opportunity to submit comments on the Interim Patent Subject Matter Eligibility Examination Instructions. A notice extending the comment period will be published in the Federal Register, and it will provide a new comment deadline of 30 days from the publication date of the notice in the Federal Register. The USPTO will revise the instructions as appropriate based on comments received. Comments that have already been received are under consideration.

Read the full notice here (link)

Do Assignments Require Express Language to Cover CIP Patents?

Gerber Scientific Int'l v. Satisloh AG, No. 3:07-CV-1382, (D. Conn., September 25, 2009, order) (P. Dorsey)

Gerber obtained patents via a broadly-worded assignment conveying all "rights, title and interest" in "the inventions covered thereby and any division reissues and extensions thereof." Notably absent from the assignment was the conveyance of continuation-in-part (CIP) patents and applications.

During litigation, Satisloh moved to dismiss the enforcement of a patent stemming from a CIP related to the previously-assigned patents, arguing that Gerber did not own the patent, and thus had no standing to bring suit. The district court initially dismissed Satisloh's motion. However, on further motion by Satisloh, the court amended the dismissal and certified the issue for interlocutory appeal for the Federal Circuit.

Although the entire ruling will be certified, the Court believes that the issue over which substantial grounds for disagreement exist is whether the Pilkington to Coburn Assignment included the continuation in part (“CIP”) which resulted in the ‘771 patent. The ruling held that although the assignment did not specifically use the term “continuation in part,” the CIP was included in the assignment. The assignment was broadly worded and specifically assigned all “rights, title and interest” in “the inventions covered thereby and any division, reissues, continuations and extensions thereof.”

However, Defendants convincingly argue that reasonable grounds exist for a difference of opinion. Although courts have found variously worded assignments to include CIPs, Defendants are correct that there is no binding precedent holding that an assignment with the exact terms cited above includes CIPs. Furthermore, a substantial ground for difference of opinion can be found even in Rowe Int’l Corp. v. Ecast, Inc., 500 F. Supp. 2d 887, on which the Court heavily relied. Although Rowe held that an assignment’s failure to use the “magic words” [CIP]” “is of no consequence,” the Rowe assignment specifically included “improvements.” Rowe, 500 F. Supp. at 891. The Pilkington to Coburn assignment, in contrast, did not mention “improvements” or use other language that referred specifically to CIPs.

[F]or the reasons stated above, Defendants’ Motion to Amend and Certify for Interlocutory Appeal is granted. All further proceedings in this case are stayed, pending resolution of the interlocutory appeal by the Court of Appeals for the Federal Circuit.

Read/download the order here (link)

Read/download Satisloh's brief for interlocutory appeal here (link)

BPAI: 101 Rejections Shouldn't Be Based on Implication If Hardware is Disclosed

Ex Parte Azuma, Appeal 2009-003902 (BPAI, September 14, 2009)

The Appellant filed a patent application which claimed, among other things,

“[a] computer program product for causing a computer to translate a text in a first language into a second language, the computer program product comprising: a computer usable medium having computer usable program code embodied therewith.”

The specification disclosed that storage media could be a memory, hard disk, floppy/disk drive and "various other hardware configurations" such as, a CD-ROM or DVD-ROM drive. The computer program for controlling the CPU was disclosed as being stored upon such computer usable media as “a distributed magnetic disk, an optical disk, semiconductor memory, or other recording media, or distributed over a network.”

In light of this, the Examiner rejected the claims as being directed to nonstatutory subject matter.

Specifically, the Examiner argued that, even though the Specification suggests that the computer usable medium may be a CD-ROM or DVD-ROM, the Specification also suggests that "other configurations are possible as well." The Examiner therefore concluded that the computer usable medium is open to any reasonable interpretation and that one of ordinary skill in the art can appreciate that a computer usable medium can be interpreted as a carrier wave or a network signal, both of which are considered non-statutory under 35 U.S.C. § 101.

The BPAI ruled that since hardware was disclosed, the Examiner could not implicate non-statutory subject matter into the meaning of the claim term

Referring to the Examiner’s finding that the Specification also suggests that "other configurations are possible as well," we find that the Specification teaches in particular that “various other [hardware] configurations are possible” . . . Since hardware is a tangible medium, we find that the reference to “various other [hardware] configurations” meets the tangibility requirement to be a manufacture.

Thus, based upon the Specification as a whole, we find that Appellant’s description of a ‘computer usable medium’ is based upon tangible storage media, such as a server, floppy drive 109, main memory 103 and hard disk 105 as specified by Appellant.

We find that the Examiner erred in finding that the cited claims implicate the use of carrier waves that embody a machine executable program or data structure. Therefore, since Appellant’s independent claim 13 is limited to being recorded on a (tangible) computer-readable medium, we reverse the Examiner’s rejection of independent claim 13 under 35 U.S.C. § 101 as being directed to nonstatutory subject matter.

The BPAI should consider issuing a precedential or informative opinion on the practice of reading non-statutory features into claims by implication. This has become a common practice in certain areas of the USPTO that creates needless conflict for Applicants when a Specification contain catch-all statements ("other configurations are possible") with regard to mediums.

Read/download the opinion here (link)

USPTO Seeking Comments on Interim Patentable Subjet Matter Guidelines

Earlier, the USPTO issued interim examination instructions for evaluating patent subject matter eligibility under 35 U.S.C. 101 (Interim Patent Subject Matter Eligibility Examination Instructions) pending the Bilski decision. According to the USPTO, the Interim Patent Subject Matter Eligibility Examination Instructions will be used by USPTO personnel in their review of patent applications to determine whether the claims in a patent application are directed to patent eligible subject matter under 35 U.S.C. 101.

Last Thursday, the USPTO requested comments from the public regarding the Interim Patent Subject Matter Eligibility Examination Instructions. Written comments must be received on or before September 28, 2009. No public hearing will be held.

In case you're wondering why the USPTO has provided a scant 11-day lead time for comments,

[T]he Interim Patent Subject Matter Eligibility Examination Instructions relate only to interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice. The USPTO is providing this opportunity for public comment because the USPTO desires the benefit of public comment on the Interim Patent Subject Matter Eligibility Examination Instructions; however, notice and an opportunity for public comment are not required under 5 U.S.C. 553(b) or any other law. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336–37, (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not require notice and comment rule making for ‘‘ ‘interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice.’ ’’)

Comments should be sent by electronic mail message over the Internet addressed to AB98.Comments@uspto.gov.

Comments may also be submitted by facsimile to (571) 273–0125, marked to the attention of Caroline D. Dennison.

Although comments may be submitted by mail or facsimile, the USPTO prefers to receive comments via the Internet.

Read the notice here (link)

WIPO Report 2009: Recession Hits Patent Filings (But Not So Much In Asia)

WIPO held a two-day international symposium that concluded on September 18, 2009, where over 40 heads of IP offices participated in various discussions on IP issues. One primary focus of the event was to address the need to pool efforts at the international level to address the problem of backlogs in patent applications.

WIPO Director General Francis Gurry referred to recently published data that showed that the global backlog in unprocessed patent applications around the world in 2007 was a "staggering" 4.2 million. Considering that backlogs have grown on average at a rate of 8.7% over the past five years, Gurry concluded that “this is unsustainable.” The USPTO accounted for around 28% of this backlog, followed by Japan, the EPO and the ROK.

The symposium comes on the heels of WIPO's World Intellectual Property Indicators 2009 (formerly known as the "World Patent Report"), which showed that, prior to the 2008 meltdown, IP filings were still robust, with 1.85 million patent (+3.7% increase), almost 3.3 million trademark (+1.6%) and approximately 0.62 million industrial design (+15.3%) applications being filed worldwide.

While the recessionary impact on filings is not known yet, international patent filings in the first half of this year were down 14 percent from a year earlier in the United States, but up 19 percent in China. Japanese international patent filings grew 11 percent while Britain's rose 6 percent in the first half of this year, although domestic filings in both countries fell by over 10 percent.

More from the report:

- While patent filings increased by 3.7%, the growth is less than the 5.2% growth recorded the previous year. Approximately, 59.2% of total patent applications in 2007 were filed in China, Japan and the US.

- Companies continued to seek IP protection outside their domestic markets. In 2007, non-residents accounted for 43.3% of the patents filed worldwide, maintaining a level that was established in 2001.

- The JPO is now number 1: while the USPTO traditionally issued the highest number of patents since 1998, this year the Office was surpassed by the JPO. Additionally, China 's SIPO replaced the EPO as the fourth largest office in terms of issuing grants. The five largest patent offices (the patent offices of Japan, the USA, the Republic of Korea, China and the EPO) accounted for 74.4% of total patent grants.

- Some 6.3 million patents were in force in 2007, with residents of Japan and the USA owning approximately 47% of this total.

- In 2008, approximately 163,600 PCT applications were filed, representing a 2.3% increase on 2007 figures. Applicants from the USA accounted for around 32.7% of all PCT filings.

To read/download the 110-page report, click here (link)

See also

"WIPO Report Shows Growth in IP Rights before Onset of Economic Crisis" (link)

"WIPO Symposium Concludes Global Patent Application Backlogs Unsustainable" (link)

See WIPO web page and materials for "Global Symposium of Intellectual Property Authorities," September 17, 2009 to September 18, 2009 (Geneva, Switzerland) (link)

Coverage from AGIP News: "WIPO Symposium Concludes Global Patent Application Backlog Unsustainable" (remarking that participants in the symposium concluded that the PCT should serve as the backbone for work sharing) (link)

"And We're Off!" - Companies Turning To Congress on Patent Reform Issues

While other issues (i.e., health reform, bailouts) continue to dominate the attention of Congress, it appears that patent reform is coming back on the radar, as a recent letter from 59 tech companies point out that, "[w]hile some versions of the legislation have been improved this Congress, additional improvements are in order to ensure that the end product avoids serious unintended consequences."

Specifically, the letter comes out against post-grant review and argues that the PTO is not equipped to handle the inevitable flood of requests:

[T]these proposals represent a huge risk for the Patent and Trademark Office, which already is under severe strain as indicated in Congress’ emergency approval to use trademark fees for patent functions. Adding new obligations to the agency at this time seems extraordinarily unwise. Almost inherently, the basic patent examination function will suffer, with the result of longer patent pendency and lower patent quality. . .

Another troubling aspect of the post-grant review and inter partes reexamination proposals is that, as written, they are vulnerable to a high level of abuse. Specifically, the current construct of the proposals will allow infringers to subject valid patents to lengthy and repeat challenges.

* * *

We agree on the goal of reducing the amount and cost of patent litigation. We do not believe, however, that the post-grant and inter partes provisions, as drafted, will achieve this goal. We urge you to push for improvements to these provisions which will limit the ability of infringers to undermine the very system the legislation attempts to strengthen.

Read/download the entire letter here (link)

See also, "Tech cos. protest patent reform in letter to Locke" (link)

Fed. Cir.: Section 121 "Safe Harbor" Provision Does Not Apply to Continuations

Amgen, Inc. v. F. Hoffman-La Roche, Ltd., No. 09-1020 (Sept. 15, 2009)

Amgen prosecuted a series of patent applications relating to the production of the protein erythropoietin ("EPO") using recombinant DNA technology. All of the patents stemmed from a common specification disclosed in "the '298 application."

During prosecution, the '298 application was subjected to a 7-way restriction. The applicants elected prosecution of one group of claims, which ultimately issued as a patent. Prior to issuance, Amgen prosecuted withdrawn claims as continuation applications, where a number of patents issued as "product patents" and "process patents."

During litigation, Rouche alleged at the summary judgment phase that certain patents stemming from the continuation application were invalid for obviousness-type double patenting, since later-claimed products were covered by earlier-claimed processes. The district court granted summary judgment in favor of the patentee Amgen, ruling that the later patents were shielded from double patenting by 35 U.S.C. § 121, which, in pertinent part states:

A patent issuing on an application with respect to which a requirement for restriction under this section has been made . . . shall not be used as a reference . . . against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application.

In other words, § 121 shields patents that issue on applications filed as a result of a restriction requirement from double patenting invalidation.

Rouche argued that § 121 cannot shield the later patents because they issued from solely continuation applications to which § 121 is inapplicable. Roche contended that § 121 applies exclusively to divisional applications and patents issuing therefrom. Amgen countered that, although the applications were technically filed as "continuations", a court should look to an application’s substance—not its designation—to determine whether it qualifies as a divisional application under § 121’s safe harbor.

The Fed. Cir. dealt with a similar issue recently in Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353 (Fed. Cir. 2008), where the court ruled that CIP's were not eligible for protection of the § 121 safe harbor:

§ 121 on its face refers to "divisional application[s]." . . . Turning to the legislative history, the court observed that a House Report also referred specifically to "divisional application[s]." Notably absent from the legislative history, in the court’s view, was a suggestion "that the safe-harbor provision was, or needed to be, directed at anything but divisional applications." From there, the court "conclude[d] that the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications." Accordingly, the court decided that the § 121 safe harbor did not apply to the patent before it, which issued from a continuation-in-part application.

Noting that the application of § 121 should be "strict", the court ruled that continuation applications were also not eligible:

We recognize that, unlike a continuation-in-part application, a continuation application can satisfy the definition of a "divisional application" in MPEP § 201.06. . . . This distinction, however, does not justify departing from a strict application of the plain language of § 121, which affords its benefits to "divisional application[s]."

* * *

Amgen does not dispute that it denominated the [] applications continuations, that it checked the continuation application box on the submitted form, or that its applications met the PTO’s definition of a continuation application in MPEP § 201.07. . . . Instead, Amgen argues that, because the [] continuation applications could have been filed as divisional applications, we should treat them as such for purposes of § 121. While this argument convinced the district court to regard the [] continuation applications as divisional applications, we are not likewise convinced. We decline to construe "divisional application" in § 121 to encompass Amgen’s properly filed, properly designated continuation applications.

Interestingly, the court noted that, if Amgen filed the continuation applications originally as divisionals, and then filed continuations off of the divisional, the safe harbor provision would be left intact ("intervening continuation applications do not render a patent ineligible for § 121 protection so long as they descended from a divisional application filed as a result of a restriction requirement.").

In vacating summary judgment on the issue of double-patenting, the court added that the continuation provision of section 120 ("[an] application for patent for an invention . . . shall have the same effect . . . as though filed on the date of the prior application") would allow the patentee to rely on "post-invention" developments to show distinctiveness in combating issues of double-patenting. In other words,

[W]hen an issued patent claims a product and discloses, but does not claim, a process for making that product, the patentee, when later seeking a patent on the disclosed process, may present evidence of post-invention, alternative processes that produce the patented product, in order to show that the process and product are patentably distinct.

The 81-page opinion also dives into a multitude of different issues relating to distinctiveness, anticipation, indefiniteness, claim construction and infringement, and DOE - you can read/download the entire opinion here (link).

"Patent Troll Tracker" Trial Begins in E.D. Tex.

Anyone who has followed the patent blogs since last year is familiar with the now-defunct "Patent Troll Tracker Blog", penned by Rick Frenkel, who, at the time, was in-house patent counsel for Cisco. When commenting on patent holding company ESN and it's lawsuit against Cisco, Frenkel alleged on the blog that the filing date for that patent suit was changed after ESN's local counsel "called the EDTX court clerk, and convinced him/her to change the docket to reflect an October 16 filing date, rather than the October 15 filing date." This change was made, according to Frenkel, in order to "try to manufacture subject matter jurisdiction."

ESN's counsel Eric Albritton claims that Frenkel's remarks were defamatory and sued Frenkel together with his employer Cisco, alleging that the company was complicit in posting the allegedly defamatory remarks.

On Monday, the "Patent Troll Tracker" lawsuit began with jury selection and opening arguments. Joe Mullin, who is a reporter at IP Law and Business magazine and author of the Prior Art Blog, is sitting in on the trial and is providing blow-by-blow reporting from the courtroom. From Mullin's post:

• James Holmes [for plaintiff Albritton] said his team will show that Frenkel's posts accused Albritton of a felonious "conspiracy" and were "hurtful, painful, [and] disturbing" to Albritton. Cisco, a $33 billion company, should be taught a lesson by being forced to pay punitive damages, the lawyers said.
• Holmes showed e-mails exchanged between Frenkel, former Cisco patent chief Mallun Yen, and former PR man John Noh--who told his boss he liked to 'play a game' with journalists by pretending he didn't know that the Patent Troll Tracker was actually a Cisco employee.

• Defense lawyers Babcock and McWilliams said Frenkel's post about the changed docket date was dead-on true, noting that no court clerk in the Eastern District could remember ever having changed a docket before. In any case, they maintain Albritton hasn't suffered any financial harm, and he has no real evidence to support his claim of "mental anguish."
• Babcock also argues the defamation lawsuit is intended to gain some leverage against Cisco in ongoing patent lawsuits—and, not coincidentally, squashing Frenkel's attempt to shine a light on the murky world of patent trolls.

Get the complete story from Mullin here (link)

See also Texas Lawyer, "Trial to Begin in Suit Against Cisco, Patent Troll Tracker Blogger" (link)

Kappos Gives First Public Address at IPO Annual Meeting

IPO has now concluded its annual meeting here in Chicago, where one of the many highlights was David Kappos serving as the "kick-off" speaker. In his speech (now posted on the USPTO site), Kappos discussed future plans and goals for the USPTO:

- Reengineer the examiner count system - "we’re going to have a count system that helps everyone get to the point without requiring two or three RCEs."

- Cut pendency across the board, by allowing an applicant to select an application to advance in the queue in exchange for each application they withdraw before substantive examination.

- Focus on global worksharing—which Kappos believes "is key to helping us meet the increasing challenge of efficiently managing the USPTO’s workload."

- "Our biggest challenge – Funding."

- Future objectives include:

• Reducing first action pendency to 10 months and overall pendency to 20 months;

• Decreasing the size of the patent application backlog to approximately 300,000 cases;

• Reducing patent appeals pendency to 3 months;

• Reducing reexamination pendency to 1 year;

• Bringing the quality of PCT processing to world-class level; and

• Implementing a robust IT system capable of supporting all the USPTO’s operations on a 24/7 basis, and capable of facilitating full electronic patent and trademark processing.

Read the speech in its entirety here (link)

MORE: According to the Just a Patent Examiner Blog, Kappos has started a blog. For the time being, it's only hosted on the internal USPTO servers. However, according to the blog, "we plan to make the blog available to the public in the coming weeks." Also, internal USPTO announcements indicate that a joint union and management task force will begin the work of "addressing the patent examiner count system."

Fed. Cir. Chops Back $358M Lucent Verdict; Gives Clinic on "Patent Damages Apportionment"

Lucent Technologies, Inc. v. Gateway, Inc., No. 08-1485 (Sept. 11, 2009)

Microsoft appealed the lower court's findings and jury verdict of $358M against Microsoft Corp. for use of its “pop-up calendar” in Microsoft Outlook. With regard to validity, the court affirmed the lower court's finding that the patent-at-issue was not obvious. Regarding infringement, the Fed. Cir. also found Microsoft liable for indirect infringement, but noted that "Lucent's direct evidence of infringment was limited . . . [n]evertheless, [the] circumstantial evidence was just adequate to permit a jury to find that at least one other person within the United States during the relevant time period . . . had performed the claimed method."

The remainder of the 64-page opinion addressed the issue of damages, where the court provided its most detailed analysis of the Georgia-Pacific factors in recent memory. Specifically, the court looked at the most common approach for determining damages - the "hypothetical negotiation" approach to determine the proper royalty upon which the parties would have agreed had they successfully negotiated an agreement just before the infringement began

Prior to its analysis, the court noted the following with regard to the district court's "gatekeeping" role for damages:

Microsoft does not argue on appeal that any of the evidence relevant to the damages award was improperly before the jury. At times, Microsoft’s briefs seem to suggest that the district court judge "abdicated" her role as a gatekeeper. The responsibility for objecting to evidence, however, remains firmly with the parties. Here, the record reveals that, at trial, Microsoft objected neither to the introduction of any of the licenses discussed below nor to the testimony of Lucent’s expert as it related to those licenses. In this instance, the district court judge had no independent mandate to exclude any of that evidence.

One of the first issues regarding damages was the fact that the jury issued a lump-sum royalty that amounted to approximately 8% of the sale price of Outlook. This was problematic to the Fed. Cir. for a number of reasons:

First, no evidence of record establishes the parties’ expectations about how often the patented method would be used by consumers. Second, the jury heard little factual testimony explaining how a license agreement structured as a running royalty agreement is probative of a lump-sum payment to which the parties would have agreed. Third, the license agreements for other groups of patents, invoked by Lucent, were created from events far different from a license negotiation to avoid infringement of the one patent here . . . Lucent submitted no evidence upon which a jury could reasonably conclude that Microsoft and Lucent would have estimated, at the time of the negotiation, that the patented date-picker feature would have been so frequently used or valued as to command a lump-sum payment that amounts to approximately 8% of the sale price of Outlook.

Additionally, the court found that expert testimony "urging jurors to rely on speculation", without any more was "insufficient":

The law does not require an expert to convey all his knowledge to the jury about each license agreement in evidence, but a lump-sum damages award cannot stand solely on evidence which amounts to little more than a recitation of royalty numbers, one of which is arguably in the ballpark of the jury’s award, particularly when it is doubtful that the technology of those license agreements is in any way similar to the technology being litigated here . . . In the present case, the jury had almost no testimony with which to recalculate in a meaningful way the value of any of the running royalty agreements to arrive at the lump-sum damages award.

Also, regarding the apportionment of damages (Georgia-Pacific factors 10 & 13), the court determined that the pop-up calendar feature was a "tiny feature" that did not warrant royalties based on the entire Outlook product:

The evidence can support only a finding that the infringing feature contained in Microsoft Outlook is but a tiny feature of one part of a much larger software program. Microsoft’s expert explained that Outlook’s e-mail component is "the part of Outlook that’s most commonly used by our customers." . . . In short, Outlook is an enormously complex software program comprising hundreds, if not thousands or even more, features. We find it inconceivable to conclude, based on the present record, that the use of one small feature, the date-picker, constitutes a substantial portion of the value of Outlook. . . . . For these reasons, Factors 10 and 13 of Georgia-Pacific provide little support for the jury’s lump-sum damages award of $357,693,056.18.

Finally, in the entire market value (EMV) analysis, the court addressed criticisms in Congress and by high technology companies about the court's use of the EMV rule, which “allows for the recovery of damages based on the value of an entire apparatus containing several features, when the feature patented constitutes the basis for customer demand." The court agreed with Microsoft that the jury improperly applied the EMV rule in this case, by using the entire revenues of Microsoft Outlook as the royalty base.

Also, the court defended the use of EMV despite criticism from various academic and industry circles:

Some commentators suggest that the entire market value rule should have little role in reasonable royalty law. . . . But such general propositions ignore the realities of patent licensing and the flexibility needed in transferring intellectual property rights. The evidence of record in the present dispute illustrates the importance the entire market value may have in reasonable royalty cases. The license agreements admitted into evidence (without objection from Microsoft, we note) highlight how sophisticated parties routinely enter into license agreements that base the value of the patented inventions as a percentage of the commercial products’ sales price. There is nothing inherently wrong with using the market value of the entire product, especially when there is no established market value for the infringing component or feature, so long as the multiplier accounts for the proportion of the base represented by the infringing component or feature.

Nevertheless, in light of the lack of substantial evidence supporting the original damages verdict, the Fed. Cir. remanded the case for further proceedings.

Download a copy of the opinion here (link)

Willfulness Can Still Be Pled Even If Preliminary Injunction Is Not Sought

When the Federal Circuit issued its Seagate decision on willful infringement, the court stated the following on post-filing willfulness:

It is certainly true that patent infringement is an ongoing offense that can continue after litigation has commenced. However, when a complaint is filed, a patentee must have a good faith basis for alleging willful infringement. Fed. R. Civ. P. 8, 11(b). So a willfulness claim asserted in the original complaint must necessarily be grounded exclusively in the accused infringer's pre-filing conduct. By contrast, when an accused infringer's post-filing conduct is reckless, a patentee can move for a preliminary injunction, which generally provides an adequate remedy for combating post-filing willful infringement . . . A patentee who does not attempt to stop an accused infringer's activities in this manner should not be allowed to accrue enhanced damages based solely on the infringer's post-filing conduct. Similarly, if a patentee attempts to secure injunctive relief but fails, it is likely the infringement did not rise to the level of recklessness.

The Seagate opinion went further to state that the position on preliminary injunctions was not a per se rule, and its application would depend on the facts of each case.

Nevertheless, many defendants have latched onto this language in the district courts in an effort to get the willfulness issue "off the table" early using 12(b)(6) motions.

Affinity Labs of Texas LLC v. Alpine Electronics, No. 9:08-CV-171 (E.D. Tex., Sept. 2, 2009, order) (R. Clark).

Affinity Labs commenced their case on August 29, 2008. In its initial complaint, Affinity Labs neither made a claim of willful infringement nor requested a preliminary injunction. At a subsequent Case Management Conference, Affinity Labs confirmed that it had not, at that time, made a willfulness claim, and stated that Defendants were unaware of the asserted patent until the case was filed. A few months later, Affinity Labs amended its complaint to raise a willfulness claim for the first time. Defendants moved to dismiss Affinity Labs’s claim of willful infringement on the grounds that Affinity Labs cannot base its claim entirely on Defendants’ post-filing conduct without first moving for a preliminary injunction.

The court rejected this argument:

It would make little sense to implement a per se rule where a patentee who relies solely on post-filing conduct for his willfulness claim is foreclosed from receiving enhanced damages if he does not also seek preliminary injunctive relief. Injunctive relief is not always appropriate under the facts of a case. See eBay, Inc. v. MercExchange . . .There is little difference between the situation where the court denies a preliminary injunction and that where counsel believes a motion for a preliminary injunction would be inappropriate and opts instead not to file one after considering his or her ethical obligations under Fed. R. Civ. P. 11.3 The Seagate court explicitly declined to apply a per se rule in the first situation, and the court sees no reason why a different result is mandated in the latter situation.

Defendants do not suggest that the facts alleged by Affinity Labs in its second amended complaint do not state a claim for willfulness; they merely contend that Affinity Labs cannot raise a willfulness claim based solely on post-filing conduct without first seeking a preliminary injunction. For the reasons discussed above, the court rejects this argument. Accepting the facts pled in Affinity Labs’s complaint as true, the complaint states a claim to relief that is plausible on its face. Defendants’ motion to dismiss for failure to state a claim is denied.

Read/download the opinion here (link)

The opinion also has a handy run-down of recent decisions on this same issue, where a majority of district courts also came out against the per se rule:

- ACCO Brands, Inc. v. PC Guardian Anti-Theft Prods., Inc., 592 F. Supp. 2d 1208, 1227 (N.D. Cal. 2008) - court concluded that Seagate does not hold “that only conduct after the patentee files for a preliminary injunction may be considered as a basis of a willfulness claim” and denied Defendants’ motion for summary judgment on willfulness.

- St. Clair Intellectual Property Consultants, Inc. v. Palm, Inc., 2009 WL 164751 at *1 (D. Del. Jun. 10, 2009) - granted Plaintiff’s request to file an amended complaint adding a willfulness claim and noting that “there is no per se requirement for a plaintiff to file for preliminary injunctive relief before raising a wilful infringement claim.”

- Krippelz v. Ford Motor Co., 2009 WL 799463 at *4 (N.D. Ill. Mar. 25, 2009) - rejecting Defendant’s argument that failing to move for a preliminary injunction waived any right to damages for willfulness, stating that “the proposition that failure to seek a preliminary injunction constitutes a forfeit of a claim for willful infringement is neither an absolute nor a general rule applicable to all patent cases.”

- Novartis Pharmas. Corp. v. Teva Pharmas. USA, Inc., 2009 WL 483865 (D.N.J. Feb. 25, 2009) - Plaintiff was denied a preliminary injunction, the court stated that it “agrees with [Plaintiff] that Seagate did not create a per se rule of dismissal, and finds that it may be possible for [Plaintiff] to show after discovery that [Defendant] acted in reckless disregard of the ‘objectively high likelihood’ that it was infringing on a valid patent.”

PatentFreedom To Offer Subscription-Based Reexam Service to Attack NPE Patents

Joff Wild from IAM Magazine attended the CIP Forum 2009 in Göteborg Sweden and provided an interesting report on a presentation given by Dan McCurdy, who is the chairman of PatentFreedom and CEO of Allied Security Trust. In his presentation, McCurdy announced the launch of a new initiative called "Integrity" which will essentially serve as an inter-partes reexam gadfly service against problematic patents owned by NPE's (aka "trolls").

PatentFreedom offers subscription-based services, priced between $15- $25K, "designed to help operating companies and their advisors more effectively assess, respond to, and ultimately reduce the specific threats posed by NPEs." Membership is open "to any operating company, law firm , or other entity that derives the majority of its revenues from the sale of products or services other than services involving the sale, enforcement, or licensing of intellectual property" (for a list of service offerings, click here).

The new "Integrity" service will be available to PatentFreedom subscribers, where each subscriber chooses which sectors they would like PatentFreedom to focus on when seeking to identify patents to challenge. Importantly (and perhaps oddly), subscribers cannot single out specific patents on their own - the PatentFreedom team will ultimately make this decision, based on subscriber portfolio assessments identifying particularly threatening and potetially vulnerable patents.

Wild provides further details:

Companies can identify as many sectors as they wish, but will have to pay a minimum of $100,000 for each one they do select. McCurdy estimates that the cost of an inter partes re-examination is between $100,000 and $200,000. He told me that the idea was not only to deprive NPEs/trolls of the weapons they use to challenge operating companies, but also to sow uncertainty in the minds of their financial backers. Will investors be so willing to fund an NPE/troll if there is a chance that the patent(s) it seeks to use to generate an income will be held invalid in a USPTO process that costs a fraction of the amount needed to fight a full-scale litigation?

According to McCurdy, PatentFreedom data shows that close to 4,000 operating companies doing business in the US have now been sued by an NPE/troll. The cost of NPEs/trolls to those who they targeted in 2008 was betwen $7 billion and $10 billion. Overall, they now account for 17% of all American patent litigation, although in the technology industries that figure climbs to more than 50%, with some individual companies experiencing a hit rate of 90%. It is time, McCurdy says, to be much more aggressive in fighting the threat that NPEs/trolls pose. For example, he wondered, whether operating companies should give work with law firms that routinely represent NPEs/trolls (he showed a slide of those which do so and some big names were on the list) or employ funds that back NPEs/trolls to run things such as pension and healthcare plans. When fighting a war, he stated, you go after the fight chain. And, he said, operating companies are engaged in a war with NPEs/trolls.

Read Wild's full post here (link)

"Senior Management Changes" at the USPTO; Doll Retires

Today the PTO announced that, after 35 years at the USPTO, Commissioner for Patents John Doll has intends to retire from the agency on October 2, 2009. As a result, David Kappos has nominated longtime USPTO executive Robert (“Bob”) Stoll to the position of Commissioner for Patents, and has named Margaret (“Peggy”) Focarino Deputy Commissioner for Patents.

It is expected that U.S. Commerce Secretary Gary Locke will appoint Stoll after Doll’s retirement becomes official. The Commissioner appointment is for a term of five years.

It is not certain how Doll's retirement will affect the ongoing continuation rules litigation (Tafas v. Doll), but it certainly won't help the PTO's case at this point.

See Stoll's biography here (link)

See Focarino's biography here (link)

Read the PTO announcement in its entirety here (link)

Gutierrez On Patent Harmonization

Horacio Gutierrez, Corporate Vice President and Deputy General Counsel of Microsoft, posted the following on Microsoft's official blog on Tuesday:

Big challenges certainly confront the global patent system: Escalating patent application backlogs; lengthening pendency periods; increasing costs of patent prosecution; dubious patent quality due to the global explosion of prior art and the time allowed to examine applications; and examination inefficiency due to duplication of work by multiple offices.

But these challenges also present unprecedented opportunity. One of the biggest is the opportunity to advance patent harmonization.

Global patent harmonization is not just wishful thinking about an ideal patent system. Rather, it is a necessity if national patent authorities are to overcome the substantial difficulties they face.

Over 3.5 million patent applications are pending around the world, including over 750,000 in the U.S. Pendency periods are extending to three, four or in some case five years before final patents are issued. The cost of this workload to patent applicants and patent offices is too high, and the delays in securing patents are too long for entrepreneurs and large enterprises alike.

In today’s world of universal connectivity, global business and collaborative innovation, it is time for a world patent that is derived from a single patent application, examined and prosecuted by a single examining authority and litigated before a single judicial body.

A harmonized, global patent system would resolve many of the criticisms leveled at national patent systems over unmanageable backlogs and interminable pendency periods.

To increase efficiency and enhance patent quality, patent offices also need to leverage collaboration and work sharing opportunities. As I blogged previously, national patent offices should be commended for their early efforts at work sharing through projects such as the Patent Prosecution Highway and the "IP5"partnership.

The logical next step is to accelerate the work underway to align patent approval procedures and application formats, including a common digital application, and to collaboratively set standards for patentable subject matter, adequacy of disclosure and enablement requirements, and the completeness of the examination record. Bold action is needed. Stringent criteria must be established and clearly understood so patent search and examination results can be accepted by patent authorities around the world.

By facing the challenges, realizing a vision, overcoming political barriers, and removing procedural obstacles we can build a global patent system that will promote innovation, enrich public knowledge, encourage competition and drive economic growth and employment. The time is now – the solutions are in reach.

See the post here (link).

What is interesting here is that the call for harmonization appears to go beyond the standard administrative reforms ("it is time for a world patent that is derived from a single patent application, examined and prosecuted by a single examining authority and litigated before a single judicial body"). Such a position, particularly within the U.S., is quite unusual.

Of course, speculation abounds over the meaning of the statement, but it is worthwhile to note that the statement was probably released in anticipation of WIPO's upcoming symposion on September 17th titled "Symposium to Address Operational Deficiencies in Global IP Systems" (link). More details will follow.

Now It Begins? Litigation Rumors Surface Over Intellectual Ventures

Intellectual Ventures (IV) has insisted for a long while that its accumulation of patents has nothing to do with patent litigation. In fact, the company has prided itself on not filing any lawsuits, despite the claim that its patent portfolio, comprising 27,000 patents, has brought in over $1B in licensing revenue. Recently, IV was rumored to have struck a $120M patent deal with Intuit Inc., and also struck deals with companies like Cisco and Verizon for between $200M and $400M apiece.

Interestingly, no one knows the circumstances surrounding IV's licensing deals - to date, most every license is shrouded in mystery (Intuit's SEC filing stated that the company "entered into an agreement to license certain technology" for past and future licensing rights. The filing did not disclose the technology, the IP or the licensor.) Worse still, IV operates using a multitude of shell companies, making it difficult to track ownership of the patents.

Recently, IV was rumored to be engaging in "catch and release" licensing with some of its patents - after getting a particular patent or portfolio, IV gives prospective licensees a timetable to pay a set amount. After the time period expires, the patent is then sold off to anyone (read: patent plaintiff firm) that feels they can monetize the patent(s), with a "back end" payment being negotiated in favor of IV. In other words, IV has allegedly started to "outsource" their patent litigation.

Zusha Elinson from the Recorder has an excellent piece on IV's alleged foray into patent litigation, where the article covers the saga behind Picture Frame Innovations LLC who recently filed suit (see complaint here) against Kodak and CDW, seeking millions of dollars in damages. Elinson tracks the history of the patent, the inventors, owners, and even looks at the attorneys handling some of the behind-the-scenes matters to show IV's involvement, and concludes that the litigation represents "a new phase" in IV's business model.

- Read "Intellectual Ventures Takes Indirect Route to Court" (link)

NOTE1: An interesting factoid about the litigation is that the lead attorney for the plaintiff is none other than Ray Niro.

NOTE2: The complaint states that Picture Frame Innovations LLC is located at "125 South Wacker Drive, Suite 300 Chicago, IL 60606" - this location appears to be nothing more than a virtual office space.

NOTE3: In case anyone is looking for more information on IV and its collection of shell companies (over 362 of them in all), you can order a report from Avancept LLC that will give you all the grueling details over the span of 650+ pages. To order a report (or read the report summary), click here.