Monday, June 28, 2010

SCOTUS Bilski Decision: "Do No Harm"

Bilski v. Kappos, No. 08–964 (June 28, 2010)

The Supreme Court struck down Bilski's patent application directed to a procedure for instructing buyers and sellers how to protect against the risk of price fluctuations.  In its analysis, the Court essentially found that existing statues and case law were sufficient to conclude that the application merely claimed an abstract idea.

35 U.S.C. §101

The Court stated at the outset that interpretation of the statute, unless otherwise defined, would be interpreted using the words of the statute "taking their ordinary, contemporary, common meaning."  Furthermore, the opinion added that "[t]his Court has more than once cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.'"

THE FEDERAL CIRCUIT'S "MACHINE-OR-TRANSFORMATION TEST"

The Court of Appeals incorrectly concluded that this Court has endorsed the machine-or-transformation test as the exclusive test.  It is true that Cochrane v. Deener, 94 U. S. 780, 788 (1877), explained that a “process” is “an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.”  More recent cases, however, have rejected the broad implications of this dictum; and, in all events, later authority shows that it was not intended to be an exhaustive or exclusive test.
This Court’s precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible “process.”

DEFENDING COMPUTER SOFTWARE PATENTS

The Court's opinion clearly recognized computer software as patent-eligible subject matter:
[I]t was once forcefully argued that until recent times, “well-established principles of patent law probably would have prevented the issuance of a valid patent on almost any conceivable computer program.” . . . But this fact does not mean that unforeseen innovations such as computer programs are always unpatentable. . . .Section 101 is a “dynamic provision designed to encompass new and unforeseen inventions.” . . . A categorical rule denying patent protection for “inventions in areas not contemplated by Congress . . . would frustrate the purposes of the patent law.”

DEFINING PATENTABLE SUBJECT MATTER

On this issue, the Court was careful to not specify any bright-line test on patentable subject matter:
It is important to emphasize that the Court today is not commenting on the patentability of any particular invention, let alone holding that any of the above-mentioned technologies from the Information Age should or should not receive patent protection. This Age puts the possibility of innovation in the hands of more people and raises new difficulties for the patent law. With ever more people trying to innovate and thus seeking patent protections for their inventions, the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck.
BUSINESS METHOD PATENTS: THE GOOD

The Court's opinion clearly indicated that there was no categorical exemption for business method patents
The term “method,” which is within §100(b)’s definition of “process,” at least as a textual matter and before consulting other limitations in the Patent Act and this Court’s precedents, may include at least some methods of doing businessThe Court is unaware of any argument that the “‘ordinary, contemporary, common meaning,’” of “method” excludes business methods. Nor is it clear how far a prohibition on business method patents would reach, and whether it would exclude technologies for conducting a business more efficiently.

BUSINESS METHOD PATENTS: THE BAD

Clearly, a significant number of Justices (Stevens, Ginsburg, Sotomayor, Breyer) have issues with business method patents and would like to see them banished from patent law.  In Stevens' concurring opinion, he states:
The breadth of business methods, their omnipresence inour society, and their potential vagueness also invite a particularly pernicious use of patents that we have long criticized. As early as the 19th century, we explained that the patent laws are not intended to “creat[e] a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts.”

These many costs of business method patents not only may stifle innovation, but they are also likely to “stifle competition,” . . . Even if a business method patent is ultimately held invalid, patent holders may be able to use it to threaten litigation and to bully competitors, especially those that cannot bear the costs of a drawn out, fact-intensive patent litigation. That can take a particular toll on small and upstart businesses. Of course, patents always serve as a barrier to competition for the type of subject matter that is patented. But patents on business methods are patents on business itself. Therefore, unlike virtually every other category of patents, they are by their very nature likely to depress the dynamism of the marketplace.
 CONCLUSION

In essence, the opinion simply negates the "machine-or-transformation" test as the sole test for patent eligibility.  In a way, the opinion could potentially lead to the broadening of patentable subject matter eligibility, since courts could undertake other "tests" for their determination (although the likelihood of this is pretty low).

Interestingly, the breadth of the ruling is an open question.  As Tom Goldstein pointed out in the SCOTUS blog,
Justice Kennedy seemingly suggested that the Court favored the basic patent eligibility “of inventions in the Information Age,” including to some extent with respect to “software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals.”  But that part of the opinion is only a plurality – not controlling – because Justice Scalia did not join that discussion and did not explain his reasons for declining to do so.

(Finally!) The Bilski Decision Arrives

The opinion is out - as expected, the SCOTUS held Bilski's application was not statutory subject matter:

Petitioners’ remaining claims are broad examples of how hedging can be used in commodities and energy markets. Flook established that limiting an abstract idea to one field of use or adding token post solution components did not make the concept patentable. That is exactly what the remaining claims in petitioners’ application do. These claims attempt to patent the use of the abstract idea of hedging risk in the energy market and then instruct the use of well-known random analysis techniques to help establish some of the inputs into the equation. Indeed, these claims add even less to the underlying abstract principle than the invention in Flook did, for the Flook invention was at least directed to the narrower domain of signaling dangers in operating a catalytic converter.
* * * 
Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr.

And nothing in today’s opinion should be read as endorsing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357. It may be that the Court of Appeals thought it needed to make the machine-or-transformation test exclusive precisely because its case law had not adequately identified less extreme means of restricting business method patents, including (but not limited to) application of our opinions in Benson, Flook, and Diehr. In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text.

The judgment of the Court of Appeals is affirmed.
More analysis to follow . . .

For a copy of the opinion, click here (link)

Thursday, June 24, 2010

Ground Zero: Monday's the Day For Bilski

The Court has voted unanimously to drive patent lawyers crazy.

- Tom Goldstein, SCOTUS "Live" Blog reporting, June 24, 2010 10:21 AM
No Bilski opinion today.  The Chief Justice announced that the Court will have its final opinions on Monday (the 28th) and that will close the Term, with the exception of any remaining orders in pending cases.

The SCOTUS Blog indicates that Stevens "almost certainly has Bilski, which suggests a narrow approach to permitting business method patents but probably not a extremely detailed test."

Tuesday, June 22, 2010

Rader, Michel Weigh in on the Patent System and Patent Reform

Matthew Dowd, a litigation and appellate attorney in Wiley Rein's Intellectual Property and Food & Drug practices, recently interviewed Chief Judge Randall R. Rader and former Chief Judge Paul R. Michel of the U.S. Court of Appeals for the Federal Circuit. Matthew discussed various topics with the judges, including issues of proposed patent reform legislation, inequitable conduct, Patent Office procedures, international patent law, and other aspects of the court.

Some choice excerpts:

MICHEL: I think there are many, in particular, in the academic world, who seem to assume that nearly all useful innovation would occur anyway, in the absence of the patent system. Certainly some individual inventors don’t need big labs, big staffs, big budgets and years and years of R&D effort. They might create a particular new invention without the incentive of a patent. And there may be individual scientists who likewise might invent without the incentive of a patent. But for most inventions, it seems clear that signifi cant investment of money up front is needed, and it can only come from two sources - either from government grants or from private finance. And it seems clear that, in the current environment, our national budget is in disastrous shape. The defi cits and total indebtedness of the country are enormous. So I don’t see how we can look to public funds being invested in R&D to save the country’s economy from steady decline that I think it otherwise will experience. It will have to be private money. And it seems absolutely clear that you often can’t get significant private money to finance R&D, except by the prospect of powerful patents. So I think the economic future of the country really is going to turn out to rest primarily on the strength of the patent system.
On patent litigation and PTO salaries:
MICHEL: [I]f you’re talking about litigation, I think American civil litigation in general, commercial litigation of which patent enforcement is a part, could be improved by reforms in discovery and in motions practice. My impression is there’s a lot of excess discovery—very costly, very time consuming, and very disruptive to the companies involved. Millions and millions of dollars in a patent case can be spent on just complying with discovery demands. I’m very impressed by the comments of magistrate judges, for example, who talk about how, after all the discovery and disputes are complete, 99.99% of the discovered material turns out not to be relevant to trial, and not used at trial. In a way, it was all a waste, looking at it in hindsight. So, if I could redesign the American litigation system to be more like the British high court in London, where most of the patent cases are tried much faster and cheaper than here, I’d favor that. So, to that extent, I’d favor imitating some other jurisdiction but not generally.

In terms of the patent office itself, I’m told that the salaries of patent examiners in the European Patent Office are better than the salaries of examiners here in the United States. So in that way, I’d like to imitate some foreign Patent Office practices. I’m told they have vastly more experience and vastly better paid examiners. Not only the primary examiners but supervisory levels as well and I certainly would favor that amount of imitation of foreign practices. But in general, I think our system is very good. Not perfect. No system is perfect. But I certainly can’t think of any country’s patent law that I would say “Let’s swap because country ‘X’ has better patent law than we do.”
On Director Kappos:
MICHEL: I think Director Kappos has been a breath of welcome fresh air in every way, and has done everything humanly possibly within the horrible constraints that he’s working under, but he can’t do anything more. He needs more people, better people, people to stay longer, vastly better computers and better fees, none of which he can give himself. They all have to come from the Congress. I think that Director Kappos is much too polite to complain, but I think when he took this job, he expected he would get heavy support from Congress of every sort, financial and otherwise. Instead what’s happened is that they’ve cut his budget by using the early, too-low estimate of fee income to set the budget ceiling. It turns out the estimate of fees was wrong and the later estimate showed more fees coming in. But the way Congress set the ceiling, now there will be more PTO money dumped into the general treasury instead of supporting the horribly underfinanced Patent Offi ce. If I were David Kappos—and I’m not saying what he thinks or feels because I don’t know, he doesn’t complain, I don’t ask him, it’s none of my business—I would feel very ill-treated by the Congress with this effective cut in his budget, which is already way too low, and now it’s cut even further.
The interview is being published in a special Summer Issue of Medical Innovation & Business Journal. The special issue is devoted to the question of patent reform and the current legislation pending before the House and Senate.
 
A preview of the interview can be downloaded here (link)

Monday, June 21, 2010

Patent Holding Company Targets Law Firms and Corporations Over Annuity and Renewal Services

WhitServe LLC v. Benesch Friedlander Coplan & Aranoff LLP et al., 8-10-cv-01639 (D. Md. 2010).

WhitServe previously sued Computer Packages, Inc. (“CPI”) on patents relating to online patent annuity and trademark renewal payment service.  WhitServe prevailed with a finding of willful infringement against CPI and was awarded $8.3M.  Whitserve previously tried to add certain CPI customers to the action, but was precluded from doing so by the district court.  After receiving the verdict in May, WhitServe has started to go after corporations and law firms utilizing CPI's services.  From the complaint:

During the course of the Connecticut litigation, WhitServe sought damages attributable to the law firms' service fees and the benefits derived by corporate users, since CPI is a joint tortfeasor with the law firms and corporations and jointly and severally liable for their infringement. Although CPI provides its clients with the EARS products, CPI sought to avoid its liability as a joint tortfeasor. Through motions to preclude, CPI sought to prevent WhitServe from introducing evidence of the law firms' revenue from their use of the EARS products on the grounds that the law firms' revenue far exceeded its own and CPI would not be willing to pay a royalty for the law firms' or corporations' use of EARS. The Connecticut court granted CPI's motion to preclude WhitServe from introducing evidence at trial regarding these revenues and benefits on the grounds that WhitServe did not rely on actual income figures from CPI's customers. Thus,WhitServe's damages associated with the law firms' and corporations' use of the EARS products was not resolved by the Connecticut litigation.

WhitServe adds:
Plaintiff WhitServe engaged the services of independent investigators to identlfy customers of CP'i which are using the EARS products. The named Defendants were identified by the independent investigators pursuant to those investigations. The identities of additional Does will be added as they are identified by Whitserve's investigators andfor through discovery of CPi.
WhitServe is founded by Wesley Whitmyer, Jr. who also practices as a patent litigator at St. Onge Steward Johnston & Reens.

The patents-in-suit are

United States Patent No. 5,895,468, entitled "System Automating Delivery Of Professional Services"
United States Patent No. 6,182,078, entitled "System For Delivering Professional Services Over The Internet"

Download a copy of the complaint here (link)

Hat tip: Docket Report

Fed. Cir.: Deficient Claim for Priority Can't Be Fixed in a Subsequent Continuation

Encyclopaedia Britannica v. Alpine Electronics of America, Case No 09-1544. (June 18, 2010)

Britannica alleged infringement of two patents relating to a multimedia database search system for retrieving textual and graphical information.  Both patents stemmed from a series of continuations dating back to 1989 (the '917 application).

During litigation, defendants claimed (a) the patents were not entitled prioriy to 1989, and (b) the patents were invalid over a related Britannica WO application that published more than one year prior to the earliest priority date for the two patents.

One patent application (the '955 application) was filed on the same day the parent issued as a patent.  The application did not have a filing fee, inventor declaration, and the first page of the application was missing.  No claim for priority was made in the application.  The PTO responded with a Notice of Incomplete Application and a Notice to File Missing Parts, and indicated that the application would be assigned a filing date when it received page 1 of the specification unless the applicant established by petition that the application was complete without page 1.

Britannica responded with a petition arguing that the missing page was not necessary to understand the subject matter claimed, but did not include an oath or declaration from the inventors to support its petition.  The PTO ultimately dismissed the petition, and the application was ultimately abandoned.

Prior to abandonment, Britannica filed another continuation application that claimed priority to the '955 application, as well as the earlier applications.  The district court held that the continuation was not entiled to the earlier priority because it did not contain a specific reference to the earlier application as required by 35 U.S.C. § 120.  The district court reasoned that because the ’955 application was not entitled to the priority date, later filed patents could not claim priority through the later-filed  application.

Noting the issue was "one of first impression for this court", the Federal Circuit held that 35 U.S.C. § 120 requires that an intermediate applicationin a priority chain "contain a specific reference to the earlier filed application."

Section 120 allows an application for a patent to “have the same effect, as to such invention, as though filed on the date of the prior application.” However, there are several requirements a later-filed application must meet in order to be entitled to this benefit under § 120. First, the invention described in the new applica-tion must be “disclosed . . . in an application previously filed in the United States.” Second, the application must be “filed by an inventor or inventors named in the previously filed application.” Third, the application must be co-pending with the earlier application, or “filed before the patenting or abandonment of or termination of proceedings on the first application.” Fourth, the application must “contain[] or [be] amended to contain a specific reference to the earlier filed application.”

* * *

Later applications cannot amend the ’955 application and restore its entitlement to priority. The ’955 application failed to claim priority to the ’917 application. The applicants allowed the ’955 application to go abandoned even after being informed by the PTO of its infirmities. It makes no sense to allow the applicant to rewrite history and resurrect the ’955 application’s prior-ity claim. The ’955 application did not contain a specific reference to the ’917 application. Therefore, it failed to satisfy the requirements of § 120 and is not awarded the benefit of the earlier filing date in the United States. There does not actually appear to be any dispute over this—the ’955 application failed to meet all four require-ments of § 120 and therefore does not have the same effect as though filed on the date of the ’917 application. Britannica’s claim that a later application can cure this defect and restore the priority chain cannot be correct.

AFFIRMED

Read/download the opinion here (link)

(Sigh) Still no Bilski Decision from SCOTUS

Next batch of opinions are scheduled to be released this Thursday . . . stay tuned.

Wednesday, June 16, 2010

USPTO Close to Agreement With POPA to Overhaul Performance Review for Examiners

USPTO management has worked with representatives of the patent examiners union (POPA) to establish a proposal to "better align the performance standards for patent examiners with the USPTO’s goals for increasing quality in patent examination and reducing the backlog of pending patent applications." If adopted, the changes would be the first major revision to the patent examiners’ performance appraisal plan (PAP) since 1986.

Some of the proposed changes to the Performance Appraisal Plan (PAP) include:

•     Establishing a “Stakeholder Interaction” element that emphasizes routine use of interviews to facilitate compact prosecution and timely responsiveness to requests for personal interviews;

•     Revising the performance standards to include a single quality element for all examiners—increasing the focus on examination quality and improve the transparency of how quality is measured; and

•     Revamping the workflow element to provide examiners more opportunities to use their professional discretion to manage their own workflow.

POPA President Robert Budens is upbeat about the proposal, remarking

"Where other efforts to revise the examiner PAP over the past quarter century have failed, this effort has been successful because management was willing to include POPA in the process . . .this spirit of cooperation has helped to create a new PAP that we feel is beneficial to the examiner while also setting the agency on a more direct path to shorten pendency while maintaining high quality examination."
POPA’s leadership is now sending the revised performance standards to its members for a vote, which is expected to be held in July.  If approved, the new performance standards could be implemented as soon as the 2011 fiscal year.

Of course, the devil will be in the details, which the PTO assures will be provided in the coming weeks . . .


See the USPTO press release here.

Monday, June 14, 2010

S.D. Fla. On Motions to Stay Pending Reexamination

Fusilamp LLC v. Littlefuse, Inc., Case No. 10-20528-CIV (June 7, 2010, order)

In denying a request to stay litigation in light of a pending ex parte reexamination proceeding, Judge Altonaga stated:

District courts have an inherent power to manage their dockets and are in no way required to stay an ongoing litigation pending a patent reexamination. . . . To grant Littelfuse’s request would be to stay the entire litigation until the USPTO completes its review. The requested stay would only expire once the USPTO completes its reexamination and the appellate process has been exhausted as well. See Ortega Trujillo, 221 F.3d at 1264 (concluding that a stay was indefinite because it would be in place until the conclusion of the trial and the appellate process of another tribunal). Additionally, the Court cannot be assured that the reexamination process will proceed quickly; as Fusilamp, USA points out, the reexamination process takes on average 25.4 months to complete, and another 24 months on average for appeals. See CTI-Container Leasing Corp., 685 F.2d at 1288 (determining a stay to be indefinite when accurate predication of the length of the stay would be difficult); Hines, 531 F.2d at 732 (describing a stay issued by a district court as “indefinite in duration” when the likelihood was that the stay would remain in effect for anywhere between 18 months and 5 years). In sum, the length of the stay, if issued in this case, appears to be indefinite, and as such, is immoderate and unlawful.

Read/download the order here (link)

--------------------------

On a somewhat related note, Director Kappos noted in a recent blog entry that "many requests for reexamination are currently identified as defective where they do not clearly identify the issues to be resolved between the requester and the patent owner.  This in turn delays resolution of the request for reexamination."


Accordingly, the USPTO has released "Best Practices and FAQs for filing requests for reexamination compliant with 37 CFR 1.510 and 1.915."  You can download a copy of the 18-page document here (link)

Still No Bilski Decision from SCOTUS

The Court issue 3 more opinions today; none of them were Bilski.  In an interesting move however, the Court formally announced that more opinions will be issued this Thursday, which is not a regularly scheduled session of the Court.  Stay tuned . . .

Wednesday, June 09, 2010

Two Strykes and You're Out - Fed. Cir. Reverses on Obviousness, and Orders Reassignment to New Judge

TriMed, Inc. v. Stryker Corp., No. 09-1423 (June 9, 2010)

TriMed sued Stryker on a patent directed to an implantable device used to set bone fractures.  In the first go-around, the district court found non-infringement as a matter of law, and the Fed. Cir. reversed and remanded, finding that the lower court did not construe a claim term properly.

On remand, Stryker argued anticipation and obviousness in light of 2 prior art references.  Again, on summary judgment, the district court declared the patents invalid.  In deciding Stryker’s motion, the district court simply signed Stryker’s Uncontroverted Statement of Facts and Conclusions of Law without any changes other than crossing out the anticipation section and granted summary judgment of invalidity in favor of Stryker.

With regard to obviousness, the Fed. Cir. stated:


Summary judgment of obviousness is appropriate if “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors.”

When determining whether a patent claiming a combination of known elements would have been obvious, we“must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” . . . This inquiry is factual in nature. . . . Answering this question usually entails considering the “interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” . . . What a reference teaches, whether there is a trend or demand in the relevant marketplace or design community, the background knowledge of one of skill in the art—these are all questions reserved for the finder of fact. . . . These factual questions are not separate and distinct from those set out in Graham; rather, they fall comfortably within those familiar categories of factual inquires. See, e.g., Dystar, 464 F.3d at 1360 (noting that what the prior art teaches is a subsidiary determination of the scope and content of the prior art).

Many of these factual questions are in dispute here.

Stryker attempted to circumvent these issues by suggesting that the claimed subject matter would have been obvious because it is, at least in part, a commonsense solution to a known problem.  The Fed. Cir. responded:

[A]n obviousness analysis “may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Although reliance on common sense does not require a specific evidentiary basis, “on summary judgment, to invoke ‘common sense’ or any other basis for extrapolating from prior art to a conclusion of obviousness, a district court must articulate its reasoning with sufficient clarity for review.” . . . While Rule 52(a)(3) of the Federal Rules of Civil Procedure contains the pertinent qualification that a “court is not required to state findings or conclu-sions when ruling on a motion under Rule 12 or 56,” that rule “does not relieve a court of the burden of stating its reasons somewhere in the record when its underlying holdings would otherwise be ambiguous or inascertainable [sic]” . . . Both the record in this case and the order granting Stryker’s motion for summary judgment are devoid of such reasoning.

The record also fails to explain why the district court summarily dismissed the evidence of secondary considerations of nonobviousness submitted by TriMed. We have repeatedly held that evidence of secondary considerations must be considered if present.

On reassignment:
We conclude that reassignment is warranted here. The district court has now been reversed twice after entering summary judgment against TriMed, in both instances simply signing Stryker’s proposed statement of law and facts relevant to the decided issues, a disfavored practice in the Ninth Circuit . . . Although mindful of the burden reassignment places on judicial resources, given the particular circumstances present here, we are convinced that reassigning this matter to a different judge is necessary to preserve the appearance of justice. Thus, pursuant to our supervisory authority under 28 U.S.C. § 2106, we remand this case to the Chief Judge of the United States District Court for the Central District of California to determine the reassignment of this case to a different district judge.

Tuesday, June 08, 2010

IPO: Bilski Coming in Next Three Weeks (Really, it Is!)

“Delay is preferable to error.”

-- Thomas Jefferson
The IPO reported this morning that the Bilski v. Kappos opinion will "almost certainly be issued on one of the next three Mondays – June 14, 21, or 28." Chief Justice Roberts stated at the recent Federal Circuit Judicial conference that the Supreme Court expects to issue opinions in all of its argued cases by the end of the current court term, which ends June 28. Oral arguments for Bilski took place in November 2009.

Fed. Cir.: Court Will Not Correct Claim Drafting Error to Avoid "Absurdity"

Haemonetics, Corp. v. Baxter Healthcare Corp., No. 09-1557, (June 2, 2010)

Haemonetics sued Baxter on a patent relating to a compact blood centrifuge device for separating and collecting components in a liquid such as blood.  The claim at issue (claim 16) recited

A centrifugal unit comprising a centrifugal component and a plurality of tubes, said unit to turn around an axis to separate the components of a liquid, blood in particular, with such plurality of tubes displaying a single tubular component wherein said unit includes:

. . . a plurality of channels extending radially in the base of the centrifugal unit, with each channel providing communication between a respective tube of the tubular unit and the separation chamber, with the centrifugal unit having a radius be-tween 25 and 50 mm and a height between 75 and 125% of the radius.
During claim construction, the district court defined “centrifugal unit” from the preamble to mean “the combination of both the vessel and the tubing.”  However, the court construed the claim’s remaining two references to “centrifugal unit,” including the final one in the context of the “height” and “radius” limitations, to mean only the vessel. The court relied on claim 16’s use of identical dimensions to the patent’s other independent claims, which the parties agreed used “centrifugal unit” to refer exclusively to the vessel. The court reasoned that, because the vessel and the tubing together are always larger than the vessel alone, giving “centrifugal unit” a construction that includes the tubing in the context of the dimensional limitations “would yield an absurdity.”

The defendant argued that the two different constructions were clearly inconsistent with the plain language of the claim and thus violated black-letter claim construction law.  Instead, defendant argued that “centrifugal unit” should be construed to refer to the vessel and its associated tubing.  As further support, defendant argued that the specification expressly disclosed such an embodiment and was necessary  in order to accomplish the invention’s goal of "creating a small, portable apheresis machine."

Haemonetics countered that “centrifugal unit” in the context of the dimensional limitations refers to the vessel alone. Also, Haemonetics asserted that the claim preamble did "no more than state the claimed invention’s intended field of use" and that inclusion of the tubing "nonsensically alters the unit’s dimensional limitations; excludes every embodiment in the specification; and ignores that the invention’s goals, i.e., small size, light weight, and economic disposability, depend on the vessel having the claimed height and radius range."

The Federal Circuit sided with the defendants:
Patent claims function to delineate the precise scope of a claimed invention and to give notice to the public, including potential competitors, of the patentee’s right to exclude . . . This notice function would be undermined, however, if courts construed claims so as to render physical structures and characteristics specifically described in those claims superfluous . . . As such, we construe claims with an eye toward giving effect to all of their terms . . . even if it renders the claims inoperable or invalid, see Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (“[W]here, as here, claims are susceptible to only one reasonable interpretation and that interpretation results in a nonsensical construction of the claim as a whole, the claim must be invalidated.” (quoting Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999))); Elekta Instrument, 214 F.3d at 1309 (same).

In this case, claim 16’s beginning and, in our view, controlling language could hardly be clearer. Claim 16 states: “A centrifugal unit comprising a centrifugal component and a plurality of tubes . . . .”  It does not merely state the intended field of use in a preamble, as Haemonetics argues. Rather, it unambiguously defines “centrifugal unit” as “comprising” two structural components: a centrifugal component and a plurality of tubes. The claim then further recites, not the centrifugal component and not a centrifugal unit, but “the centrifugal unit” as “having a radius between 25 and 50 mm and a height between 75 and 125% of the radius.” Reading “the centrifugal unit” in the context of the dimensional limitations to refer exclusively to the vessel, as the district court did, ignores the antecedent basis for “the centrifugal unit,” . . . and fails to give effect to the claim language “comprising a centrifugal component.”

[T]he district court concluded, that because the vessel with the tubing is larger than the vessel alone, construing “centrifugal unit” in the context of the dimensional limitations to include the tubing “would yield an absurdity.” . . . Maybe so, but we do not redraft claims to contradict their plain language in order to avoid a nonsensical result.

REVERSED IN PART, VACATED IN PART, and REMANDED

Read/download the opinion here (link)

Thursday, June 03, 2010

Kappos to Propose "Three-Track" Patent Examination Process

From the Wall Street Journal:

U.S. Patent and Trademark Office chief David Kappos is proposing a new three-track system for patent applications that would allow applicants to pay an undisclosed amount on top of the standard $1,090 filing fee to jump to the front of the line for expedited reviews.

* * *

Officials haven't decided how much expedited processing would cost. The middle track would be similar to the system used now, which includes a $755 fee when a patent is issued and periodic fees to keep the patent in effect.


The slowest track would allow companies and inventors to pay a smaller fee and essentially park their applications for up to 30 months before the patent review begins.
Interestingly, nothing's been published on the USPTO web site.  To read more, click here (link)

UPDATE:  The USPTO has now issued a formal press release:
“We recognize that the traditional ‘one-size-fits-all’ examination timing may not work for all applicants,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “By allowing applicants greater control over the timing of examination, the USPTO will be able to deploy its resources to better meet the needs of innovators. We look forward to input from the public as we shape this proposal.”

A public meeting will be held on July 20 at 1:30 p.m. at the USPTO’s Madison building, 600 Dulany Street, Alexandria, Virginia. Those interested in attending the meeting must register by 5:00 p.m. (EDT) July 16.
Written comments must be submitted by August 20, 2010.
Additional details on the program will be available in the June 4, 2010 edition of the Federal Register.

Wednesday, June 02, 2010

Wednesday Shorts: New Tools and References

WIPO Gold - yesterday, WIPO launched "WIPO Gold", a free, on-line global IP reference resource that provides simplified access to a broad collection of searchable IP data and tools relating to, for example, technology, brands, designs, statistics, WIPO standards, IP classification systems and IP laws and treaties.

WIPO’s "Patentscope" search service provides free-of-charge, high-quality searches of data relating to over 1.7 million international patent applications filed under the PCT, and patent data collections of a growing number of countries.

To access WIPO Gold, click here (link)

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USPTO & Google's Bulk Patent Data Service - today, the USPTO announced it has reached a two-year "no-cost" agreement with Google to make patent and trademark data electronically available for free to the public in bulk form.  According to Tech Daily Dose, "[s]aying it currently lacks the technical capacity to offer such a service itself, the PTO said the two-year agreement with Google is a temporary solution while the agency seeks a contractor to build the PTO its own database that would allow the public to access such data in electronic machine-readable bulk form."

Available information includes patent grants and published applications; trademark applications; TTAB  proceedings; patent classification information; patent maintenance fee information; and patent and trademark assignments.

To access the site, click here (link)

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Everything You Wanted to Know About ITC Proceedings -  UC Berkeley Professor Peter Menell, together with a slew of top ITC litigators, have published the "Section 337 Patent Investigation Management Guide" (624 pages) that covers virtually every facet of patent-related ITC litigation:

[T]he authors have developed a comprehensive, user-friendly, and practical guide for experienced ITC professionals as well as new entrants to this important branch of patent enforcement. Organized around the contours of ITC investigations, this treatise provides invaluable insight into the nuances of ITC procedures from a perspective not captured in existing treatises. The handbook will serve as a critical resource for companies seeking to evaluate their options, enforcement strategies, and defense tools, as well as for the full range of patent professionals – many of whom have little experience with the ITC process. This volume
also provides intellectual property scholars and law students with a highly accessible pathway into this complex and specialized field of litigation. It integrates detailed case management approaches and comparative analysis of procedural options with the historical development of unfair trade practices law and comprehensive analysis of claim construction and patent law doctrines.

The treatise will be formally published Fall 2010, but you can download a preliminary draft here (link)

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