Tuesday, December 15, 2009

Upcoming Conference: ITC Litigation & Enforcement

The American Conference Institute (ACI) will be holding its 2nd Expert Forum on ITC Litigation & Enforcement Wednesday, February 24 to Thursday, February 25, 2010 in New York.  The conference provides inside, in-depth guidance on this growing critical practice from a faculty of judges, senior ITC officials, and litigators.  Topics include:

  • Evaluating Where to Litigate International IP Disputes
  • Positioning Complainants, Respondents and Intervenors in Section 337 Cases
  • Successfully Working the Logistics of Section 337 Litigation
  • Coordinating Related Parties & Proceedings Managing Litigation through Discovery, Claim Construction, Summary Determination and Trial
  • Meeting the Challenge of the ITC’s Unique Trial Procedures
  • Seeking Commission Review and Modification of ALJ Decisions
  • Understanding and Maximizing the Available Remedies in Section 337 ITC Cases
  • Addressing Downstream Remedy Strategies Post-Kyocera
  • Meeting the Challenges Faced by In-House Counsel in Section 337 Cases
The conference also includes a "View from the Bench" session that includes ITC Chief Administrative Law Judge Paul J. Luckern and ITC Judges Theodore R. Essex and Robert K. Rogers.
Early registration will be available through December 18th - you can register for this conference
By phone: 888-224-2480
By Facsimile: 877-927-1563
Email: CustomerService@AmericanConference.com
Or visit the ACI website at http://www.americanconference.com/itclitigation.htm
271 Patent Blog Readers are eligible for a $200 discount - enter discount code "Patent 271" when registering online.

Thursday, December 10, 2009

UK "Patent Box" Program Slashes Corporate Taxes on Patent Income

The UK is introducing a "patent box" regime that will impose a lower rate of corporate tax on patent income as an attempt to boost to Britain's creative industries.  The government has yet to release details of how the scheme will operate, although Chancellor of the Exchequer Alistair Darling confirmed in his pre-budget speech to the House of Commons on December 9 that patent income (e.g., royalites) will be subject to a 10% rate of corporate tax after legislation is passed.  This would represent more than a 50% cut.

Before passing any legislation, the government intends to consult with industry, and final legislative proposals are unlikely to emerge until the 2011 Finance Bill. The program is scheduled to be put in effect after April 2013.

It didn't take long for Glaxo to announce that it expected to spend some 500 million pounds building a new factory to make biotech drugs and on expanding an existing plant to make next-generation respiratory medicines.


NYT: "Patent Tax Scheme Encourages Glaxo to Invest In UK" (link)

TimesOnline: "Pre-Budget Report 2009: Industry welcomes 10% 'patent box'" (link)

USPTO Launches Patent Quality Improvement Initiative

The USPTO has been establishing procedures for measuring the quality of patent examination and to improve overall patent quality (together with the Patent Public Advisory Committee (PPAC)).  The Office is now seeking help from the public.  From a recent Federal Register Notice:

As part of this effort to improve the quality of the overall patent examination and prosecution process, to reduce patent application pendency, and to ensure that granted patents are valid and provide clear notice, the USPTO would like to focus, inter alia, on improving the process for obtaining the best prior art, preparation of the initial application, and examination and prosecution of the application. The USPTO is seeking public comment directed to this focus with respect to methods that may be employed by applicants and the USPTO to enhance the quality of issued patents, to identify appropriate indicia of quality, and to establish metrics for the measurement of the indicia. This notice is not directed to patent law statutory change or substantive new rules. It is directed to the shared responsibility of the USPTO and the public for improving quality and reducing pendency within the existing statutory and regulatory framework.
For purposes of this notice, a "quality patent" is defined as a patent:

(a) For which the record is clear that the application has received a thorough and complete examination, addressing all issues on the record, all examination having been done in a manner lending confidence to the public and patent owner that the resulting patent is most likely valid;

(b) for which the protection granted is of proper scope; and

(c) which provides sufficiently clear notice to the public as to what is protected by the claims.

Notably, the term ‘‘quality patent’’ does not include the economic value of the resulting patent.

For ease of organization and analysis, the areas for which the USPTO is requesting comment are divided into specific categories:

Category 1—Quality measures used: metrics that would supplement or improve current metrics (i.e., Allowance Compliance Rate and In-Process Revbiew Compliance)

Category 2—Stages of Monitoring: stages of examination where quality metrics should be measured

Category 3—Pendency: 'nuff said

Category 4—Pilot Programs: feedback regarding the effect on patent quality and examination quality resulting from various pilot programs (e.g., Peer-to-Patent, Pre-Appeal Brief Conference Pilot, First Action Interview Pilot, Continuing Education for Practitioners (CEP) Pilot)

Category 5—Customer Surveys Regarding Quality: feedback on past USPTO surveys of the patent community and proposed modifications for future surveys.

Category 6—Tools for Achieving Objectives: requesting identification of existing tools which are, or can be made, available to users and the USPTO to enhance the quality of the USPTO’s processes. This would include, for example, software tools that  will provide meaningful monitoring, search tools, claim analysis tools, and case law identification tools.

Category 7—Incentives:  requesting comments on means to incentivize applicants and USPTO personnel to adopt procedures and practices that support the achievement of patent quality. Notes the PTO: "It is recognized that any additional effort to increase the quality of the product has an associated cost."

Written comments must be received on or before February 8, 2010. No public hearing will be held.  Written comments should  be sent by email addressed to patent_quality_comments@uspto.gov.

Download a copy of the Notice here (link)

Monday, December 07, 2009

Marshall, TX Treating Plaintiffs So-So in 2009

From Michael Smith's Eastern District of Texas Federal Court Practice Weblog:

Last Thursday a Marshall jury in Judge Ward's court in Fiber Systems Int'l v. Applied Optical, 2:06cv473 returned a defense verdict on infringement in a patent case . . . I think that's the third defense jury verdict in the district this year in patent cases (two Marshall and one Beaumont), not counting Judge Davis' ruling in favor of Microsoft after jury selection in the Fenner case in March, and Judge Ward's granting of JMOL in defendant's favor at the conclusion of the plaintiff's case in Paradox. That's without getting into the sticky issue of how you count defense wins on damages (Retractable) or on postverdict JMOLs on damages (Hearing Components - award reduced postverdict from $4.6 million to $1.39 million). By my count then, you can score it this year so far anywhere from 8-3-1 to 6-6-1 (depends on whether you count a post-jury selection grant of summary judgment or not) depending on what you count as a plaintiff win and what as a defense win. The tie is, of course the Thermapure case, which as I posted last was, was a plaintiff win on infringement but a hung jury on damages, which will be retried on damages next March

USPTO To Fast-Track "Green" Patents

From today's USPTO press release:

WASHINGTON - The U.S. Commerce Department’s Patent and Trademark Office (USPTO) will pilot a program to accelerate the examination of certain “green” technology patent applications, Secretary Gary Locke announced today. The new initiative, coming days before the United Nations Climate Change Conference in Copenhagen, Denmark, will accelerate the development and deployment of green technology, create green jobs, and promote U.S. competitiveness in this vital sector.

[P]ending patent applications in green technologies will be eligible to be accorded special status and given expedited examination, which will have the effect of reducing the time it takes to patent these technologies by an average of one year. Earlier patenting of these technologies enables inventors to secure funding, create businesses, and bring vital green technologies into use much sooner.

Patent applications are normally taken up for examination in the order that they are filed. The average pendency time for applications in green technology areas is approximately 30 months to a first office action and 40 months to a final decision. Under the pilot program, for the first 3,000 applications related to green technologies in which a proper petition is filed, the agency will examine the applications on an accelerated basis.
To be eligible for the expedited review, the patents must "materially contribute" to environmental quality, discovering or developing renewable energy resources, improving energy efficiency or reducing greenhouse gas emissions.  While it is alwys good to see the USPTO make steps to reduce pendency, one has to question why the USPTO is choosing to engage more in technologically-specific pilot programs that appear more as political patronage than sound patent policy (timing the announcement just prior to the Climate Change Conference in Copenhagen doesn't help either).

Clearly, "green" technologies are important (depending how you define it), but should the PTO be in the business of pitting technologies against one another as part of its examination policy?   The examination process at the USPTO is, more or less, a zero sum game right now - if you reduce the pendency for certain applications, you will likely increase the pendency for others (the PTO will not hire additional employees for the pilot program).  And, unlike business-method and software patent applications, green technology was never identified as experiencing any unusual pendency problems.  Why the sudden urgency?

Director Kappos states: "“Every day an important green tech innovation is hindered from coming to market is another day we harm our planet and another day lost in creating green businesses and green jobs . . . Applications in this pilot program will see a significant savings in pendency, which will help bring green innovations to market more quickly.”  Aside from being cliché, this statement is somewhat insulting: what technological sector doesn't view their patents as "important" and vital to job creation?

See NYT, "Obama Admin Will Speed Reviews of 'Green' Patents" (link)

Wednesday, December 02, 2009

BPAI Starts Issuing Decisions on NTP/RIM Patent Reexaminations

It's hard to believe, but it has been almost 5 years since the NTP v. RIM case dominated the headlines and became a rallying point for much of the patent reform efforts we have seen to date.  In that case, NTP successfully asserted 5 patents against RIM, receiving judgment in the amount of $53.7M, as well as a permanent injunction.

The district court stayed the injunction, pending appeal to the Federal Circuit.  On appeal, the court upheld most of the lower court's findings, and remanded the case on claim construction issues (read the December 14, 2004 opinion here).  Just prior to the remanded proceedings, RIM settled the case and paid NTP $612.5 million "in full and final settlement of all claims against RIM, as well as for a perpetual, fully-paid up license going forward."

While the court proceedings raged on, a similarly heated battle took place at the USPTO, where NTP's patents were subjected to multiple reexaminations; one of the requests were ordered by the USPTO Commissioner himself.  The PTO's unusual interest in the reexamination, along with alleged improper contact between RIM and the PTO, sparked controversy in the patent community, where some argued that the PTO's actions gave the appearance that the proceedings were "fixed" against NTP (for more info, see here).  Even congressman Howard Berman, chairman of the House subcommittee on courts, the Internet and intellectual property, was concerned enough about an alleged meeting between the CEO of RIM and high level PTO officials that he formally questioned then-PTO Director Dudas in a list of oversight inquiries.

While this controversy continues to linger, the BPAI has released opinions on 3 of the 5 NTP patents that were rejected during reexamination.  In the opinions, some of the rejections were reversed, but most of the rejections, particularly the obviousness rejections (now subject to KSR), were upheld.  It appears that all of NTP's claims are rejected.  The opinions are an interesting read, but long - in total, the 3 opinions are almost 800 pages in length and address hundreds of different claims.

NTP US Patent No. 5,436,960 BPAI reexamination opinion (link) (252 pages)

NTP US Patent No. 5,819,172 BPAI reexamination opinion (link) (318 pages)

NTP US Patent No. 6,317,592 BPAI reexamination opinion (link)  (219 pages)

It is worthwhile to note that NTP is also in litigation with Sprint, T-Mobile, AT&T and Palm on these and related patents.  The BPAI has issued opinions on these patents as well - just as in the RIM case, the BPAI reversed some of the rejections, but upheld rejections based on obviousness.

NTP US Patent No. 5,438,611 BPAI reexamination opinion (link) ( 251 pages)

NTP US Patene No. 5,479,472 BPAI reexamination opinion (link) ( 214 pages)

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