Thursday, January 28, 2010

Attorney Delinquence Excuses 7-Year Delay in Reviving Expired Patent

SprinGuard Technology Group Inc. v USPTO, No. 08-12119 (D. Mass., January 21, 2010, Order)

SprinGuard brought an action under the Administrative Procedure Act (“APA”) to seek judicial review of decisions of the Director of the PTO denying SprinGuard’s petitions to reinstate its Patent, which granted in 1999, but expired in 2003 for failing to pay a required maintenance fee.

After the patent issued, the PTO mailed a letter in 2002 to SprinGuard’s attorney stating that the first maintenance fee was past due; it received no response. The fee was not paid, and the patent expired on January 27, 2003. SpringGuard was not notified that it had failed to pay the fee, nor given notice that the Patent had expired. It did not learn of the Patent’s expiration until almost four years later, in 2006, during a due diligence review by a third-party licensee.

During this time period, SprinGuard’s patent lawyer had allowed his registration with the PTO to lapse. The PTO had removed the attorney from the Register of Patent Attorneys and Agents on December 9, 2002, pursuant to regulation due to the attorney’s failure to respond to routine correspondence. He was not reinstated until March 23, 2004. The PTO never notified SprinGuard that its attorney had been
removed from the register.

Upon learning of the Patent’s expiration in 2006, SprinGuard immediately paid the maintenance fee, and took steps (including hiring a private investigator) to locate its attorney. For some unknown reason, the lawyer became incommunicado and was not heard from again.  SprinGuard then filed a petition to reinstate its Patent on the ground that the delay in paying the first maintenance fee, due in 2003, was “unavoidable.”  The PTO denied the petition because it concluded that SprinGuard "failed to adduce sufficient evidence that it took reasonable steps to ensure that the maintenance fee would be paid on time."

The district court ruled the PTO acted arbitrarily in violation of the APA:

As a general matter, the PTO . . . has taken the position that reliance on the fact that one has hired an attorney without further diligence is insufficient; rather, patent holders have an affirmative obligation to exercise reasonable care that maintenance fees are paid  . . . However, the PTO has itself excused late payment where the attorney completely abandoned the attorney/client relationship.  Here, given counsel’s complete abandonment of his client, including his total refusal (or inability) to cooperate or communicate, plaintiff was precluded from producing competent evidence of such due diligence. In this unique circumstance, SprinGuard has met the standard.

In addition, it is significant that SprinGuard’s lawyer had been removed from the list of registered patent attorneys at the time the ‘529 Patent expired for failure to pay the maintenance fee. While he could technically make the payment, as he had not been formally suspended or disbarred from the register, he was no longer able to act as SprinGuard’s patent attorney. Moreover, SprinGuard was not given notice that its patent counsel had been de-registered. The PTO has allowed delayed payment in several such cases . . . Moreover, the PTO sent notice of SprinGuard’s failure to pay the maintenance fee, as well as notice of the ‘529 Patent’s expiration, to counsel, who was then no longer registered with the PTO — not to SprinGuard.

Given the unique circumstances of this case, and the decisions of the PTO in favor of patent holders in similar circumstances, I conclude the PTO’s decision was arbitrary and otherwise contrary to law.

Read/download a copy of the order here (link)

Wednesday, January 27, 2010

PwC Releases 2009 Patent Litigation Study

Each year PriceWaterhouseCoopers (PwC)conducts studies on patents and patent litigation, where the organization analyzes statistics relating to "hot" topics of patent law.  This year PwC looked at nonpracticing entities (NPEs - companies that do not design, manufacture, or distribute products) and their effect on litigation.

The study found that, adjusting for inflation using the Consumer Price Index, the annual median damage award has ranged from $2.2 million to $10.6 million, with a median award of $4.4 million over the last 14 years. Overall, this statistic has been more-or-less consistent during this time.

However, damage awards for NPEs have risen considerably in recent years.  In fact, the median damages award for NPEs was more than triple the award for practicing entities over the last seven years ($12 million for NPEs, and $3.4 million for practicing entities). Contrasted with 1995-2001, the median damages award for NPEs was about the same when compared with practicing entities (roughly $5 million).

One obvious explanation could be that NPEs have become more sophisticated in selecting patents to litigate, and understanding the markets to sue against.  However, another explanation may have something to do with the use of jury trials - juries decided only 14 percent of the cases with damages awards during the 1980s and 24 percent during the 1990s. In this decade, juries have decided 51 percent of the cases with damages awards.

NPEs like juries - trial success rates for patent holders are much higher when decided by juries as compared to bench trials. In fact, jury success rates have consistently outperformed their bench counterparts every year since 1995.  Since 1995, 55 percent of trials involving NPEs have been jury trials, as compared to only 41 percent of trials involving practicing entities.  In addition to the rate of success at trial, recent awards by juries have been significantly greater, running several multiples of the amounts awarded by judges.

Success rates at trial for NPEs and  practicing entities are quite good - 67.4% of NPEs and 65.8% of practicing entities.  However, summary judgment is much more brutal, especially for NPEs, which only have an 11.9% success rate.  Overall, NPEs are successful 29% of the time versus 41% for practicing entities.

The median time-to-trial in US district courts has remained steady,at just over two years (2.11) from the complaint date to trial, even as the volume of cases has increased substantially.  However, significant variations have occurred in the median of time-to-trial across jurisdictions

Rank              District                         In years
1        Virginia Eastern District Court        0.88
2        Wisconsin Western District Court   1.01
3        California Southern District Court   1.24
4        Florida Middle District Court           1.71
5        Maryland District Court                  1.75
6        Texas Eastern District Court           1.79
7        Kansas District Court                     1.89
8        Delaware District Court                  1.92
9        Texas Southern District                  1.99
10      California Central District Court      1.99
11      Ohio Northern District Court            2.05
12      New York Southern Dist.Court         2.18
13      Florida Southern District Court        2.27
14      Michigan Eastern District Court       2.32
15      Minnesota District Court                 2.32
16      Texas Northern District Court         2.42
17      Pennsylvania Eastern Dist. Court     2.43
18      Missouri Eastern District Court        2.52
19      New Jersey District Court                2.70
20      California Northern District Court    2.72
The most "patent friendly" jurisdictions (considering time-to-trial + overall success rate + median damage award) for 2009 were:
1    Virginia Eastern District Court
2    Texas Eastern District Court
3    Delaware District Court
4    Wisconsin Western District Court
5    California Central District Court
6    Florida Middle District Court
7    Texas Southern District
8    New Jersey District Court
9    Colorado District Court
10  Texas Northern District Court
10  Ohio Northern District Court (tie)
12  California Northern District Court
12  New York Southern District Court (tie)
14  Illinois Northern District Court
15  Minnesota District Court
15  Massachusetts District Court (tie)
17  Florida Southern District Court
18  Michigan Eastern District Court
19  Pennsylvania Eastern District Court
20  Connecticut District Court
The Top 5 districts by overall success ranking (1995-2008)
1   Florida Middle District Court -- 57.9%
2   Texas Eastern District Court -- 51.6%
3   Virginia Eastern District Court -- 48.6%
4   California Central District Court -- 48.3%
5   Delaware District Court -- 47.7%

Overall (all decisions identified) 38.2%
The Bottom 5 districts by overall success ranking (1995-2008)
1   Connecticut District Court -- 10.5%
2   Michigan Eastern District Court -- 20.0%
3   Florida Southern District Court -- 27.3%
4   Texas Southern District -- 28.1%
5   Pennsylvania Eastern District Court -- 30.3%

Overall (all decisions identified) 38.2%
To download a copy of the PwC 2009 Patent Litigation Study, click here (link)

Read the PwC press release on the study here (link)

Monday, January 25, 2010

USPTO Issues Guidance Docs For Minimizing Non-Compliant Briefs

According to the USPTO, the top 8 reasons why briefs are considered non-compliant:

(1)  Missing or defective statement on related appeals and interferences
(2)  Missing/defective "Status of Claims" - status of all claims AND an identification of claims being appealed
(3)  Status of amendments - status of any amendment filed subsequent to the final rejection
(4)  Missing or incomplete "Summary of Claimed Subject Matter" (note: Appellant’s reference to a corresponding PreGrant Publication is not proper)
(5)  Missing or incomplete Claims Appendix
(6)  Untimely submission of affidavit(s) or evidence
(7)  Missing evidence appendix
(8)  Missing "Related Proceedings Appendix"

View the PTO guidelines page here.

-- Top Eight Reasons Appeal Briefs are Non-Compliant [PDF]
-- Checklist for Notice of Appeal Filed Under 37 CFR 41.31 [PDF]
-- Checklist for Appeal Brief Filed Under 37 CFR 41.37 [PDF]

CAFC: Terminal Disclaimer Not Valid When Underlying Patent Expired

Boehringer Ingelheim Int'l v. Barr Laboratories, Inc., No. 2009-1032 (Fed. Cir., January 25, 2010)

Boehringer is the record owner of the '812 patent, which stemmed from a divisional application and was the third in a chain of related patents, all of which shared a common specification.  After the '812 patent issued, Boehringer received a patent term extension of 1,564 days which extended the expiration date from December 12, 2006 to March 25, 2011.

During litigation, defendant Mylan asserted that the '812 patet was invalid for obviousness-type double patenting over an earlier, expired, patent ('086 patent).  In response, and on the last day of trial, Boehringer filed a terminal disclaimer of the '812 patent in the USPTO which disclaimed the term of the patent "which would extend beyond 1,564 days after the full statutory term of the '086 patent . . . so that, by virtue of this disclaimer, the '812 patent will expire on October 8, 010."

The district court oncluded that the terminal disclaimer was ineffective to overcome the obviousness-type double patenting rejection because the disclaimer was filed fter the '086 patent had expired, and that the safe harbor provision of 35 U.S.C. § 121 precluded the use of the '086 patent as an invalidating reference.

Boehringer raised two issues on appeal.  The first issue was whether its "retroactive" terminal disclaimer is effective to overcome invalidity based on obviousness-type double patenting.  The Federal Circuit concluded that it was not:

[A] patentee may file a disclaimer after issuance of the challenged patent or during litigation, even after a finding that the challenged patent is invalid for obviousness-type double patenting. See, e.g., Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (noting that there is no “prohibition on post-issuance terminal disclaimers” and that “[a] terminal disclaimer can indeed supplant a finding of invalidity for double patenting”). The question here is whether a retroactive terminal disclaimer—i.e., a terminal disclaimer that is filed after the expiration date of an earlier commonly owned patent—is effective to overcome obviousness-type double patenting.

[W]hen the claims of a patent are obvious in light of the claims of an earlier commonly owned patent, the patentee can have no right to exclude others from practicing the invention encompassed by the later patent after the date of the expiration of the earlier patent. But when a patentee does not terminally disclaim the later patent before the expiration of the earlier related patent, the later patent purports to remain in force even after the date on which the patentee no longer has any right to exclude others from practicing the claimed subject matter. By permitting the later patent to remain in force beyond the date of the earlier patent’s expiration, the patentee wrongly purports to inform the public that it is precluded from making, using, selling, offering for sale, or importing the claimed invention during a period after the expiration of the earlier patent.

[B]y failing to terminally disclaim a later patent prior to the expiration of an earlier related patent, a patentee enjoys an unjustified advantage—a purported time extension of the right to exclude from the date of the expiration of the earlier patent. The patentee cannot undo this unjustified timewise extension by retroactively disclaiming the term of the later patent because it has already enjoyed rights that it seeks to disclaim. Permitting such a retroactive terminal disclaimer would be inconsistent with “[t]he fundamental reason” for obviousness-type double patenting, namely, “to prevent unjustified timewise extension of the right to exclude.” . . . We therefore hold that a terminal disclaimer filed after the expiration of the earlier patent over which claims have been found obvious cannot cure obviousness-type double patenting.
On the second issue, Boehringer argued that the safe-harbor provision of 35 U.S.C. § 121 shields the ’812 patent from invalidity on the basis of double patenting in view of the ’086 patent.  Section 121 provides in relevant part:
A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts 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 . . .
Here, Mylan argued that section 121 was not applicable, since the '812 patent was a "divisional of a divisional."  The Fed. Cir. rejected this argument:
We [] reject Mylan’s argument that § 121 is inapplicable solely because the ’812 patent issued from an application that was a divisional of a divisional and hold that, assuming all other requirements of § 121 are met, the safe-harbor provision may apply to a divisional of a divisional of the application in which a restriction requirement was entered. We note that this holding is fully consistent with the purpose of § 121—namely, to prevent a patentee who divides an application in which a restriction requirement has been made from risking invalidity due to double patenting.
WIth regard to the "as a result of" requirement, the court added:
Boehringer finally argues that when an examiner issues a restriction requirement identifying more than two independent and distinct inventions, the choice of how to prosecute non-elected inventions is up to the applicant and is constrained neither by the terms of an examiner’s restriction requirement nor by the language of § 121. According to Boehringer, so long as consonance is met, it makes no difference in terms of compliance with the “as a result of” requirement whether the applicant responds to the examiner’s restriction requirement by filing one or more divisional applications from the original application, or instead files a single divisional application followed by successive additional divisionals.

We agree with Boehringer. The restriction requirement entered in the ’947 application required only an election in that application of a subset of the ten identified inventions. It also had the effect of obligating Boehringer to file one or more divisional applications if it wanted patent protection for the non-elected subject matter. Boehringer did so not by filing separate divisional applications on each of the inventions grouped by the examiner in the restriction requirement, but instead, by filing two successive divisionals to different combinations of the inventions identified in the restriction requirement. In doing so, Boehringer neither violated the examiner’s restriction requirement nor risked loss of the safe harbor of § 121.
The Fed. Cir. concluded that Boehringer’s terminal disclaimer did not overcome obviousness-type double patenting with respect to the ’086 patent, but that the safe-harbor provision of § 121 was applicable.  Accordingly, the court reversed the district court’s judgment of invalidity and remand for further proceedings.

In effect, it appears that the majority is dispensing with the requirement that the restriction requirement be followed at all in any later divisional applications, so long as the original application in which the restriction requirement was imposed complies with the restriction . . . the majority cites language from our case law for the proposition that section 121 is satisfied if later divisional applications are limited to the “non-elected invention or inventions” of the parent application. This suggests to the majority that separate inventions may be combined in a single later application. But our decisions do not in fact countenance this. In my view, the majority’s decision is inconsistent with our case law.

Thursday, January 21, 2010

When the Examination Process Goes South

To those that haven't heard about it, a practitioner became fed up with an examiner when it was apparent that the examination process was being "gamed" for the benefit of the examiner (and the detriment of the applicant).  Not taking it lying down, the practitioner decided to write Director Kappos the following letter:

Dear Mr. Kappos,

I have been practicing before the USPTO for 12 years now and have seen a lot of ridiculous stuff, but this takes the cake. Note the attached "Notice of Non-Compliant Amendment" and the grounds therefore -- the period at the end of claim 1 was accidentally caught in the underline of the word processing selection when indicating the amended language.

Why did I receive this ridiculous response rather than the examiner merely noting it in a substantive response or making an examiner's amendment to correct it? Because the examiner was apparently unable to prepare a substantive response and wanted to get it off his docket in the required window for his response before incurring PTA and probably a demerit in his performance numbers. (The notice was mailed 3 months and 4 days after our timely filed response.)

What is the impact of such manipulation of the internal system and this type of gamesmanship? Upset customers. My client is upset at the delay and added cost. I am upset at the inanity and the waste of my time -- especially when the examiner has his own typographical error in the continuation sheet of the notice: the sentence ends with two periods. But do I have any recourse regarding the examiner's poor grammar? No. Nor would I want to waste my time doing so. But here I am.

My request: instill some common sense and customer service attributes in the examining corp.
(Blogger note: the letter was subsequently forwarded to Greg Aharonian, who posted it in his news service)

The Examiner became incensed, and decided to be candid with Aharonian about the incident:

I am guilty as charged. I had to move the case under time pressures and didn't have the time because I had other things to work on -- what I did under the rules is completely legit though I would have wasted a count and thrown away money by the system the PTO set up, not me . . . She's not going to get much any more help from me so her *ss is going to be twisting in the wind from now on. I'm also going to email and let her know I'm pissed off about her bringing this up with Kappos.

She just jumped off a cliff in my eyes. You know, if she just called me and talked to me I could explain exactly what I did that - too late for that lady, you are going to wish you did not do that, believe me, you are going to regret it . . .[You] can also forget about an after final interviews --- thats at the discretion of the examiner and my discretion from now on will be -- no interview.

Good luck writing your future appeal briefs lady and your three year wait from the BPAI. You really should have thought long and hard about sending that to Kappos and not contacting me first.
Interestingly, Aharonian received another email from an examiner who thought the Kappos letter concerned him, but it turned out it was a different examiner recalling a different incident.  Apparently, these barbs fly at the USPTO more often than people think.
Outrageous?  You bet.  But this is only scratching the surface - read all the emails in their entirety, and get the "inside" examiner response from the excellent Just N Examiner Blog.

Wednesday, January 20, 2010

Report: District Courts With the Most Patent Filings 2009

LegalMetric, an IP research and analysis company, published its annual list of district courts in which the most patent cases were filed in 2009.  The list is as follows:

1. Central District of California
2. Eastern District of Texas
3. District of Delaware
4. Northern District of California
5. District of New Jersey
6. Northern District of Illinois
7. Southern District of New York
8. Southern District of California
9. District of Massachusetts
10. Eastern District of Virginia
11. District of Columbia
12. Eastern District of Michigan
13. District of Minnesota
14. Middle District of Florida
15. Southern District of Florida
16. Northern District of Georgia
17. Northern District of Ohio
18. Northern District of Texas
19. Western District of Washington
20. District of Colorado
21. Southern District of Texas
22. Eastern District of Missouri
23. Eastern District of New York
24. Eastern District of Pennsylvania
25. District of Utah

For more information, see here (link)

Tuesday, January 19, 2010

Pharma LItigation Study - Generic Challenges are Many, Successes Few

RBC Capital Markets released a very interesting study on patent litigation in the pharmaceutical industry by analyzing more than 370 cases filed over the last 10 years.  The study concludes that there is "very little downside and huge upside" for generics to take brand manufacturers to court, but also noting that"while patent challenges by generics are extremely common, winning is not."

Highlights from the study:

• Patent challenges remain on the rise with a record 65 new first-to-file lawsuits in 2009, up from 51 in the prior year and more than double the number just three years ago.

• Over the last decade, the overall success rate for the generic drug industry is 48% for cases that have gone to trial. However, the success rate increases to 76% when settlements are included. Over half of all cases are settled or dropped.

• The top three courts by volume -- NJ, DE and SDNY -- accounted for 69% of all decisions. These courts have a combined success rate of just 36% for generics. However, just over half of the cases in these three courts get settled or dismissed.

• Four courts have never ruled against a generic -- C.D. Cal., E.D.N.Y., D. Minn. and ED Mo.

• The top five judges by volume accounted for 31% of the total decisions.  These five judges ruled in favor of generics only 33% of the time. The total success rate, however, including settlements is 75%.

• Last year saw six "at-risk" launches, up from four in the last few years.  Teva remains the most likely to go at-risk with 12 of the 28 at-risk launches since 2002.

• The number of settlements in 2009 reached an all-time high of 54, up from 45 in the prior year. Settlements occur on average 47% of the time withTeva accounting for nearly one-third of all settlements. On the innovator side, Glaxo and Novartis have settled the most.

• 25 authorized generics launched in 2009, compared to 18 in the prior year. However, more products are launching without an AG than in prior years.

Read/download a copy of the 24-page report here (link), courtesy of Amlaw Daily

Thursday, January 14, 2010

Patent Portfolios: More Value, Less Volume?

Business Week has been running a series of articles recently on IP and innovation, where they discussed patents and the latest reports on large-business filings in the USPTO.   As previously reported on the 271 Blog, the number of issued patents for 2009 continued to go up, and numerous tech companies enjoyed substantial increases in the number of issued patents (Microsoft enjoying a 43% increase in 2009).

In a recent effort to "look behind the numbers", Business Week reached out to Ocean Tomo to look at the top patenting companies to determine who might have the most valuable portfolio.  Accordingly, Ocean Tomo sorted through U.S. patents granted to the world's 1,000 biggest companies (by revenue) from 2005 to 2009. Ocean Tomo then assessed the patents' value by tallying, among other things, patent filing trends, litigation rates, and how many times each was cited by other applicants or in scientific and technical journals. The data were aggregated into a patent value index number and ranking.

According to the report, IBM did not have the most valuable portfolio.  In fact, IBM ranked 8th overall, despite being the patent leader for 17 years and having patents covering over 40,000 inventions.  The winnner?  Microsoft.  Ocean Tomo assessed that Microsoft's portfolio value was 3.3 times that of IBM's.   IBM's "weakness" (if you can call it that) is that their portfolio" includes a large number of service-related patents, which do not command as high a price as the video-game and software patents that heavily weigh in Microsoft's portfolio"

Without further ado, here are Ocean Tomo's 25 most valuable portfolios:

(1)  MICROSOFT - Patent value: 185,004
(2)  SAMSUNG - Patent value: 128,727
(3)  CANON - Patent value: 109,650
(4)  HEWLETT-PACKARD - Patent value: 101,502
(5)  INTEL - Patent value: 96,610
(6)  HITACHI - Patent value: 70,450
(7)  RICOH - Patent value: 57,501
(8)  IBM - Patent value: 57,414
(9)  PANASONIC - Patent value: 51,577
(10)  SEIKO EPSON - Patent value: 49,573
(11)  TOSHIBA - Patent value: 48,221
(12)  MEDTRONIC - Patent value: 46,288
(13)  3M - Patent value: 46,187
(14)  SONY - Patent value: 43,747
(15)  TEXAS INSTRUMENTS - Patent value: 36,905
(16)  XEROX - Patent value: 33,809
(17)  FUJITSU - Patent value: 31,057
(18)  PFIZER - Patent value: 29,329
(19)  EXXON/MOBIL - Patent value: 28,426
(20)  SUN MICROSYSTEMS - Patent value: 27,497
(21)  APPLE - Patent value: 25,587
(22)  QUALCOMM - Patent value: 21,149
(23)  GENERAL ELECTRIC - Patent value: 19,649
(24)  NOKIA - Patent value: 18,658
(25)  BRYSTOL-MYERS SQUIBB - Patent value: 16,295

Should companies become more discriminating when filing for "strategic" patents?  Cisco thinks so:

Cisco changed its patent strategy three years ago . . . like most high-tech companies, Cisco used to pursue quantity, in what he says was an patent arms race. Everyone wanted as many patents as possible to stake claims and defend their IP. The thinking was that the patents might hinder competitors or at least require them to pay royalties to license patented tech. Cisco has more than 5,000 patents and another 10,000-plus pending.

A few years ago, Cisco regularly applied for 1,000 patents a year. Now it files for no more than 700, choosing only breakthroughs in market adjacencies or the most critical inventions. To help him choose, Chandler now employs a half-dozen highly skilled, highly trained “innovation managers” who work directly with engineering teams. These managers, btw, are also all lawyers.

For more information, see Business Week: "The World's 25 Most Inventive Companies" (link)

Read Busniess Week: "IBM May Not Be the Patent King After All" (link)

Wednesday, January 13, 2010

Was the Federal Circuit Feeling Guilty Over KSR? Study Suggests They Were

District court clerk Ali Mojibi recently conducted an empirical study on the effect of the Supreme Court’s decision in KSR v. Teleflex:

 The basic approach of the study is straightforward. The author surveyed a large number of cases decided by the Federal Circuit and certain District Courts before and after the Supreme Court decided KSR v. Teleflex in order to evaluate the actual effect and implications of KSR on different aspect of patent law. Based on how cases were decided in three distinct periods—before the Supreme Court granted cert to KSR, after the Supreme Court decided KSR, and the period in between—the article tests if and how KSR changed the landscape of the patent obviousness doctrine.
What did Mojibi find?  Well, for starters, KSR had a significant effect on obviousness determinations at the Federal Circuit.  Before SCOTUS granted cert, the Federal Circuitfound patents obvious 40% of the time.  That number jumped to 57.4% after KSR. Moreover, while patents were found non-obvious 34.3% of the time before cert was granted, only 29.6% were held non-obvious after KSR.

In district courts, the effect of KSR was staggering - before cert, district courts found obviousness only 6.3% of the time.  That number jumped to 40% (an almost sevenfold increase) after KSR was decided.

Mojibi digs further to look at the "in between" phase when the KSR was pending before the SCOTUS.  Here, Mojibi finds an interesting statistic: during the period when KSR was pending, the Federal Circuit found patents obvious almost 70% of the time and non-obvious 26% of the time. This means that the highest percentage of obviousness findings in the Federal Circuit occurred after the Supreme Court granted cert, but before KSR was decided. Also, the lowest rate of non-obviousness findings happened during this interim period.  Moreover, during this same time, the Federal Circuit affirmed every finding of obviousness appealed the lower courts, and became three times more likely to reverse a lower court’s ruling of nonobviousness.

Notes Mojibi:
This result is quite unexpected because granting cert does not change the state of the law at all, and the stark contrast in percentage of patents being held invalid before and after grant of cert cannot be explained by any substantive change in the law. Rather, the data seems to indicate that the Federal Circuit perceived the Supreme Court’s decision to hear KSR as a nod of approval to the critics of the Federal Circuit, which alleged that the appeals court was too pro-patent.  Hence, it seems possible that as soon as the Supreme Court announced its decision to grant cert, the Federal Circuit reacted by raising the obviousness bar to find more patents invalid.
Read "An Empirical Study of the Effect of KSR v. Teleflex on the Federal Circuit’s Patent Validity Jurisprudence" (link)

Tuesday, January 12, 2010

Foreign Applicants Majority For 2nd Straight Year; IBM Approaches 5K Patents for 2009

IFI Patent Intelligence released their 2009 patent report, where the company found that U.S. corporations received 49 percent of all U.S. utility patents issued in 2009 with the remainder going to foreign firms. This is the second year in a row that foreign companies collectively received more U.S. patents than U.S.-based firms.

Despite this, U.S. companies received approximately 7 percent more utility patents in 2009 than in 2008, while foreign companies received approximately 6.5 percent .  Also, the U.S. received more than twice as many corporate patents than Japan (23%), the country with the second most U.S. patents issued in 2009. South Korea (5.6%) moved into third place displacing Germany (5.2%) for the first time.

Despite the doom-and-gloom over 2009, IFI's data shows that the USPTO issued a total of 167,350 utility patents in calendar year 2009, up 6.1% over 2008, and approaching the all-time high of 173,772 set in 2006. However, it is worth noting that the USPTO posted a 1.8 percent decrease in patent applications for its fiscal year 2009 for a total of 457,966, the first annual decrease in applications since fiscal year 1996. As a result, this decrease could translate into fewer patent issues in the coming two or three years.

Market sectors with the heaviest new patent activity include Multiplex Communications (US class 370) and Semiconductors (US classes 438 and 257), representing almost 15,000 patents total for 2009. The bio sectors of Drug Compositions (US class 514) had 3,474 patents and Biotechnology (US class 435) had over 2,700 patents issued, up 17 percent and 1 percent respectively over the previous year.

Also, despite the recession, some U.S. companies posted significant increases in issued patents for 2009, including:

GM Global (+68%)
Microsoft (+43%)
Cisco (+30%)
Boeing (+26%)
Xerox (+18%)
IBM (+17%)
Broadcom (+11%)
Sun (+10%)
General Electric (+7%)
Honeywell (+6%)
The Top 25 Patent Recipients for 2009 include:
(1) IBM (US) - 4,914
(2) Samsung Electronics Co. Ltd. (KR) - 3,611
(3) Microsoft (US) - 2,906
(4) Canon KK (JP) - 2,206
(5) Panasonic Corp. (JP) - 1,829
(6) Toshiba Corp. (JP) - 1,696
(7) Sony Corp. (JP) - 1,680
(8) Intel Corp. (US) - 1,537
(9) Seiko Epson Corp. (JP) - 1,330
(10) Hewlett-Packard (US) - 1,273
(11) Fujitsu Ltd. (JP) - 1,220
(12) LG Electronics (KR) - 1,065
(13) Hitachi Ltd. (JP) - 1,058
(14) Hon Hai Precision Industry (TW) - 995
(15) Ricoh Co. Ltd. (JP) - 988
(16) General Electric Co. - 979
(17) Micron Technology (US) - 966
(18) Cisco Technology (US) - 913
(19) Fujifilm Corp (JP) - 880
(20) Honda Motor Corp (JP) - 774
(21) Denso Corp (JP) - 745
(22) Siemens AG (DE) - 716
(23) Broadcaom Corp. (US) - 714
(24) Sharp KK (JP) - 657
(25) Honeywell Int'l (US) - 655
To view a listing of the top-50 patent recipients, see here (link)


PR Newswire "American Companies Capture Less than Majority of 2009 U.S. Patent Pool" (link)

Network World, "IBM still leads in patents, Microsoft maintains No. 3 spot and Cisco gains 30%" (link)

Visit IFI's website here (link)

Tuesday, January 05, 2010

BPAI: Reissue Not Available When Narrowing Contains All Original Patent Claims

Ex Parte Tanaka, Appeal No. 2009-000234 (BPAI, December 9, 2009) (Precedential)

When filing for a reissue,  there are two distinct statutory requirements that a reissue oath or declaration must satisfy under 35 U.S.C. § 251. First, it must state that the patent is wholly or partly inoperative or invalid because of defects in the specification or drawing, or because the patentee has claimed more or less than he is entitled to. Second, it must allege that the inoperative or invalid patent arose through error without deceptive intent.

In Tanaka, a reissue application was filed where the only amendment was the addition of a dependent claim ("claim 16").  The inventor filed a declaration stating that “the original patent is at least partially inoperative by reason of claiming more or less than [he] had a right to claim in the original patent,” and that the inventor "failed to recognize that the disclosed invention was not fully covered by the original claims."

The Examiner found that because the reissue application contained all of the original patent claims and adds by reissue application only a single dependent claim, the reissue declaration could not satisfy the error required under 35 U.S.C. § 251 because it could not properly allege that the patent is wholly or partly inoperative or invalid by reason of the patentee claiming more or less than he had a right to claim in the patent.

The BPAI affirmed the examiner:

[A]lthough § 251 should be construed liberally, it does not enable correction of every error . . . The only issue before us is whether the presentation of a narrower claim in a reissue application that still contains all of the original patent claims is an error correctible by reissue under 35 U.S.C. § 251 and 37 C.F.R. § 1.175(a)(1) . . . the defect in this situation is not the result of the patentee claiming more or less than he had a right to claim in the patent.

Precisely for this reason, the Appellant had difficulty in stating an error in the Substitute Reissue Declaration that would comply with 35 U.S.C. § 251 and 37 C.F.R. § 1.175(a)(1). In particular, the Appellant asserted generally that the original patent is partly inoperative by reason of claiming “more or less” than he had a right to claim in the patent. The Appellant’s mere reiteration of the statutory language “more or less” does not clearly identify the error to be corrected by reissue, because it does not indicate whether the patent is partly inoperative because the original claims are too broad in scope, or whether the patent is partly inoperative because the original claims are too narrow in scope.

Rather . . . the error presented by the present appeal appears to be based on the fact that the patentee included too few claims. The closest that the Appellant comes to asserting this error as the error upon which the reissue is based is in paragraph 3 of the Substitute Reissue Declaration, in which the Appellant asserts that he failed to recognize that the disclosed invention was not “fully covered by the original claims."

This statement, however, is inaccurate, because the original claims, which are drafted using the open-ended “comprising” language, would cover the invention as now presented in claim 16. It is only if the Appellant were to assert that claim 1 is overly broad or otherwise inoperative or invalid that the original claims may not fully cover the invention now presented in reissue claim 16. The Appellant, however, nowhere asserts in the Substitute Reissue Declaration that the patent is partly inoperative by reason of the patentee claiming more (i.e., by broadly reciting the invention in claim 1) than he had a right to claim in the patent. The Appellant also does not attempt in this reissue application to add narrowing language to claim 1 or to cancel claim 1 as being overly broad.

Considering the vague language used in the Substitute Reissue Declaration to describe the error being corrected by reissue, the only conclusion we can reach from a review of the reissue claims on appeal is that the patentee is seeking an additional claim (i.e., claim 16) in order to hedge against the possible invalidity of one or more of the original claims. The Appellant attempts to have it both ways, by seeking to add narrower claims to the original patent without complying with the requirements of [the statute].


Download a copy of the opinion here (link)

Monday, January 04, 2010

One Reason Why Improving Patent Quality Won't Solve the "Troll Problem"

From Timo Fisher and Joachim Henkel's paper, titled "Patent Trolls on Markets for Technology - An Empirical Analysis of Trolls' Patent Acquisition":
Patent trolls appropriate profits from innovation solely by enforcing patents against infringers. They are often characterized as relying on low-quality patents, an assessment that, if correct, would imply that eradicating such patents would effectively terminate the troll business. In this paper, we shed light on this issue by empirically analyzing trolls’ patent acquisitions. We draw on a unique dataset of 565 patents acquired by known patent trolls between 1997 and 2007, which we compare to 1,130 patents acquired by practicing firms. Our findings regarding patent characteristics support recent theoretical propositions about the troll business model. Trolls focus on patents that have a broad scope and that lie in patent thickets. Surprisingly, and contrary to common belief, we find that troll patents are of significantly higher quality than those in the control group. This result implies that elevating minimum patent quality will not put an end to the patent troll business, and suggests that it is sustainable in the long run.
Other findings:

- The higher the patent density of a technology field, the more likely a patent in this field will be acquired by a NPE rather than by a practicing firm.

- NPEs tend to acquire patents that have, on average, more non-patent literature backward references.  Conversely, NPE patents tend to have fewer backward references to other patents.

- NPEs tend to acquire more patents that are still in examination in relation to practicing entities.

- Interestingly, the patent crowdedness of the technology field, measured by the number of patent applications in the patent’s technology field, has no significant influence on NPEs’ acquisitions. This finding underlines that it is not the crowdedness of a technology field, but rather the density of overlapping patent rights that makes an acquisition favorable for a NPE.

Read/download a copy of the draft paper here.

(Not So Much of a) Happy New Year For The USPTO

While patent practitioners look for signs of hope and support for an improved USPTO in 2010, Congress is making clear that they won't be doing any favors for the agency this year.  John Schmid of the Milwaukee Journal Sentinel published a report last week claiming that Congress has withdrawn $100M in funds from the Office at the last minute during budget negotiations on December 9.

Congress bases its annual funding decisions on agency estimates on what it expects to collect. For fiscal 2010, the Patent Office initially believed the economic slump would depress fee income, which it projected at $1.887 billion. But the volume of applications unexpectedly increased in the fiscal first quarter, which began Oct. 1, making it likely that the agency could collect at least another $100 million in the current year.

The Patent Office requested a provision that would have allowed the agency to spend up to an additional $100 million, assuming 2010 collections reached an appropriate level; the provision was inserted into early budget drafts. However, it was quietly stripped out at the last minute, the Patent Office said.

"We were expecting a $100 million cushion in the budget, and we were disappointed that it was taken out," an agency spokesman said.
Interestingly, none of the congressional sources for the story were willing to identify which lawmaker or legislative aide was directly responsible for the decision.

This move appeared to be a form of punishment for the USPTO, and particularly to the fee-funded nature of the agency.   In related documents, the congressional budgetary conference noted that
A confluence of factors in fiscal year 2009, including depressed revenues, continuing declines in the patent allowance rate, recent court decisions, and the absence of inflation has highlighted major, unacceptable deficiencies in USPTO's budget formulation and execution processes. USPTO's financial situation in fiscal year 2009, while anomalous, may be repeated again. The decision to rely solely on fee income has removed USPTO from the safety net of the appropriations process and has placed it at the mercy of the economy; it has allowed USPTO to build a boom time infrastructure that it cannot support in an economic downturn. Complicating and contributing to this situation is the fact that USPTO's budget formulation process does not reflect the agency's resource requirements for the relevant fiscal year. Fiscal year 2010 will likely present a new and more daunting set of financial challenges for the agency and achievement of key performance measures will likely continue to decline.

The conferees note that although USPTO is a fee-funded agency, USPTO's budget development process should not be markedly different from other Federal agencies, at least initially. Yet today, the USPTO is unable to produce a clear and concise statement of resources needed to operate independent of the agency's estimate of projected revenues. Whatever advantages the current funding arrangement confers to the agency and its constituencies, the current state of budget formulation, execution and management at the USPTO cannot continue.
Read John Schmid, "Congress deals funding blow to Patent Office" (link)

Read excerpts from congressional budget documents pertaining to the USPTO here (link)

See also IAM Blog, "Bleak times at the USPTO make big fee hikes more likely" (link)

John Farmer, Richmond-Times Dispatch, "Leading-Edge Law: Congress made patent situation worse" (link)

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