August 31, 2007
USPTO Announcement: LINK
USPTO e-FOIA Webpage: LINK
August 30, 2007
Dolby Laboratories v. Lucent Technologies (08/08/2007, non-precedential): affirmed appeal from the U.S. District Court for the Northern District of California (no reasoning provided within the opinion)
Foremost in Packaging Systems (doing business as EnviroCooler) v. Cold Chain Technologies (08/08/2007, non-precedential): affirmed appeal from the U.S. District Court for the Central District of California (no reasoning provided within the opinion)
Boston Scientific Scimed (formerly known as Scimed Life Systems) v. Medtronic Vascular (also known as Medtronic AVE) (08/08/2007): appeal of grant of summary judgment affirming the Board of Patent Appeals and Interferences’ final decision denying Scimed the priority benefit of an earlier-filed European patent application for the subject matter at issue in the patent interference (affirmed); discussion of interference between applications owned by Scimed and Medtronic and U.S. Patent No. 5,575,817, entitled “Aorto femoral bifurcation graft and method of implantation”; “At issue here is whether 35 U.S.C. § 119(a)[ ] permits an applicant for a United States patent to benefit from the priority of a foreign application previously filed by an entity that was not acting on behalf of the U.S. applicant at the time of filing. We hold that it does not.”; “[35 U.S.C.] § 119 gives rise to a right of priority that is personal to the United States applicant. … Due to the personal nature of this right, an applicant for a U.S. patent may only benefit from the priority of a foreign application if it was filed by the U.S. applicant or “on his behalf.”
Capital Bridge v. IVL Technologies (08/10/2007, non-precedential): affirmed appeal from the U.S. District Court for the Southern District of New York (no reasoning provided within the opinion)
Honeywell International v. Universal Avionics Systems Corp. (errata) (08/10/2007): errata to correct language present within two consecutive sentences in the July 3, 2007 opinion (link HERE)
August 29, 2007
“Sorry, but because you are located in the USA you cannot use the search features of the Torrentspy.com website. Torrentspy's decision to stop accepting US visitors was NOT compelled by any Court but rather an uncertain legal climate in the US regarding user privacy and an apparent tension between US and European Union privacy laws.”
The TorrentSpy help page currently includes the following statement:
“The site has BLOCKED United States of America IP addresses (an "IP address" is the identifier of your PC on the internet,) due to privacy (or lack of privacy) laws in the USA. The forum staff do not have any special knowledge about this issue- we know what is posted on the public TorrentSpy Blog and that's it.”
TorrentSpy has announced its intention to appeal the recent denial.
The Register (UK) Article: LINK
TorrentSpy v. MPAA Blog: LINK
Wikipedia Entry for “BitTorrent”: LINK
August 28, 2007
As announced in last Wednesday’s Federal Register (link to PDF below), the USPTO will be increasing some of its patent fees effective September 30, 2007. Many of the current fees (based on the current fee structure effective August 1, 2007) will be increasing by $5 or $10 depending on entity size. Some of the more common fees that will be increasing are as follows:
37 C.F.R. § 1.16(a)(1) – Basic filing fee for utility applications – small entity increasing by $5 to $155, large entity increasing by $10 to $310
37 C.F.R. § 1.16(d) – Provisional application filing fee – small entity increasing by $5 to $105, large entity increasing by $10 to $210
37 C.F.R. § 1.16(k) – Search fee for utility applications – small entity increasing by $5 to $155, large entity increasing by $10 to $310
37 C.F.R. § 1.16(o) – Examination fee for utility applications – small entity increasing by $5 to $155, large entity increasing by $10 to $310
37 C.F.R. § 1.17(a)(2) – Extension of time fee (two months) – small entity increasing by $5 to $230, large entity increasing by $10 to $460
37 C.F.R. § 1.17(a)(3) – Extension of time fee (three months) – small entity increasing by $15 to $525, large entity increasing by $30 to $1,050
A complete listing of all fee changes, including those for U.S. applications (37 C.F.R. §§ 1.16-1.18 and 1.20), national stage applications (37 C.F.R. § 1.492), and appeals (37 C.F.R. § 41.20) are included within the link below. A link to the August 1, 2007, patent fee schedule is also provided via USPTO link below.
Federal Register Excerpt (August 22, 2007): LINK
USPTO Current Fee Schedule (August 1, 2007): LINK
August 27, 2007
An en banc panel of the U.S. Court of Appeals for the Federal Circuit recently revisited the law of willful patent infringement, overruling precedent that stood for about twenty-four years. The Court also addressed the scope of a defendant's waiver of its attorney-client privilege and work product protection resulting from the defendant's assertion of the advice-of-counsel defense to a willful infringement claim.
In In re Seagate Technology, LLC, the Court abolished the "affirmative duty of care" set forth in Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983), which required "a potential infringer [having] actual notice of another's patent rights" to exercise due care to avoid infringing those rights. Id. at 1389-90. As the Underwater Devices decision explained, the "affirmative duty includes, inter alia, the duty to seek and obtain competent legal advice from counsel before initiation of any possible infringing activity." Id. The duty was significant because any defendant found to have breached the duty was exposed to potential liability for up to three times the amount of damages it would otherwise have had to pay for infringing the patent (so-called "treble damages"), as well as the plaintiff's attorneys' fees.
After Seagate, however, a plaintiff can prove willful infringement – and therefore become eligible for an award of treble damages and attorneys' fees – only if the plaintiff shows that: (1) the defendant acted recklessly, that is, the defendant acted in the face of "an objectively high likelihood that its actions constituted infringement of a valid patent," and (2) the likelihood of infringement "was either known or so obvious that it should have been known" by the defendant.
In addition, the Seagate Court addressed the rules of discovery regarding the often-asserted advice-of-counsel defense. Specifically, the Court clarified the scope of privilege waiver based on assertion of the defense, setting forth the general rules that
"asserting the advice of counsel defense and disclosing opinions of opinion counsel do not constitute waiver of the attorney-client privilege for communications with trial counsel"; and
"relying on opinion counsel's work product does not waive work product immunity with respect to trial counsel."
The Court did not specify whether these general rules would apply in the situation where opinion counsel also serves as trial counsel.
Slip Opinion: LINK
Greg Duff is an attorney with Ice Miller focusing his efforts on patent litigation and prosecution.
August 21, 2007
USPTO Webcast on New Claims and Continuations Rules Thursday, August 23rd
Date: Thursday, August 23, 2007
Time: 1:00 p.m. (EST)
The U.S. Patent and Trademark Office (USPTO) will hold a special webinar on Thursday, August 23, 2007, at 1:00 p.m. (EST) on new claims and continuations rules that will allow the agency to continue to make the patent examination process more effective and efficient by encouraging applicants to use greater clarity and precision in describing the scope of their inventions. The new rules will be published in the Federal Register available at www.uspto.gov after noon on August 21, and will be effective on November 1, 2007.
During this live, two-hour webcast, USPTO officials will explain the new rules and answer questions. The presentation and audio for this event will be streamed over the Internet. All participants need is a computer with an Internet connection, sound card, speakers and the ability to view Windows Media presentations.
To register for this free webcast, click on the following link: LINK
An advance copy of the presentation will be made available to registrants prior to the event.
If you would like to receive regular updates from USPTO on its eCommerce initiatives, please register by clicking on the following link: LINK
August 20, 2007
Somerset Pharmaceuticals, Inc. v. Dudas (07/31/2007, nonprecedential): appeal of district court’s order denying request for preliminary injunction (request to compel USPTO to issue a decision as moot dismissed, otherwise district court’s decision affirmed); discussion of patent related to a method for treating depression by using a drug patch (U.S. Patent No. RE 34,579, entitled "Method of treating depression"); plaintiff filed a patent term extension application with the USPTO in 2006 to extend the patent to 2007; "a movant is not entitled to a preliminary injunction if he fails to demonstrate a likelihood of success on the merits"; in this particular case, the Director of the USPTO denied Somerset’s application for extension because he has no statutory authority to issue the interim extension sought by the patentee; patentee has not demonstrated a reasonable likelihood of success on the merits, and because the district court did not abuse its discretion in denying Somerset’s motion for a preliminary injunction, that denial is affirmed
Sony Electronics, Inc., et al. v. Guardian Media Technologies, LTD. (08/03/2007): appeal of motion to dismiss declaratory judgment actions for lack of subject matter jurisdiction (vacated and remanded); discussion of two patents related to methods and apparatuses for blocking the viewing of certain television programs (U.S. Patent No. 4,930,158, entitled "Selective video playing system", and U.S. Patent No. 4,930,160, entitled "Automatic censorship of video programs"; plaintiffs sought a judgment that the two patents were not infringed, that they were invalid, and that they were unenforceable against them due to laches and equitable estoppel; the phrase "case of actual controversy" [from the Declaratory Judgment Act] "refers to the type of ‘Cases’ and ‘Controversies’ that are justiciable under Article III"; lengthy discussion included regarding what is and is not an actual case or controversy; "[i]n promulgating the Declaratory Judgment Act, Congress intended to prevent avoidable damages from being incurred by a person uncertain of his rights and threatened with damage by delayed adjudication"; Guardian asserted that it is owed royalties "based on specific past and ongoing activities" by the plaintiffs, and because the plaintiffs contend that they have a right to engage in those activities without a license, so there is an actual controversy; vacated and remanded for the district court to determine in its discretion whether to entertain appellants’ declaratory judgment suits.
SafeTCare Manufacturing, Inc. v. Tele-Made, Inc., et al. (08/03/2007): appeal of summary judgment of noninfringement of the patent-in-suit (affirmed); discussion of patent related to wide and strong hospital beds (U.S. Patent No. 6,357,065, entitled "Variable width bariatric modularbed"); in explaining the importance of referring to the specification in determining and understanding the meaning and scope of a patent claim, the Court has stated that "the specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term’"; based upon review of Markman claim interpretation, the allegedly infringing device does not exert a pushing force as required by the asserted claim; because Burke’s product does not infringe claim 12 (the only claim asserted of the ’065 Patent), the decision of noninfringement is affirmed
August 17, 2007
Yahoo! News Article: LINK
World of Warcraft Community Site: LINK
Blizzard Entertainment Website: LINK
Founder Electronics Co. Website: LINK
August 16, 2007
July 2007 DDIP Article: LINK
Ars Technica Article: LINK
Australian IT News Article: LINK
August 15, 2007
“Our patents, trademarks, trade secrets, copyrights and other intellectual property rights are important assets for us.”
Google acknowledged that there are some “threats” to its intellectual property, its products, and its services, noting the following:
“[E]ffective intellectual property protection may not be available in every country in which our products and services are distributed or made available through the internet. Also, the efforts we have taken to protect our proprietary rights may not be sufficient or effective. Any significant impairment of our intellectual property rights could harm our business or our ability to compete. Also, protecting our intellectual property rights is costly and time consuming. Any increase in the unauthorized use of our intellectual property could make it more expensive to do business and harm our operating results.”
While these statements may apply to several internet-based companies, Google also acknowledged one specific threat unique to it, namely its desire to maintain trademark protection on “Google”:
“For example, there is a risk that the word “Google” could become so commonly used that it becomes synonymous with the word “search.” If this happens, we could lose protection for this trademark, which could result in other people using the word “Google” to refer to their own products, thus diminishing our brand.”
[Back in July 2006, I wrote a brief blog article (link below) entitled “Is “Google” Becoming Dilute?” noting that Merriam-Webster had then recently added the word “google” to its dictionary.]
Google’s full 10-Q is provided in the link below (via EDGAR Online through Yahoo!).
Yahoo! News Article: LINK
Google’s Recent Form 10-Q: LINK
July 2006 DDIP Article: LINK
August 13, 2007
WIPO 2007 Patent Report (HTML): LINK
WIPO 2007 Patent Report (PDF): LINK
WIPO Highlights of North East Asia: LINK
August 10, 2007
The United States Patent and Trademark Office (USPTO) is seeking participants for a Complex Work Units (CWUs) Pilot Program scheduled for late 2007. CWUs are chemical structure drawings, mathematical formulae, protein crystal data, and table data, which often add significant complexity and cost to the examination and publication of patent applications in which they are contained.
The CWU Pilot Program will be conducted in an effort to:
* Investigate filing practice options for CWUs
* Gather information about existing CWU formats and their use in the Intellectual Property community
* Evaluate rule changes to allow applicants to submit CWU files
* Determine other acceptable file types
The pilot will allow applicants to submit original source files for CWUs through EFS-Web or on a CD, supplementing the traditionally-filed application parts. The CWU source file submissions will not be considered when calculating the application size fee, which will reduce the cost of filing for pilot participants.
The USPTO is requesting participants in an effort to gather more information about CWUs from the intellectual property community. If you have any questions or would like to participate in CWU Pilot activities, please send an e-mail to firstname.lastname@example.org today!
August 09, 2007
Yahoo! Article: LINK
February 2007 DDIP Article: LINK
August 08, 2007
USPTO Notice: LINK
DDIP Announcement: LINK
August 07, 2007
Yahoo! Article: LINK
JCKOnline Article: LINK
August 06, 2007
In re Metoprolol Succinate Patent Litigation, Astrzeneca AB, et al. v. KV Pharmaceutical Company, et al. (07/23/2007): multiple suits filed by plaintiffs in various jurisdictions asserting the defendants’ filed ANDAs infringe their patents; cases consolidated in Missouri; appeal of grant of summary judgment finding the patents invalid and unenforceable (affirmed-in-part, vacated-in-part, and remanded); discussion of two patents related to a composition used to treat angina, hypertension, and congestive heart failure (U.S. Patent No. 5,001,161, entitled “Pharmaceutical composition comprising metroprolol succinate,” and U.S. Patent No. 5,081,154, entitled “Metoprolol succinate”); where decisions of the Court of Customs and Patent Appeals conflict, however, the later issued decision controls “because the Court of Customs and Patent Appeals always sat in banc and therefore later decisions overcome earlier inconsistent ones”; claim 1 of U.S. Patent No. 5,081,154 deemed invalid for obviousness-type double-patenting, and as the invalidity of the other patent was not appealed, summary judgment of invalidity of both patents was affirmed; “‘[i]ntent need not, and rarely can, be proven by direct evidence.’ Rather, intent to deceive is generally inferred from the facts and circumstances surrounding the applicant’s overall conduct”; because a genuine issue of material fact remains, vacated the district court’s inequitable conduct holding and remanded the case
Cybersettle, Inc. v. National Arbitration Forum, Inc. (07/24/2007, nonprecedential): appeal of summary judgment for patentee Cybersettle holding that NAF’s systems performed the claimed methods (vacated and remanded); discussion of patent related to online dispute resolution systems (U.S. Patent No. 6,330,551, entitled “Computerized dispute resolution system and method”); “the use of a [claimed] process necessarily involves doing or performing each of the steps cited”; “[i]t is improper for a court to [add limitations] . . . wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim”; use of the term “plurality” as referring to two or more of something, seen as “consistent with the well understood meaning of the term “plurality” both in general and in patent parlance”; the appellate court vacated the district court’s judgment and remanded for further proceedings because we one aspect of the district court’s claim construction was erroneous
Boynton, et al. v. Headwaters, Inc. (formerly known as Covol Technologies, Inc.) (07/27/2007, nonprecedential): appeal of dismissal of patent infringement claim on the pleadings and their claims for civil conspiracy, interference with contract, and constructive claims on summary judgment (affirmed-in-part, vacated-in-part, and remanded); discussion of patent related to a process for the agglomeration of coal fines comprising the steps (U.S. Patent No. 5,238,629, entitled “Process of coal agglomeration”); patent infringement dismissal affirmed as licensee cannot be a direct infringer of a patent; “[a] voluntary dismissal with prejudice operates as a final adjudication on the merits and has a res judicata effect”; vacated the district court’s grant of summary judgment in favor of Headwaters as to the civil conspiracy and constructive trust claims because Mr. Davidson’s underlying alleged fraud can serve as an underlying tort for plaintiffs’ civil conspiracy claim against Headwaters and as a basis for the imposition of a constructive trust, affirmed the district court’s dismissal of plaintiffs’ patent infringement claim on the pleadings and plaintiffs’ interference with contract claim on summary judgment
August 02, 2007
Geek.com Article: LINK
AP Article (via FOXNews.com): LINK
August 01, 2007
USPTO Press Release: LINK
Federal Register Excerpt (PDF): LINK
USPTO Forms and Instructions: LINK