Recent changes to the USPTO website have provided for a number of new features and links, including a specific webpage dedicated to providing information on all upcoming USPTO conferences in one location. This webpage (link below) currently provides information for 4 upcoming meetings in July, many of which have already been announced on this blog. At this time, the meetings scheduled (in chronological order) are “China's Impact on Intellectual Property: Protecting Your Intellectual Property in China and the Global Marketplace” to be held in Seattle on July 12th & 13th, “The State of Copyright in the Digital Age” to be held in Nashville on July 17th, “Conference on Intellectual Property in the Global Marketplace” to be held in Nashville the following day, and the “Chicago Regional Independent Inventors Conference” held in Chicago on July 28th & 29th. These conferences are free with the exception of the conference in Chicago ($90 fee for both days).

USPTO Conferences Webpage: LINK
Seattle Conference Information: LINK
Nashville (July 17) Conference Information: LINK
Nashville (July 18) Conference Information: LINK
Chicago Conference Information: LINK

On Monday, the USPTO announced a new program that would allow patent applicants to apply for patent and receive a final decision on whether or not the application will be granted or denied within 12 months. The accelerate review can take place in part from the additional information provided by the applicant at the time of filing. According to the June 26 Federal Register, there are several requirements for participation, including an application with a maximum of 3 independent claims and 20 total claims, and must include “a statement that a preexamination search was conducted, including an identification of the field of search by United States class and subclass and the date of the search, where applicable, and for database searches, the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search,” along with a number of additional enumerated requirements. According to the USPTO, “[t]his increased disclosure upfront by applicants will help examiners more quickly make the correct decision about whether a claimed invention deserves a patent.” Some of the requirements for participation in this program are similar to those announced back in January as pertaining to continuation practice, which has, in the opinion of some practitioners (see the reference link below to over 300 comments), have some advantages as well as some specific disadvantages.

USPTO Press Release: LINK
Federal Register Excerpt re: Accelerated Program (June 26, 2006): LINK
Federal Register Excerpt re: Continuation Practice (January 3, 2006): LINK
Public Comments to Proposed Continuation Practice and Related Changes: LINK

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). This posting covers the fifty-sixth through the sixtieth cases that were appealed from the district court level and decided by the Federal Circuit in 2006. All opinions are precedential unless otherwise indicated.

Kinzenbaw, et al. v. Case LLC (05-1483; 04/26/2006, non-precedential): appellate review of district court’s award of costs, determination of “prevailing party,” “exemplification” fees & interpretation thereof, costs within and outside the scope of 28 U.S.C. § 1920

Global Maintech Corp., et al. v. I/O Concepts, Inc. (05/02/2006, non-precedential): summary judgment & claim construction appellate standards of review, prosecution history consistency with claim construction

Kyocera Wireless Company v. President Electronics, LTD (05/02/2006, non-precedential): summary judgment standard of review, design patent infringement standard, “ordinary observer” and “point of novelty” discussion, use of expert evidence at trial

In re EchoStar Communications Corporation (05/03/2006): writ of mandamus, scope of waiver of attorney-client privilege, reliance on advice of counsel, use of in-house and trial counsel, discussion of differences between attorney-client privilege and work-product doctrine

All Computers, Inc. v. Intel Corp. (05/04/2006, non-precedential): jurisdiction regarding final decision under 28 U.S.C. § 1295(a)(1) and F.R.C.P. 54(b), determination of final decision/judgment, full adjudication of all claims and counterclaims

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). This posting covers the fifty-first through the fifty-fifth cases that were appealed from the district court level and decided by the Federal Circuit in 2006. All opinions are precedential unless otherwise indicated.

Mark Bruckelmyer v. Ground Heaters (04/20/2006): anticipatory document as “printed publication” under 35 U.S.C. § 102, public accessibility of prior art documents, purpose of printed publication provision

Sun Coast Merchandise Corp., et al. v. CCL Products Enterprises, Inc., et al. (04/21/2006, non-precedential): infringement determination & claim construction appellate standards of review, exceptional cases and attorney fees, “ordinary and customary” claim meaning, literal infringement of 35 U.S.C. § 112 par. 6 limitation

Parental Guide of Texas, Inc. v. Thomson, Inc. (04/21/2006): patent contract interpretation, applicability of state law for contract disputes, litigation royalty under 35 U.S.C. § 284, reasonable royalty rate

Kinzenbaw, et al. v. Case LLC (05-1269, -1270; 04/26/2006, non-precedential): court’s claim interpretation with means-plus-function limitation, patent/claim indefiniteness, use of the term “substantially” in a claim

Kwik Products, Inc., et al. v. National Express, Inc., et al. (04/26/2006, non-precedential): claim construction & infringement standards of appellate review, means-plus-function claims

This post includes three tidbits from the USPTO from the end of last week, First, the USPTO recently created a list of granted and pre-grant publication documents that have been or soon will be classified in Class 705 (Data Processing: Financial, Business Practice, Management, Cost/Price Determination), Sub 36T (Tax Strategies). The list currently includes 42 issued patents and 61 published applications. Second, it was announced that as of last Wednesday, only one person had submitted a comment to the USPTO in response to the Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings (Interim Rule) that was published in the Federal Register and the Official Gazette earlier this year. Third, and as you may have already seen, the USPTO has revised its website once again, the current revision being one of the more substantive ones to occur in a while. One new feature is that from the homepage, you can click on the “Patents” button and a list of 16 commonly used referenced links are presented for quick access to items like searches, fees, and forms. The USPTO is welcoming comments regarding its updated website.

U.S. Patent Classification News Release: LINK
705/36T Document Listing: LINK
USPTO Comment List: LINK
Original Federal Register (with Comment Request): LINK
Joseph Cohen’s Comments: LINK
Updated USPTO Homepage: LINK
Comments Regarding the Updated USPTO Homepage can be E-mailed HERE

On the occasion of the 100th DDIP post, I’d like to take this opportunity to recognize those whose time & effort along the way have helped shape this blog into something that is worthy of your continued patronage. I would first like to thank Doreen Gridley and Dona Stohler for their support and assistance in pursuing this idea. I would also like to thank Marty Klaper for his overall support and for being such a good personal and professional mentor. I also thank Judy Okenfuss for working with me to get this project started and for taking the initiative to get me on the right track with my substantive postings. I would also like to thank Tom Walsh, Mike Swift, and Doreen Gridley for their current support for the ongoing blog posts. I also thank Greg Duff, Brad Stohry, and Alex Forman, not only for submitting articles for posting on the blog, but also for helping me from time to time on individual patent and trademark projects I am working on. As you can see, many internal people were and are involved with this project, and I truly appreciate their assistance. I am very fortunate to work with such a good supportive group of people at Ice Miller.

Special thanks to Dennis Crouch of Patently-O blog fame for his support, both offline and online through his blog. When Dennis refers to me or the Daily Dose of IP blog, people become interested, and the interest is definitely welcomed. I wish Dennis nothing but the best.

There are also a number of other people I need to thank for their support that I may or may not have thanked previously. Several people, including Joseph Scott Miller (The Fire of Genius), Gary Odom (The Patent Prospector), Axel H. Horns (IP::JUR), John Rizvi (The Florida IP Blog), Stephan Kinsella (KinsellaLaw Web Log), James E. Hawes (IPthoughts), and Rita's thoughts for linking to, writing about, and/or referencing me or the Daily Dose of IP in their individual intellectual property law blogs. If I left anyone off of this list, I assure you it was not intentional. I sincerely appreciate the support and recognition, and I wish you all the best in your own blogging efforts.

On the technical side, I must admit that Blogger has worked quite well for me. Aside from a couple of minor delays in posting, Blogger has consistently provided excellent service, at the absolute best price (free!). I also use SiteMeter to obtain information on the frequency of hits and geographical locations of those viewing the Daily Dose of IP blog, and I would also recommend this limited free service to those who do not currently have such a feature affiliated with their own website. In addition, I would like to thank Jim Montgomery for his assistance with the logo for the blog. Jim does nice work and I recommend him for any graphic design needs you may have.

Last, but certainly not least, I would like to thank those who have subscribed to the blog (to receive my daily posting via e-mail), those who have e-mailed me to provide supportive comments and suggestions, and those who read the blog from time to time. In just a few short months, readers from over 35 countries have visited the blog, much to my surprise. I plan to continue this blog indefinitely, and with your support, and spreading the word about the blog, more and more people will have the opportunity to review its content and hopefully benefit in some way from the efforts that go into making this blog a reality.

Thanks again to everyone. Please feel free to e-mail me with any comments, suggestions, and/or questions you may have. I look forward to hearing from you. Thank you for visiting, and have a great weekend.

Mark Reichel

On Friday, Merck & Co., Inc., may face its first wave of generic competition for its drug Zocor® as the patent is set to expire. U.S. Patent No. 4,444,784, entitled “Antihypercholesterolemic compounds,” issued on April 24, 1984, includes a total of 18 method and composition claims. The patent relates to “6(R)-[2-(8'-acyloxy-2'-methyl-6'-methyl(or hydrogen)-polyhydronaphthyl-1')-ethyl]-4(R)-hydroxy-3,4,5,6-tetrahydro-2H- pyran-2-ones,” including the hydroxy acid form of said pyranones and associated salts, as well as methods for treating hypercholesterolemia. Zocor® (simvastatin) has been sold by Merck to treat high cholesterol for several years, and according to Merck’s most recent Annual Report, sales of Zocor® over the last three years has been $14.6B, while Merck’s R&D expenditures was $11.1B over the same time period. According to the USPTO, Merck (and its international affiliates) were awarded 6,932 U.S. patents, with over 300 currently pending published U.S. patent applications being prosecuted.

U.S. Patent No. 4,444,784: LINK
IndyStar.com News Article: LINK
Zocor Consumer Website: LINK

The European Patent Office (EPO) recently released that there were 193,600 patent applications filed in Europe in 2005, a seven percent increase over 2004. During the same year (2005), the EPO issued over 53,000 patents, a figure down 9 percent from the year before (58,700). Patents in the field of Medical Technology were the most popular filings at 11.4% of the total, with Electronic Communications accounting for approximately 10% of the total. Out of the EPO member states, Germany was responsible for the most filings (over 18%, slightly more than the year before), with France second (6.2%, slightly less than the year before) The EPO has approximately 3,600 patent examiners out of a total staff of over 6,100. According to Alain Pompidou, the President of the EPO, "For the current year we expect a further increase in patent applications. The signs are that we shall pass the 200 000 mark for the first time."

EPO Press Release: LINK
Playfuls.com News Article: LINK
EPO Website: LINK

On July 12-13, 2006, the USPTO will be presenting its “CONFERENCE ON PROTECTING YOUR INTELLECTUAL PROPERTY IN CHINA AND THE GLOBAL MARKETPLACE,” focusing on companies of all sizes looking to market and manufacture their products overseas with a particular emphasis on China. This event will be held in Seattle, WA, at the Grand Hyatt Seattle. According to the conference website, the topics to be discussed include "China’s laws and regulations that may affect how a business protects and enforces its intellectual property, how best to protect business assets to avoid intellectual property problems in the first place, how to recognize when an intellectual property asset has been infringed, what to do if infringement occurs, and what the U.S. government is doing to improve the intellectual property protection and enforcement environment in China." The formal conference agenda was not finalized at the time this post was prepared, but will be available shortly from the conference website link below. Similar to the other recent USPTO global IP conferences, this event is free, but registration is required.

On June 6th, the Crowd in a Box Corporation of Grover Beach, California, was awarded its third patent on a crowd-simulating apparatus. U.S. Patent No. 7,056,184, entitled “Inflatable humanoid forms,” describes an apparatus “comprising one or more inflatable three-dimensional humanoid figures for use in background scenes associated with still photography, motion pictures and video productions which are low in cost, lightweight, easy to use, easy to store, easy to transport and provides a greater range of viewing angles.” The independent claim of the patent covers a “three-dimensional apparatus for use in simulating a crowd of real people” comprising head, neck, and torso members, all with an inter-connected air-tight inner surface. The claim also includes “one or more narrow tubular sections” situated between the adjacent humanoid figures allowing for all of the connected humanoids to be inflated from one location. The humanoids, according to the claim, “when placed in adjacent stadium or auditorium style seating, simulates a crowd of real people viewing the particular event in the foreground scene when visually recorded in a manner that does not capture a clear image of the plurality of inflatable life-sized humanoid figures as compared to the foreground scene.” This patent discusses the then-current state of the art, which comprised cardboard two-dimensional props, having the noted disadvantages of being “heavy, relatively inflexible, difficult to transport, time consuming to install and remove,” and further noting that they “are susceptible to wet or windy weather conditions” and provided a limited field of view, as when cameras (still or movie) are moved, the props would also need to be moved so that the backing/unfinished sides would not appear in the final video or still product. The Crowd in a Box Corporation website includes product demonstrations, photographs, and video clips of how its inflatable crowd products can be used.

U.S. Patent No. 7,056,184: LINK
Crown in a Box Corporate Website: LINK
Fig. 1 Image: LINK