Indianapolis Bar Association: 2008 Year in Review Patent Law and Practice Chuck Schmal Sponsored by the Intellectual Property Law Section

Indianapolis Bar Indianapolis Bar Association:Association:

2008 Year in Review2008 Year in ReviewPatent Law and PracticePatent Law and Practice

Chuck SchmalChuck Schmal

Sponsored by the Sponsored by the Intellectual Property Law SectionIntellectual Property Law Section

OverviewOverview

Will not spend a large amount of time on “famous” Will not spend a large amount of time on “famous” cases that are covered in usual articles.cases that are covered in usual articles.

Will not tend to focus on the more fact specific Will not tend to focus on the more fact specific cases, such as claim construction and obviousness.cases, such as claim construction and obviousness.

Instead, this presentation will (hopefully) focus on Instead, this presentation will (hopefully) focus on some more practical cases and topics.some more practical cases and topics.

Ownership and LicensingOwnership and Licensing


Topics:Topics: Employment AgreementsEmployment Agreements Corporate Ownership and StructureCorporate Ownership and Structure Licensing 3Licensing 3rdrd Parties Parties


Employment AgreementsEmployment Agreements

(Assignments from Inventors (Assignments from Inventors to a Company)to a Company)

DBB Tech. LLC v. MLBDBB Tech. LLC v. MLB(Fed. Cir. 2008)(Fed. Cir. 2008)

Barstow was an Barstow was an employee of employee of Schlumberger and Schlumberger and signed an employment signed an employment agreement.agreement.

While at Schlumberger, While at Schlumberger, he worked on several he worked on several software projects that software projects that resulted in the four resulted in the four patents in suit which patents in suit which concerned three concerned three “Computer Simulation “Computer Simulation Patents” and one Patents” and one “Pattern-Matching “Pattern-Matching Patent” (aka, “baseball Patent” (aka, “baseball simulator” project).simulator” project).

DBB Tech. LLC v. MLBDBB Tech. LLC v. MLB(Fed. Cir. 2008)(Fed. Cir. 2008)

Schlumberger’s general counsel for Schlumberger’s general counsel for software matters and the director of software matters and the director of the lab did not believe at the time that the lab did not believe at the time that the project belonged to Schlumberger.the project belonged to Schlumberger.

Barstow and his brother form DDB and Barstow and his brother form DDB and assign the patents to DDB.assign the patents to DDB.

DDB sues MLB Advanced Media over DDB sues MLB Advanced Media over the patents.the patents.

DBB Tech. LLC v. MLB DBB Tech. LLC v. MLB (Fed. Cir. 2008)(Fed. Cir. 2008)

Before discovery closes, Before discovery closes, Schlumberger and MLB Advanced Schlumberger and MLB Advanced Media entered into an agreement that Media entered into an agreement that assigned to MLB Advanced Media all assigned to MLB Advanced Media all of Schlumberger’s rights and interest of Schlumberger’s rights and interest in the patents in suit and granted in the patents in suit and granted MLB Advanced Media a retroactive MLB Advanced Media a retroactive license to practice under those license to practice under those patents.patents.


Question 1: Whether Bastow's employment Question 1: Whether Bastow's employment agreement is:agreement is:

An automatic assignment- requiring no An automatic assignment- requiring no further act on the part of Schlumberger is further act on the part of Schlumberger is required to transfer title, orrequired to transfer title, or

A promise to assign- which only vests A promise to assign- which only vests Schlumberger equitable rights and not Schlumberger equitable rights and not legal title.legal title.

This is a Federal Law question.This is a Federal Law question.


Employment agreement states that Employment agreement states that Barstow:Barstow:

““agrees to agrees to and does hereby grant and and does hereby grant and assignassign” all rights in future inventions ” all rights in future inventions falling within the scope of the falling within the scope of the agreement to Schlumberger.agreement to Schlumberger.

Federal Circuit- This language clearly Federal Circuit- This language clearly creates an automatic assignment. creates an automatic assignment.


Question 2: Whether the employment Question 2: Whether the employment agreement covered the patents in suit because agreement covered the patents in suit because they “relate in any way to the business or they “relate in any way to the business or activities” of Schlumberger, or “are suggested activities” of Schlumberger, or “are suggested by or result from” Barstow’s work for by or result from” Barstow’s work for Schlumberger.Schlumberger.

The is a State Law (Texas) question.The is a State Law (Texas) question. Lower court abused discretion in not granting Lower court abused discretion in not granting

discovery on whether Barstow's baseball discovery on whether Barstow's baseball simulator project was under the scope of simulator project was under the scope of employment (remand).employment (remand).


If the patents in suit were within the scope of the If the patents in suit were within the scope of the employment agreement, they would have been employment agreement, they would have been automatically assigned to Schlumberger by automatically assigned to Schlumberger by operation of law with no further act required on operation of law with no further act required on the part of the company. the part of the company.

If this occurred, DDB’s statute of limitations, If this occurred, DDB’s statute of limitations, waiver, and estoppel defenses would have no waiver, and estoppel defenses would have no merit.merit.


Take Home Points for Employers:Take Home Points for Employers: Make sure the language in your Make sure the language in your

employment agreements create an employment agreements create an automatic assignment so that legal automatic assignment so that legal title vests automatically.title vests automatically.

Take Home Points for Employees:Take Home Points for Employees: Obtain written waiver from employer Obtain written waiver from employer

that projects is not within the scope that projects is not within the scope of your employment. of your employment.


Corporate Structure and Corporate Structure and Ownership Ownership

(Ownership and Licensing (Ownership and Licensing Between Related Companies)Between Related Companies)

Mars v. Coin AcceptorsMars v. Coin Acceptors (Fed. Cir. 2008)(Fed. Cir. 2008)

Mars is a candy Mars is a candy company.company.

In 1990, Mars In 1990, Mars owns two patents owns two patents that generally that generally concern concern techniques for techniques for authenticating authenticating coins in vending coins in vending machinesmachines

http://www.cafc.uscourts.gov/opinions/07-1409.pdf


Mars does not make Mars does not make and has never made and has never made vending machine coin vending machine coin changers. changers.

But, Mars had a But, Mars had a wholly owned wholly owned subsidiary, Mars subsidiary, Mars Electronics Electronics International, Inc. International, Inc. (“MEI”), that (“MEI”), that manufactures and manufactures and sells vending machine sells vending machine coin changers.coin changers.



In the United In the United Kingdom, Mars has Kingdom, Mars has another subsidiary, another subsidiary, MEI UK, that is MEI UK, that is separate from MEI.separate from MEI.

MarsMars

MEIMEI MEI-UKMEI-UK



Mars maintained Mars maintained consolidated consolidated financial statements financial statements that reflected the that reflected the profits, losses, profits, losses, assets, and liabilities assets, and liabilities of all of its of all of its subsidiaries, subsidiaries, including MEI.including MEI.



1990-1996 Mars 1990-1996 Mars licenses the licenses the patents to MEI.patents to MEI.

LicenseLicenseMarsMars

MEIMEI



MEI made MEI made payments to Mars payments to Mars “[b]ased on gross “[b]ased on gross sales value” of coin sales value” of coin changers using changers using Mars’s patented Mars’s patented technology.technology.

MEI was required to MEI was required to make those royalty make those royalty payments whether payments whether or not it made any or not it made any profit.profit.

LicenseLicenseMarsMars

MEIMEI



In 1990, Mars In 1990, Mars sues Coin sues Coin Acceptors, Inc. Acceptors, Inc. for infringement for infringement of both patentsof both patents

MarsMars



In 1996, Mars In 1996, Mars assigns patents to assigns patents to MEI to settle a tax MEI to settle a tax dispute with the UK dispute with the UK concerning the tax concerning the tax treatment of treatment of royalty payments royalty payments from MEI-UK to its from MEI-UK to its parent Mars.parent Mars.

AssignsAssigns

MarsMars

MEIMEI



District Court finds District Court finds MEI—but not MarsMEI—but not Mars—had standing to —had standing to pursue claims after pursue claims after 1996. (Mars did 1996. (Mars did not own the not own the patents.)patents.)

MarsMars

MEIMEI



In 2006, Mars and In 2006, Mars and MEI - “COINCO MEI - “COINCO CONFIRMATION CONFIRMATION AGREEMENT,” AGREEMENT,” stated that “Mars stated that “Mars and [MEI] do hereby and [MEI] do hereby acknowledge that acknowledge that Mars owns and Mars owns and retains the right to retains the right to sue for past sue for past infringement of the infringement of the Litigation Patents”Litigation Patents”

MarsMars

MEIMEIConfirmation Confirmation AgreementAgreement



Questions of interest (opinion had more Questions of interest (opinion had more questions):questions):

(1) whether Mars was entitled to lost (1) whether Mars was entitled to lost profits; profits;

(2) whether MEI had standing to recover (2) whether MEI had standing to recover damages incurred prior to 1996; anddamages incurred prior to 1996; and

(3) whether Mars had standing to (3) whether Mars had standing to recover damages incurred from 1996 to recover damages incurred from 1996 to 2003.2003.



Question (1) whether Mars was Question (1) whether Mars was entitled to lost profits.entitled to lost profits.

Mars claimed that, by virtue of the Mars claimed that, by virtue of the parent-subsidiary relationship and its parent-subsidiary relationship and its consolidated financial statements, consolidated financial statements, “all MEI’s lost profits were inherently “all MEI’s lost profits were inherently lost profits of Mars.” lost profits of Mars.”



Answer: No Lost Profits for Mars.Answer: No Lost Profits for Mars. Federal Circuit:Federal Circuit:

Mars and MEI had a traditional Mars and MEI had a traditional royalty-bearing license agreement. royalty-bearing license agreement. MEI paid Mars a royalty “[b]ased on MEI paid Mars a royalty “[b]ased on gross sales value” of MEI’s products gross sales value” of MEI’s products that use Mars’s patented that use Mars’s patented technology, and technology, and

MEI was required to make those MEI was required to make those royalty payments whether or not it royalty payments whether or not it made any profit.made any profit.



Question (2) whether MEI had standing to Question (2) whether MEI had standing to recover damages incurred prior to 1996.recover damages incurred prior to 1996.

Answer: No.Answer: No. Federal CircuitFederal Circuit

MEI did not own the patents prior to 1996.MEI did not own the patents prior to 1996. Mars and MEI had a non-exclusive license Mars and MEI had a non-exclusive license

because 1996 agreement indicated that because 1996 agreement indicated that MEI-UK was also licensed under the same MEI-UK was also licensed under the same patents as MEI- no geographical limits. patents as MEI- no geographical limits.



Question (3) whether Mars had standing to Question (3) whether Mars had standing to recover damages incurred from 1996 to 2003.recover damages incurred from 1996 to 2003.

Real Questions:Real Questions: (a) Whether the 1996 Agreements (a) Whether the 1996 Agreements

transferred title of the patent from Mars to transferred title of the patent from Mars to MEI, andMEI, and

(b) If so, whether the 2006 Confirmation (b) If so, whether the 2006 Confirmation Agreement transferred title back from MEI Agreement transferred title back from MEI to Mars.to Mars.



Question (a) Whether the 1996 Agreements Question (a) Whether the 1996 Agreements transferred title of the patent from Mars to transferred title of the patent from Mars to MEI.MEI.

Answer: Yes.Answer: Yes. Federal Circuit- language is a clear Federal Circuit- language is a clear

assignment to MEI:assignment to MEI: ““[Mars] Incorporated hereby transfers to MEI-[Mars] Incorporated hereby transfers to MEI-

US its entire interest in the Covered US its entire interest in the Covered Intellectual Property that relates to the Intellectual Property that relates to the business of the Parties.”business of the Parties.”



Question (b) Whether the 2006 Question (b) Whether the 2006 Confirmation Agreement transferred Confirmation Agreement transferred title back from MEI to Mars.title back from MEI to Mars.

Answer: No.Answer: No.



Federal Circuit- the following language was Federal Circuit- the following language was a transfer of a right to sue for past a transfer of a right to sue for past damages and not an assignment damages and not an assignment (acknowledges patent ownership but does (acknowledges patent ownership but does not actively transfer):not actively transfer):

Mars and the Buyer [MEI] do hereby Mars and the Buyer [MEI] do hereby acknowledgeacknowledge that that Mars owns and retains the right to sue for past Mars owns and retains the right to sue for past infringement of the Litigation Patents. To the extent that infringement of the Litigation Patents. To the extent that MEI may have or claim any rights in or to MEI may have or claim any rights in or to any past any past infringement of the Litigation Patents or any recovery infringement of the Litigation Patents or any recovery therefortherefor, upon the terms and subject to the conditions of , upon the terms and subject to the conditions of the Purchase Agreement, MEI hereby does irrevocably the Purchase Agreement, MEI hereby does irrevocably assign all such rights to Mars.assign all such rights to Mars.



Question (3) whether Mars had Question (3) whether Mars had standing to recover damages standing to recover damages incurred from 1996 to 2003.incurred from 1996 to 2003.

Answer: No.Answer: No.



Watch out who owns the patents.Watch out who owns the patents. Corporate structure and ownership Corporate structure and ownership

can affect:can affect: Standing to sue andStanding to sue and Damages (lost profits).Damages (lost profits).

Be very clear with the language you Be very clear with the language you use when assigning a patent (don't use when assigning a patent (don't play games). play games).



Licensing OthersLicensing Others

Quanta v. LG ElectronicsQuanta v. LG Electronics (U.S. 2008)(U.S. 2008)

US 4,939,641

US 5,379,379

US 5,077,733

Bought

Cross-License

Computer Memory Management Methods

3rd Party Supplier of Memory/Bus

License does not extend to products that combine Intel with Non-Intel Components


Sales of products that do not fully practice the Sales of products that do not fully practice the invention can still trigger patent exhaustion invention can still trigger patent exhaustion when the product includes essential features when the product includes essential features and the “reasonable and intended use” of the and the “reasonable and intended use” of the product is to practice the patent.product is to practice the patent.

Method claims are subject to exhaustion.Method claims are subject to exhaustion. The court left open the possibility of using The court left open the possibility of using

specific licensing terms to limit the scope of specific licensing terms to limit the scope of patent exhaustion. patent exhaustion. For example, a License could prohibit types For example, a License could prohibit types

of third party sales as a breach.of third party sales as a breach.


Take Home #1:Take Home #1: Try to have the agreement create a Try to have the agreement create a

breach if downstream parties violate the breach if downstream parties violate the agreement (Good Luck on getting that in agreement (Good Luck on getting that in an agreement).an agreement).

Take Home #2:Take Home #2: Recoup all of your licensing revenue from Recoup all of your licensing revenue from

the original sale/license. (Make sure your the original sale/license. (Make sure your royalty rate reflects royalties for royalty rate reflects royalties for downstream use).downstream use).

Continuation, Divisional Continuation, Divisional and CIP Applicationsand CIP Applications

ThemesThemes

Following a long line of cases- CIP’s Following a long line of cases- CIP’s might not be that usefulmight not be that useful

What is gained by filing a CIP in What is gained by filing a CIP in comparison to a new utility comparison to a new utility application for the new matter and a application for the new matter and a continuation?continuation?

Answer: Not muchAnswer: Not much

Pfizer, Inc. v. Teva Pfizer, Inc. v. Teva Pharmaceuticals USA, IncPharmaceuticals USA, Inc..

Safe Harbor of 35 U.S.C. § 121Safe Harbor of 35 U.S.C. § 121 Safe HarborSafe Harbor: : Protection afforded by Protection afforded by

35 U.S.C. 121 to applications (or 35 U.S.C. 121 to applications (or patents issued therefrom) filed as a patents issued therefrom) filed as a result of a restriction requirement is result of a restriction requirement is limited to divisional applications and limited to divisional applications and does not apply to CIP’s filed as a does not apply to CIP’s filed as a result of a restriction requirement. result of a restriction requirement.

PowerOasis v. T-MobilePowerOasis v. T-Mobile (Fed. Cir. 2008)(Fed. Cir. 2008)

Priority & Presumption of ValidityPriority & Presumption of Validity Patentee normally bears burden of Patentee normally bears burden of

proving priorityproving priority• exception: priority claim considered by PTO exception: priority claim considered by PTO

= presumption of validity= presumption of validity PTO did NOT consider priority = NO PTO did NOT consider priority = NO

presumption of validitypresumption of validity CIP did not receive benefit of CIP did not receive benefit of

parent’s filing dateparent’s filing date

Patentable Subject Matter-Patentable Subject Matter-Business Methods and Business Methods and

SoftwareSoftware

Business Methods and Business Methods and SoftwareSoftware

Themes:Themes: This area of the law is a work in This area of the law is a work in

progress.progress. Focus of the analysis seems to be that Focus of the analysis seems to be that

the claims are being overly broad. the claims are being overly broad. Right now, the Patent Office is taking an Right now, the Patent Office is taking an

expansive view of what is not expansive view of what is not patentable.patentable.

Watch out, other types of inventions Watch out, other types of inventions might not be patentable. might not be patentable.


SoftwareSoftware

The Federal CircuitThe Federal Circuit

In re Bilski,In re Bilski,(Fed. Cir. 2008)(en banc)(Fed. Cir. 2008)(en banc)

The claim is for a method of hedging risk in the field of The claim is for a method of hedging risk in the field of commodities trading.commodities trading.

A method for managing the consumption risk costs of a A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price commodity sold by a commodity provider at a fixed price comprising the steps of:comprising the steps of:

(a) initiating a series of transactions between said commodity (a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position historical averages, said fixed rate corresponding to a risk position of said consumer;of said consumer;

(b) identifying market participants for said commodity having a (b) identifying market participants for said commodity having a counter-risk position to said consumers; andcounter-risk position to said consumers; and

(c) initiating a series of transactions between said commodity (c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk that said series of market participant transactions balances the risk position of said series of consumer transactionsposition of said series of consumer transactions


Bilski holds that a claimed process Bilski holds that a claimed process either either – (1) be tied to a particular machine or (1) be tied to a particular machine or

apparatus or apparatus or – (2) transform a particular article into a (2) transform a particular article into a

different state or thing.different state or thing. Bilski's claim fails this testBilski's claim fails this test


Federal Circuit:Federal Circuit: [W]e recognize that the Supreme [W]e recognize that the Supreme

Court may ultimately decide to alter Court may ultimately decide to alter or perhaps even set aside this test to or perhaps even set aside this test to accommodate emerging accommodate emerging technologies. And we certainly do not technologies. And we certainly do not rule out the possibility that this court rule out the possibility that this court may in the future refine or augment may in the future refine or augment the test or how it is applied.the test or how it is applied.

Bilski v. Doll (on petition for certiorari)Bilski v. Doll (on petition for certiorari)

In re Comiskey (Fed. Cir. In re Comiskey (Fed. Cir. 2009)- Revised Panel Opinion2009)- Revised Panel Opinion

Original- claim features directed to Original- claim features directed to nonstatutory subject matter would be de nonstatutory subject matter would be de facto obvious. Rejects under 103.facto obvious. Rejects under 103.

Comiskey’s patent application claims a Comiskey’s patent application claims a method of arbitrating that does not method of arbitrating that does not necessarily require the use of any necessarily require the use of any ‘technology.’‘technology.’

Revised opinion- finds the claims just Revised opinion- finds the claims just directed to non-statutory subject matter. directed to non-statutory subject matter. Rejects under 101.Rejects under 101.

In re Comiskey (Fed. Cir. In re Comiskey (Fed. Cir. 2009)- Revised Panel Opinion2009)- Revised Panel Opinion

Dissent- Moore and Newman- the revised Dissent- Moore and Newman- the revised opinion violated "well established opinion violated "well established precedent that this court will not consider precedent that this court will not consider new grounds of rejecting patent claims on new grounds of rejecting patent claims on appeal."appeal."


Not yet many follow on cases from the Federal Not yet many follow on cases from the Federal Circuit, but the Patent Office has been busy Circuit, but the Patent Office has been busy lining up cases for the Federal Circuit.lining up cases for the Federal Circuit.

The Board of Patent Appeals and Interferences The Board of Patent Appeals and Interferences (BPAI) was at first a little tentative in (BPAI) was at first a little tentative in expanding expanding In re BilskiIn re Bilski, but the BPAI seems to , but the BPAI seems to have lost some inhibition (being tricky).have lost some inhibition (being tricky).

While it is likely some of these cases will be While it is likely some of these cases will be overturned, BPAI cases might provide a clue of overturned, BPAI cases might provide a clue of things to come for the Federal Circuit.things to come for the Federal Circuit.


SoftwareSoftware

Bilski- tied to a particular Bilski- tied to a particular machine or apparatus prongmachine or apparatus prong


Question: How much of an apparatus Question: How much of an apparatus or machine do I need to recite in my or machine do I need to recite in my method claim in order to satisfy the method claim in order to satisfy the “be tied to a particular machine or “be tied to a particular machine or apparatus” prong of the test?apparatus” prong of the test?


Bilski admitted that the claim was Bilski admitted that the claim was not limited to any specific machine, not limited to any specific machine, so not at issue in Bilski.so not at issue in Bilski.

““We leave to future cases the We leave to future cases the elaboration of the precise contours elaboration of the precise contours of machine implementation, as well of machine implementation, as well as the answers to particular as the answers to particular questions, such as whether or when questions, such as whether or when recitation of a computer suffices to recitation of a computer suffices to tie a process claim to a particular tie a process claim to a particular machine.”machine.”

Ex parte HalliganEx parte Halligan (BPAI 2008)(BPAI 2008)

119. A 119. A programmed computerprogrammed computer method based method based upon the six factors of a trade secret from the upon the six factors of a trade secret from the First Restatement of Torts for identifying trade First Restatement of Torts for identifying trade secrets within a plurality of potential trade secrets within a plurality of potential trade secrets of a business, where each of the secrets of a business, where each of the plurality of potential trade secrets comprise plurality of potential trade secrets comprise information, said method implemented by the information, said method implemented by the programmed computer to effect the following programmed computer to effect the following steps:steps:

a) the programmed computer providing a a) the programmed computer providing a predetermined criteria for evaluating a predetermined criteria for evaluating a potential trade secret ...potential trade secret ...


Machine Prong- “The issue presented by Machine Prong- “The issue presented by these claims is whether recitation of a these claims is whether recitation of a programmed computer suffices to tie the programmed computer suffices to tie the process claims to a particular machine. process claims to a particular machine. This is the exact issue that the court in This is the exact issue that the court in Bilski declined to decide.”Bilski declined to decide.”


Machine Prong- Fails.Machine Prong- Fails. ““Were the recitation of a 'programmed Were the recitation of a 'programmed

computer' in combination with purely computer' in combination with purely functional recitations of method steps, where functional recitations of method steps, where the functions are implemented using an the functions are implemented using an unspecified algorithm, sufficient to transform unspecified algorithm, sufficient to transform otherwise unpatentable method steps into a otherwise unpatentable method steps into a patent eligible process, this would exalt form patent eligible process, this would exalt form over substance and would allow pre-emption over substance and would allow pre-emption of the fundamental principle present in the of the fundamental principle present in the non-machine implemented method by the non-machine implemented method by the addition of the mere recitation of a addition of the mere recitation of a 'programmed computer.'”'programmed computer.'”


Transformation Prong- Failed because the Transformation Prong- Failed because the transformation involves legal rights (Trade transformation involves legal rights (Trade Secrets) and "does not represent physical Secrets) and "does not represent physical and tangible objects." and tangible objects."


Practice Tip:Practice Tip: Right now, it appears that just reciting Right now, it appears that just reciting

a “computer” or a “programmed a “computer” or a “programmed computer” without more in a method computer” without more in a method claim will not overcome the machine claim will not overcome the machine prong of Bilski's machine-or-prong of Bilski's machine-or-transformation test at the Patent transformation test at the Patent Office. Office.

Note: Other non-method claims directed to “a Note: Other non-method claims directed to “a programmed computer” were held invalid programmed computer” were held invalid under § 112 (did not reach § 101 issue)under § 112 (did not reach § 101 issue)

Ex parte Cornea-HaseganEx parte Cornea-Hasegan ((BPAI 2009BPAI 2009)(non-precedential) )(non-precedential)

1. A method, comprising:1. A method, comprising: normalizing by a normalizing by a processorprocessor operands a, b, and c for a operands a, b, and c for a

floating-point operation;floating-point operation; predicting by the predicting by the processorprocessor whether result d of said whether result d of said

floating-point operation on said a, b, c might be tiny;floating-point operation on said a, b, c might be tiny; if so, then scaling by the if so, then scaling by the processorprocessor said a, b, c to form said a, b, c to form

a', b', c'; calculating by the processor result d' of said a', b', c'; calculating by the processor result d' of said floating-point operation on said a', b', c'; floating-point operation on said a', b', c';

determining by the determining by the processorprocessor whether said d is tiny whether said d is tiny based upon said result d';based upon said result d';

if so, then calculating by the if so, then calculating by the processorprocessor said d using said d using software; andsoftware; and

if not, then calculating by the if not, then calculating by the processorprocessor said d using said d using floating-point hardware.floating-point hardware.


Machine Prong:Machine Prong: ““The recitation of a processor in itself, however, does The recitation of a processor in itself, however, does

not tie the process steps to a particular machine. In not tie the process steps to a particular machine. In other words, the recitation of a processor does not limit other words, the recitation of a processor does not limit the process steps to any specific machine or apparatus.”the process steps to any specific machine or apparatus.”

Transformation Prong:Transformation Prong: ““Appellant’s claim 1also fails the second prong of the Appellant’s claim 1also fails the second prong of the

machine-or-transformation test because the data acted machine-or-transformation test because the data acted on by the method does not represent physical and on by the method does not represent physical and tangible objects. Rather, the data represents information tangible objects. Rather, the data represents information about an abstract floating-point number, which is about an abstract floating-point number, which is intangible.”intangible.”

Result:Result: ““Thus, claim 1 fails the machine-or-transformation test Thus, claim 1 fails the machine-or-transformation test

and is not patent-eligible under 35 U.S.C. § 101”and is not patent-eligible under 35 U.S.C. § 101”


Practice Tip:Practice Tip: Similar to “programmed computer” in Similar to “programmed computer” in

Halligan, it appears that just reciting a Halligan, it appears that just reciting a “processor” without more in a method “processor” without more in a method claim will not overcome the machine claim will not overcome the machine prong of Bilski's machine-or-prong of Bilski's machine-or-transformation test at the Patent transformation test at the Patent Office. Office.


SoftwareSoftware

How Bilski Affects Other Types How Bilski Affects Other Types of Claimsof Claims


Question: Can I get around this Question: Can I get around this problem by using apparatus claims problem by using apparatus claims instead of method claims?instead of method claims?

Clue: In re Bilski (which did not Clue: In re Bilski (which did not outright overturn outright overturn State StreetState Street) stated ) stated in footnote 18:in footnote 18:

““In In State StreetState Street, as is often forgotten, , as is often forgotten, we addressed a claim drawn not a we addressed a claim drawn not a process but to a process but to a machinemachine.” .”

Ex parte Bo LiEx parte Bo Li (BPAI 2008) (BPAI 2008)

One of first BPAI One of first BPAI cases to interpret cases to interpret Bilski (somewhat).Bilski (somewhat).

The application The application describes a describes a system and system and method for method for generating Web generating Web based reports that based reports that can be easily can be easily updated.updated.


42. A computer program product, comprising a 42. A computer program product, comprising a computer usable medium having a computer computer usable medium having a computer readable program code embodied therein, said readable program code embodied therein, said computer readable program code adapted to be computer readable program code adapted to be executed to implement a method for generating a executed to implement a method for generating a report, said method comprising:report, said method comprising:

providing a system, wherein the system comprises providing a system, wherein the system comprises distinct software modules, and wherein the distinct distinct software modules, and wherein the distinct software modules comprise a logic processing software modules comprise a logic processing module, a configuration file processing module, a module, a configuration file processing module, a data organization module, and a data display data organization module, and a data display organization module;organization module;

parsing a configuration file into definition data that parsing a configuration file into definition data that specifies: a data organization of the report... specifies: a data organization of the report...


Claim 42 is a Beauregard claim directed to Claim 42 is a Beauregard claim directed to a computer program product stored on a a computer program product stored on a computer readable memory .computer readable memory .

Held that “though not finally adjudicated,” Held that “though not finally adjudicated,” such claimed products, even when written such claimed products, even when written as Beauregard claims, are still valid under as Beauregard claims, are still valid under § 101.§ 101.

However, claim still held unpatentable as However, claim still held unpatentable as obvious.obvious.

Ex parte Atkin (BPAI 2009)Ex parte Atkin (BPAI 2009)

Issued after Ex parte Issued after Ex parte Cornea-HaseganCornea-Hasegan

The application The application concerns human concerns human interfaces for the interfaces for the World Wide Web World Wide Web addresses in languages addresses in languages which require which require bidirectional display bidirectional display and presentation (can and presentation (can read right to left or read right to left or vice versa).vice versa).

Ex parte Atkin (BPAI 2009)Ex parte Atkin (BPAI 2009) Method ClaimMethod Claim 1. A method for converting a unidirectional 1. A method for converting a unidirectional

domain name to a bidirectional domain name, domain name to a bidirectional domain name, said method comprising the steps of:said method comprising the steps of:

establishing a plurality of labels within a establishing a plurality of labels within a unidirectional domain name by using a pre-unidirectional domain name by using a pre-determined full stop punctuation mark as a determined full stop punctuation mark as a delimiter between said labels, said labels having delimiter between said labels, said labels having an original label display order as encountered an original label display order as encountered from left to right;from left to right;

within each said label, performing inferencing within each said label, performing inferencing through...through...

Ex parte Atkin (BPAI 2009)Ex parte Atkin (BPAI 2009) System ClaimSystem Claim 9. A system for converting a unidirectional 9. A system for converting a unidirectional

domain name to a bidirectional domain name domain name to a bidirectional domain name comprising:comprising:

a label definer adapted to establish a plurality of a label definer adapted to establish a plurality of labels within a unidirectional domain name by labels within a unidirectional domain name by using a pre-determined full stop punctuation using a pre-determined full stop punctuation mark as a delimiter between said labels, said mark as a delimiter between said labels, said labels having an original label display order as labels having an original label display order as encountered from left to right;encountered from left to right;

an inferencer adapted to, within each said label, an inferencer adapted to, within each said label, resolve ...resolve ...


Atkin did not separately argue: Atkin did not separately argue: Independent claim 5, which recited a Independent claim 5, which recited a

computer readable medium encoded computer readable medium encoded with computer software for with computer software for accomplishing method steps like those accomplishing method steps like those recited in claim 1 (Beauregard claim), recited in claim 1 (Beauregard claim), andand

Independent claim 9, which recited a Independent claim 9, which recited a “system” that comprises elements for “system” that comprises elements for performing the functions represented performing the functions represented by those steps.by those steps.


BPAI rejected under 35 U.S.C. § 101 as BPAI rejected under 35 U.S.C. § 101 as not being directed to patent-eligible not being directed to patent-eligible subject matter as defined in Bilski:subject matter as defined in Bilski:

Independent claim 1- Method Claim.Independent claim 1- Method Claim. Independent claim 9- System Claim.Independent claim 9- System Claim.

Notably, claim 5, which was the Notably, claim 5, which was the Beauregard claim, was not rejectedBeauregard claim, was not rejected under under 35 U.S.C. § 101.35 U.S.C. § 101.


BPAI noted that claim 1 does not: BPAI noted that claim 1 does not: – "recite any machine or apparatus or call "recite any machine or apparatus or call

for transforming an article into a different for transforming an article into a different state or thing. A domain name is simply a state or thing. A domain name is simply a series of characters representing the series of characters representing the address of a resource, such as a server, address of a resource, such as a server, on the World Wide Web. All of the steps on the World Wide Web. All of the steps are data manipulation steps."are data manipulation steps."

Ex parte Atkin (BPAI 2009)Ex parte Atkin (BPAI 2009) System claim 9 for converting the domain name rejected: System claim 9 for converting the domain name rejected:

– The term “system” in the preamble is broad enough to The term “system” in the preamble is broad enough to read on a method and thus does not imply the read on a method and thus does not imply the presence of any apparatus. presence of any apparatus.

– Language “inferencer” and “label definer” used in the Language “inferencer” and “label definer” used in the body does not help (not really an apparatus).body does not help (not really an apparatus).

– BPAI treated claim 9 as encompassing any and all BPAI treated claim 9 as encompassing any and all means for performing the recited functions and means for performing the recited functions and rejected claim 9 under § 112, first paragraph, as based rejected claim 9 under § 112, first paragraph, as based on a nonenabling disclosure in accordance with on a nonenabling disclosure in accordance with MiyazakiMiyazaki (BPAI). (too broad a claim- the disclosure fails (BPAI). (too broad a claim- the disclosure fails to provide a scope of enablement commensurate with to provide a scope of enablement commensurate with the scope of the claims).the scope of the claims).

Ex parte Atkin (BPAI 2009)Ex parte Atkin (BPAI 2009) System claim 9 for converting the System claim 9 for converting the

domain name rejected: domain name rejected: – ““when construed in accordance with when construed in accordance with

Miyazaki in the manner explained above Miyazaki in the manner explained above in the discussion of the new rejection of in the discussion of the new rejection of those claims under § 112, first paragraph, those claims under § 112, first paragraph, for nonenablement, those claims for nonenablement, those claims encompass any and all structures for encompass any and all structures for performing the recited [claim 9 is] at performing the recited [claim 9 is] at least as broad as method claims which least as broad as method claims which we have determined recite patent.” we have determined recite patent.” ineligible subject matter under Bilski.”ineligible subject matter under Bilski.”


Practice Points:Practice Points: Include Beauregard claims in your Include Beauregard claims in your

application to cover the methods for application to cover the methods for your invention your invention

(Might improve your chance of (Might improve your chance of avoiding a 101 rejection at the Patent avoiding a 101 rejection at the Patent Office)Office)

Ex parte Atkin (BPAI 2009)Ex parte Atkin (BPAI 2009) However, note in an earlier non-precedenital decision, However, note in an earlier non-precedenital decision,

Ex parte Cornea-HaseganEx parte Cornea-Hasegan (BPAI 2009) (discussed (BPAI 2009) (discussed before), the BPAI rejected the following claim as being before), the BPAI rejected the following claim as being directed to unpatentable subject matter:directed to unpatentable subject matter:

18. A computer readable media including program 18. A computer readable media including program instructions which when executed by a processor cause instructions which when executed by a processor cause the processor to perform the following:the processor to perform the following:

normalizing operands a, b, and c for a floating-point normalizing operands a, b, and c for a floating-point operation;...operation;...

BPAI- “Limiting the claim to computer readable media BPAI- “Limiting the claim to computer readable media does not add any practical limitation to the scope of does not add any practical limitation to the scope of the claim. Such a field-of-use limitation is insufficient the claim. Such a field-of-use limitation is insufficient to render an otherwise ineligible claim patent to render an otherwise ineligible claim patent eligible.” eligible.”

Ex parte Atkin (BPAI 2009)Ex parte Atkin (BPAI 2009) Practice Points:Practice Points: System claims can be rejected under 101System claims can be rejected under 101

Recite “An apparatus...”Recite “An apparatus...” Avoid Miyazaki Enablement Trap- if Avoid Miyazaki Enablement Trap- if

claiming structure, try to Include structure claiming structure, try to Include structure specifically tailored to the invention's specifically tailored to the invention's environment (e.g., “x-ray machine”) … and environment (e.g., “x-ray machine”) … and notnot uncommon/means-like terms uncommon/means-like terms “inferencer”, “label definer”“inferencer”, “label definer”

Might Avoid Miyazaki Enablement Trap- Might Avoid Miyazaki Enablement Trap- use means plus function language 35 use means plus function language 35 U.S.C. 112, paragraph 6.U.S.C. 112, paragraph 6.


Question: I do not deal with business Question: I do not deal with business method and software patents, so method and software patents, so what is the big deal?what is the big deal?

Answer: Claims in other types of Answer: Claims in other types of fields may fail Bilski's machine-or-fields may fail Bilski's machine-or-transformation test.transformation test.

Medical diagnostic or treatment Medical diagnostic or treatment claims.claims.


Federal Circuit in Bilski discussed several medical Federal Circuit in Bilski discussed several medical treatment cases.treatment cases.

Discussing machine prong, it looked favorably Discussing machine prong, it looked favorably to to GramsGrams – rejecting a claim directed to a – rejecting a claim directed to a process of diagnosing an 'abnormal condition' process of diagnosing an 'abnormal condition' in a person by identifying and noticing in a person by identifying and noticing discrepancies in results of unspecified clinical discrepancies in results of unspecified clinical tests of different parts of the body.tests of different parts of the body.

Footnote 27 mentions dissenters view of Footnote 27 mentions dissenters view of dismissal of writ certiorari in dismissal of writ certiorari in MetaboliteMetabolite case. case.


In Bilski, In Bilski, AbeleAbele case was discussed with respect to the case was discussed with respect to the transformation prong of the test.transformation prong of the test.

In In AbeleAbele, the (broad) independent claim to a process of , the (broad) independent claim to a process of graphically displaying variances of data from average graphically displaying variances of data from average values was unpatentable because it “did not specify any values was unpatentable because it “did not specify any particular type or nature of data; nor did it specify how particular type or nature of data; nor did it specify how or from where the data was obtained o what the data or from where the data was obtained o what the data represented.” represented.”

However, its dependent claim, which recites “said data However, its dependent claim, which recites “said data is X-ray attenuation data produced in a two dimensional is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner”, was field by a computed tomography scanner”, was patentable.patentable.

““the transformation of that raw data into a the transformation of that raw data into a particular visual depiction of a physical object on particular visual depiction of a physical object on a display was sufficient to render that more a display was sufficient to render that more narrowly-claimed process patent-eligible.”narrowly-claimed process patent-eligible.”

Classen v. Biogen IDECClassen v. Biogen IDEC ((Fed. Cir. 2008Fed. Cir. 2008))

(Nonprecedential) (Nonprecedential) US 5,723,283US 5,723,283 The claims focus The claims focus

on several on several methods for methods for evaluating evaluating vaccine vaccine immunization immunization schedules.schedules.


(Nonprecedential) (Nonprecedential) Claim 1 of patent 5,723,283:Claim 1 of patent 5,723,283: 1. A method of determining whether an immunization schedule 1. A method of determining whether an immunization schedule

affects the incidence or severity of a chronic immune-mediated affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control disorder in a treatment group of mammals, relative to a control group of mammals, which comprises:group of mammals, which comprises:

– immunizing mammals in the treatment group of mammals immunizing mammals in the treatment group of mammals with one or more doses of one or more immunogens, with one or more doses of one or more immunogens, according to said immunization schedule, andaccording to said immunization schedule, and

– comparing the incidence, prevalence, frequency or severity comparing the incidence, prevalence, frequency or severity of said chronic immune-mediated disorder or the level of a of said chronic immune-mediated disorder or the level of a marker of such a disorder, in the treatment group, with that marker of such a disorder, in the treatment group, with that in the control group.in the control group.


(Nonprecedential) (Nonprecedential) The whole decision (Judge Moore with The whole decision (Judge Moore with

Judge Newman concurring) : Judge Newman concurring) : – "In light of our decision in "In light of our decision in In re BilskiIn re Bilski, 545 F.3d , 545 F.3d

943 (Fed. Cir. 2008) (en banc), we affirm the 943 (Fed. Cir. 2008) (en banc), we affirm the district court's grant of summary judgment that district court's grant of summary judgment that these claims are invalid under 35 U.S.C. § 101. these claims are invalid under 35 U.S.C. § 101. Dr. Classen's claims are neither 'tied to a Dr. Classen's claims are neither 'tied to a particular machine or apparatus' nor do they particular machine or apparatus' nor do they 'transform[] a particular article into a different 'transform[] a particular article into a different state or thing.' state or thing.' BilskiBilski, 545 F.3d at 954. , 545 F.3d at 954. Therefore we affirm.” Therefore we affirm.”


(Nonprecedential) (Nonprecedential) Practice Tip:Practice Tip:

Even if your invention is neither a Even if your invention is neither a business method type invention nor business method type invention nor a software type invention, check a software type invention, check your claims to make sure that they your claims to make sure that they satisfy Bilski's machine-or-satisfy Bilski's machine-or-transformation test. transformation test.

Practice Before the Practice Before the Patent OfficePatent Office

USPTO PracticeUSPTO Practice

Topics:Topics: Current Rules on Hold.Current Rules on Hold. Future Rules- Deferred Future Rules- Deferred

Examination?Examination? More Requirements for Practitioners.More Requirements for Practitioners. Improvements to PCT/Outside US Improvements to PCT/Outside US

filing and prosecution.filing and prosecution.

Practice Before the Patent Practice Before the Patent OfficeOffice

Patent Office RulesPatent Office Rules

USPTO New Rules on HoldUSPTO New Rules on Hold

President Obama has ordered that President Obama has ordered that new federal rulemaking cease until new federal rulemaking cease until the White House Office of Information the White House Office of Information and Regulatory Affairs (OIRA) can and Regulatory Affairs (OIRA) can review the rules.review the rules.

USPTO Proposed Rule-USPTO Proposed Rule-Changes to Practice for Changes to Practice for Documents SubmittedDocuments Submitted

Eliminating the Fax Machine (Almost)Eliminating the Fax Machine (Almost)– Prohibits faxing any correspondence that can be submitted Prohibits faxing any correspondence that can be submitted

via EFS–Webvia EFS–Web– Prohibits faxing any patent or TM correspondence that can Prohibits faxing any patent or TM correspondence that can

be submitted via the Electronic Patent Assignment System be submitted via the Electronic Patent Assignment System (EPAS)(EPAS)

– Allows faxing correspondence Allows faxing correspondence notnot intended to become part intended to become part of the official file recordof the official file record

– Limits fax submissions to one application or matter (except Limits fax submissions to one application or matter (except those involving maintenance fee payments or refunds)those involving maintenance fee payments or refunds)

– Requires use of fax number identified by the PTO for the Requires use of fax number identified by the PTO for the particular type of correspondence, or else transmission is particular type of correspondence, or else transmission is ineffective!ineffective!

Proposing an Proposing an increasedincreased minimum font size for papers minimum font size for papers submitted in patent application, patent and reexamination submitted in patent application, patent and reexamination proceedingsproceedings

– Capital letters no smaller than 0.28 cm high (e.g., Times Capital letters no smaller than 0.28 cm high (e.g., Times New Roman 12 point font)New Roman 12 point font)

FINAL PTO RULE: FINAL PTO RULE: Patent AppealsPatent Appeals

ON HOLDON HOLD New format requirements, i.e., 30-page New format requirements, i.e., 30-page

limit, limit, 14-point font14-point font.. Extensions-of-time for Reply Briefs and Extensions-of-time for Reply Briefs and

Requests for Rehearing are no longer a Requests for Rehearing are no longer a matter of right.matter of right.

New required sections: Statement of New required sections: Statement of Facts and Claims Support and Drawing Facts and Claims Support and Drawing Analysis.Analysis.

FINAL PTO RULE: FINAL PTO RULE: Patent AppealsPatent Appeals

OMB requested public comments on the costs and OMB requested public comments on the costs and paperwork burdens with a November 7, 2008 deadline.paperwork burdens with a November 7, 2008 deadline.

Effective date of new appeals rules would have been Effective date of new appeals rules would have been December 10, 2008December 10, 2008

BUT the new rules have been indefinitely delayed BUT the new rules have been indefinitely delayed because “the review by OMB has not been completed.”because “the review by OMB has not been completed.”

Applicants are free to submit appeals following the old Applicants are free to submit appeals following the old or new rules.or new rules.

Dec. 10 entry in Federal Register with announcement: Dec. 10 entry in Federal Register with announcement: http://edocket.access.gpo.gov/2008/pdf/E8-29297.pdfhttp://edocket.access.gpo.gov/2008/pdf/E8-29297.pdf


Future Rules- Deferred Future Rules- Deferred Examination?Examination?

Current Deferred Examination Current Deferred Examination Requirements- Rule 103(d)Requirements- Rule 103(d)

Allows a deferral up to 3 years from the earliest Allows a deferral up to 3 years from the earliest priority date claimedpriority date claimed

Requirements for RequestRequirements for Request– Fees- $430Fees- $430

• Publication Fee under Rule 1.18(d)- $300Publication Fee under Rule 1.18(d)- $300• Processing Fee under Rule 1.17(i)- $130Processing Fee under Rule 1.17(i)- $130

– Originally Filed Utility (or Plant) application or Originally Filed Utility (or Plant) application or Nationalized PCTNationalized PCT

– Allowed to be Published (no non-publication request or Allowed to be Published (no non-publication request or rescinded request)rescinded request)

– Application in condition to publishApplication in condition to publish No Office Action or Notice of Allowance No Office Action or Notice of Allowance

Future of Deferred ExaminationFuture of Deferred Examination

Select comments from the roundtable Select comments from the roundtable discussion held on February 12, 2009.discussion held on February 12, 2009.

– Deferred Examination would harmonize U.S. with Deferred Examination would harmonize U.S. with the rest of the world.the rest of the world.

– Question of whether the PTO has the authority to Question of whether the PTO has the authority to make the change.make the change.

– It appears that Deferred Examination likely will It appears that Deferred Examination likely will be back on the table this year.be back on the table this year.

Written comment deadline was February 26, Written comment deadline was February 26, 2009, but now has been extend to May 29, 2009, but now has been extend to May 29, 2009.2009.


New Requirements for Patent New Requirements for Patent PractitionersPractitioners

Patent PractitionersPatent Practitioners

Annual Patent Practitioner Maintenance Annual Patent Practitioner Maintenance FeesFees

Starting Spring 2009 - $118Starting Spring 2009 - $118 Reminder to make sure your contact info is Reminder to make sure your contact info is

correct with PTO, notices will be sent in correct with PTO, notices will be sent in advanceadvance

Info on how to update contact: Info on how to update contact: http://www.uspto.gov/main/homepagenewhttp://www.uspto.gov/main/homepagenews/2008dec11.htms/2008dec11.htm

““Continuing Education for Continuing Education for Practitioners” (“CEP”) SystemPractitioners” (“CEP”) System

Pilot launched late August 2008Pilot launched late August 2008 Materials to cover recent PTO rule Materials to cover recent PTO rule

changes, revised patent examination changes, revised patent examination guidelines, etc.guidelines, etc.

If implemented, practitioners will be If implemented, practitioners will be required to complete one CEP required to complete one CEP program per year.program per year.

Practitioners Withdrawing from Practitioners Withdrawing from Representation Representation

Eliminates requirement of 30 days between approval Eliminates requirement of 30 days between approval of Request to withdraw and expiration of time period of Request to withdraw and expiration of time period for reply. Instead, practitioners must certify (SB/83):for reply. Instead, practitioners must certify (SB/83):

i. Notice to client, before expiration of reply i. Notice to client, before expiration of reply period, that practitioner wants to withdraw;period, that practitioner wants to withdraw;

ii. Returned to client all papers and property ii. Returned to client all papers and property (including funds); and(including funds); and

iii. Notified client of any replies due and time iii. Notified client of any replies due and time frame for response.frame for response.

Final Rules on Redefining Final Rules on Redefining “Practice” before the Office“Practice” before the Office

Effective September 15, 2008

Registration Authorizes:– Preparing and prosecuting any patent application, consulting with or giving advice to

a client in contemplation of filing a patent application or other document with the Office, and drafting the specification or claims of a patent application;

– Drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention;

– Drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to the Board of Patent Appeals and Interferences, or other proceeding; and

– Drafting patent assignments "if the practitioner is filing or prosecuting the patent application, and assignment does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party.”

Registration Does Not Authorize:– Offering an "opinion of validity of another party's patent when the client is

contemplating litigation and not seeking reexamination“

PTO expects the new ethics rules to be the subject of a later, separate notice

July 23, 2008 PTO Notice – July 23, 2008 PTO Notice – Scope of Foreign Filing Scope of Foreign Filing

LicensesLicenses Beware OutsourcingBeware Outsourcing

– Exporting subject matter for preparation of patent applications Exporting subject matter for preparation of patent applications to be filed in the USto be filed in the US

Requires clearance from the Bureau of Industry and Security (BIS)Requires clearance from the Bureau of Industry and Security (BIS) Not authorized by foreign filing licenseNot authorized by foreign filing license

Exporting subject matter for purposes related to filing of Exporting subject matter for purposes related to filing of foreign patent applicationsforeign patent applications

– Foreign Filing LicenseForeign Filing License– Export Administration Regulations (EAR)Export Administration Regulations (EAR)

Governs use of dual-use commodities, software and technology Governs use of dual-use commodities, software and technology (including technical data)(including technical data)

If invention made in US, technical data in the form of a patent If invention made in US, technical data in the form of a patent application, or in any form, can only be exported for purposes application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the EAR or of a foreign patent application, after compliance with the EAR or following the appropriate PTO foreign filing license procedurefollowing the appropriate PTO foreign filing license procedure

Reminder – Foreign filing licenses do not authorize the Reminder – Foreign filing licenses do not authorize the export of any technology that is not specifically submitted export of any technology that is not specifically submitted to the PTO as part of a U.S. patent application or a petition to the PTO as part of a U.S. patent application or a petition for a foreign filing licensefor a foreign filing license


Improvements to PCT/Outside Improvements to PCT/Outside US Filing and ProsecutionUS Filing and Prosecution

PCT- Options to Save MoneyPCT- Options to Save Money

Australia now available as a PCT Australia now available as a PCT searching authoritysearching authority

Effective: November 1, 2008Effective: November 1, 2008 Press release: applications with Press release: applications with

“claims relating to particular “claims relating to particular mechanical engineering or analogous mechanical engineering or analogous fields of technology may be fields of technology may be excluded”excluded”

PCT- Options to Save MoneyPCT- Options to Save Money

For PCT applications, consider a non-U.S. For PCT applications, consider a non-U.S. International Searching Authority (ISA), such as Korea International Searching Authority (ISA), such as Korea or Australia. or Australia.

– Korea is the least expensive option. As of December 1, Korea is the least expensive option. As of December 1, 2008, the search fee for Korea will be $220 (as compared to 2008, the search fee for Korea will be $220 (as compared to the U.S. $2080 search fee in January). Korea will not search the U.S. $2080 search fee in January). Korea will not search certain types of technology, such as selected biotechnology certain types of technology, such as selected biotechnology inventions. inventions.

– Australia now can act as an International Search Authority Australia now can act as an International Search Authority (ISA) for U.S. originated PCT applications. The search fee for (ISA) for U.S. originated PCT applications. The search fee for Australia is currently $1302, which is less than the $2,080 Australia is currently $1302, which is less than the $2,080 current U.S. search fee. However, the technology that can current U.S. search fee. However, the technology that can be searched by the Australian Patent Office is extremely be searched by the Australian Patent Office is extremely limited. For example, Australia excludes searches of limited. For example, Australia excludes searches of mechanical engineering type inventions. mechanical engineering type inventions.

PCT- Options to Save MoneyPCT- Options to Save Money Below is a chart summarizing the options. Please note that the Below is a chart summarizing the options. Please note that the

search fees are based on March 2009 figures.search fees are based on March 2009 figures.

ISA OfficeISA Office Search Search FeeFee BenefitsBenefits IssuesIssues

AustraliaAustralia $1091$1091 Less expensiveLess expensive

Only searches applications in very Only searches applications in very limited technology fields. For limited technology fields. For example, example, it does not search all mechanical it does not search all mechanical engineering and some engineering and some biotechnology biotechnology type inventions.type inventions.

EuropeEurope $2164$2164 Perceived high Perceived high quality searchquality search

Expensive, and it will not conduct Expensive, and it will not conduct searches for applications that searches for applications that concern concern some types of technologies.some types of technologies.

KoreaKorea $609$609

Inexpensive and Inexpensive and receive results receive results relatively relatively quickly.quickly.

Limits the technology of Limits the technology of applications applications that can be searched.that can be searched.

United States United States of Americaof America $2080$2080 Perceived high Perceived high

quality searchquality search

Expensive and does not supply the Expensive and does not supply the search report in a timely fashion search report in a timely fashion (e.g., before Chapter II deadline).(e.g., before Chapter II deadline).

Outside US ProsecutionOutside US Prosecution

Expansion of members in Patent Expansion of members in Patent Prosecution Highway Program.Prosecution Highway Program.

Full Implementation with JapanFull Implementation with Japan Added- Australia, China, Europe, KoreaAdded- Australia, China, Europe, Korea

Common Application Format between EPO, Common Application Format between EPO, JPO and USPTO.JPO and USPTO.

Triway Pilot Program- Worksharing Triway Pilot Program- Worksharing between the USPTO, EPO and JPO with between the USPTO, EPO and JPO with Paris Convention Applications Paris Convention Applications

Enforcement and TermEnforcement and Term


Topics:Topics: Patent Term AdjustmentPatent Term Adjustment Patent MarkingPatent Marking InfringementInfringement Patent Litigation DefensesPatent Litigation Defenses


Patent Term AdjustmentsPatent Term Adjustments

Wyeth v. DudasWyeth v. Dudas (District of Columbia 2008)(District of Columbia 2008)

Overturned the PTO’s interpretation Overturned the PTO’s interpretation of Patent Term Adjustmentof Patent Term Adjustment

Might be entitled to additional PTA, Might be entitled to additional PTA, review PTA determinations within 2 review PTA determinations within 2 months of issuemonths of issue

At least three other cases filed.At least three other cases filed.


Patent MarkingPatent Marking

Pequignot v. Solo Cup Co.Pequignot v. Solo Cup Co. (ED VA no. 1:07cv00897)(ED VA no. 1:07cv00897)

Marking Marking – False marking case allowed to proceed False marking case allowed to proceed

since lids marked with expired patent nos.since lids marked with expired patent nos.– Still have to prove intent to deceive public, Still have to prove intent to deceive public,

but case made it past summary judgmentbut case made it past summary judgment Note Washington DC patent attorney, Note Washington DC patent attorney,

Matthew Pequignot, filed another Matthew Pequignot, filed another complaint against Gillette. complaint against Gillette. Pequignot Pequignot v. Gillette and P&Gv. Gillette and P&G. .


InfringementInfringement

Egyptian Goddess v. Swisa, Egyptian Goddess v. Swisa, Inc.Inc.

(Fed. Cir. 2008)(Fed. Cir. 2008)

Loosened the standard for design Loosened the standard for design patent infringement patent infringement

Previous testPrevious test = ordinary observer + = ordinary observer + point of novelty point of novelty

New testNew test = ordinary observer, in light = ordinary observer, in light of the prior artof the prior art

Eliminated point of novelty Eliminated point of novelty requirement for infringementrequirement for infringement


Patent Litigation DefensesPatent Litigation Defenses

Aristocrat Tech. v. Int'l Game Aristocrat Tech. v. Int'l Game Tech.Tech. (Fed. Cir. 2008)(Fed. Cir. 2008)

Patent Patent concerns a concerns a system to system to improve the improve the jackpot for slot jackpot for slot machines.machines.

Aristocrat Tech. v. Int'l Game Aristocrat Tech. v. Int'l Game Tech.Tech.

(Fed. Cir. 2008)(Fed. Cir. 2008)Prosecution TimelineProsecution Timeline::

July 8, 1997 & July 8, 1997 & September 9, 1997September 9, 1997 Australian Provisional Applications filedAustralian Provisional Applications filed

July 8, 1998July 8, 1998 PCT/AU98/00525 filed claiming priority to Australian appsPCT/AU98/00525 filed claiming priority to Australian apps

January 10, 2000 January 10, 2000 (Monday)(Monday)

30 month nationalization deadline 30 month nationalization deadline §§ 371 national stage paperwork apparently submitted by this 371 national stage paperwork apparently submitted by this datedate

January 11, 2000January 11, 2000 filing fee submitted filing fee submitted one day lateone day late

June 13, 2000June 13, 2000Notice of Abandonment mailed w/note that Applicants may Notice of Abandonment mailed w/note that Applicants may consider consider filing petition to revive under Rule 137filing petition to revive under Rule 137

September 15, 2000September 15, 2000 Petition to Correct Date-In submittedPetition to Correct Date-In submitted

June 5, 2001June 5, 2001 PTO mailed denial of Petition to Correct Date-InPTO mailed denial of Petition to Correct Date-In

July 18, 2002July 18, 2002 Aristocrat filed Petition to Revive under Rule 137(b) Aristocrat filed Petition to Revive under Rule 137(b) note: > 6 mo after PTO denial of Petition to Correct Date-Innote: > 6 mo after PTO denial of Petition to Correct Date-In

September 2, 2002September 2, 2002 Petition to Revive grantedPetition to Revive granted


Filed a petition to revive as unintentional, Filed a petition to revive as unintentional, but but

§ 371: Title: “National stage: § 371: Title: “National stage: Commencement”Commencement”“(d) ...Failure to comply with these “(d) ...Failure to comply with these requirements shall be regarded as requirements shall be regarded as abandonment of the application by the abandonment of the application by the parties thereof, unless it be shown to the parties thereof, unless it be shown to the satisfaction of the Director that such failure satisfaction of the Director that such failure to comply was to comply was unavoidableunavoidable.” (Emphasis .” (Emphasis added).added).


Federal Circuit:Federal Circuit: Statute spells out the defenses for patent Statute spells out the defenses for patent

infringement and this is not one of them.infringement and this is not one of them. Cites Magnivision “[p]rocedural lapses Cites Magnivision “[p]rocedural lapses

during examination, should they occur, do during examination, should they occur, do not provide grounds of invalidity. Absent not provide grounds of invalidity. Absent proof of inequitable conduct, the examiner’s proof of inequitable conduct, the examiner’s or the applicant’s absolute compliance with or the applicant’s absolute compliance with the internal rules of patent examination the internal rules of patent examination becomes irrelevant after the patent has becomes irrelevant after the patent has issued.”issued.”


Federal Circuit's Reason:Federal Circuit's Reason: ““If any prosecution irregularity or If any prosecution irregularity or

procedural lapse, however minor, procedural lapse, however minor, became grist for a later assertion of became grist for a later assertion of invalidity, accused infringers would invalidity, accused infringers would inundate the courts with arguments inundate the courts with arguments relating to every minor transgression relating to every minor transgression they could comb from the file wrapper. they could comb from the file wrapper. This deluge would only detract focus This deluge would only detract focus from the important legal issues to be from the important legal issues to be resolved—primarily, infringement and resolved—primarily, infringement and invalidity.”invalidity.”

Indianapolis Bar Indianapolis Bar Association:Association:

2008 Year in Review2008 Year in ReviewPatent Law and PracticePatent Law and Practice

Chuck SchmalChuck [email protected]@uspatent.com

(317)634-3456(317)634-3456

Sponsored by the Sponsored by the Intellectual Property Law SectionIntellectual Property Law Section