An Open Letter to the Supreme Court concerning Patent Law by Roberta J. Morris[FN.*]

Size: px
Start display at page:

Download "An Open Letter to the Supreme Court concerning Patent Law by Roberta J. Morris[FN.*]"

Transcription

1 An Open Letter to the Supreme Court concerning Patent Law by Roberta J. Morris[FN.*] Contents: 1. The Patent Office Does Not "Request Changes" In Claim Language (page 2) 2. The Patent Office Does Not Care About Infringement, Literal or By Equivalents, Nor Should It (page 5) 3. When "Prior Art" Is Involved, The Patent Office Does Not "OBject," It "REjects" (page 10) 4. Lack of Intent to Infringe Can Not Justify a Reduced Damage Award (page 12) Dear Honorable Justices: I am writing to you because there are a few things you should know about patent law that your best friends won't tell you. (If you had best friends who knew patent law, I don't think I would be writing this letter.) Although the "literature" and the lower courts may have refrained from mentioning it, there are parts of Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 33, 137 L. Ed. 2d 146, 117 S. Ct (1997) that, in a course on patent law, would make a great exam question of the "spot the errors" variety: You were right about the forest, but misidentified some of the trees. To continue with arboreal (and somewhat mixed) metaphors, inasmuch as you will very likely venture down that road again some day, I thought a little global positioning might keep you out of the woods. * Roberta J. Morris is an adjunct professor at the University of Michigan Law School, where she teaches patent law and related subjects, and is Of Counsel to the Michigan patent firm Gifford Krass. She holds an AB summa cum laude from Brown University, a JD from Harvard Law School, and a PhD in Physics from Columbia University, in that order. The views expressed here are purely her own. 1

2 1. The Patent Office Does Not "Request Changes" In Claim Language You repeatedly say that the Patent Office ("PTO") "requests a change" in a claim during the patent application process. [FN.1] The process is ex parte, but it is not a partnership: "request" is the wrong word. When Rhett Butler said "Frankly, my dear, I don't give a damn," Scarlett could have considered it to be a "request for a 1. The words vary (see underlining), but the idea is the same: "It is telling that in each case this Court probed the reasoning behind the Patent Office's insistence upon a change in the claims. In each instance, a change was demanded because the claim as otherwise written was viewed as not describing a patentable invention at all -- typically because what it described was encompassed within the prior art. But, as the United States informs us, there are a variety of other reasons why the PTO may request a change in claim language. Brief for United States as Amicus Curiae (counsel for the PTO also appearing on the brief). And if the PTO has been requesting changes in claim language without the intent to limit equivalents or, indeed, with the expectation that language it required would in many cases allow for a range of equivalents, we should be extremely reluctant to upset the basic assumptions of the PTO without substantial reason for doing so.... [note 6] "6.... This is especially true where, as here, the PTO may have relied upon a flexible rule of estoppel when deciding whether to ask for a change in the first place. To change so substantially the rules of the game now could very well subvert the various balances the PTO sought to strike when issuing the numerous patents which have not yet expired and which would be affected by our decision." 520 U.S. at 31-32, underlining and italics mine. (The italicized words are the subject of section 2, pp below). The reference to the amicus brief suggests that you are paraphrasing the Solicitor General, but that excellent brief (available on LEXIS at the docket-based citation 1995 US Briefs 728 and on Westlaw as 1996 WL ) never says that the PTO "requests changes" of patent applicants. The United States filed a brief out of a concern that the decision would affect the patent "climate" and the patent system as a whole, not because the day-to-day running of the PTO was involved. 2

3 change" but it was a rejection.[fn.2] And that is what the PTO issues. Like Rhett, the PTO does not give a damn what the rejected applicant does next. But if the applicant chooses to respond, by amending, arguing or both, the PTO's job is the same as it was when it examined the initial claims. It must make sure that claims are only allowed where: 1) none of the "unless" clauses of 35 USC 102 apply, 2) no pieces of information that qualify as prior art, as defined by those 102 clauses, can be combined with each other 2. MARGARET MITCHELL, GONE WITH THE WIND 1035 (1936). Actually Mitchell did not write the word "Frankly" so the better citation is GONE WITH THE WIND (Metro-Goldwyn-Mayer 1939), David O. Selznick, Producer, script credited to Sidney Howard. [As a footnote to this footnote: Rhett Butler's (or should I say Clark Gable's) classic line is much quoted in law review articles and even judicial opinions, see, e.g., Bethel School Dist. No. 403 v. Fraser, 478 U.S. 675, 691 (1986) (Stevens, J. dissenting), but generally without a "bluebook" cite. The answer to "who wrote the script?" may be found in many places, including the web. See, e.g., (available as of 3/28/01, last modified 6/8/98) or Item 21 of Kimberly Potts, 50 Things You Never Knew About Gone with the Wind, reproduced at Windtrivia (available as of 3/28/01, no modification date).] As with all analogies, however, we should be cautious not to press this one too far: Mitchell says of Scarlett, that "[s]he knew now that there was no appeal..." (at 1036). Patent applicants know differently. If a claim has been rejected twice, an appeal is permitted to the Board of Patent Appeals and Interferences (35 USC 134, which I like to call the "two-time loser" rule). From there a further appeal can be made to the District Court for the District of Columbia or to the Federal Circuit (35 USC 141 and 145), and if the Federal Circuit rules against the claim (directly from the Board or on appeal from the District Court), the applicant can even petition you for certiorari. Of course, many applicants prefer to remain at the examination level (filing "amendments after final rejection," see 37 CFR 1.116, or continuation applications, 37 CFR 1.53). Scarlett, however, did not have the option of convincing the rejector to change his mind. 3

4 and with the knowledge of a "person of ordinary skill in the art" (POSITA), in a combination the suggestion for which is found in the art, to make the invention (35 USC 103), 3) the claims are as they should be according to 35 USC 112 2; 4) the specification is as it should be according to 35 USC 112 1, to the extent the Examiner can tell [FN.3], and 5) the invention is "useful." [FN. 4] The way the patent process works is rather like submitting a claim to an insurance company. The company's first 3. I add "to the extent the Examiner can tell" because it seems to me to apply to "on its face," in contrast to An accused infringer may discover infirmities in the claims that escaped the examiner, whether because of greater resources, more time, or life-or-death motivation, but the PTO is not "institutionally" or inherently ill-suited to this task. The situation is different, however, for 112 1, particularly the "best mode" requirement (which depends on the inventor's subjective view), and also perhaps for "enablement." The examiners' job description does not require them to have all the practical know-how of a real-life POSITA, so they may not know enough to know that the applicant has not quite said enough to "enable" the claims. 4. I have omitted the subject matter requirements of 35 USC 101. After State Street Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 47 U.S.P.Q.2D 1596 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 851 (1999) and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352, 50 U.S.P.Q.2D 1447 (Fed. Cir. 1999), cert. denied, 120 S. Ct. 368, it seems to me that section 101 has effectively been amended to read as follows (using patent amendment conventions: bracketing to show deletions, underlining for additions): Whoever [invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may] wants to obtain a patent [therefor] on something useful may do so, subject to the conditions and requirements of this title. and that is as it should be. See Roberta J. Morris, Business Method Patents: Old or New, Good or Bad, 609 PLI/Pat 95, 125 (2000). (My amendment also deletes "therefor," a typo waiting to happen.) 4

5 response is often a "rejection" and it is not a request for a change. The optimistic view may be that it is an invitation to make some changes or arguments and try again, but the pessimistic view may be more accurate: you are being told to forget the whole thing. You can refile, and ultimately you may succeed with your claim (a term of art in patent law, as it is in insurance law, but with different meaning), but the rejectors do not care whether you persevere or quit. The steady stream of rejections is not even a threat to job security. Enough new "first applications" will always be filed for both the PTO and the insurance company to stay in business. To say that the PTO "request[s] a change in claim language" misses the mark. The right verb is "reject": examiners reject claim language. Applicants may submit changes in that language, or arguments about it, or both, in an attempt to overcome the rejection and convince the examiner to allow the claim, but the examiner will be equally happy if they just go away instead. 2. The PTO Does Not Care About Infringement, Literal or By Equivalents, and Has No Business Doing So Another linguistic lapse lies in the often-quoted passage in footnote 6 and related text concerning your "reluctan[ce]... to change... the rules of the game." Lawyers, judges and professors love that passage, and I have no quarrel with the bottom line either. I am concerned, however, about how things might play out, should you later come to appreciate that the finer points of the "game" whose rules you wanted to retain 5

6 were not exactly what you thought they were. The idea that the PTO considers infringement in general, and prosecution history estoppel in particular, is peculiar. Infringement has no meaning until the patent issues.[fn.5] The PTO has enough to do without speculating about what the future will bring for the applicants and their actual or potential competitors. Thus when you decided not to embrace the Petitioner's invitation to "change the rules of the game," it is unsettling that your rationale included the following: "This is especially true where, as here, the PTO may have relied upon a flexible rule of estoppel when deciding whether to ask for a change in the first place." 520 U.S. at 32 n6. (See as well the other italicized phrases in note 1 above). The PTO does not "rely" on any "rule of [prosecution history] estoppel," flexible or otherwise, because it is not concerned with infringement. It has no "basic assumptions" about infringement nor does it "strike a balance" based on infringement concepts when it decides to allow claims. Its mission is concerned with whether the application complies with the requirements for entitlement to a patent: validity, not 5. Under the new law requiring publication of certain applications, 35 USC 122(b) (enacted 11/29/99, effective 11/29/00), once a patent application has been published, the patent owner may under certain circumstances be entitled to a "reasonable royalty" for infringement from the date of publication. 35 USC 154(d). Of course, these "provisional rights" can not be asserted until the patent comes into existence. Even under these new post-warner-jenkinson provisions, then, the "rules of the game" do not require the PTO to consider infringement. 6

7 infringement. (The Solicitor General's Brief did not tell you otherwise.) During prosecution, the PTO is required to give claims their broadest reasonable interpretation. See, e.g., In re Morris [no relation], 127 F.3d 1048, 1054, 44 U.S.P.Q.2D 1023, 1027 (Fed. Cir. 1997). By contrast, in infringement litigation, courts are admonished to construe claims to sustain their validity if possible. E.g., ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 U.S.P.Q. 929, 932 (Fed. Cir. 1984). This generally means construing them narrowly. (Such a construction in turn may mean that the accused infringer does not infringe.) Validity and infringement -- the two basic concepts of patent law -- are often intermingled by people who have not had many encounters with patent law: not just law students but also inventors and competitors of patent owners encountering the system for the first time.[fn.6] It is important, obviously, to 6. It appears that this was only the second case where you (you as individual jurists on the Court, not the Court from its inception) were presented with the language of a patent claim in the context of the question of infringement. The first such case was Markman v. Westview Instruments, Inc., 517 U.S. 370, 38 USPQ2d 1461 (1996). In the 1970s and 1980s, Justices Rehnquist and Stevens considered claim language and validity, both in the context of infringement litigation, Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 U.S.P.Q. 449 (1976), and in the context of 101 rejections to claims in patent applications, e.g., Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1 (1981). They were also on the Court when it considered questions about the language of the patent statute, such as in Dawson Chemical Co. v. Rohm & Haas Co., 448 U.S. 176, 206 USPQ 385 (1980) (the misuse/contributory infringement case where, however, infringement of the claim was not contested) and General Motors Corp. v. Devex Corp., 461 U.S. 648, 217 USPQ 1185 (1983) (considering prejudgment interest). The other Justices came to the Court only shortly before (Justice O'Connor) or else after (Justices Scalia, Kennedy, 7

8 understand the differences. A claim that is not valid can not be infringed; if a claim is not infringed, it does not matter whether it is valid. Patents asserted in court against an accused infringer are presumed valid (35 USC 282) but the infringer can rebut the presumption by presenting clear and convincing evidence of invalidity. In considering both validity and infringement, it is helpful to understand the concept of the "claim chart"[fn.7] and to feel comfortable using the phrase "read Souter, Thomas, Ginsburg, Breyer) the creation of the Court of Appeals for the Federal Circuit. From then until Markman, the patent cases for which the Court granted certiorari involved questions of statutory language, procedure, appellate jurisdiction, etc. (On certiorari to the Federal Circuit, in chronological order: Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 229 U.S.P.Q. 478 (1986); Christianson v. Colt Industries Operating Corp., 486 U.S. 800, 7 U.S.P.Q.2d 1109 (1988); Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661, 15 U.S.P.Q.2d 1121 (1990); Cardinal Chem. Co. v. Morton Int'l, 508 U.S. 83, 26 U.S.P.Q.2d 1721 (1993); Izumi Seimitsu Kogyo Kabushiki Kaisha v. U.S. Philips Corp., 510 U.S. 27, 28 U.S.P.Q.2d 1930 (1993); Asgrow Seed Co. v. Winterboer, 513 U.S. 179, 33 U.S.P.Q.2d 1430 (1995); on certiorari to the Third Circuit, patent policy implicated: Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 9 U.S.P.Q.2d 1847 (1989).) The most recent patent case cited in Warner-Jenkinson, other than Markman, is the 1966 decision in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 148 USPQ 459, which was decided before any of you was on the Court. 7. Inventors, and patent lawyers, too, are very often visual thinkers. They feel that one chart (C), graph (G) or equation (E) is often easier to comprehend, and is comprehensible more quickly, than a series of sentences. That is, a picture (P) is worth a thousand words (W), or to put it most succinctly: P 1000W, where P = C G E 8

9 on" (other than as a command to persons looking at statutes[fn.8]). In a claim chart, you make two columns, one for the claim and one for the thing it may or may not "read on." When you write the claim in the left column, you divide it into its "elements" or "limitations." These may not be identical with the lettered paragraph designations the applicants wrote into their claim (and some applicants write run-on claims, anyway). Rather, as with parsing a sentence, the "elements" of the claim are the phrases that make it possible to analyze it. The claim may be parsed differently at different times, depending on the circumstances. But parsing is an excellent way to ensure clear thinking about any comparison between the "claimed invention" and something else. That other thing may be "the prior art" or it may be an "accused device" (or accused process or accused composition). If the claim "reads on" the prior art, it is invalid. If the claim "reads on" the accused device, it is infringed. "Reading on" means that there is a 1:1 correspondence between the items in the two columns of the chart, and this in turn means that the way the claim is parsed can have big consequences, especially given the "All-Elements Rule" (approved, though not using that phrase, in Warner-Jenkinson, 520 U.S. at 29 and 40). By keeping the mental image of the claim chart in mind (or an actual claim chart in front of you) the analysis may be easier to do and to do correctly, whether the question is 8. In law school, I learned from Prof. Arthur Miller that the first rule of civil procedure was "Read the rule" and the second rule was "Read on." 9

10 validity or infringement. Insights may also be gained into concepts you mentioned in Warner-Jenkinson, such as the "public notice" function of a claim and the use of prosecution history, both for claim interpretation and for doctrine of equivalents analysis. 3. When "Prior Art" Is Involved, The Patent Office Does Not "OBject," It "REjects" "Objection" is a term of art for the patent office. In Warner-Jenkinson, 520 U.S. at 31, you quoted Chief Justice Stone in Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136, 86 L. Ed. 736, 62 S. Ct. 513 (1942) where he used the word "objection" in connection with a discussion of prior art, and you continued with that usage.[fn.9] Nowadays, however, when prior art is the grammatical object of a phrase beginning "based on," the verb is "reject." "Objections" are related to formal matters. This is made clear in the Manual of Patent Examining Procedure (the "MPEP," the PTO's "official interpretation of statutes [and] regulations," Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1439, 221 U.S.P.Q. 97, 107 (Fed. Cir. 1984)). MPEP 706, entitled "Rejection of Claims," is immediately followed by , entitled "Contrasted with Objections," which says: "The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a 'rejection.' The term 'rejected' must be applied to such claims in the examiner's action. If the form of the claim (as distinguished from its substance) is improper, an 9. E.g., "the patent examiner objected to the patent claim due to a perceived overlap with the Booth patent" (520 U.S. at 32) and "where a change is made to overcome an objection based on the prior art..." (520 U.S. at 33n7, emphasis mine). 10

11 'objection' is made." (Emphasis mine) Similarly, the patent statute (35 USC 132) lists "rejection, or objection, or requirement" as the three kinds of responses the PTO may make during examination of an application.[fn.10] The terms are mutually exclusive. I do not mean to suggest, however, that an amendment or argument responding to an examiner's objection or requirement, as opposed to a rejection, would be incapable of meeting the "substantial reason related to patentability" test of Warner- Jenkinson (520 U.S. at 33, emphasis mine). That is a subject for another day, but suffice it to say that, in line with the teachings of Warner-Jenkinson, I believe that justice -- the justification for the existence of the doctrine of equivalents, whether or not it is called an "equitable" doctrine -- requires careful thought rather than reliance on labels. Whoever evaluates a claim, the prior art, and an accused device must look at the whole story. This is so whether the evaluators are A) judges; B) patent owners (actual or potential) deciding whether or not to assert the patent or to purchase rights to it; or C) competitors (actual or potential) deciding whether to license, design around, or proceed regardless of the patent. (The last is a legitimate option when the claim is invalid, unenforceable or 10. Section 132 was enacted in 1952 based on earlier statutes (35 USC 51, R.S. 4903) and the relevant language has not been amended since. The earlier version, enacted in 1939, used only the words "rejected" and "rejection." P. J. Federico in his Commentary on the New Patent Act (35 U.S.C.A. (1954 ed., discontinued in subsequent volumes), reprinted in 75 J. PAT. TRADEMARK OFF. SOC'Y 161, 197 (1993)), explained that section 132 "has been... amplified to explicitly incorporate some practice under the old law." 11

12 not infringed by their activities). 4. Lack of Intent to Infringe Can Not Justify a Reduced Damage Award Your decision says: "The jury also found, however, that Warner-Jenkinson had not intentionally infringed, and therefore awarded only 20% of the damages sought by Hilton Davis." 520 U.S. at 23, emphasis mine. [FN.11] The jury's damage calculation is not supposed to take into account whether or not the infringer acted "intentionally" or "willfully." The damages calculated by the jury must be "adequate to compensate" the patent owner. 35 USC 284.[FN. 12] A jury award of only 20% of what the patent owner sought means that the jury preferred the infringer's damages evidence. The jurors' views certainly may have been colored by their opinion that the accused infringer had acted innocently, 11. The Federal Circuit decision said something similar but without the "therefore": "The jury found that Warner-Jenkinson did not willfully infringe, however, and awarded only 20% of Hilton Davis' request in damages." 62 F.3d 1512, 1516, 35 USPQ2d 1641 (1995), emphasis mine. 12. "Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. "When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed." 35 USC 284, as codified in 1952 based on earlier statutes, quoted words never amended, emphasis mine. 12

13 indeed independently inventing the same process. Still, it would have been reversible error for the trial court to have instructed them that "if they find the infringer acted unintentionally, they should reduce the damage award." Intent is not part of the cause of action of patent infringement, as you noted in Warner-Jenkinson. ("Application of the doctrine of equivalents, therefore, is akin to determining literal infringement, and neither requires proof of intent." 520 U.S. at 35.)[FN.13] Willfulness is a separate issue from infringement. The jury may enter a special verdict on willfulness, but then the court, not the jury, decides whether to multiply the actual damages by a number between 1 and 3. Nothing in the statute allows the court or the jury to use a multiplier that is less than 1. Respectfully submitted, Dated: March 30, 2001 Roberta J. Morris [typographical errors corrected 9/28/01; adjusted for MSWord 3/4/05] 13. When I explain to my patent students that innocence is no defense in patent cases, I contrast the situation with copyright infringement using the following hypotheticals (updating the author and the invention to stay current): If 100 monkeys are given 100 word processors and somehow they type out A Painted House, John Grisham has no cause of action for copyright infringement because the monkeys did not copy. But if those 100 monkeys are given a fully equipped pharmaceutical lab and somehow they make Claritin, Schering does have a cause of action for patent infringement (that is, if Schering has claims in a patent that is in force and that "reads on" the monkeys' composition or process). The fact that the monkeys did not "copy" is irrelevant. Nor does it help them that they, like the petitioners in Warner-Jenkinson, independently made the invention. Probably the monkeys had better stop what they are doing and seek outside counsel's advice (see, e.g., Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380, 219 U.S.P.Q. 569 (Fed. Cir. 1983)), but that is a topic covered later in the term. 13

OLIVE & OLIVE, P.A. INTELLECTUAL PROPERTY LAW

OLIVE & OLIVE, P.A. INTELLECTUAL PROPERTY LAW OLIVE & OLIVE, P.A. INTELLECTUAL PROPERTY LAW Since 1957 500 MEMORIAL ST. POST OFFICE BOX 2049 DURHAM, NORTH CAROLINA 27702-2049 (919) 683-5514 GENERAL RULES PERTAINING TO PATENT INFRINGEMENT Patent infringement

More information

THE SUPREME COURT'S DECISION IN

THE SUPREME COURT'S DECISION IN THE SUPREME COURT'S DECISION IN June 20, 2002 On May 28, the U.S. Supreme Court issued its longawaited decision in Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 1 vacating the landmark

More information

Warner-Jenkinson Co. v. Hilton-Davis Chemical Co.:

Warner-Jenkinson Co. v. Hilton-Davis Chemical Co.: Warner-Jenkinson Co. v. Hilton-Davis Chemical Co.: Apt Reconciliation of Supreme Court Precedent, and Reasoned Instruction to a Trusted Federal Circuit 1997 by Charles W. Shifley and Lance Johnson On March

More information

United States Court of Appeals for the Federal Circuit LITTON SYSTEMS, INC., Plaintiff-Appellant, HONEYWELL INC., Defendant-Appellee.

United States Court of Appeals for the Federal Circuit LITTON SYSTEMS, INC., Plaintiff-Appellant, HONEYWELL INC., Defendant-Appellee. United States Court of Appeals for the Federal Circuit HONEYWELL INC., John G. Roberts, Jr., Hogan & Hartson L.L.P., of Washington, DC, argued for plaintiff-appellant. With him on the brief wascatherine

More information

OBTAINING DEFENSIBLE PATENTS IN THE PST INDUSTRY

OBTAINING DEFENSIBLE PATENTS IN THE PST INDUSTRY OBTAINING DEFENSIBLE PATENTS IN THE PST INDUSTRY Mark P. Levy, Intellectual Property Practice Group Leader, Thompson Hine LLP., Dayton, Ohio I. The name of the game is the claim. As Judge Rich, one of

More information

United States Court of Appeals for the Federal Circuit THOMSON S.A., Plaintiff-Appellant, QUIXOTE CORPORATION and DISC MANUFACTURING, INC.

United States Court of Appeals for the Federal Circuit THOMSON S.A., Plaintiff-Appellant, QUIXOTE CORPORATION and DISC MANUFACTURING, INC. United States Court of Appeals for the Federal Circuit 97-1485 THOMSON S.A., Plaintiff-Appellant, v. QUIXOTE CORPORATION and DISC MANUFACTURING, INC., Defendants-Appellees. George E. Badenoch, Kenyon &

More information

Sinking Submarines from the Depths of the PTO Sea

Sinking Submarines from the Depths of the PTO Sea Sinking Submarines from the Depths of the PTO Sea by Steven C. Sereboff 1 Eight years ago, an examiner at the Patent and Trademark Office rejected the patent application of Stephen B. Bogese II on very

More information

35 U.S.C. 135 Gateway to Priority and Derivation Determinations by the BPAI

35 U.S.C. 135 Gateway to Priority and Derivation Determinations by the BPAI 35 U.S.C. 135 Gateway to Priority and Derivation Determinations by the BPAI By Todd Baker TODD BAKER is a partner in Oblon Spivak McClelland Maier & Neustadt s Interference and Electrical/Mechanical Departments.

More information

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION CASE NO ARTHUR J. TARNOW SENIOR UNITED STATES DISTRICT JUDGE

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION CASE NO ARTHUR J. TARNOW SENIOR UNITED STATES DISTRICT JUDGE UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION AUTOFORM ENGINEERING GMBH, CASE NO. 10-14141 v. PLAINTIFF, ARTHUR J. TARNOW SENIOR UNITED STATES DISTRICT JUDGE ENGINEERING TECHNOLOGY

More information

Reviewing Common Themes in Double Patenting. James Wilson, SPE 1624 TC

Reviewing Common Themes in Double Patenting. James Wilson, SPE 1624 TC Reviewing Common Themes in Double Patenting James Wilson, SPE 1624 TC 1600 James.Wilson@uspto.gov 571-272-0661 What is Double Patenting (DP)? Statutory DP Based on 35 USC 101 An applicant (or assignee)

More information

Metabolite Labs and Patentable Subject Matter: A Review of Federal Circuit and PTO Precedent was Narrowly Averted but for How Long?

Metabolite Labs and Patentable Subject Matter: A Review of Federal Circuit and PTO Precedent was Narrowly Averted but for How Long? Minnesota Journal of Law, Science & Technology Volume 8 Issue 1 Article 15 2006 Metabolite Labs and Patentable Subject Matter: A Review of Federal Circuit and PTO Precedent was Narrowly Averted but for

More information

344 SUFFOLK UNIVERSITY LAW REVIEW [Vol. XLIX:343

344 SUFFOLK UNIVERSITY LAW REVIEW [Vol. XLIX:343 Patent Law Divided Infringement of Method Claims: Federal Circuit Broadens Direct Infringement Liability, Retains Single Entity Restriction Akamai Technologies, Incorporated v. Limelight Networks, Incorporated,

More information

United States Court of Appeals for the Federal Circuit

United States Court of Appeals for the Federal Circuit CORRECTED: OCTOBER 29, 2003 United States Court of Appeals for the Federal Circuit 99-1421 TALBERT FUEL SYSTEMS PATENTS CO., Plaintiff-Appellant, v. UNOCAL CORPORATION, UNION OIL COMPANY OF CALIFORNIA,

More information

PRELIMINARY INSTRUCTIONS TO BE GIVEN AT OUTSET OF TRIAL. This is a patent case. It involves U.S. Patent No[s].,, and.

PRELIMINARY INSTRUCTIONS TO BE GIVEN AT OUTSET OF TRIAL. This is a patent case. It involves U.S. Patent No[s].,, and. PATENTS 1. Preliminary Instructions to Be Given at Outset of Trial 1.1 the Parties and the Nature of the Case....1 1.2 The Patent System....3 1.3 How a Patent Is Obtained.....5 1.4 the Parts of a Patent....7

More information

Patent Prosecution Update

Patent Prosecution Update Patent Prosecution Update March 2012 Contentious Proceedings at the USPTO Under the America Invents Act by Rebecca M. McNeill The America Invents Act of 2011 (AIA) makes significant changes to contentious

More information

Stephen Walsh [prepared for Patenting People, Nov , 2006, Benjamin N. Cardozo School of Law]

Stephen Walsh [prepared for Patenting People, Nov , 2006, Benjamin N. Cardozo School of Law] A Short History of the United States Patent and Trademark Office Position On Not Patenting People Stephen Walsh [prepared for Patenting People, Nov. 2-3, 2006, Benjamin N. Cardozo School of Law] Patents

More information

This Webcast Will Begin Shortly

This Webcast Will Begin Shortly This Webcast Will Begin Shortly Register at www.acc.com/education/mym17 If you have any technical problems, please contact us via email at: webcast@acc.com Recent Developments in Patent and Post-Grant

More information

Designing Around Valid U.S. Patents Course Syllabus

Designing Around Valid U.S. Patents Course Syllabus Chapter 1: COOKBOOK PROCEDURE AND BLUEPRINT FOR DESIGNING AROUND : AVOIDING LITERAL INFRINGEMENT Literal Infringement Generally Claim Construction Under Markman 1. Claim Interpretation Before Markman 2.

More information

Brian D. Coggio Ron Vogel. Should A Good Faith Belief In Patent Invalidity Negate Induced Infringement? (The Trouble with Commil is DSU)

Brian D. Coggio Ron Vogel. Should A Good Faith Belief In Patent Invalidity Negate Induced Infringement? (The Trouble with Commil is DSU) Brian D. Coggio Ron Vogel Should A Good Faith Belief In Patent Invalidity Negate Induced Infringement? (The Trouble with Commil is DSU) In Commil USA, LLC v. Cisco Systems, the Federal Circuit (2-1) held

More information

TECHNOLOGY & BUSINESS LAW ADVISORS, LLC

TECHNOLOGY & BUSINESS LAW ADVISORS, LLC TECHNOLOGY & BUSINESS LAW ADVISORS, LLC www.tblawadvisors.com Fall 2011 Business Implications of the 2011 Leahy-Smith America Invents Act On September 16, 2011, the Leahy-Smith America Invents Act (AIA)

More information

How the Supreme Court's Decisions over the Last Decade have Reshaped Federal Circuit Jurisprudence

How the Supreme Court's Decisions over the Last Decade have Reshaped Federal Circuit Jurisprudence Wayne State University Law Faculty Research Publications Law School 1-1-2008 How the Supreme Court's Decisions over the Last Decade have Reshaped Federal Circuit Jurisprudence Katherine E. White Wayne

More information

PATENT REFORM. Did Patent Reform Level the Playing Field for Foreign Entities? 1 Leahy-Smith America Invents Act, Pub. L. No.

PATENT REFORM. Did Patent Reform Level the Playing Field for Foreign Entities? 1 Leahy-Smith America Invents Act, Pub. L. No. Reproduced with permission from BNA s Patent, Trademark & Copyright Journal, 82 PTCJ 789, 10/07/2011. Copyright 2011 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com PATENT REFORM

More information

Crafting & Drafting Winning Patents. Course Syllabus

Crafting & Drafting Winning Patents. Course Syllabus I. OVERVIEW CHAPTER A. Crafting and Drafting a Winning Patent Is Shockingly More Difficult to Achieve Than Ever Before B. The Major Source of the Aggravated Difficulty de novo Review of Claim Construction

More information

The use of prosecution history in post-grant patent proceedings

The use of prosecution history in post-grant patent proceedings Question Q229 National Group: United States Title: The use of prosecution history in post-grant patent proceedings Contributors: ADAMO, Kenneth R. ARROYO, Blas ASHER, Robert BAIN, Joseph MEUNIER, Andrew

More information

The Federal Circuit and the Supreme Court

The Federal Circuit and the Supreme Court American University Law Review Volume 55 Issue 4 Article 4 2006 The Federal Circuit and the Supreme Court Arthur J. Gajarsa Lawrence P. Cogswell Follow this and additional works at: http://digitalcommons.wcl.american.edu/aulr

More information

No IN THE Supreme Court of the United States

No IN THE Supreme Court of the United States No. 10-290 IN THE Supreme Court of the United States MICROSOFT CORPORATION, PETITIONER, V. I4I LIMITED PARTNERSHIP, ET AL., RESPONDENTS. ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR

More information

Do-Overs: Overviewing the Various Mechanisms for Reevaluating an Issued Patent and How They Have Changed Over the Last Five Years +

Do-Overs: Overviewing the Various Mechanisms for Reevaluating an Issued Patent and How They Have Changed Over the Last Five Years + Do-Overs: Overviewing the Various Mechanisms for Reevaluating an Issued Patent and How They Have Changed Over the Last Five Years + By: Brian M. Buroker, Esq. * and Ozzie A. Farres, Esq. ** Hunton & Williams

More information

The Comment: The Impact of Major Changes by the Federal Circuit in the Law Affecting Claim Scope

The Comment: The Impact of Major Changes by the Federal Circuit in the Law Affecting Claim Scope Case Western Reserve Law Review Volume 54 Issue 3 2004 The Comment: The Impact of Major Changes by the Federal Circuit in the Law Affecting Claim Scope Gerald Sobel Follow this and additional works at:

More information

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT. In re Lewis Ferguson et al (Appellants)

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT. In re Lewis Ferguson et al (Appellants) 2007-1232 UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT In re Lewis Ferguson et al (Appellants) Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences.

More information

Deputy Commissioner for Patent Examination Policy

Deputy Commissioner for Patent Examination Policy UNITED STATES PATENT AND TRADEMARK OFFICE MEMORANDUM Commissioner for Patents United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450 www.uspto.gov Date: September 2, 2008 To:

More information

THE ROLE AND RESPONSIBILITY OF PATENT ATTORNEYS IN IMPROVING THE DOCTRINE OF EQUIVALENTS *

THE ROLE AND RESPONSIBILITY OF PATENT ATTORNEYS IN IMPROVING THE DOCTRINE OF EQUIVALENTS * Copyright (c) 2000 PTC Research Foundation of Franklin Pierce Law Center IDEA: The Journal of Law and Technology 2000 40 IDEA 123 THE ROLE AND RESPONSIBILITY OF PATENT ATTORNEYS IN IMPROVING THE DOCTRINE

More information

Supreme Court of the United States Wayne K. PFAFF, Petitioner, v. WELLS ELECTRONICS, INC.

Supreme Court of the United States Wayne K. PFAFF, Petitioner, v. WELLS ELECTRONICS, INC. Supreme Court of the United States Wayne K. PFAFF, Petitioner, v. WELLS ELECTRONICS, INC. No. 97-1130. Argued Oct. 6, 1998. Decided Nov. 10, 1998. Rehearing Denied Jan. 11, 1999. See 525 U.S. 1094, 119

More information

Wang Laboratories, Inc. v. America Online, Inc. and Netscape Communications Corp.

Wang Laboratories, Inc. v. America Online, Inc. and Netscape Communications Corp. Santa Clara High Technology Law Journal Volume 16 Issue 2 Article 14 January 2000 Wang Laboratories, Inc. v. America Online, Inc. and Netscape Communications Corp. Daniel R. Harris Janice N. Chan Follow

More information

The Supreme Court decision in Halo v. Pulse Electronics changes treble damage landscape

The Supreme Court decision in Halo v. Pulse Electronics changes treble damage landscape The Supreme Court decision in Halo v. Pulse Electronics changes treble damage landscape Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 195 L. Ed. 2d 278 (2016), Shawn Hamidinia October 19, 2016

More information

SUPREME COURT OF THE UNITED STATES

SUPREME COURT OF THE UNITED STATES Cite as: U. S. (1998) 1 NOTICE: This opinion is subject to formal revision before publication in the preliminary print of the United States Reports. Readers are requested to notify the Reporter of Decisions,

More information

The Law of Marking and Notice Further Developed By The Federal Circuit: The Amsted Case by Steven C. Sereboff Copyright 1994, All Rights Reserved

The Law of Marking and Notice Further Developed By The Federal Circuit: The Amsted Case by Steven C. Sereboff Copyright 1994, All Rights Reserved The Law of Marking and Notice Further Developed By The Federal Circuit: The Amsted Case by Steven C. Sereboff Copyright 1994, All Rights Reserved Recently, the Court of Appeals for the Federal Circuit

More information

Change in Procedure Relating to an Application Filing Date

Change in Procedure Relating to an Application Filing Date Department of Commerce Patent and Trademark Office [Docket No. 951019254-6136-02] RIN 0651-XX05 Change in Procedure Relating to an Application Filing Date Agency: Patent and Trademark Office, Commerce.

More information

UNITED STATES COURT OF APPEALS

UNITED STATES COURT OF APPEALS Case: 14-1294 Document: 71 Page: 1 Filed: 10/31/2014 NO. 2014-1294 IN THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT PURDUE PHARMA L.P., THE P.F. LABORATORIES, INC., PURDUE PHARMACEUTICALS

More information

No In The SUPREME COURT OF THE UNITED STATES. FESTO CORPORATION, Petitioner, v.

No In The SUPREME COURT OF THE UNITED STATES. FESTO CORPORATION, Petitioner, v. No. 00-1543 In The SUPREME COURT OF THE UNITED STATES FESTO CORPORATION, Petitioner, v. SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD., a/k/a SMC CORP. and SMC Pneumatics, Inc., Respondents. ON WRIT OF CERTIORARI

More information

Newly Signed U.S. Patent Law Will Overhaul Patent Procurement, Enforcement and Defense

Newly Signed U.S. Patent Law Will Overhaul Patent Procurement, Enforcement and Defense September 16, 2011 Practice Groups: IP Procurement and Portfolio Management Intellectual Property Litigation Newly Signed U.S. Patent Law Will Overhaul Patent Procurement, Enforcement and Defense On September

More information

Adjusting the Rearview Mirror - - Blocking Impermissible Hindsight Rejections By Warren D. Woessner 1

Adjusting the Rearview Mirror - - Blocking Impermissible Hindsight Rejections By Warren D. Woessner 1 Adjusting the Rearview Mirror - - Blocking Impermissible Hindsight Rejections By Warren D. Woessner 1 Grounded in Graham v. Deere 2 and acknowledged in KSR International Co. v. Teleflex Inc., 3 the prohibition

More information

BUSINESS METHOD PATENTS IN THE UNITED STATES: A LEGISLATIVE RESPONSE

BUSINESS METHOD PATENTS IN THE UNITED STATES: A LEGISLATIVE RESPONSE BUSINESS METHOD PATENTS IN THE UNITED STATES: A LEGISLATIVE RESPONSE by Laura Moskowitz 1 and Miku H. Mehta 2 The role of business methods in patent law has evolved tremendously over the past century.

More information

Prosecuting Patent Applications: Establishing Unexpected Results

Prosecuting Patent Applications: Establishing Unexpected Results Page 1 of 9 Prosecuting Patent Applications: Establishing Unexpected Results The purpose of this article is to provide suggestions on how to effectively make a showing of unexpected results during prosecution

More information

Patent Damages Post Festo

Patent Damages Post Festo Page 1 of 6 Patent Damages Post Festo Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY 10003 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com Law360, New

More information

New Patent Application Rules Set to Take Effect November 1, 2007

New Patent Application Rules Set to Take Effect November 1, 2007 INTELLECTUAL PROPERTY October 2007 New Patent Application Rules Set to Take Effect November 1, 2007 The United States Patent and Trademark Office (USPTO) has issued new rules for the patent application

More information

The Toro Company v. White Consolidated Industries, Inc.

The Toro Company v. White Consolidated Industries, Inc. Santa Clara High Technology Law Journal Volume 16 Issue 2 Article 17 January 2000 The Toro Company v. White Consolidated Industries, Inc. C. Douglass Thomas Follow this and additional works at: http://digitalcommons.law.scu.edu/chtlj

More information

TEN TIPS FOR MAXIMIZING PROVISIONAL RIGHTS PROTECTION

TEN TIPS FOR MAXIMIZING PROVISIONAL RIGHTS PROTECTION TEN TIPS FOR MAXIMIZING PROVISIONAL RIGHTS PROTECTION Julie R. Daulton Merchant & Gould P.C. Minneapolis, Minnesota How many of us have changed the way we draft claims when filing a patent application

More information

Patent Prosecution. (a) Test: "Skill of the ordinary mechanic" is required; Hotchkiss v Greenwood, 52 US 246 (1 850) - US Supreme Court

Patent Prosecution. (a) Test: Skill of the ordinary mechanic is required; Hotchkiss v Greenwood, 52 US 246 (1 850) - US Supreme Court Patent Prosecution OBVIOUSNESS REJECTIONS UNDER 35 U.S.C SEC1-ION 103(a) I. In General A. Prior to 1952: Various Standards, or Tests, for Patentability 1. Various Standards, or Tests, for Patentability

More information

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION O R D E R

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION O R D E R IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION DATATREASURY CORP., Plaintiff, v. WELLS FARGO & CO., et al. Defendants. O R D E R 2:06-CV-72-DF Before the Court

More information

MEMORANDUM OPINION & ORDER

MEMORANDUM OPINION & ORDER ContourMed Inc. v. American Breast Care L.P. Doc. 22 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF TEXAS HOUSTON DIVISION United States District Court Southern District of Texas ENTERED March 17, 2016

More information

No In the Supreme Court of the United States. On Writ of Certiorari to the United States Court of Appeals for the Federal Circuit

No In the Supreme Court of the United States. On Writ of Certiorari to the United States Court of Appeals for the Federal Circuit No. 16-712 In the Supreme Court of the United States Oil States Energy Services LLC, Petitioner, v. Greene s Energy Group, LLC, Respondent. On Writ of Certiorari to the United States Court of Appeals for

More information

HOW TO EVALUATE WHEN A REISSUE VIOLATES THE RECAPTURE RULE:

HOW TO EVALUATE WHEN A REISSUE VIOLATES THE RECAPTURE RULE: HOW TO EVALUATE WHEN A REISSUE VIOLATES THE RECAPTURE RULE: #8 Collected Case Law, Rules, and MPEP Materials 2004 Kagan Binder, PLLC How to Evaluate When a Reissue violates the Recapture Rule: Collected

More information

SENATE PASSES PATENT REFORM BILL

SENATE PASSES PATENT REFORM BILL SENATE PASSES PATENT REFORM BILL CLIENT MEMORANDUM On Tuesday, March 8, the United States Senate voted 95-to-5 to adopt legislation aimed at reforming the country s patent laws. The America Invents Act

More information

Impact of the Patent Reform Bill

Impact of the Patent Reform Bill G. Hopkins Guy, III of Orrick Herrington & Sutcliffe LLP Speaker 3: 1 Impact of the Patent Reform Bill G. Hopkins Guy, Esq. Patent Reform Bill: Current Status Passed House 9/7/07 Passed Senate Judiciary

More information

Seeking Patent Protection for Business-Related and Computer-Related Inventions After Bilski

Seeking Patent Protection for Business-Related and Computer-Related Inventions After Bilski Seeking Patent Protection for Business-Related and Computer-Related Inventions After Bilski - CELESQ -WEST IP Master Series, November 17, 2008 Author(s): Charles R. Macedo CELESQ -WEST IP Master Series

More information

Patent Resources Group Federal Circuit Law Course Syllabus

Patent Resources Group Federal Circuit Law Course Syllabus I. Novelty and Loss of Right to a Patent II. III. IV. A. Anticipation 1. Court Review of PTO Decisions 2. Claim Construction 3. Anticipation Shown Through Inherency 4. Single Reference Rule Incorporation

More information

February, 2010 Patent Reform Legislative Update 1

February, 2010 Patent Reform Legislative Update 1 02 14 2011 February, 2010 Patent Reform Legislative Update 1 The Patent Law Reform Act of 2011, based on the Managers Amendment version of S. 515 in the 11 th Congress, was introduced as S. 23 on January

More information

Putting the Law (Back) in Patent Law

Putting the Law (Back) in Patent Law Putting the Law (Back) in Patent Law Some Thoughts on the Supreme Court s MedImmune Decision 21 March 2007 Joe Miller - Lewis & Clark Law School 1 Back in the Patent Game October 2005 Term Heard three

More information

United States Court of Appeals for the Federal Circuit

United States Court of Appeals for the Federal Circuit United States Court of Appeals for the Federal Circuit 02-1429 RANBAXY PHARMACEUTICALS, INC. and RANBAXY LABORATORIES LIMITED, v. Plaintiffs-Appellees, APOTEX, INC., Defendant-Appellant. Darrell L. Olson,

More information

Should Patent Prosecution Bars Apply To Interference Counsel? 1. Charles L. Gholz 2. and. Parag Shekher 3

Should Patent Prosecution Bars Apply To Interference Counsel? 1. Charles L. Gholz 2. and. Parag Shekher 3 Should Patent Prosecution Bars Apply To Interference Counsel? 1 By Charles L. Gholz 2 and Parag Shekher 3 Introduction The Federal Circuit stated that it granted a rare petition for a writ of mandamus

More information

United States Court of Appeals for the Federal Circuit , ENVIRON PRODUCTS, INC., Plaintiff-Appellee,

United States Court of Appeals for the Federal Circuit , ENVIRON PRODUCTS, INC., Plaintiff-Appellee, United States Court of Appeals for the Federal Circuit 99-1218, -1219 FURON COMPANY, Defendant-Appellant. -------------------------------------------- ADVANCED POLYMER TECHNOLOGY, INC. and LEO J. LEBLANC,

More information

Supreme Court of the United States

Supreme Court of the United States No. 15-927 In the Supreme Court of the United States SCA HYGIENE PRODUCTS AKTIEBOLAG AND SCA PERSONAL CARE, INC., Petitioners, v. FIRST QUALITY BABY PRODUCTS, LLC, FIRST QUALITY HYGIENE, INC., FIRST QUALITY

More information

Introduction, When to File and Where to Prepare the Application

Introduction, When to File and Where to Prepare the Application Chapter 1 Introduction, When to File and Where to Prepare the Application 1:1 Need for This Book 1:2 How to Use This Book 1:3 Organization of This Book 1:4 Terminology Used in This Book 1:5 How Quickly

More information

Paper 14 Tel: Entered: December 18, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE

Paper 14 Tel: Entered: December 18, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE Trials@uspto.gov Paper 14 Tel: 571-272-7822 Entered: December 18, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD BILLY GOAT INDUSTRIES, INC., Petitioner, v. SCHILLER

More information

Patent Prosecution. A. For a determination of obviousness of the subject matter under 35 U.S.C

Patent Prosecution. A. For a determination of obviousness of the subject matter under 35 U.S.C Patent Prosecution Decisions Relating to Obviousness Reiections Under 35 U.S.C. 61 03(a) 1) Graham v. John Deere (148 USPQ 459) A. For a determination of obviousness of the subject matter under 35 U.S.C

More information

Intent Standard for Induced Patent Infringement: Global-Tech Appliances, Inc. v. SEB S.A.

Intent Standard for Induced Patent Infringement: Global-Tech Appliances, Inc. v. SEB S.A. Intent Standard for Induced Patent Infringement: Global-Tech Appliances, Inc. v. SEB S.A. Brian T. Yeh Legislative Attorney August 30, 2011 CRS Report for Congress Prepared for Members and Committees of

More information

UNITED STATES COURT OF APPEALS

UNITED STATES COURT OF APPEALS Case: 14-1294 Document: 205 Page: 1 Filed: 04/18/2016 NO. 2014-1294 IN THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT PURDUE PHARMA L.P., THE P.F. LABORATORIES, INC., PURDUE PHARMACEUTICALS

More information

United States Court of Appeals for the Federal Circuit , LAITRAM CORPORATION and INTRALOX, INC.,

United States Court of Appeals for the Federal Circuit , LAITRAM CORPORATION and INTRALOX, INC., United States Court of Appeals for the Federal Circuit 97-1422,-1582 LAITRAM CORPORATION and INTRALOX, INC., Plaintiffs-Appellants, Defendants Cross-Appellants. v. MOREHOUSE INDUSTRIES, INC. (now Summa

More information

United States Court of Appeals for the Federal Circuit

United States Court of Appeals for the Federal Circuit United States Court of Appeals for the Federal Circuit 00-1173, -1174 EXXON CORPORATION (now known as ExxonMobil Corporation) and EXXON CHEMICAL PATENTS, INC., v. Plaintiffs-Appellants, PHILLIPS PETROLEUM

More information

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION MEMORANDUM OPINION AND ORDER

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION MEMORANDUM OPINION AND ORDER IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION E2E PROCESSING, INC., Plaintiff, v. CABELA S INC., Defendant. Case No. 2:14-cv-36-JRG-RSP MEMORANDUM OPINION AND

More information

MEMORANDUM AND ORDER BACKGROUND

MEMORANDUM AND ORDER BACKGROUND United States District Court, N.D. Illinois, Eastern Division. AXIA INCORPORATED, Plaintiff. v. JARKE CORPORATION, Defendant. April 20, 1989. MEMORANDUM AND ORDER MORAN, District Judge. Plaintiff Axia

More information

The Wonderland Of Patent Ineligibility As Litigation Defense

The Wonderland Of Patent Ineligibility As Litigation Defense Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY 10003 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com The Wonderland Of Patent Ineligibility As Litigation

More information

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF WISCONSIN

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF WISCONSIN Patriot Universal Holding LLC v. McConnell et al Doc. 12 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF WISCONSIN PATRIOT UNIVERSAL HOLDING, LLC, Plaintiff, v. Case No. 12-C-0907 ANDREW MCCONNELL, Individually,

More information

Ex parte Miyazaki: Definite Difficulty With BPAI s New Standard for Indefiniteness. By Nicholas Plionis. Introduction

Ex parte Miyazaki: Definite Difficulty With BPAI s New Standard for Indefiniteness. By Nicholas Plionis. Introduction Ex parte Miyazaki: Definite Difficulty With BPAI s New Standard for Indefiniteness By Nicholas Plionis Introduction The specification and claims of a patent, particularly if the invention be at all complicated,

More information

FEDERAL COURT OF APPEAL. BETWEEN: THE ATTORNEY GENERAL OF CANADA and THE COMMISSIONER OF PATENTS Appellants. - and- AMAZON. COM, INC.

FEDERAL COURT OF APPEAL. BETWEEN: THE ATTORNEY GENERAL OF CANADA and THE COMMISSIONER OF PATENTS Appellants. - and- AMAZON. COM, INC. Court File No. A-435-10 (T-1476-09) FEDERAL COURT OF APPEAL BETWEEN: THE ATTORNEY GENERAL OF CANADA and THE COMMISSIONER OF PATENTS Appellants AMAZON. COM, INC. - and- -and- Respondent CANADIAN LIFE AND

More information

S A M P L E Q U E S T I O N S April 2002

S A M P L E Q U E S T I O N S April 2002 P A T E N T L A W L A W 6 7 7 P R O F E S S O R W A G N E R S P R I N G 2 0 0 2 April 2002 These five multiple choice questions (based on a fact pattern used in the Spring 2001 Patent Law Final Exam) are

More information

Case 1:16-mc FDS Document 37 Filed 12/09/16 Page 1 of 14 UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS

Case 1:16-mc FDS Document 37 Filed 12/09/16 Page 1 of 14 UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS Case 1:16-mc-91278-FDS Document 37 Filed 12/09/16 Page 1 of 14 UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS ) In re Application of ) GEORGE W. SCHLICH ) Civil Action No. for Order to Take Discovery

More information

Patent Prosecution. Decisions Relating to Obviousness Rejections Under 35 U.S.C. 103

Patent Prosecution. Decisions Relating to Obviousness Rejections Under 35 U.S.C. 103 Patent Prosecution Decisions Relating to Obviousness Rejections Under 35 U.S.C. 103 1) Graham v. John Deere (148 USPQ 459) A. For a determination of obviousness of the subject matter under 35 U.S.C 103,

More information

9 Tex. Intell. Prop. L.J Texas Intellectual Property Law Journal Winter Articles

9 Tex. Intell. Prop. L.J Texas Intellectual Property Law Journal Winter Articles 9 Tex. Intell. Prop. L.J. 159 Texas Intellectual Property Law Journal Winter 2001 Articles THE SCOPE OF CLAIM AMENDMENTS, PROSECUTION HISTORY ESTOPPEL, AND THE DOCTRINE OF EQUIVALENTS AFTER FESTO VI Peter

More information

No IN THE Supreme Court of the United States MIRROR WORLDS, LLC, v. APPLE INC.,

No IN THE Supreme Court of the United States MIRROR WORLDS, LLC, v. APPLE INC., No. 12-1158 IN THE Supreme Court of the United States MIRROR WORLDS, LLC, v. APPLE INC., Petitioner, Respondent. ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL

More information

International Prosecution Strategy after Therasense: What You Need to Know Now

International Prosecution Strategy after Therasense: What You Need to Know Now International Prosecution Strategy after Therasense: What You Need to Know Now Shawn Gorman and Christopher Swickhamer, Banner & Witcoff, Ltd. I. Introduction The Plague of Inequitable Conduct Allegations

More information

- F.3d, 2009 WL , C.A.Fed. (Mass.), April 03, 2009 (NO )

- F.3d, 2009 WL , C.A.Fed. (Mass.), April 03, 2009 (NO ) CITE AS: 1 HASTINGS. SCI. AND TECH. L.J. 269 ARIAD PHARMACEUTICALS, INC. V. ELI LILLY AND COMPANY - F.3d, 2009 WL 877642, C.A.Fed. (Mass.), April 03, 2009 (NO. 2008-1248) I. STATEMENT OF THE FACTS Defendant-Appellant

More information

No IN THE Supreme Court of the United States. ALICE CORPORATION PTY. LTD., Petitioner, v. CLS BANK INTERNATIONAL, et al., Respondents.

No IN THE Supreme Court of the United States. ALICE CORPORATION PTY. LTD., Petitioner, v. CLS BANK INTERNATIONAL, et al., Respondents. No. 13-298 IN THE Supreme Court of the United States ALICE CORPORATION PTY. LTD., Petitioner, v. CLS BANK INTERNATIONAL, et al., Respondents. On Writ of Certiorari to the United States Court of Appeals

More information

No OIL STATES ENERGY SERVICES, LLC, Petitioner, v. GREENE S ENERGY GROUP, LLC, ET AL., Respondents.

No OIL STATES ENERGY SERVICES, LLC, Petitioner, v. GREENE S ENERGY GROUP, LLC, ET AL., Respondents. No. 16-712 IN THE SUPREME COURT OF THE UNITED STATES OIL STATES ENERGY SERVICES, LLC, Petitioner, v. GREENE S ENERGY GROUP, LLC, ET AL., Respondents. ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF

More information

U.S. Patent Law Reform The America Invents Act

U.S. Patent Law Reform The America Invents Act U.S. Patent Law Reform The America Invents Act August 15, 2011 John B. Pegram Fish & Richardson What s New in 2011? Patent Law Reform is high on Congressional agenda A desire to legislate Bipartisan Patent

More information

(Serial No. 29/253,172) IN RE TIMOTHY S. OWENS, SHEILA M. KELLY, ROBERT M. LYNCH, IV, JASON C. CAMPBELL, and PHILIP E.

(Serial No. 29/253,172) IN RE TIMOTHY S. OWENS, SHEILA M. KELLY, ROBERT M. LYNCH, IV, JASON C. CAMPBELL, and PHILIP E. Case: 12-1261 CASE PARTICIPANTS ONLY Document: 38 Page: 1 Filed: 08/24/2012 2012-1261 (Serial No. 29/253,172) UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT IN RE TIMOTHY S. OWENS, SHEILA M. KELLY,

More information

Successfully Defending Patents In Inter Partes Reexamination And Inter Partes Review Proceedings Before the USPTO. Matthew A. Smith 1 Sept.

Successfully Defending Patents In Inter Partes Reexamination And Inter Partes Review Proceedings Before the USPTO. Matthew A. Smith 1 Sept. Successfully Defending Patents In Inter Partes Reexamination And Inter Partes Review Proceedings Before the USPTO Matthew A. Smith 1 Sept. 15, 2012 USPTO inter partes proceedings are not healthy for patents.

More information

SUPREME COURT OF THE UNITED STATES

SUPREME COURT OF THE UNITED STATES Cite as: 546 U. S. (2006) 1 NOTICE: This opinion is subject to formal revision before publication in the preliminary print of the United States Reports. Readers are requested to notify the Reporter of

More information

196:163. Executive summary for clients regarding US patent law and practice. Client Executive Summary on U.S. Patent Law and Practice

196:163. Executive summary for clients regarding US patent law and practice. Client Executive Summary on U.S. Patent Law and Practice THIS DOCUMENT WAS ORIGINALLY PREPARED BY ALAN S. GUTTERMAN AND IS REPRINTED FROM BUSINESS TRANSACTIONS SOLUTIONS ON WESTLAW, AN ONLINE DATABASE MAINTAINED BY THOMSON REUTERS (SUBSCRIPTION REQUIRED) THOMSON

More information

Supreme Court of the United States

Supreme Court of the United States No. 15-446 IN THE Supreme Court of the United States CUOZZO SPEED TECHNOLOGIES, LLC., PETITIONERS, V. MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, PATENT AND TRADEMARK

More information

Business Method Patents on the Chopping Block?

Business Method Patents on the Chopping Block? Business Method Patents on the Chopping Block? ACCA, San Diego Chapter General Counsel Roundtable and All Day MCLE Eric Acker and Greg Reilly Morrison & Foerster LLP San Diego, CA 2007 Morrison & Foerster

More information

SUPREME COURT OF THE UNITED STATES

SUPREME COURT OF THE UNITED STATES Cite as: U. S. (1999) 1 SUPREME COURT OF THE UNITED STATES No. 97 1396 VICKY M. LOPEZ, ET AL., APPELLANTS v. MONTEREY COUNTY ET AL. ON APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT

More information

Don t Forget That Inventorship Issues Can Be Determined in an Interference! Reyna), was a 35 USC 256 action to correct inventorship on two patents

Don t Forget That Inventorship Issues Can Be Determined in an Interference! Reyna), was a 35 USC 256 action to correct inventorship on two patents Don t Forget That Inventorship Issues Can Be Determined in an Interference! By Charles L. Gholz 1 Hor v. Chu, F.3d, USPQ2d (Fed. Cir. November 14, 2012)(opinion by C.J. Prost, joined by C.J. Newman; concurring

More information

New Post Grant Proceedings: Basics by

New Post Grant Proceedings: Basics by New Post Grant Proceedings: Basics by Tom Irving Copyright Finnegan 2013 May 14, 2013 Disclaimer These materials are public information and have been prepared solely for educational and entertainment purposes

More information

PATENT, TRADEMARK & COPYRIGHT!

PATENT, TRADEMARK & COPYRIGHT! A BNA s PATENT, TRADEMARK & COPYRIGHT! JOURNAL Reproduced with permission from BNA s Patent, Trademark & Copyright Journal, 81 PTCJ 320, 01/14/2011. Copyright 2011 by The Bureau of National Affairs, Inc.

More information

,-1286 AWH CORPORATION,

,-1286 AWH CORPORATION, 03-1269,-1286 UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT EDWARD H. PHILLIPS, Plaintiff-Appellant, v. AWH CORPORATION, HOPEMAN BROTHERS, INC., AND LOFTON CORPORATION, Defendants-Cross Appellants.

More information

coggins Mailed: July 10, 2013

coggins Mailed: July 10, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 coggins Mailed: July 10, 2013 Cancellation No. 92055228 Citadel Federal Credit Union v.

More information

MEMORANDUM ON CLAIM CONSTRUCTION

MEMORANDUM ON CLAIM CONSTRUCTION United States District Court, S.D. Texas, Houston Division. MGM WELL SERVICES, INC, Plaintiff. v. MEGA LIFT SYSTEMS, LLC, Defendant. Feb. 10, 2006. Joseph Dean Lechtenberger, Howrey LLP, Houston, TX, for

More information

America Invents Act (AIA) The Patent Reform Law of 2011 Initial Summary

America Invents Act (AIA) The Patent Reform Law of 2011 Initial Summary PRESENTATION TITLE America Invents Act (AIA) The Patent Reform Law of 2011 Initial Summary Christopher M. Durkee James L. Ewing, IV September 22, 2011 1 Major Aspects of Act Adoption of a first-to-file

More information

United States Court of Appeals for the Federal Circuit

United States Court of Appeals for the Federal Circuit Page 1 of 6 United States Court of Appeals for the Federal Circuit 00-1561 THE TORO COMPANY, Plaintiff-Appellant, v. WHITE CONSOLIDATED INDUSTRIES, INC. and WCI OUTDOOR PRODUCTS, INC., Defendants-Appellees.

More information