April 2009

Better Than Low Cost

Submitted by patentadmin on Fri, 05/01/2009 - 00:25

The costs of IP litigation are astronomical – and rising. Ever the spin doctors, some law firms see this as an opportunity. They emphasize the conventional ways in which IP litigants can seek to control costs:

(1) find attorneys with lower hourly billing rates;

(2) keep legal teams small to minimize (billable) time devoted to intra-team communications;

(3) avoid litigating in so-called “rocket dockets” where compressed case schedules necessitate larger litigation teams;

(4) develop case strategy early and do not allow diversion;

The Incredible Shrinking Judgment

Submitted by patentadmin on Wed, 04/29/2009 - 23:59

A previous blog entry – which will not be repeated here – dealt with the strange case of Cornell University v. Hewlett Packard Co., wherein the plaintiff, despite warnings by the trial judge that their damages model was defective, initially sought damages of $575M. The jury found for the plaintiff and awarded damages of $184M. The judge reduced the award to $53M.

Samuel Morse, inventor of Morse Code, honored by Google logo

Submitted by patentadmin on Mon, 04/27/2009 - 00:00

April 27, 2009 - Google is known for changing its logo for a day in honor of holidays and events, but visitors to the site today found the code "–. --- --- –. .-.. ." instead of the usual logo. Why? To honor the birthday of Samuel Finley Breese Morse, the inventor of the single wire telegraph. Morse was born on April 27, 1791.

House bill calls for pilot program to educate federal judges about patents and patent infringement

Submitted by patentadmin on Sat, 04/25/2009 - 00:00

A bill currently under consideration in the House of Representatives would, if passed, provide for the establishment of a pilot program to educate federal judges who do not have a patent-related background, but who hear patent infringement cases, about patent law. The bill was introduced by Rep. Adam Schiff (D-Calif.) and Rep. Darrell Issa (R-Calif.).

Where Progress Hurts – In The Genes

Submitted by patentadmin on Fri, 04/24/2009 - 23:53

Recently, the USPTO rejected claims in a pending patent application directed to the cDNA encoding the human natural killer cell activation inducing ligand (NAIL) protein. The patent examiner took the position that the claimed invention was obvious because the protein was known in the prior art and there were also known, reliable methods for identifying the gene sequence that codes for NAIL.

The patent applicants appealed to the Patent Office Board of Appeals, which affirmed the rejection. Undaunted, the applicants appealed that decision to the CAFC.

Apple ordered to pay $19 million to Opti Inc. in patent infringement suit

Submitted by patentadmin on Fri, 04/24/2009 - 00:00

April 24, 2009 - Opti Inc., a technology company based in Palo Alto, filed a lawsuit against Apple in January 2007, alleging that Apple infringed Opti's patent for “Predictive snooping” – a method to more efficiently transfer data among the CPU, memory, and “other devices.” Apple admitted using similar technology, but claimed that the patent was invalid due to prior art and obviousness.

Patent Infringement News 2

Another Problematic Provision in the America Invents Act Targets Business Method Patents

July 11, 2011 – Though it didn’t get as much press as the “first to invent” change, Section 18 of the Senate version of the America Invents Act (S. 23) – a provision making it easier for the banking industry to invalidate business method patents – fueled speculation that Wall Street had bought a favor from Congress.

Inside the Fight over US Patent Reform

"Inside the fight over US patent reform” from May/June 2009 Intellectual Asset Management - Commentary by General Patent Chairman and CEO Alexander Poltorak. An excerpt from the article appears below, or click the link below the text for a downloadable PDF of the excerpt.

From “Inside the Fight over US Patent Reform,” Intellectual Asset Management, May/June 2009:

Alexander Poltorak
Chairman and CEO, General Patent Corporation, US

General Patent Corporation Calls New Patent Reform Bill Harmful to Inventors and Entrepreneurs

Suffern, NY - April 21, 2009 - General Patent Corporation chairman and CEO Alexander Poltorak, writing in the popular syndicated "Washington Watch" column circulated throughout the country, strongly criticized the proposed Patent Reform Act of 2009, and said that "recycling a piece of failed legislation is not the best way to protect American inventors and spur innovation."

Meet the Middlemen

GPC was one of the companies profiled in "Meet the Middlemen," an article that appeared in Intellectual Asset Management, February/March 2008. An excerpt from the article is below in PDF format. For access to the entire article, please visit www.iam-magazine.com.

A Word Of Caution For These Troubled Times

Submitted by patentadmin on Mon, 04/20/2009 - 00:30

The perceptive reader may have noticed that the economy is in distress (economic term meaning “deep doo doo”). This raises the unpleasant specter of bankruptcies among one’s IP licensees. What happens to an IP license when the licensee becomes bankrupt? More specifically, can the licensee – now technically known as a “debtor-in-possession” – assume the license? The answer to this fascinating question depends on location.

Boston Scientific Loses Patent Infringement Suit with Johnson & Johnson

Submitted by patentadmin on Mon, 04/20/2009 - 00:00

April 20, 2009 - A federal judge has ruled that Boston Scientific must pay a 5.1 percent royalty rate on its sales of catheters that infringe the patents of Cordis Corp., a division of Johnson & Johnson. The rate set by US District Judge Susan Illston in San Francisco is much higher than the 0.5 percent that Boston Scientific had negotiated for.

Todd Dickinson Should Be (re)Appointed Director of the USPTO

Submitted by patentadmin on Sun, 04/12/2009 - 23:42

As you probably recall, Q. Todd Dickinson started as deputy in early 1998 and then served as director of the USPTO until January 2001, during a critical juncture in its history. He dealt with Congress as it passed the American Inventors Protection Act of 1999, the last major legislative amendment to the patent law, and managed the PTO as it was reconstituted a Performance-Based Organization of the government. He also initiated planning for agency’s relocation from Crystal City to the Carlisle Campus in Arlington.

To Mark Or Not To Mark – That Is Not A Question

Submitted by patentadmin on Tue, 04/07/2009 - 12:48

Patentees may mark their patented articles with the appropriate patent number so as to give notice to the public that the article is patented (so-called “constructive notice”). In the event the patentee or any licensee fails to so mark (known in the legal profession as a “screw-up”), no damages may be recovered for infringement of the patent unless and until the infringer is given “actual notice” of the infringement; and then only for infringement occurring after receipt of such notice (not surprisingly, filing of suit is itself considered to constitute actual notice).

The Method Claim Trilogy, Part Three: Good News/Bad News

Submitted by patentadmin on Tue, 04/07/2009 - 12:45

The first two parts of this trilogy dealt with infringement issues relating to who performs the steps set forth in a method claim and whether one who domestically produces a device contributes to infringement by one using the device abroad. Does infringement occur when the steps of a single method claim are performed by different parties? Does it occur if the method is practiced abroad utilizing equipment exported from this country?

The Rules, They Are A’Changin (For The Moment)

Submitted by patentadmin on Tue, 04/07/2009 - 12:37

In a decision which defines the limits of the Patent Office’s rule-making authority, the C.A.F.C. largely has sided with the Office. (Tafas et al. v. Durdas) Four rules were at issue: Two of the rules would have placed limitations on the number of continuation applications which an applicant could file. The other two rules would have placed limitations on the number of claims which could be presented in an application.

Document Retention – No Longer A Policy Of Choice

Submitted by patentadmin on Tue, 04/07/2009 - 12:33

Everyone knows – or should know – that a party in litigation or contemplating litigation is under a duty to preserve all relevant evidence. One (or more than one) might reasonably question the extent of this duty. Is the duty a negative one (“don’t destroy evidence”) or an affirmative one (“take steps to preserve the evidence”)? Well, the court has just provided some guidance. Phillip M. Adams & Associates LLC v. Lenovo International et al. In that case, the court sanctioned the defendant, even while holding that it may not have intentionally destroyed evidence.