Judge Spencer says no NTP/RIM settlement; injunction next?

Judge Spencer in EDVa determined that there was no valid settlement between NTP and RIM in the BlackBerry infringement case, a bad result for RIM. The judge also declined to wait for the result of re-examination proceedings at the USPTO, also a bad result for RIM (the initial determinations at the USPTO had favored RIM).

The next step would be an injunction against RIM, which could dramatically affect BlackBerry operations in the US. There are at least 3 ways BlackBerry operations might continue:

#1. RIM and NTP do a new deal.
#2. RIM designs around the claims of the NTP patents, so that the impact of an injunction would be attenuated.
#3. If an injunction is granted, RIM is able to argue to stay the enforcement UNTIL AFTER the MercExchange/eBay case is decided by the US Supreme Court.

from USAToday:

Waterloo, Ontario-based Research in Motion had hoped to end a nasty, four-year patent dispute with NTP, a tiny U.S. intellectual property firm. But a judge denied RIM's request to enforce a $450 million settlement the companies announced in March but never finalized. (Opinion: NTP vs. Research in Motion)

That allows the case to proceed — terrible news for RIM. NTP has asked for an injunction that would prevent RIM from selling BlackBerry devices or services in the USA, and there's now a good chance the judge will grant it, says Rod Thompson, a partner with San Francisco law firm Farella Braun & Martel.

But BlackBerry addicts need not panic, says tech analyst Kevin Burden with researcher IDC. "It would be wrong to assume RIM would allow service to be interrupted in its largest market," he says. The USA accounts for about 70% of RIM's business.

Oral argument in Illinois Tool on patentee's presumed market power

Of the presumption of market power, the district court didn't believe in it, the CAFC accepted it as a moth-eaten precedent, and the Justice Department argued against it, so the script seems to be set for the Supreme Court to eliminate the precedent of International Salt v. United States that if a product has a patent, it is presumed to have the requisite “market power” that makes it illegal to “tie” the sale of the patented product to another (unpatented) product. In the present case, Illinois Tool has a patented printhead and unpatented ink. Under the CAFC decision, based on International Salt, Illinois Tool is presumed to have market power, so the defendant Independent Ink did not have to prove that Illinois Tool had market power. If International Salt is reversed, then Independent Ink would have the burden of proving the market power of Illinois Tool.

Will a species always support a generic claim under 35 USC 112? More LizardTech.

The iplitigationblog poses the question "getting the sense that the patent system is facing serious problems these days?" but later lapses into a complaint about outcome of the LizardTech case.

The blog notes In that case, the Federal Circuit shot down one of our patent claims as lacking written description, even though the claim elements themselves were all indisputably described and the claim itself was an originally filed claim that was allowed and issued without amendment. Actually, the CAFC found the claim invalid alternatively for written description or for enablement difficulties.

The blog also notes Given that the current law regarding the "written description" requirement is, to put it politely, confused, I am hopeful the Court will soon take the matter up en banc, preferably in my case, but if not, in another. Personally, I think some legal academics, including one who used to be at Berkeley, are far more confused on written description than is the CAFC. Contemplate some law review articles that were written near the time of the University of Rochester case over COX-2 inhibitors. Rochester didn't have any example of a COX-2 inhibitor. LizardTech only had one example of a seamless DWT. The issue is an old one. How many species will it take to support a genus? Clearly more than zero, but will one be enough?

The CAFC noted that it is true that an originally filed claim can provide written description support, nothing in claim 21 or in the specification constitutes an adequate and enabling description of all seamless DWTs.

The CAFC gave a hypo of a claim to a fuel-efficient engine and noted that such a claim would suffice for the particular fuel-efficient engine disclosed but might not cover all fuel-efficient engines. The CAFC did not mention the litigation against Henry Ford over the Selden patent, but that argument is what disposed of the Selden patent.

Oliver Street Finance backs Solomon litigation against Toyota over US 5,067,932

Solomon Technologies has arranged an interesting plan to finance its litigation against Toyota over hybrid vehicles such as the Prius which allegedly infringe US Patent No. 5,067,932. [see earlier post on IPBiz.]

Solomon Technologies, Inc. announced November 29 that it has arranged funding to prosecute its patent infringement case against Toyota Motor Corporation. Oliver Street Finance, LLC, has agreed to pay all legal fees and expenses in exchange for a portion of any recovery Solomon receives in the litigation equal to the greater of 40% of the recovery or the actual amount of legal fees and expenses Oliver Street pays on Solomon's behalf. As previously announced, Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. has agreed to represent Solomon in its pending claims against Toyota. Michael A. D'Amelio, a member of Solomon's board, is affiliated with Oliver Street.

Solomon President Peter W. DeVecchis, Jr., said, "We are extremely pleased to have concluded our efforts to fund the costs of this lawsuit. We believe that the analyses done in coming to this arrangement, by both Mintz and Oliver Street, are major endorsements of our claims against Toyota."

Mr. D'Amelio commented, "After studying the claims of this case and evaluating the risk and possible rewards of the litigation, we believe that Solomon's case against Toyota is strong and convincing. The fact that a major law firm has agreed to undertake the representation is very encouraging."

Mr. DeVecchis also commented "With this major financing behind us, we can now focus on articulating our long term strategy to stockholders and begin the implementation. We expect to initiate that process by the beginning of the first quarter of 2006."

Solomon brought suit against Toyota Motor Corporation, Toyota Motor Sales U.S.A. Inc. and Toyota Motor Manufacturing North America in the United States District Court for the Middle District of Florida, Tampa Division, on September 12, 2005, claiming infringement of a number of claims in Solomon's patent number 5,067,932, primarily relating to Toyota's use of the technology in its Prius and Highlander Hybrid vehicles.

[from Business Wire]

Patent application addresses investment opportunities

Japonica has a patent application titled “Co-Investment Structure with Multi-Option Hurdle Rate Alternatives for Performance Based Asset Allocation.”

Japonica’s patent-pending structure is an entrepreneurial solution to the conundrum faced by pioneering portfolio managers in identifying top quartile investment managers and linking pay to performance.

Preliminary Injunction upheld in Pfizer v. Teva (DNJ)

In a case directed to infringement (not validity) of the '450 patent, we have mention of rolling claim construction, and a cite to Guttman v. Kopykake, 302 F.3d 1352.

The disclosure-dedication rule arises, and there is a cite to Toro, 383 F.3d 1326. Here, the CAFC says that unclaimed subject matter must have been identified as an alternative to a claim limitation before it is dedicated to the public (through Johnson & Johnston, 285 F.3d 1046).

There is mention of the vitiation doctrine, with a cite to Asyst v. Emtrak, 402 F.3d 1188 and Freedman 420 F.3d 1350.

There is much discussion of the concept of irreparable harm.

IP Innovation v. eCollege: Dist Ct claim construction upheld, plaintiff loses

In the nonprecedential IP Innovation v eCollege, the decision uses the words patent troll. IP Innovation lost on infringement, both literal and DOE (yes, Festo is cited), but did not have to pay attorneys fees. (The CAFC noted IP Innovation had a plausible infringement theory.)

For the second step of the infringement analysis, the CAFC cited N.Am. Container v. Plastipak, 415 F.3d 1335.

Of claim construction, the quote (bedrock principle...) found in Innova, 381 F.3d 1111 reproduced in Phillips, is cited. I cited Innova myself in discussing Quillen/Webster, who ignored the bedrock principle in their analysis of patent grant rates.

Dr. R.A.Mashelkar of CSIR

Dr. R.A.Mashelkar, Director-General of the Council of Scientific and Industrial Research (CSIR):

Yes, it was an unbelievable time. In fact, Mrs. Gandhi was really concerned that Hargobind Khurana, who got the Nobel Prize [1968, Medicine] , actually came here [India] and could not get a job. So she said to Dr Nayaduma, who was my predecessor, the director general, “Just go, spot the brightest, and offer them a job on the spot.” That was how I was brought back.

Of the changes brought by the internet:

The library you see, I remember the journals used to come here by sea mail. It used to take four months for them to arrive. Today, I have 3,000 e-journals for our students. [Contemplate also how the availability of journals in India affected the "In re '639 Litigation," concerning nabumetone.

Of the need for patents:

Well, it’s like this. I remember Robert May, the president of the Royal Society, used to say that the UK is great in coming up with new ideas, and lots of wealth is made, not in the UK, but in Europe and the US. It was the same thing for India. We would generate new ideas but we would not patent them, others would. So we’ve changed the paradigm. In this laboratory, we’ve changed the paradigm. We’ve said it’s not ‘publish or perish’, but ‘patent, publish and prosper’ because there is a wealth creation potential.

Absolutely. Even Nobel laureates have patented; Einstein had patents, 34 of them. This entire issue in India has been, very frankly, Saraswati on the one hand and Lakshmi on the other, we have kept them apart. Whereas that part of the world discovered the route from Saraswati to Lakshmi. Today, I am very happy to say that when we talk about India as a global research design and development platform, with companies like General Electric setting up their R&D centres in this country, its beginning was here.

We wanted to create wealth here. I remember going to the General Electric R&D centre in Schenectady and actually marketing. Basically, they shook hands with us with mutual respect because they saw a flag on their territory which came on the basis of an idea. I have always said, it’s not the big budget, it’s the big idea that matters. Our partnership with GE flowered from there and one day Jack Welch said: “If they are so good, why are we not there?” And that is how the General Electric R&D centre came up here and today we talk about 150 such centres coming up. That’s why when we talk about India as a global innovation hub, its beginnings can be seen now.

Query: I believe 67 per cent of the graduates who are unemployed are science graduates.

Indeed. You know, I am currently the president of the Indian National Science Academy. Just last, month we brought out the India Science Report and it shows these statistics.

You know, what has happened with the drugs and pharmaceuticals industry? Their R&D spending has gone up by a factor of five in the last four years; new R&D centres are coming up, they are looking for hundreds of Ph.Ds.

Query: You said that Michelangelo became a great painter because somebody gave him a wall to paint on and you said that the US gave you your wall to paint on.

Discussion of CREATE

The CREATE Act [Cooperative Research and Technology Act of 2004] was generated in response to the decision in Oddzon v. Just Toys, 122 F.3d 1396.

Kevin E. Flynn of The Eclipse Group on CREATE:

Flynn urged parties considering a joint research agreements (“JRA”) to expressly address the rights and obligations of each party to enforce patents and disclose confidential information to the United States Patent and Trademark Office as may be required to obtain patent protection. Absent a written agreement between the parties addressing such issues, signing a joint research agreement could lead to unintended and undesired results. The undesired results can include authorizing your research partner to disclose your confidential material to the public through patent filings or risking that you will obtain a patent that you cannot enforce without the cooperation of your research partner.

Small companies need to worry about patent issues

Remember Albie's, the small Michigan business that was sued over the "peanut butter and jelly" patent? From Derek Stettner:

You or your company may have no patents and, generally, little perceived need to be concerned with patent matters. However, there is a growing group of entities that consider enforcing patents to be a main or significant source of revenue. As a consequence, more and more businesses have to be concerned with patent matters.

One enforcement technique is to send licensing letters or to file lawsuits against end users and resellers of an allegedly covered product or service. Sometimes the first parties to receive such letters or complaints are companies that either cannot or do not wish to defend a patent lawsuit. Furthermore, those companies may not wish to risk having any kind of injunction issued against them. Thus, they will generally settle any claim or take a license as quickly as possible.

Remembering Dastar

Many websites tell you that the text is in the public domain and it is all right to copy their material, provided proper attribution is made. Dastar suggests that material in the public domain may be copied without proper attribution and possibly with misattribution.

For the right to copy, without attribution, a previously copyrighted work, the Supreme Court cited to patent law: The right to copy, and to copy without attribution, once a copyright has expired, like "the right to make [an article whose patent has expired]including the right to make it in precisely the shape it carried when patented-passes to the public." Sears, Roebuck & Co. v. Stiffel Co., 376 U. S. 225, 230 (1964); see also Kellogg Co. v. National Biscuit Co., 305 U. S. 111, 121-122 (1938).

Of the plagiarism issue, the Supreme Court noted: Finally, reading § 43(a) of the Lanham Act as creating a cause of action for, in effect, plagiarism-the use of otherwise unprotected works and inventions without attribution-would be hard to reconcile with our previous decisions. For example, in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U. S. 205 (2000), we considered whether product design trade dress can ever be inherently distinctive. WalMart produced "knockoffs" of children's clothes designed and manufactured by Samara Brothers, containing only "minor modifications" of the original designs. Id., at 208. We concluded that the designs could not be protected under § 43(a) without a showing that they had acquired "secondary meaning," id., at 214, so that they" 'identify the source of the product rather than the product itself,'" id., at 211 (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U. S. 844, 851, n. 11 (1982)). This carefully considered limitation would be entirely pointless if the "original" producer could turn around and pursue a reverse-passing-off claim under exactly the same provision of the Lanham Act.

The final text in the decision is worth noting: Had Fox renewed the copyright in the Crusade television series, it would have had an easy claim of copyright infringement. And respondents' contention that Campaigns infringes Doubleday's copyright in General Eisenhower's book is still a live question on remand. If, moreover, the producer of a video that substantially copied the Crusade series were, in advertising or promotion, to give purchasers the impression that the video was quite different from that series, then one or more of the respondents might have a cause of action-not for reverse passing off under the "confusion ... as to the origin" provision of § 43(a)(1)(A), but for misrepresentation under the "misrepresents the nature, characteristics [or] qualities" provision of § 43(a)(1)(B). For merely saying it is the producer of the video, however, no Lanham Act liability attaches to Dastar.

***
A message here is that a poorly known author must copyright the author's work, or else a better known author will simply take it, and place the better known author's name on it.

Pfizer gets favorable re-exam result on Lipitor patent, US 5,969,156

Claim 1 of US 5,969,156 (appl. no. 945812) states: A crystalline Form I atorvastatin hydrate having an X-ray powder diffraction containing at least one of the following 2.theta. values measured using CuK.sub..alpha. radiation: 11.9 or 22.0.

The summary of the invention for the '156 patent states:

Accordingly, the present invention is directed to crystalline Form I atorvastatin and hydrates thereof characterized by the following X-ray powder diffraction pattern expressed in terms of the 2.theta., d-spacings, and relative intensities with a relative intensity of >20% measured after 2 minutes of grinding and measured on a Siemens D-500 diffractometer with CuK.sub..alpha. radiation:


______________________________________
Relative
Intensity
(>20%) Ground
2.theta. d 2 Minutes
______________________________________
9.150 9.6565 42.60
9.470 9.3311 41.94
10.266 8.6098 55.67
10.560 8.3705 29.33
11.853 7.4601 41.74
12.195 7.2518 24.62
17.075 5.1887 60.12
19.485 4.5520 73.59
21.626 4.1059 100.00
21.960 4.0442 49.44
22.748 3.9059 45.85
23.335 3.8088 44.72
23.734 3.7457 63.04
24.438 3.6394 21.10
28.915 3.0853 23.42
29.234 3.0524 23.36


Thus, it is interesting to note that claim 1 is directed to x-ray diffraction lines that are not the most intense in the observed pattern. Further, the patent does not appear to index the observed lines to a Bravais lattice. Nevertheless, the USPTO has issued a notice of intent to issue a re-examination certificate.


The blog PatentBaristas reports on the re-examination.

****
Of Ranbaxy's patent litigation involving Lipitor (which involves different patents):

Ranbaxy is expected to argue that one of Pfizer's patents covers only a combination of two chemical components, but not the separate component that became Lipitor, or atorvastatin calcium.

A second patent covers the specific Lipitor molecule. Ranbaxy is expected to argue that it is too similar to the first patent and should not have been issued. But analysts said that seems like a circular argument in which one appears to cancel out the other.

Also expected to come up in the suit is a claim by Ranbaxy that Pfizer got an unfair patent extension from U.S. regulators to make up for time the drug was under review for approval.

Should Ranbaxy convince the judge to void the second patent and declare the extension on the first patent invalid, Lipitor's patent would then expire in mid-2006, about the same time that Merck & Co's Zocor goes off patent.

Ranbaxy is challenging the legitimacy of two U.S. patents Pfizer holds on Lipitor that protect the drug from cheap generic copycats through 2009 and 2011.

[from yahoofinance via Reuters]

***Update from Forbes-->

Pfizer said the [re-examined] patent is separate from two other patents challenged in court by Indian drug maker Ranbaxy Laboratories Ltd. The challenged patents expire in March 2010 and June 2011, respectively.

A.G. Edwards analyst Al Rauch confirmed in an interview that the crystalline patent, which has been unchallenged in court, is of little relevance to the challenged patents.

"I think Pfizer's just trying to make a statement that they have good intellectual property," Rauch said of the drug maker's announcement. "The other two patents are much stronger." A decision on the challenged U.S. patent is expected by the end of the year. Rauch speculated that at least one of the two U.S. Lipitor patents challenged by Ranbaxy will hold up.

(...)

In September 2004, the non-profit organization Public Patent Foundation requested that the PTO open up a review and revoke Pfizer's 1999-issued crystalline patent, claiming that the intellectual property covered had been anticipated by other inventors. Representatives of the Public Patent Foundation were not available for immediate comment.

Patents on sport moves... reprised

Reprising Robert Kunstadt's efforts of the mid-1990s, attorney John Farmer writes about the possibility of patents on sport moves:

Imagine this: You're watching the U.Va.-Virginia Tech football game on TV. Virginia quarterback Marques Hagans rolls out to his right, does a feint to the left and pretends to pitch the ball left, all to get Tech defensive end Darryl Tapp to bite, then zips down the right sideline for a long gain. (OK, after the recent game, you'll have to use your imagination really well!)

Amazed, the TV announcer says "Hagans just used his patented feint move to ditch the defensive end and to run for a long one."

Well, what if Hagans really could get a patent on this avoidance maneuver? Thanks to a recent court decision, such a seemingly far-fetched possibility became less laughable.



(...)

We'll see if Marques Hagans takes his cue and scrambles for the Patent Office. Of course, he may have a problem with not being the first inventor of the shake-and-bake move, and to get a patent, you have to be the first person to invent the invention. Michael Vick and, before him, Shawn Moore might want to remind Hagans of a little college football history.

Oh, well, been there, done that ... Check LEXIS.

Supreme Court grants cert in MercExchange v. eBay

The U.S. Supreme Court has agreed to hear eBay's appeal of a decision in its patent-infringement case with MercExchange.

The Supreme Court on Nov. 28, 2005 granted a cert petition to review the original decision, in which the district court ordered eBay to pay MercExchange, a small Virginia developer of E-commerce applications, $25 million in damages for violating a patent it holds for direct online buying (U.S. No. 5,845,265).

From InformationWeek:

In addition to seeking an overturn of the damages awarded to MercExchange, eBay is questioning the appeals court's recommendation that an injunction be issued preventing eBay from continuing to violate the patent with its "Buy It Now" feature. The Supreme Court's decision on the injunction matter could prove integral as Congress weighs options to overhaul the patent system, which has been under fire for being out of step with the times by granting too many patents to so-called "obvious" inventions that either cobble together existing technologies or that really are little more than automated business processes.

At issue is an increasingly outdated legal tendency to issue injunctions to prevent future infringement of patents, a precedent established in a 1908 Supreme Court decision in the case of Continental Paper Bag Co. v. Eastern Paper Bag Co. The legal community now questions whether a patent for a description of an invention that doesn't actually exist yet should be protected by injunctions, says Stuart Meyer, a partner and patent specialist with Silicon Valley law firm Fenwick & West. Other countries, Meyer says, have patent laws that specify that if a patent-holder isn't putting an invention to use, someone should have the right to do so, particularly in cases where an invention enables a societal good.

A group of law professors that submitted a filing urging the Supreme Court to take the eBay case hopes the decision sets a new precedent giving courts more flexibility in determining when to issue patent-related injunctions. "The Federal Circuit has effectively made injunctions mandatory, even in cases where they serve no social purpose because the patentee doesn't participate in the market, but is just using the threat of injunctive relief to leverage a larger settlement," Mark Lemley, a Stanford University law professor who wrote the filing, wrote in an E-mail interview. "Hopefully the Court will restore balance to patent remedies, permitting injunctions in the ordinary case of patent infringement, but also considering whether an injunction is necessary in every case."

InformationWeek also states: Ironically, the case may actually prove to be moot if Congress opts to approve a patent-reform bill introduced earlier this year before the eBay decision is levied. If that occurs, patent reform could end up informing the Supreme Court's decisions, rather than vice versa.

At the rate H.R. 2795 is dragging along, the Supreme Court decision might come out first, although it also true that recent Court decisions (Merck v Integra; MGM v Grokster) have been extremely limited in scope.

From the New York Times:

A brief filed by America Online, Google and several other companies described the circuit court's rule on injunctions as "a powerful club" that invites "abusive patent litigation."

Indonesia to produce Tamiflu

On Nov. 25, 2005, Roche said Indonesia could produce Tamiflu on the condition it did not export it.

"Tamiflu does not have patent protection in Indonesia," Roche spokesman Baschi Duerr said from the company's headquarters in Switzerland. "Indonesia is therefore free to produce Tamiflu as long as the product is distributed only in the domestic market."

***
Bob Park noted the following in WN:

President Bush went to Congress early this month to ask for $7B to prepare the nation for a possible outbreak of Asian bird flu (WN 4 Nov 05) . The federal government has since become the world's biggest customer for Tamiflu, produced by the Swiss pharmaceutical giant, Roche. That was good news for Secretary of Defense Rumsfeld, who doesn't have bird flu. He doesn't have stock in Roche either, but he does have millions of dollars worth of stock in a company named Gilead Sciences, having been Gilead's Chairman prior to joining the Bush administration. Low-profile Gilead Sciences owns the rights to Tamiflu, which it outsources to Roche. There is little evidence that the antiviral drug would help much in a flu pandemic.

To be clear, Gilead is the patentee, and has licensed exclusively to Roche Holdings.

USPTO allows wheel patents at about 73% grant rate

Patent Classes 295 and 301 cover wheels and axles for bicycles, skates, cars, trucks and trains, and they are still active. More than 30,000 wheel patents have been issued since 1790, and about 500 to 1,500 of them are reviewed in analyzing each new patent application.

Working in a 10-by-15-foot office identical to hundreds of others in the vast federal complex that is the U.S. Patent and Trademark Office [USPTO] in Alexandria, examiner Russell Stormer has more work than he can handle. The agency received about 349 wheel and axle patent applications last year. Stormer reviews 124 annually and typically approves patents for about 90 [90/124 = 72.6%]. Because it takes an average of two years to process an application, there is always a backlog awaiting evaluation.

Stormer and the other 4,800 examiners at the PTO are key cogs in the U.S. economic machine, because patenting an idea is the first step in trying to turn it into a commercially viable product. Technological progress also depends on the patent system. Would-be innovators routinely dip into the public records for the specifications of patented ideas as they try to figure out ways to improve upon a device.

There is so much work that the thousands of examiners at the agency's new five-building campus near the King Street Metro station cannot keep up. Inventors submitted 390,000 patent applications last year, contributing to a backlog of 600,000 applications that are "sitting on a shelf, waiting to be touched by an examiner," said Brigid Quinn, an agency spokeswoman.

(...)
There was the 1943 design for a wheel whose tire was made of rope rather than rubber, a commodity in short supply during World War II. [Recall post on Standard Oil of New Jersey, I.G. Farben, and buna rubber] More recent were applications seeking to capitalize on the current fad of "spinners," the eye-catching wheel adornments that continue spinning even when the car stops.

Stormer, his white shirt sleeves rolled midway up his forearms, reached into a pile of papers to retrieve one of his recent favorites, a patent application for a car wheel featuring a working clock affixed to where the hub cap normally is. As the wheel rotates, the clock remains upright, providing a glimpse of the time to curious onlookers but not, presumably, to the driver.

US 6,955,606 to Nintendo

US 6,955,606, entitled "Game information storage medium and game system using the same," has first claim

A game information storage medium utilized for a first game machine having a first architecture, comprising:

at least one game program for a second game machine having a second architecture different from the first architecture of the first game machine, said game program having a game title;

at least one emulator program which emulates the second game machine in the first game machine to thereby render the game program executable on the first game machine, said emulator program being associated to the game title of the game program; and

a game selection program for the first game machine and for displaying information indicative of a game title of the game program to be selected by a player, wherein when

the game information storage medium is utilized on the first game machine, the game selection program is executed to permit a player to select a game title, and, upon selection of the game title, the game program corresponding to the selected game title is automatically executed using the emulator program as a result of the association between the game title and the emulator program;

and further wherein emulated and converted instructions generated during execution of the game program using the emulator program are temporarily stored in a memory of the first game machine for a predetermined period of time after a game-over condition results during execution of the game program using the emulator program, wherein the emulator program includes a replay program that enables the temporarily stored instructions to be executed again at the option of a user of said game information storage medium within said predetermined period of time after said game-over condition;

and further including graphics image data for one or more different game characters that may be graphically displayed during gameplay;

a game character graphics image display/selection program which displays the respective graphics image data of game characters prior to the execution of a selected game program so as to prompt a player to select a desired character out of the displayed characters; and

a data replacement program which replaces the particular one or more game character graphics image data read-out by the emulator program with game character graphics image data of a particular game character that has been selected by the player,

wherein said one or more different game characters include characters that are not available for selection in the game program itself.

Priority is claimed only to a provisional application: This Application claims benefit of U.S. Provisional No. 60/206,977, filed May 25, 2000. The law firm was Nixon & Vanderhye P.C.


One discussion: The patent in question is rather long-winded, but a summary of the key points and how they could relate to Virtual Console have been provided below:

* The patent refers to a series of emulator programs, meaning that should this patent refer to Virtual Console, the "first game machine" (which we assume refers to Revolution) has no dedicated hardware for Virtual Console titles. (Figure 4)

Mosaid to appeal in Infineon case

Mosaid's appeal in the Infineon case came nearly a month after a court in California granted the company the right to appeal a New Jersey court judgment in the dispute. The court had ruled that six products made or sold by Infineon do not infringe on any Mosaid patents.

Wagner's patent portfolio theory (?)

Wagner writes: The patent portfolio theory also enables a number of important
predictions about the future course of the patent system. n28 We predict that
patent intensity (patents obtained per R&D dollar) will continue to be high,
that the Patent and Trademark Office (PTO) will face increasing pressure as a
result, that patent "thickets" will proliferate and become a growing
policy concern, and that patent litigation will become more complex and
costly. n29 We also conclude that the portfolio-dominated patent system will have
serious distributional consequences, where large, resource-rich, incumbent
firms will see a mounting advantage because of their ability to more effectively
implement a patenting strategy based on patent portfolios. n30 Companies with
small patent portfolios will find it difficult to compete against firms with large
patent holdings. This, however, does not mean that small innovators will
disappear from the market; rather, we will witness increasing segmentation of the
innovation market, with startups and small firms complementing, or filling "gaps"
in, the portfolios of larger companies.

Elsewhere in the article: Furthermore, patent applications convey little information about the potential commercial value of the invention. For example, patentees do a notoriously poor job of referencing prior inventions in their patent
applications. n75 Without information about competing technologies and
blocking patents, third parties cannot possibly determine the value of the
patented invention. Finally, the potential signaling value of the patent
application is further weakened by the lax and "patent-friendly" review given by the
PTO (which approves nearly all of the applications that it receives). n76
Moreover, after passing this diminished level of scrutiny, a significant percentage of issued patents are declared invalid when challenged in court; hence, third
parties cannot rely too heavily on the validity of issued patents that have not
been exposed to litigation. Indeed, even Long acknowledges [*22] that in
many circumstances patent signals may be ambiguous, in which case their
value becomes suspect. n77


Gideon Parchomovsky, R. Polk Wagner, 154 U. Pa. L. Rev. 1 (Nov. 2005)

Incredibly, footnote 76 is to the first Quillen/Webster paper: See, e.g., Cecil D. Quillen, Jr. & Ogden H. Webster, Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office, 11 Fed. Cir. B.J. 1, 3 (2001) (indicating that once continuing applications are included, the patent approval rate is 95%). Quillen and Webster conclude that the PTO might ultimately approve as many as 97% of all patent applications. Id. at 13.

Even Quillen and Webster gave up on the 95%/97% numbers by the time of the second Quillen/Webster paper in 2002. Parchomovsky and Wagner really need to read the literature before writing things like in footnote 76!

Separately, the patent portfolio/wall of patents insight long preceded the November 2005 paper.

The impact of outsourcing on patent strategies

Mark Lemley and co-authors describe how offshoring might be used to avoid the reach of U.S. patents.

--> While Eolas suggests a move toward internationalization of U.S.
patent liability, the line between it and Pellegrini can readily be gamed.
Someone who wants to avoid a U.S. patent can design the invention in the U.S. and
send instructions overseas, so long as the actual production and use of the
invention occurs overseas. Further, because Section 271(f) does not apply at all
to process claims, n44 drafting claims in process form will make it even
harder to apply them to international infringement. Even after Eolas, therefore,
it is still possible to avoid infringement under Section 271(f) by
offshoring.


--> It is important to note, however, that as communications technologies support ever increasing bandwidth, virtually any innovation that employs computation or decision-making is susceptible to placement of a particular component or step with an independent vendor or outside the U.S. in a way that may avoid traditional
infringement remedies. In an increasingly outsourced world, applicants (and their counsel)should pay particular attention to these issues.

The writers conclude --> Current law provides little solace for patent
owners faced with distributed [divided] patent claims. ... patent
owners and patent practitioners must be aware of the problem and take
it into account in writing, valuing, enforcing, and defending against patents.


(6 Sedona Conf. J. 117 (2005))

Do-it-yourself trademark work amounts to 30% of trademark filings?

-->from seattlepi-->

Question: I have a great name for my new T-shirt business. I need to trademark it but don't have much money for lawyers. Can I file without an attorney? I don't want to be stupid about this just to save money. It's a really cool name.

Answer: Every once in a while, it's nice to see our government take meaningful steps to help young entrepreneurial companies establish a presence in the marketplace in a budget-friendly way.

A few years ago, the Patent and Trademark Office introduced a Web-based tool (www.uspto.gov/teas/index html) that makes it easy for cost-conscience entrepreneurs to file federal trademark applications without legal assistance. All you need is to pay a filing fee of $275 to $375 per classification filing.

Sounds easy, doesn't it? Well, it is. According to Craig Morris, Trademark Electronic Application System project manager with the patent office, the Web site was specifically designed to help individuals and non-corporate entities file successfully -- the first time.

"Our Web site provides detailed guidance on how to file and issues that influence registration approvals. Today, approximately 30 percent of all trademark applications by classification are filed by non-corporate entities and individuals without legal representation," Morris says.

Morris notes that the key to successful filing is reading the instructions before starting an application. Another way to improve your chances of receiving a trademark is to make sure no other company has already filed a similar mark in your specific trademark classification.



To research the trademark landscape, visit the patent office's free online trademark search service called Trademark Electronic Search System, or TESS (tess2.uspto. gov/bin/gate.exe?f= tess&state=jkenlc.1.1).

I encourage all entrepreneurs to use TESS before selecting new product or service names. In the long run, it will be cheaper to pick another mark than do battle with a well-funded trademark owner. Venture funds also shy away from funding companies that have trademark litigation vulnerability.

The patent office is also likely to deny an application if the word is "descriptive" or is too commonly used to describe your type of product. For example, if you selected the mark "Best T-shirts," your application would be rejected because it would give an unfair advantage to you over other industry competitors.

If you can't afford the PTO's filing fees, you still may be able to establish "common-law rights" if you are the first to use the mark in commerce. Generally, the first to use a mark in commerce or file an "intent-to-use" application with the PTO gains the rights to the mark. As such, it's important to save all first-sale records.

Here are some other tips:


"First use" means real commercial activity. Simply putting your mark on a business card is not enough to establish rights.


The patent office has 45 different product and service classifications. If you think you might apply your mark to products in other trademark classes, file an intent-to-use application sooner rather than later. The patent office allows multiple renewals of intent-to-use applications.


You may use the "(TM)" (trademark) symbol even if you don't file for a federal trademark. The federal registration symbol "®" can be applied only after official trademark registration.


Unlike registering a domain name, securing a trademark takes time. You'll be able to monitor your application's progress online, but so can everyone else. Hiring an attorney is a way to keep your contact info from being published.

I remind entrepreneurs that "attorneys advise, but owners decide." The more you know about intellectual-property issues, the better your business decisions.

The patent office's Web site (www.uspto.gov) is a marvelous resource for learning the basics about trademarks, service marks and patent issues.

Carbon product used against pollution from Jilin Petrochemical plant along Songhua River

Harbin, China officials stated that they had dumped a carbon-based powder into the Songhua River to counteract the pollution from the petrochemical spill (including benzene and nitrobenzene), but it was unclear how effective that could be.

CRS report on Tamiflu

The Congressional Research Service [CRS] has issued a report on Tamiflu. It does not mention the actual patent number or the issues with star anise (shikimic acid).

Summary-->

The potential for a worldwide influenza pandemic caused by bird flu has heightened public interest regarding the availability and affordability of influenza antiviral medications such as Tamiflu. As countries prepare for the possibility of a pandemic flu outbreak, orders for Tamiflu have far exceeded the production capacities of the Swiss pharmaceutical company Roche, Inc., that owns the exclusive right to manufacture the patented drug. In addition, poor countries in Asia and Africa, where any bird flu crisis could occur first, suggest that they cannot afford to stockpile supplies of Tamiflu for treating their human populations at current prices. This report identifies and analyzes the patent law aspects of the current avian influenza drug situation. First, the report explains the role that patent rights have played in affecting the availability of Tamiflu. Second, the report examines options for increasing the drug's production, including the possibility of governments abrogating Roche's patent rights by issuing compulsory licenses to other drug companies to manufacture generic versions of Tamiflu without Roche's consent. Such option is available to countries under the Trade-Related Aspects of Intellectual Property (TRIPS) Agreement, a component of the treaties that created the World Trade Organization (WTO) in 1995. The U.S. government's authority to declare compulsory licenses is Section 1498(a) of Title 28 of the U.S. Code. It is contended that such suspension of Roche's patent rights to Tamiflu are necessary to mass produce the drug to meet the enormous demand, but this proposition has been challenged. Other legal mechanisms to increase the supply of, and lower the price for, Tamiflu include voluntary licensing agreements with other pharmaceutical companies. This report will be updated as events warrant.

More antigravity...

Mainstream science is controlled by people who want to protect their tenure (at universities and other organizations),” said Boris Volfson, inventor of the antigravity patent, who otherwise makes his living as a mechanical engineer so he can pursue his real passion – physics – on evenings and weekends.

“They said the Wright brothers’ plane would never fly. They said the sound barrier couldn’t be broken until Chuck Yeager did it (in 1947). Mainstream science says gravity can’t be conquered. But I have nothing to lose. The propulsion systems we have now are old and will never take us to the stars.” [Please observe that the Wright Brothers patent application was filed before the date of first powered flight (Dec. 17, 1903); immediately before that date, not many people knew what the Wrights were up to. Later, there were some disbelievers, including the US Army and Scientific American.]

Kevin Leininger continues: Although there is still no working model of Volfson’s “inflationary vacuum spaceship,” the federal government was sufficiently impressed with his science to award a patent Nov. 1. Simply put – not easy to do when the subject is an invention theoretically capable of approaching the speed of light – this is how Volfson’s interplanetary craft would work:

Who benefits in first to file?

Bill Heinze has a post on Who Wins in First-to-Invent Patent System?, citing to a paper by Linda R. Cohen and Jun Ishii, who noted that Like other critics, we do not find evidence that the system works to the benefit of small inventors or firms. The authors also suggest that universities might have problems with a "first to file" system: Alternatively, there is some indication that other groups do have such problems - both the u.s. government and u.s. universities.

The paper, titled "Competition, Innovation and Racing for Priority at the U.S. Patent and Trademark Office," (Brookings Working Paper 05-22. Nov 2005) does not cite the paper by Gerald Mossinghoff, entitled THE FIRST-TO-INVENT RULE IN THE U.S. PATENT SYSTEM HAS PROVIDED NO ADVANTAGE TO SMALL ENTITIES, 87 J. Pat. & Trademark Off. Soc'y 514.

Mossinghoff wrote:

The data provided by the USPTO confirm empirically that the current first-to-invent system of priority provides no advantage to small entities. Figure 6 speaks for itself. Historically, virtually the same number of small entities were advantaged by the first-to-invent system (286) as were disadvantaged (289). And with respect to independent inventors -- among the most vocal of first-to-invent adherents -- more were disadvantaged (167) than were advantaged (139) by the first-to-invent system.

Given that the Mossinghoff paper appeared in the same month that H.R. 2795 was circulated, one understands that small inventors were on notice of their "disadvantage" in the first to invent system, but generally opposed the first to file aspect of H.R. 2795 anyway. Suitable inquiry into that aspect might be made by those discussing the first to invent disadvantage.

In this, a separate inquiry is whether small entities and independent inventors improve their situation in "first to file." If they don't, then their behavior might be quite rational.

Separately, I had written of difficulties that universities would have with "first to file" in "Patent reform 2005: sound and fury signifying what?" in the New Jersey Law Journal, July 18, 2005, otherwise discussing issues with H.R. 2795. [You won't find the article text in a Google search, but it is on LEXIS.]

Monsanto prevails against Bayer over Bt corn

A jury on Nov. 22, 2005 found that Monsanto did not infringe a U.S. patent assigned to Bayer CropScience and that the patent was invalid.

Robert T. Fraley: The jury's findings are further confirmation that Monsanto's scientists were the first to invent the Bacillus thuringiensis (Bt) insect-resistant corn technology and prove that it works.

Inaccuracy not a factor in Google ranking: clueless in San Diego?

Hit 54 (page 6) in the Google search +"patent reform" +2795 establishes that accuracy is not a prerequisite to high ranking in a Google search.

Within the bill proposed for patent reform (H.R. 2795) is a section which would establish a post-grant opposition procedure. There is currently no opposition procedure in the U.S. Sadly, an article in the San Diego Metropolitan Magazine wrongly suggests that H.R. 2795 curtails the amount of opposition, exactly the opposite of what the bill does. From the article -->

Finally, the bill [H.R. 2795] curtails the amount of opposition to a patent once it has been granted. A certain amount of post opposition action has been accepted in the system on the grounds that the opposition can validate the claim with “prior art” not considered by the Patent Office. Under the amended bill, post grant opposition would be limited to nine months from the issuance of the patent. This is another instance in which U.S. practice is moving to an international standard; Europe’s patent system also places limits on post grant opposition.

There are at least three variations of patent reform. The fourth hearing on patent reform in the 109th Congress was held on September 15, 2005. The first two focused on the contents of a Committee print and the third on H.R. 2795. On Sept. 15, the merits of an amendment in the nature of a substitute to H.R. 2795, the ''Patent Act of 2005,'' that was developed in late July pursuant to negotiations among Subcommittee Members, industry representatives, and professional associations. A second document, a September redline to the substitute reflecting further changes, also will be discussed.



from Jay Thomas:

With respect to oppositions, predecessor versions of the bill allowed oppositions to be brought 9 months after the patent issued or 6 months after the patentee brought a charge of infringement. More recent versions of the bill eliminate that latter alternative.

Setting time limits for the instigation of a proposed grant proceeding requires a careful balancing of interests. The current proposal is in line with the established foreign practice which ordinarily requires an opposition to be brought, I think, either 6 to 9 months of patent issuance. These time limits prevent harassment or at least reduce potential for harassment of the patentee and provide stability for the proprietary right.

On the other hand, the current U.S. equivalent to opposition, the reexamination proceeding, allows a request to be brought at any time during the life of a patent. Further, unlike foreign counterpart legislation, H.R. 2795 places strict [query: unrealistic?] limits on the length of opposition proceedings, might also reduce the opportunity to harass a patent owner.



To follow up on this theme, one of my scientific colleagues was one of the more cited physicists in solid state; the trouble was he was being cited because people were criticizing his work (i.e., saying he was wrong). The managers of course merely measured the number of citations, not the underlying reasons for the citations, and duly promoted him. Google PageRank has similar difficulties.

***
On a comparison of search engine results, see
http://www.webmasterbrain.com/seo-tools/seo-experiments/the-search-engine-experiment/

Invalidity of IPXL claims affirmed in amazon case

Claims of US 6,149,055 (electronic fund transfer) were at issue on appeal, and Amazon's one-click system was the accused infringing product.

The CAFC found 4 claims invalid for anticipation over a prior patent and one claim was invalid for being indefinite.

The CAFC cited Med. Instrumention, 344 F.3d 1205, for the proposition that anticipation is a question of fact. The IPXL case is interesting in that the anticipating reference (Coutts patent) had been before the USPTO during examination.

Claim 25 of the '055 patent was poorly drafted. Although to a "system," it required a user to use...

There was also an issue of attorneys fees, which issue was lost by Amazon.

Ranbaxy, Teva lose to Pfizer over Accupril

The CAFC affirmed DNJ on claim construction and on issuance of an injunction in Pfizer v. Ranbaxy.

On the issue of preliminary injunctions, the CAFC cited to Jeneric/Pentron v Dillon,
205 F.3d 1377 (CAFC 2000).

On claim construction, the CAFC cited Phillips v. AWH, 415 F.3d 1303. An issue was the interpretation of the meaning of the text

saccharides (i.e. sugars)

and the CAFC cited to Abbott Labs v. Novopharm, 323 F.3d 1324. The CAFC also noted that the specification negatively defined saccharides by what they are not.

Of some relevance to an earlier discussion about the use by Jan-Hendrik Schon and Lucent of the terms "methylene tribromide" and "methylene trihalide" in patent applications, one notes that the CAFC states in the Pfizer case that the relevant inquiry is what one of ordinary skill in the art thought of a given term as of the filing date of the application. One (misguided) patent attorney had argued that because bromoform was once, in the distant past, referred to as "methylene tribromide", that the misuse would be acceptable in the year 2002. The historical origin of a term is not the relevant inquiry; the meaning on the filing date is the proper inquiry. The use of terms "methylene tribromide" and "methylene trihalide" in the Lucent patent applications would have been a problem, but, of course, the applications were withdrawn as being based on fraudulent work.

A separate issue in the Pfizer case was the reliance by Ranbaxy on a (party) stipulated definition, which was rejected by the CAFC. One cannot rely on a stipulated definition. In a less discussed problem of reliance on a stipulation, parties in a different pharma case stipulated that the presence of a certain number of diffraction lines at certain d values proved that a given compound was the claimed compound, even though the claim in question enumerated about 34 lines. Because of that stipulation, the patentee did not provide evidence of matching of all 34 lines, and that failure caused the failure of the infringement case (even though the compound truly did infringe). Beware of the handling of stipulations on appeal!

Googling +"patent law" +2795 on Nov. 20, 2005

There were 715 hits for +"patent law" +2795 at 10:15pm on Nov. 20.

Page 1:
thomas.loc.gov/cgi-bin/query/z?c109:H.R.2795 (2)
www.govtrack.us/congress/bill.xpd?bill=h109-2795
patentlaw.typepad.com/ patent/2005/06/patent_reform_p.html
www.publicknowledge.org/issues/hr2795 (2)
www.law.com/jsp/article.jsp?id=1124109330603
www.ipo.org/.../ ContentManagement/ContentDisplay.cfm
www.abanet.org/intelprop/home/PatentAct2005.pdf
vcexperts.com/vce/university/seminar_view.asp?id=54

Page 2:
promotetheprogress.com/archives/ 2005/06/the_ptp_patent_1.html (2)
www.smalltimes.com/document_display. cfm?section_id=76&document_id=10065
www.house.gov/boucher/docs/patent05.pdf
www.townsend.com/resource/hr2795.asp (2)
ipbiz.blogspot.com/2005/11/ more-google-searching-on-patent-reform.html
www.gbpatent2.com/patent_law_reform.htm
www.patentbaristas.com/archives/000229.php
www.arentfox.com/webinarcentral/09272005webinar.html

Page 3:
www.ipfrontline.com/depts/ article.asp?id=5259&deptid=2
releases.usnewswire.com/GetRelease.asp?id=51784
www.govtrack.us/congress/billtext.xpd?bill=h109-2795
www.4ipt.com/IPMetalworks/ Title35-perCoalitionPrintRev_20Oct2005.pdf (2)
www1.jonesday.com/news/ news_detail.aspx?newsid=337042903
www.inventorsvoice.com/2005_ patent_legislation/patent_issues.html
www.cio.com/blog_view.html?CID=10211 (mentioning "Patent Reform 2005: Sound and Fury Signifying What?", New Jersey Law Journal, IP supplement, July 18, 2005)
www.fr.com/news/articledetail.cfm?articleid=465
www.amc.gov/commission_hearings/ pdf/Statement_Lemley.pdf

The InventorsVoice post has been one of the faster "upward" movers in the recent google searches; the content-->

What are the Specific Issues of H.R. 2795?

CHANGING THE U.S. FIRST-TO-INVENT SYSTEM TO FIRST-TO-FILE:


The existing 200-year-old patent system rewards the first inventor who can prove that he actually invented the product first. H.R. 2795 will change the U.S. current "First-to-Invent" system to a "First-to-File" system that would instead award the patent to the first inventor who files a patent.
The current First-to-Invent system encourages and enables independent inventors and small businesses to research and test their products before applying for a patent that will cost thousands. Through keeping proper invention logs and using non-disclosure agreements, they can defer the cost of a patent until they know that they have a product worth pursuiing.

Changing to a "First-to-File" system will require that independent inventors and small business file for the patent as soon as possible.

18-MONTH PUBLICATION OF PATENT APPLICATIONS:


Originally, patent applications were kept secret by the patent office until they were issued. After changes in the patent laws in 1995, inventors had the choice to "opt-in" to publish or not publish their patents 18 months after the patent application was filed. H.R. 2795 will require mandatory publishing of patents 18 months after filing.
LOSS OF 1-YEAR GRACE PERIOD TO FILE A PATENT:


Under the current patent laws, if an invention is publicly displayed, sold, or exhibited, the inventor has a one year grace period in which to file a patent. H.R. 2795 will eliminate this grace period.

****
By 2pm on Nov. 21, the number of hits was down to 710.

The hit for IPBiz
ipbiz.blogspot.com/2005/11/ more-google-searching-on-patent-reform.html
remains on the second page.

Sony's DRM code improperly used LAME open source MP3 code?

Matti Nikki stated: "Multiple software components on the [Sony] CD have references to the LAME open source MP3 code." Code in the LAME application is licensed under the lessser GNU General Public Licence (LGPL) that, while not as ascetic as the GPL, still places obligations on the use of that code. This includes terms such as 'You must cause the whole of the work to be licensed at no charge to all third parties under the terms of this License'.

Sony's DRM software puts a hidden 'rootkit' code on the user's PC when the CD is inserted into the PC. This code can be used by to conceal any kind of file without restriction making it an ideal hiding place for viruses and other malicious code. Needless to say several Trojan horses quickly appeared.

An announcement by Microsoft (not Sony) that it would provide software to remove the offending code appears to have been the last straw for Sony, which said that it was suspending production of the CDs. Sony offered to replace the 2.1 million discs that had been sold and withdraw a further 2.6 million from store shelves.

(Post 1001)

"You only look twice," Intellectual Property Today, Nov. 2005

In my Nov. 2005 article in Intellectual Property Today, I present data from the USPTO on continuing applications, and discuss anticipation, inequitable conduct, state disciplinary rules, and recent district court cases citing Merck v. Integra. There is even an account of the East Cavalry Field action at Gettysburg on July 3, 1863, involving, among others, George Armstrong Custer and J.E.B. Stuart.

(IPBiz post 1000)

Evidence of a recent drop in patent grant rates?

Statistics from the USPTO suggest that allowance rates have dropped steadily since 1999, when they were 70.8%. The following information suggests that there may have been a steeper drop that has started more recently.

From a board: Has anyone else noticed the sudden drop in the number of utility patents issued by the PTO? Over the past seven weeks, weekly issued utility patents has averaged 2141 +/- 261. This compares with the historic average (Jan 2003-Sept 2005) of about 3100 +/- 300. Even allowing for the usual variation in issuance rate and an apparent gradual decrease over the past year, this seems a significant and sustained decrease. There have also been some indications that something is up at the PTO: at a CLE I attended in September, a former assistant commissioner noted that the allowance rate was down 25 percent due to the current quality review efforts; in the examiner's union newsletter of april/may 2005 (at www.popa.org) there is a table showing the "error" rate for examiners upon review of allowed cases for the period Oct 04-Mar 05. This follows a report from the PTO that the targets for quality are not being met [report.
My guess is the recent drop in the issuance rate about 6 months after the error report suggests that the hammer fell in April or so, examiners came under increased pressure to improve patent quality, since then they are reluctant to allow anything, and we are now seeing the decrease in patents allowed about 6 months later. During a phone interview one examiner told me that that supervisors are coming down on them, and this examiner wants unexpected results or advantages before allowing claims, apparently regardless of the validity of arguments over rejections. This all may help explain why over the past 6 months or so I have experienced a very high number of final rejections and advisory actions in cases where previously I would have expected allowance on second office action or after final. My use of RCEs and appeal briefs has definitely increased recently.

One notes that RCEs are now the most common form of "continuing" application. See "You only look twice," Intellectual Property Today, November 2005.

One poster suggested a remedy to a perceived increase in "obvious design choice" rejections:

The claims were also rejected on the reasoning that placement of part X in relation to parts Y1, Y2 and Y3 is a "design choice" (page 3 of the action). However, "design choice" is not a grounds for rejection under 35 U.S.C. §103.

As stated in the specification, parts X and Y function by ___________________ and [are therefore advantageous because _____] (specification, page __, lines __-__). Parts Y1, Y2 and Y3 are functional and do not present a "design choice." Design choices are discussed in the Manual of Patent Examining Procedure (MPEP) § 2144.04(VI)(C), but only insofar that they constitute a rearrangement of parts. Applicants' claims cannot represent a "rearrangement of parts," because the cited references fail to disclose all of the parts disclosed in applicants' claims.

(IPBiz post 999)

The USPTO as a pressure cooker?

According to the POPA newsletter: The USPTO's pressure-cooker environment and heavy-handed management style is forcing out or firing a record number of employees, Ronald Stern testified. "There is no problem hiring examiners," he said. "The problem is keeping them."

The newsletter also stated: While the USPTO speaks of the volume of examiners it's hiring, the patent corps is like a sieve leaking employees almost as fast as they're hired. From fiscal year 2000 through 2004, the agency hired 2,309 patent examiners yet lost 1,527.

Elsewhere in the newsletter: "Many proposed solutions represent radical changes to the patent system and go far beyond what is necessary to improve performance" at the PTO, Ronald Stern, president of the Patent Office Professional Association [POPA], told the Judiciary Courts, the Internet and Intellectual Property Subcommittee during an oversight hearing.

Likening the PTO to a "legal sweatshop," Stern said the agency places too much emphasis on disciplinary action and not enough emphasis on employee training and mentoring. He said patent examiners also need at least 20 percent more time to review each patent application.

"Rather than a massive overhaul of he agency or a rewrite of the patent statues, POPA believes that what is necessary is for the [PTO] to go back to the basics of its mission -- examining patent applications and issuing valid patents," Stern said.

I had written in the October 2005 issue of Intellectual Property Today:

In my opinion, the most direct approach is to end fee diversion, give the USPTO sufficient funds to do the job of examination, and then evaluate its performance. Adding on new responsibilities for the USPTO, without resolving the issue of resources for its core function, is questionable policy.

H.R. 2795 appears to be stalled for 2005. There is no corresponding reform bill in the Senate, and Senator Hatch referred to this as a backburner issue for the present time. For all the storm and fury of patent reform for 2005, nothing got done in 2005.

***
Times were tough at the PTO in the old days. See an
account about the PTO during the burning of Washington, DC and the activities of Dr. Thornton, which saved Blodgett's Hotel and perhaps the situs of Washington as the US capital.

MicroStrategy loses at the CAFC; an appalling expert report

The CAFC affirmed the EDVa on all issues but one, and on that one issue, the plaintiff-appellant MicroStrategy may not benefit much. The decision shows the harm that can be done by a poorly-constructed damages report.

Judge Rader wrote the opinion, which tackles atypical Federal Circuit fare in a different way.

There is a cite to Daubert v. Merrell Dow, 509 U.S. 579, as well as to Kumho Tire, 526 U.S. 137. The CAFC cited to the underlying district court decision about an expert report: "[t]his report does not pass the red face test. It does not pass the Daubert test... I frankly was appalled at it."



(post 997)

The Univ. of Minnesota licenses fat-reducing bioceutical Lepitrim

The University of Minnesota has licensed rights to Lepitrim to Imagenetix, Inc. of San Diego. Imagenetix, Inc. (IAGX), www.imagenetix.net, develops, formulates, private-labels, and produces nutritional supplements, over-the-counter topical creams, skin care products and pharmaceuticals for inflammatory-related markets.

Lepitrim(TM) is not a drug, but is comprised of natural polysaccharide compounds which have been found in animal studies conducted at the University of Minnesota to lower serum leptin levels and reduce stored body fat with no side effects.

Imagenetix CEO William P. Spencer said: "We are very excited about the results of recent research on the role of leptin in fat utilization and regulation. We believe that Lepitrim(TM) will provide immediate and longer term assistance to the countless number of individuals that have tried and failed to lose body fat using other weight management programs.

"We have therefore begun to initiate comprehensive distribution and marketing strategies for Lepitrim(TM) with our marketing partners and are optimistic the product will carve out a significant market niche for years to come."

Harvard Law Review ranks Sup Ct 2005; maybe we should try the reverse?

The November 2005 issue of the Harvard Law Review ranks the leading Supreme Court cases for the last term. You will find
Grokster but you won't find Merck v. Integra.

Of the criticism of Justice Souter's opinion, don't worry. The HLR states: "Thus, where Justice Souter's opinion provides conflicting guidance, precedent and the Constitution offer an answer." The HLR also notes that the Grokster inducement rule is inconsistent with Sony.

Somebody ought to "rank" Harvard Law Review articles on intellectual property, like the 2003 article asserting a patent grant rate of 97%, or the more recent one on disclosure.

SJ of invalidity against ROMER's U.S. 5,829,148 denied

At a hearing on November 14, 2005 concerning ROMER CimCore's patent infringement action against FARO Technologies, Inc., Lake Mary,
Florida, the Court denied FARO's motion for summary judgment of
patent invalidity. (CimCore Corp., et al. v. Faro Technologies, Inc., Civil Action No. 03-CV-2355 B(WMc)).

US 5,829,148 was issued November 3, 1998. It claims no priority to earlier filings and it has been cited by 29 US patents. The first claim states:

An articulated spatial coordinate measuring arm which comprises:

a supporting base;

a proximal transfer member having a proximal end and a distal end;

an intermediate transfer member having a proximal end and a distal end;

a distal transfer member having a proximal end and a distal end;

a probe having a proximal end and a distal end;

a first joint assembly swivelingly connecting said proximal end of said proximal member to said base;

a second joint assembly swivelingly and hingedly connecting the distal end of said proximal member to the proximal end of said intermediate member;

a third joint assembly swivelingly and hingedly connecting the distal end of said intermediate member to the proximal end of said distal member; and

a fourth joint assembly hingedly connecting the proximal end of said probe to the distal end of said distal member;

wherein at least one of said first, second and third joint assemblies has at least one degree of freedom capable of sweeping through an unlimited arc;

wherein said at least one of said first, second and third joint assemblies comprises at least one multi-contact slip-ring sub-assembly for transmitting electrical signals therethrough; and

wherein each of said first, second and third joint assemblies has an unlimited range of swiveling motion.

From the "background of invention,"

The ever-increasing complexity and sophistication of commercial and industrial components and assemblies, and the need for quality assurance during certain interim stages in their manufacture and assembly, along with the typical market pressures for cost reduction have prompted new methods of measuring complex three-dimensional parts in a fast, precise, accurate and reliable manner.

This is particularly true in the area of commercial or industrial quality assurance where numerous complex mechanical components are separately created with exacting tolerances for later assembly. In order to efficiently ordinate these systems, method and apparatuses for measuring the components have been devised.

An example coordinate measuring machine is described in Eaton, U.S. Pat. No. 3,944,798 and Raab, U.S. Pat. No. 5,402,582, both of which are incorporated herein by reference. In general, these devices comprise an articulated arm terminating in a probe. The arm has a plurality of rigid transfer members connected end-to-end with a series of joints. The position of the probe in space at a given instant in time can therefore be calculated by knowing the length of each member and the specific position of each of the joints. The operator simply manipulates the arm and takes readings at various points on the artifact being measured. Each of these readings is recorded and processed by an electronic recorder/analyzer to obtain the desired dimensions of the artifact.



(post 994)

The "h index", a new way of ranking authors through citations

Jorge Hirsch of UCSD proposes the
h index as a different way to utilize citations to rank authors.

(post 993)

Semantic search service for patents

Press release: Nervana, Inc. (www.nervana.com), a leading semantic search technology company, today announced Nervana IP Discovery version 1.0, a powerful addition to Nervana's suite of knowledge discovery solutions that provide life science organizations robust semantic search capabilities that provide higher knowledge interaction and discovery, essential for timely advances in research and development. It's a significant advancement that increases the data an individual searcher can assimilate, and eliminates the need for separate licenses for patent, biotech or pharmacy data sources and it delivers higher operational and economic efficiency for the customer.

****
As a separate matter, note the patent search service at

http://www.patentcomplete.com/search.html

Welcome to our free US Patent Database Search. Please note that this search is based upon unaltered USPTO data, not the more complete, more accurate data used for Patent Complete patent searches.

****
Separately, on ip news,

LexisNexis

PubPat files re-exam request on Forgent's US 4,698,672

PubPat has filed a request for reexamination at the USPTO on Forgent's US 4,698,672, which patent has been asserted against entities that implement the Joint Photographic Experts Group ("JPEG") format

Dan Ravicher: "Forgent Networks is a classic example of the new and rapidly growing trend of patent holders that do nothing more than sue people who make products or services available to the public. Unfortunately, the patent system allows for such perverse behavior because it cares more about patent holders than it does the public."

The request cites US 4,541,012, a patent owned by Compression Labs during the prosecution of the '672 patent.


(post 991)

Lipitor doesn't beat Zocor in heart attack study

ABC News: High doses of Pfizer Inc.'s cholesterol-lowering drug Lipitor failed in a high-stakes trial to help heart attack patients significantly more than moderate doses of Merck & Co.'s rival Zocor, researchers said on Nov. 15, 2005.

The aim of the study presented at the American Heart Association scientific meeting was to determine whether intensive lowering of "bad" LDL cholesterol with atorvastatin (Lipitor) would reduce the risk of death and other adverse events in heart attack patients more than the moderate, most widely used dose of Zocor, known by the chemical name simvastatin.

Kapusta v. Gale: another district court claim construction vacated

In the nonprecedential Kapusta v Gale Corp., the CAFC addressed the meaning of the term "hand-grip size case." Kapusta argued that the term should mean a case that is suited to a grip by a hand. The CAFC cited Phillips v. AWH, 415 F.3d 1303 and agreed with Kapusta, vacating the ED Ca district court decision and remanding.

US 6,962,236: a better way to get into your attic?

U.S. Patent No. 6,962,236 covers SpaceLift Product's invention of an automated attic access lift complete with integrated stairway.

An embodiment, the SpaceLift 6000 attic lift system, features a lift platform carried by a frame that mounts into a standard 22-1/2 x 54-inch framed opening in the ceiling. The SpaceLift frame includes a mechanical drive train that lifts and lowers the lift platform using four aviation-grade cables. The lift platform is big enough to carry most household storage items with a weight capacity of 75 pounds. The integrated stairway disappears into the ceiling when not in use. When the stairway is deployed, the lift platform remains stowed in the attic out of the way of the access opening, permitting unimpeded use of the stairway. Then, when needed to transport storage items, the lift platform automatically moves into position above the attic opening and travels down the guide track of the stairway. In reverse process, the lift platform returns to the stowed position enabling the homeowner to resume use of the stairway access.

(post 988)

How to determine whether a judge is pro-business

In an interesting article about whether Supreme Court nominee Samuel Alito is pro-business, we have a quote by Donald B. Verilli: "There are series of issues where a principled commitment to a conservative judicial philosophy does not lead to a pro-business outcome."

In a different dimension, I have noted that Justice Scalia's decision in Medtronics, while arguably one of strict construction, was certainly not conservative. Scalia's decision in Merck v. Integra, while falling in line with arguments of the government and of the AARP, was neither one of strict construction nor pro-patentee. And, if Integra wins on remand, the meaning of the decision will not be so clear.

Predicting specific outcomes from perceived general philosophies is not an easy thing to do.

The CNN article also has the text:

Of course, there's a danger in trying to extrapolate any judge's future from his past. When Abraham Lincoln appointed Salmon P. Chase the Chief Justice in 1864, he said that he wanted a judge who would uphold the legality of "greenbacks," money not backed by silver or gold, that had enabled the North to finance the war.

As Lincoln's Treasury Secretary, Chase had written the laws. Three years later Chase wrote an opinion holding that the greenbacks were unconstitutional.

Of the issue, one recalls that "income tax" was an issue during the Civil War. When Congress passed a primitive income tax bill in 1862, it was Samuel Chase who ignored the law, preferring to fund the war through more government borrowing . When that source became difficult to tap and Union setbacks continued, Chase talked Lincoln into printing more greenbacks--despite justified fears that doing so would spark inflation.

Open Invention Network to make Commerce One patents available for Linux

Remember all the commotion about the mysterious buyer at the bankruptcy sale of patents of Commerce One? Some (all?) of these patents have now ended up in Open Invention Network, which offers patents royalty-free to promote Linux.

IBM, Novell, Philips, Sony and Red Hat are funding a new company, the Open Invention Network, which will acquire patents and offer them royalty-free to promote Linux. Among its initial patent holdings will be a set of business-to-business electronic commerce patents that were purchased from Commerce One by a Novell subsidiary.

OSDL launches patent commons library on Nov. 15

On November 15, 2005, the Open Source Development Lab (OSDL) launched an online patent commons reference library as a key plank in its ongoing Patent Commons Project. The patent commons library is a searchable database containing more than 500 patents and more than a dozen technical standards supported by patent pledges and covenants.

One thing to remember in all of this is that patents are rights to exclude, not rights to make. Just because one's product or process falls within the scope of a claim of an "open source" patent does not mean that one does not infringe a claim of a different patent.

Solicore gets patent for polymer matrix electrolyte in Li battery

Solicore, Inc. announced Nov. 15, 2005 that it has been issued a United States patent for the invention of a battery using a
polymer matrix electrolyte (PME) separator.

Flexion, Solicore's lithium ion battery solution; enables a small, thin, and flexible power source to be embedded into a micro medical device. Having the ability to embed a safe power solution
into new devices such as a drug delivery patch has opened new doors for new applications in treating the human condition.

Solicore's technology enables new features and functions
for smart cards. Also, the radio frequency ID market, or RFID, continues to create new applications for many industries; including time and temperature sensors, access, authentication, patient monitoring and more. Solicore provides a reliable, safe, high performing form factor that opens up new applications by
providing embedded power solutions in a new thin, flexible design. This will allow a host of new applications in semi-active and active RFID tags.


(post 984)

DRM issue with Sony products

With digital rights management (DRM), ownership rules state how many copies can be made of a CD, often in long documents that consumers sign off on but rarely read. Copy-protected CDs even dictate how consumers can listen to their music. With the Sony BMG discs, for instance, anyone who uses competing media players, such as iTunes or Musicmatch, is out of luck.

To play one of the Sony CD titles on a PC, you must first accept Sony BMG's licensing agreement and a software download, which includes the Sony music player and the hidden files that have become prey to hackers. You can't take the stuff off your computer without Sony's permission.

(...)
Apple uses its own DRM method for digital music, which it calls FairPlay. It's led to much consumer confusion, due to a basic stance of Apple's business policy. Apple won't license FairPlay to other companies, so rivals in digital music are forced to use other DRM tools — most notably Microsoft's Windows Media.

And just like VHS and Beta, Apple and Windows, and other incompatible formats, songs in Windows Media won't transfer easily to the iPod, and FairPlay tunes won't play on non-iPod devices.

(...)
No entity has taken bigger hits in the DRM debate than Sony BMG Music. When Russinovich first blogged about the issue, he showed that some of Sony's copy-protected discs had hidden files, called "rootkits," that potentially could be used for viruses. Sony initially responded by posting a downloadable patch on its website, which makes the file visible on a hard drive.



from USA Today.

AEC files provisional application in hydrogen production area

Noting "As a result of working closely with Experchem Laboratories of Toronto, Canada over the past nine months, our method of producing hydrogen has benefited from significant enhancements. The modifications and improvements to our hydrogen production process have resulted in more efficiency, an increased production of hydrogen, and the ability to develop what we believe is a saleable, in-demand by-product," Alternate Energy Corporation (AEC) filed a provisional patent application.

AEC noted: A provisional patent application establishes an official United States patent application filing date for an invention and permits one year's authorization to use a "Patent Pending" notice in connection with the invention and to assess the invention's commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent.

Mondolino leaves Morgan Lewis for McDermott Will

Dennis Mondolino is joing McDermott Will.


Ray Lupo: "With this addition in New York we now have a formidable IP litigation presence in each of our eight U.S. offices, in addition to our European offices. Dennis and his group will be especially effective
in advancing our pharmaceutical focus as part of our expanding life sciences IP practice."

Mondolino argued for Glaxo SmithKline in the case Glaxo v. Apotex, in the Ceftin matter. One issue there was the meaning of amorphous, as used in a claim and as previously discussed in Glaxo v. Ranbaxy, 262 F.3d 1333 (CAFC 2001). The art upon which Apotex relied had been before the PTO and thus the burden was especially difficult. Al-site, 174 F.3d 1308. A bigger issue was that of attorneys fees, arising from the fact that Apotex did not receive an opinion of counsel. In the Glaxo did not receive attorneys fees.


(post 981)

Decision on MercExchange/eBay cert today?

The Seattle Times reports that the Supreme Court could decide today whether to hear case between MercExchange and eBay. Therein, MercExchange asserts that eBay's "Buy It Now" feature infringes claims of patents of MercExchange. The Supreme Court in this case could speak to the issue of injunctions in patent infringement cases, a topic of great controversy in the patent reform bill, H.R. 2795.

The Seattle Times also mentions the Eolas/Microsoft case. Therein, Eolas/UC Berkeley asserts that the act of launching plug-in applications from the Internet Explorer browser falls within the scope of claims of the Eolas/Berkeley patent. The Eolas patent recently survived a re-examination initiated by the USPTO director (Jon Dudas) but strongly advocated by W3C. On remand to the district court, the issue of Wei's Viola browser, both as prior art and as a matter of inequitable conduct, will be analyzed.

***
The Seattle Times also has an article by Sarah Lai Stirland
Trolling for Patents which has the text:

That bill [H.R. 2795] and the subcommittee's latest bill [the substitute bill] contain several measures aimed at improving the quality of the patents, an issue universally thought to need urgent attention.

An oft-repeated criticism of the current system is that the rise in litigation and the troll phenomenon can be attributed to stronger legal protection for patents in courts in recent years and the approval — by harried, time-starved patent examiners — of broadly written patents with questionable claims. [Query: if the examiners are letting so many bad patent claims through, how come invalidity findings by the CAFC are down?]

The two bills examined in September by the House Subcommittee on the Courts, the Internet and Intellectual Property try to improve patent-office procedures. They would also simplify how the office determines who has the right to patent an idea by granting patents to those who file an application first.

The system now is based on a "first to invent" standard, one that critics say is overly cumbersome. Establishing that you're the first inventor requires volumes of evidence and often involves a costly procedure at the patent office to adjudicate such disputes.

***on damages-->

The question: Should juries value the inventions in isolation? Or should their value be considered in the context of the commercial success of an entire product?

The IT industry wants lawmakers to limit damage awards to a patent holder's specific "inventive contribution" to a product. Microsoft made that argument in the Eolas case.

The coalition, on the other hand, wants to preserve the status quo because a change could have far-reaching implications in biotech and pharmaceutical products, which often do not have the bundled patented components found in the IT industry.

One pot chemical synthesis technique to be patented?

The industrial partner of academic researchers at Universiteit van Amsterdam and Radboud Universiteit Nijmegen, Synthon, has recently requested a patent for work on a one-pot chemical synthesis. This is the first patent to emerge from an ACTS research project.

In the synthesis, the researchers combined a chemical reaction step, a metal-catalysed conversion, with a biological step that uses enzymes. For this to work the reaction conditions, e.g. temperature and pH, must be optimised for both steps. To their surprise the researchers noted that the resulting one-pot synthesis eventually lead to faster reaction rates with a substantially higher yield, than the two separate reactions.

An odd way to be haunted by an old patent?

A patent on p-chlorobenzenesulfonic acid has been discussed in an odd situation. Low levels of it appeared in test results from three St. Louis city water wells and someone noticed that Michigan Chemical Company, headquartered in St. Louis, had a patent on separating it. St. Louis City Councilman Bill Schrum was unaware of the Michigan Chemical patent. Schrum had worked at the plant, but not on the chemical end. He then went on to work for Dow Chemical in Midland as a chemical lab technician. "They knew they had a large quantity of this material," Schrum said. "The patent might answer a few questions. It looks like this compound has been leaking into our aquifer ever since and who knows what else it's carrying with it."

More Google searching on patent reform

Searching +"patent reform" +2795 on Nov. 13 at 8:30pm produced 715 hits. That's more hits than before, AND some of the old hits are missing. Again, what you get on the search depends on "when" you do the search.

Page 1:
thomas.loc.gov (2)
patentlaw.typepad.com (blog entry for June 2005)
publicknowledge.org/issues
govtrack.us
law.com/jsp/article
ipo.org
abanet.org/intelprop
promotetheprogress.com (blog)
vcexperts.com

Page 2:
publicknowledge.org/issues
promotetheprogress.com (blog)
smalltimes.com (article by Greg Mayer)
house.gov/boucher
townsend.com (2)(law firm entry)
gbpatent2.com (law firm entry)
patentbaristas.com (blog)
ipfrontline.com
bakerbotts.com (law firm entry)

Page 3:
arentfox.com (2)(law firm entry)
www-jonesday-com.origin.hubbardone.com (law firm)
www.4ipt.com/IPMetalworks/ Title35-perSmith_Substitute_26Jul2005.pdf (2)
www.ipo.org/.../ ContentManagement/ContentDisplay.cfm
releases.usnewswire.com/GetRelease.asp?id=51784
www.govtrack.us/congress/billtext.xpd?bill=h109-2795
moneycentral.groups.msn.com
www.inventorsvoice.com/2005_ patent_legislation/patent_issues.html (First appearance in first three pages)

[IPBiz (continuations) which had been on page 3 is no longer in the first 27 pages]

Page 4:
patentlaw.typepad.com/ patent/2005/07/library_of_cong.html (blog)
www.fr.com/news/articledetail.cfm (2)(law firm entry)
www.cio.com/blog_view.html?CID=10211
www.amc.gov/commission_hearings/ pdf/Statement_Lemley.pdf
www.abanet.org/intelprop/bulletin/2005_09-10/page3.html
nyls.blogs.com/nano/2005/10/patent_reform_a.html
www.autm.net/about/AboutPubPolicy.cfm
www.inventorsvoice.com/ 2005_patent_legislation/status.html
www.piausa.org/patent_reform/congressional_testimony/

***Searching +"patent reform" +2795 on Nov. 14 at 7:15am yields 711 hits, down 4 in less than 12 hours.


A newly appearing hit on page 8 is from generic pharma. It is a press release dated Sept. 15 and says:

“By eliminating some infringement defenses and weakening others, the bill will not increasepatent quality but, in fact, will dilute the integrity of the U.S. patent system,” said Jaeger. “And by allowing companies to obtain suspect patents, the bill necessarily will increase costs to consumers who rely on affordable generic drugs. Suspect, but unchallengeable patents, translate into longer monopolies and higher prices for branded drugs.”The legislation also would eliminate the “best mode” requirement, under which the inventor must disclose in the patent application the most efficient known method known for producing the invention. Elimination of this requirement would give the inventor a further monopoly[sic ?], as the public would have to spend time reinventing the best way to make the product after the patenth as expired.
See www.gphaonline.org/news/statements/2005-0915.pdf

Dale Carlson's substantive articles on the "best mode" issue in H.R. 2795(appearing in IDEA and in the National Law Journal) do not appear in the hits, either directly or by citation. My substantive article "Imagine" is at the bottom of page 16; "Patent Reform 2005 (IPT, on obviousness issues) and "Patent Reform 2005 (NJLJ, analyzing HR 2795) are no where to be found in the search. Not only do the Google search results appear not to be content-driven, they seem to be content-adverse.

Of the list on Nov. 14-->

page 1:
thomas.loc.gov/cgi-bin/query/z?c109:H.R.2795: (2)
patentlaw.typepad.com/ patent/2005/06/patent_reform_p.html
www.publicknowledge.org/issues/hr2795
www.govtrack.us/congress/bill.xpd?bill=h109-2795
www.law.com/jsp/article.jsp?id=1124109330603
www.ipo.org/.../ ContentManagement/ContentDisplay.cfm
www.abanet.org/intelprop/home/PatentAct2005.pdf
promotetheprogress.com/archives/patent_reform/
vcexperts.com/vce/university/seminar_view.asp?id=54

page 2:
www.publicknowledge.org/issues/hr2795/resource
promotetheprogress.com/archives/ 2005/06/the_ptp_patent_1.html
www.smalltimes.com/document_display. cfm?section_id=76&document_id=10065
www.house.gov/boucher/docs/patent05.pdf
www.townsend.com/resource/hr2795.asp (2)
www.gbpatent2.com/patent_law_reform.htm
www.patentbaristas.com/archives/000229.php
www.ipfrontline.com/depts/ article.asp?id=5259&deptid=2
www-jonesday-com.origin.hubbardone.com/ news/news_detail.aspx?newsid=337042903

page 3:
www.arentfox.com/webinarcentral/09272005webinar.html
www.4ipt.com/IPMetalworks/ Title35-perSmith_Substitute_26Jul2005.pdf (2)
www.ipo.org/.../ ContentManagement/ContentDisplay.cfm
www.govtrack.us/congress/billtext.xpd?bill=h109-2795
releases.usnewswire.com/GetRelease.asp?id=51784
www.inventorsvoice.com/2005_ patent_legislation/patent_issues.html
www.fr.com/news/articledetail.cfm?articleid=465
www.cio.com/blog_view.html?CID=10211
www.amc.gov/commission_hearings/ pdf/Statement_Lemley.pdf

More "sleights of hand" by law reviews?

Ten years ago, the Supreme Court in Qualitex cited a law review article I wrote: We do not see why courts could not apply those standards to a color, replicating, if necessary, lighting conditions under which a colored product is normally sold. See Ebert, Trademark Protection in Color: Do It By the Numbers!, 84 T. M. Rep. 379, 405 (1994).

The Supreme Court cite does reflect my position, that you can do color trademarks "by the numbers" and that variations in light source can be taken into account in doing color trademarks "by the numbers."

I was a bit surprised to see an October 2005 law review reach a somewhat disparate conclusion:

For a thorough discussion of the variances in human perception of
color depending on the environment, and the difficulty of taking these
variances into account in trademark infringement actions, see Lawrence B. Ebert, Trademark Protection in Color: Do It by the Numbers!, 84 Trademark Rep. 379, 405-06 (1994). [27 Cardozo L. Rev. 457 (Oct. 2005)]

This isn't perhaps as bad as Lemley and Moore saying that Clarke assumed that all continuations resulted in a patent (when Clarke said no such thing), but it is perhaps not an accurate assessment of what I was saying about color trademarks.

Blogging food critics

"This blog is predicated on the suggestion that every Wednesday, in the Times Dining Out section, Frank lays a huge Faberge egg of hilarity," Langbein tells readers. She imagines Bruni as a "Venetian count in a huge ruffled collar," doling out stars from "the inside breast pocket of his brocaded chamber robe."

The Bruni Digest: http://brunidigest.blogspot.com/

Standard Oil and I.G. Farben: patents and antitrust

Following up on a post I made on Bergius-Pier synfuel technology, there is a significant underlying patent story not frequently discussed.

In the period after World War I, there were massive mergers in the chemical industry. In America, Allied Chemical was formed, and in Britain, ICI. The biggest cartel was I.G. Farbenindustrie in Germany, headed by Nobel laureate Carl Bosch. These chemical companies did business deals with one another, based largely on patent rights. For example, ICI and DuPont shared patent rights, with each getting exclusive rights in their home area.

Standard Oil of New Jersey (Esso, later Exxon) did a deal with I.G. Farben covering petrochemicals. The deal comprised two parts.

Part 1. High pressure hydrogenation.
In the 1920's, I.G. Farben did extensive research on high pressure hydrogenation of coal to make liquid fuels. This is known as Bergius-Pier technology. However, it was not economically viable because of continued discovery of new oil fields (as those in Oklahoma and Texas). Standard Oil of New Jersey was interested in the high pressure hydrogen technology not for coal, but to increase yields of distillable products from petroleum. Thus, in 1929, Standard Oil of New Jersey and I.G. Farben did a deal. For a block of Standard Oil stock worth $35 million, I.G. Farben transferred rights to the hydrogenation process outside of Germany to a jointly-owned Standard Oil/I.G. Farben company.
Part 2. Petrochemicals
Part 1 did not expressly allocate rights as to petrochemicals. A second agreement in 1930 set up JASCO, the Joint American Study Company. In this agreement, Farben retained rights to its discoveries in Germany. Otherwise, each company would have a 5/8 interest in discoveries. I. G. Farben contributed all the initial patents to JASCO. By 1939, JASCO owned the rights to many technologies, including the Buna process for making synthetic rubber.

The advent of World War II created a problem. In an agreement at The Hague in 1939, I.G. Farben sold its interests in the joint company to Standard Oil, and put its JASCO stock in trust. Although nominally divorced from JASCO, Farben, through an agreement, retained a financial interest of sorts in JASCO. The Hague agreement covered about 2,000 patents.

There were many cartel agreements, resting primarily on patents, between German companies and companies within the United States prior to 1941. Neither the American companies themselves, nor the US government, forced an end to these agreements.

The New York Times would write of the patent agreements: "The government has a right to scrutinize these international patent licenses. They are in effect private treaties which have world-wide economic effects."

In Dec 1941, Standard Oil put the rights on buna rubber into a patent pool. In early 1942, the Justice Department announced plans to file suit against Standard Oil concerning the agreement with IG Farben. On March 25, 1942, Standard Oil signed a consent decree. The day after the consent decree was signed, Thurman Arnold appeared before a Senate committee chaired by Harry S. Truman and asserted that the shortage of synthetic rubber arose because of the agreement between Standard Oil and Farben. The JASCO agreement had given Farben the right to refuse to license the buna rubber patents in the United States, and they had refused. By 1939, they had allowed licensing (in principle) but only under onerous terms. The final report of the Truman committee did conclude that Standard Oil "did hamper the development of synthetic rubber in the United States."



Post 974.

UPDATE. 20 June 2009.

IPBiz ran across a post on labournet.de , which included the text:

1927, Standard Oil and IG Farben founded the company „Standard IG Farben“; president was the oil dealer William Farish from Texas . Standard passed to IG Farben the patents about the coal hydrogenation processes and the Germans gave them the patents how to manufacture synthetic rubber. This alliance wasn't well regarded by the US-government, above all after the entered into the war after Pearl Harbour , on December 7 th , 1941. Officials remembered an old law, "Trading with the Enemy“, and opened a formal investigation against Standard Oil. The accusation was that the company hid patents from the US -Navy and supplied fuel to German submarines. John D. Rockefeller said that he wasn't aware of that and Farish pled "no contest" to charges of criminal conspiracy with the Nazis. In March 1942, the Pentagon begged President Roosevelt to stop the investigation, to protect war production and oil supply. Roosevelt agreed. The Company paid a fine of 5000 dollars and promised to stop fuel supply for the enemies.

But Farish was forced to appear in front of a Special Committee of the US Senate investigating the National Defence Program, headed by Senator Harry Truman, who called behaviour of Standard Oil „treason“. Farish answered in the hearing: "Our contracts of 1929 (with IG Farben) were to run until 1947. As you gentlemen doubtless know, contracts such as these are not, in law, abrogated, but merely suspended when the party's nations are at war. The parties to such contracts must therefore find some way of getting along with their own business“.

The labournet post is INCORRECT in saying Standard passed to IG Farben the patents about the coal hydrogenation processes . The coal hydrogenation patents related to the work of Bergius and Pier went TO Standard Oil (now Exxon).

Thus, the text later in the article: The main problem for Germany 's attack on the Soviet Union was the need for fuel for tanks and airplanes. Thanks to the patents of Standard Oil, the Germans could produce fuel from their own coal, but this was not enough. is nonsense, [The text was related to the Oil of Baku.]

***Update on 9 August 2009, from marxists.org:

On October 12, 1939, the Standard official in charge of the negotiations with IG Farben wrote a letter stating:

“They [IG Farben] delivered to me assignments of some 2,000 foreign patents, and we did our best to work out complete plans for a modus vivendi arrangement for working together which would operate through the terms of the war, whether or not the US came in.” (Our emphasis.)

(...)
Four months after Pearl Harbor, and after Standard had already agreed, because of a government suit, to release its butyl patents, Parish and Howard, heads of Standard Oil of New Jersey, still sought to mislead the government as to the true value of butyl rubber. They argued that it was still in the “experimental” stage, even though the committee had before it Standard’s own documentary evidence to show that butyl is superior in many respects to natural rubber. The Standard officials also claimed that butyl was “too costly” to produce, although documents taken from Standard’s files showed that it cost only 6.6 cents a pound as compared to the 21 cents a pound being charged by the British and Dutch interests for crude rubber.

IPBiz notes that (synthetic) butyl rubber was technically inferior to natural rubber, at the time. Further, company engineers always project favorable cost figures, to justify their own existence. This thinking produced the waggish line:
Synfuels are the fuel of the future, and always will be.