Tuesday, March 31, 2009

TomTom turns tail?

One week after joining OIN, TomTom settled with Microsoft. Dana Blankenhorn at zdnet wrote:

So that’s it, then. TomTom folded like a house of cards.

See also



IPKat's Microsoft, TomTom and a dogfood post

Monday, March 30, 2009

IBM's published patent application 20090083107 on outsourcing

Much is made of IBM's being the top recipient of issued US patents. Not so much is made of what is in the patents. Published US application 20090083107, titled METHOD AND SYSTEM FOR STRATEGIC GLOBAL RESOURCE SOURCING , is worthy of note.

Paragraph 2 states:

An important challenge in shifting to globally integrated enterprises is planning the location and capacity of the global workforce. There is a need to provide a robust and reusable sourcing template to identify new/expand existing global resource pools, analyze trade-off between qualitative and quantitative aspects across multiple global locations and model the global nature of resource sourcing. While resource sourcing involves both qualitative and quantitative aspects, existing methods do not adequately consider both aspects in combination. For example, existing methods may consider both qualitative and quantitative aspects of sourcing, but they may be evaluated using two sets of metrics which are not readily comparable. In contrast, this invention allows decision makers to quantitatively explore trade-offs between one or more qualitative factors, or between qualitative and quantitative factors. Therefore, this invention provides a more effective method for making resource sourcing decisions.

IBM's patent application is about outsourcing.

Claim 1 states:

A computer implemented method for determining a global resource sourcing strategy for an organization over one or more time periods, comprising:
incorporating concurrently a plurality of qualitative and quantitative attributes that influence performance of sourcing strategy with respect to one or more quantitative measures;
quantifying an impact of said qualitative attributes using said one or more quantitative measures; and
optimizing the sourcing strategy with respect to said one or more quantitative measures subject to one or more constraints.

The first inventor is Ching-Hua Chen-Ritzo of Mahopac, NY, who also brought us 20080208658, METHOD AND SYSTEM FOR ESTIMATING SUPPLY IMPACT ON A FIRM UNDER A GLOBAL CRISIS, and 20080177606, METHOD AND SYSTEM FOR ALLOCATING CALLS TO CALL CENTER VENDORS (with Laura Wynter). Such patents fall generally in what is termed business method patents.

One recalls the absolute clumsiness manifested by Bank of America in a similar application, 20080103804 . See IPBiz post:

"Assessing a country as a relocation option"

And, less anyone forget, IBM had a previous bad experience with a US patent application on outsourcing, "Outsourcing of Services" [appl.11/324958; US2007/0162321]. See previous IPBiz post:
IBM withdraws business method patent on outsourcing of services

One can only ask: what was IBM thinking?

**Meanwhile SpicyIP writes:

Research and Markets, one of the world’s largest research resources, has recently released a guide to Offshoring Patent Services to India. The report gives an exhaustive account of the Indian patent services offshoring industry, and deals with topics ranging from the present market players and future growth figures.

The report, first of its kind on the Indian market, provides an in-depth analysis of the buyer market as well as the Indian vendor space along. Based on secondary data as well as extensive interviews with key people (buyers of patent services, patent attorneys and offshore patent service providers), it makes a must buy for those who are practicing or otherwise interested in the area. For more information on the report one can check out the table of contents available on Research and Market’s webpage and/or the following link:

Bad lawyering for ColoradoU in Churchill mess?

The Denver Post wrote of questioning of accused plagiarist Ward Churchill by a CU attorney:

Patrick O'Rourke, a CU attorney, saw his questioning backfire at one point when he asked Churchill if he was really arguing that he didn't recognize the Cohen essay when he had edited it once before, for another book, just months earlier.

O'Rourke had the title pages of both versions of the essay put up on a big screen in an attempt to show that they had the same title. But they did not.

One wonders if the two Cohen essays involved any self-plagiarism / multiple publication by Cohen or if O'Rourke made a self-evident mistake? If the former, using plagiarism to attack a plagiarist is sublimely ironic.

See also

Churchill plagiarism investigation the flip side of Poshard story?

***9News goes deeper into the issue -->

While on the stand, Churchill did concede that sections of an essay by Fay Cohen, a professor at Dalhousie University in Nova Scotia, was used without giving her credit in the book "State of Native America," but he said that someone else - he's not sure who - was responsible for the content of the writing.

"Plagiarism occurred," Churchill said as he faced cross-examination by CU attorney Patrick O'Rourke


At one point, O'Rourke asked Churchill whether he was telling the jury that when he edited the second book just months after the first he didn't recognize Cohen's prose.

"Yes, that's what I'm telling them," Churchill said.

But O'Rourke's questioning backfired when he asked Churchill a second time how he could not have known both essays were written by Cohen when they had the same name. After Churchill challenged that assertion, O'Rourke had the two essays put up on a big screen in the corner of the courtroom, and that showed the two articles were, indeed, titled differently.

"You know what professor, you are right, I am wrong," O'Rourke said.

Later, he questioned Churchill at length about ghost-writing, pointing out that Churchill contends he wrote the piece that was published under Robbins' name and then later cited it as a source in other writings of his.

Asked if he disagreed that that was deceptive, Churchill replied, "Yes, I disagree."

Churchill argued that ghost-writing is an entirely accepted practice in the academic world, and he said he could bring numerous witnesses to the courtroom who would testify that way.


During his cross examination O'Rourke asked Churchill why he said that he preferred to be called doctor at the start of his testimony on Monday when he has only earned a master's degree.

Churchill: "I have an honorary doctorate.

O'Rourke: "They gave you an honorary title?"

IPBiz notes the Laurence Tribe matter got into the area of ghost-writiing.

IPBiz notes that Ben Franklin's title of Dr. was an honorary degree.

LA Times column rips California's CIRM

In a column titled California stem cell program needs a new treatment, Michael Hiltzik of the Los Angeles Times takes a whack at California's CIRM, concluding

Proposition 71 endowed the program with what looked like an embarrassment of riches. The danger is that, without better oversight and broader debate about its policies and goals, it will become simply an embarrassment.

IPBiz notes to Mr. Hiltzik: CIRM already is an embarrassment. From the shoddy economic analysis of Stanford's Laurence Baker promising California taxpayers riches where there were no riches to the seamy conflicts of interests, CIRM has been a problem. In this economic climate, its time has passed. [Of Baker, see
Berkeley's Gilbert challenges Baker's forecast of large Proposition 71 patent royalties

Michael talks of Robert Klein: But he is ever optimistic: "The first major breakthrough will change the world," he told me.
Hmmm, what was that about the Seven Cities of Gold?

Proposition 71 was passed against a background that the human SCNT work of Hwang Woo Suk was valid science, and that the "key" breakthrough had already been made. There had been signals that Hwang's work was problematic, but no one listened.
[See LBE's article in 88 JPTOS 239 (2006)]. In the three plus years since Hwang's fraud was exposed, no one has come close to obtaining human SCNT. The CIRM timetable was flawed from the beginning. See
What is the timetable for cures through human embryonic stem cells?

The Los Angeles Times has previously executed many puff pieces on CIRM. See

Los Angeles Times Article Way Off Base on Stem Cell Issues

Separately: http://ipbiz.blogspot.com/2007/02/los-angeles-times-flames-patent-system.html


YouTube video:

Sunday, March 29, 2009

If we don't cite it, it doesn't exist?

Footnote 14 of Lemley and Sampat's Emory "Rubber Stamp" states:

For a nice analysis of the problem, see Bruce A. Kaser, Patent Application Recycling: How Continuations Impact Patent Quality & What the USPTO Is Doing About It, 88 J. Pat. & Trademark Off. Soc'y 426 (2006).

What Lemley and Sampat neglected to mention in the Emory Rubber Stamp was 88 J. Pat. & Trademark Off. Soc'y 726, which criticized Kaser's paper. Separately, as noted previously on IPBiz, the 2008 Emory "Rubber Stamp" didn't cite Quillen/Webster's THIRD paper (published in 2006) or commentary thereon, published in JPTOS in 2006.

Not exactly glowing scholarship by Lemley, Sampat, or the "reviewers" at the Emory Law Review.

See also



One wonders if the phrase "For a nice analysis of the problem " is law professor talk meaning "For an analysis of the problem agreeing with mine." If neither law professors nor law reviews are willing to present pre-existing information from all points of view on a problem, they really become nothing more than infomercials, shilling a product. Also, a patent applicant who did not present adverse information to his application would be found guilty of inequitable conduct. Why not apply the same standard to law professors, at least IP law professors?


PatentHawk posted the following:

"Innovation without protection is philanthropy." - Mark Blaxill and Ralph Eckardt in The Invisible Edge. What a great book. Calling it "well written" is an understatement. Story after story that make the point, as well as entertaining to boot. Anyone with an interest in the business of patents, or the importance of patents, must possess this book. Crucial reading.

and got a first comment to the post:

This book supports Hawks preconceived notions about patents therefor it is the best thang evar.

IPBiz asks what's the difference between this and Lemley's "for a nice analysis of the problem"? Actually, the difference is one expects some objective analysis in a law review article, and one expects individual viewpoints in a blog. One can be an advocate in a law review article, but one shouldn't be ignoring the published literature. As to discussing published literature in a blog, see Joff Wild and IAM.

Saturday, March 28, 2009

In an alternate universe, maybe ...

Law review article--> 58 Emory L.J. 181 (2008)

LENGTH: 8029 words

The Future of Law, Religion, and the Family A 25th Anniversary Symposium: sponsored by The Center for the Study of Law and Religion Emory University:

Article and Essay: Is the Patent Office a Rubber Stamp?

NAME: Mark A. Lemley* and Bhaven Sampat**

BIO: * William H. Neukom Professor, Stanford Law School; [formerly] of counsel, Keker & Van Nest LLP.

** Professor, Columbia School of Public Health.

We thank Patrick Crosby at xblabs.com for assistance in obtaining the data used in our analyses and John Allison, Ernie Beffel, Miriam Bitton, Colleen Chien, Chris Cotropia, Lawrence Ebert, Jeanne Fromer, Bill Gallagher, Rose Hagan, Joe Miller, Roberta Morris, David O'Brien, Michael Risch, Kathy Strandburg, two anonymous reviewers, and participants in workshops at Stanford Law School, UMKC Law School, the IP Scholars' Conference, the NYU Conference on Empirical Legal Studies, Microsoft Corporation, and the Advanced Patent Law Institutes in Austin, Texas, and San Jose, California, for comments on an earlier draft.

IPBiz: Is the Microsoft Corporation thanked for comments on an earlier draft?

LBE did not communicate to Lemley or Sampat about "Rubber Stamp."

An issue from the past was footnote 22 of an earlier law review titled ENDING ABUSE OF PATENT CONTINUATIONS which appeared in the Boston University Law Review [84 B.U.L. Rev. 63 (2004) ] and which said:

Cecil D. Quillen, Jr. et al., Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office - Extended, 12 Fed. Cir. B.J. 35, 38 (2002). Quillen and Webster had originally estimated in earlier work that the grant rate was 95%. 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 (2001). This earlier work was properly criticized for failing to take account of cases in which multiple patents issue from a family of continuation applications. On the other hand, some of the critics made equally unrealistic assumptions - for example, that every continuation filed results in a separate patent. See Robert A. Clarke, U.S. Continuity Law and Its Impact on the Comparative Patenting Rates of the U.S., Japan and the European Patent Office, 85 J. Pat. & Trademark Off. Soc'y 335, 338 (2003) (erroneously assuming that every continuation resulted in a patent and concluding that the grant rate was 75%). The 85% number provided in the revised Quillen et al. study is based on actual data about the applications that issue based on continuations, and reflects the best estimate we have of how often applications mature into patents.

Of course, Robert Clarke never said or wrote that that every continuation filed results in a separate patent.

In the Emory "Rubber Stamp", Clarke appears in footnote 16, which relates to the following text:

Counting these multiple patents in the numerator overstates the grant rate. n14 Quillen and Webster, in their revised article, sought to correct for these biases, n15 but others have made the same effort and come out with very different numbers. n16

Because of these complications, no one can agree on how likely it is that an applicant can get a patent. The PTO reports that the rate historically has been about 66%, n17 and that the rate now is only 54%, n18 but their estimate doesn't account for continuations. Considering continuations, Quillen and Webster estimated the rate to be as high as 97% in their original article, n19 but after revising their calculations, dropped that number to 85%. n20 Others, taking account of continuations with different assumptions, find the number to be [p. 185] lower, around 75%. n21 The uncertainty and variation in numbers has led others to make wilder claims, such as that the grant rate is less than 50%. n22

The following footnotes in the Emory "Rubber Stamp" are relevant:

n14. For a nice analysis of the problem, see Bruce A. Kaser, Patent Application Recycling: How Continuations Impact Patent Quality & What the USPTO Is Doing About It, 88 J. Pat. & Trademark Off. Soc'y 426 (2006).

n15. See Quillen et al., Extended, supra note 4, at 38 (adjusting calculations resulted in a revised estimated grant rate of 85%).

n16. See Robert A. Clarke, U.S. Continuity Law and Its Impact on the Comparative Patenting Rates of the US, Japan and the European Patent Office, 85 J. Pat. & Trademark Off. Soc'y 335, 335 (2003) (finding a grant rate of 75%); see also Lawrence B. Ebert, How High Are the Grant Rates at the USPTO?, 86 J. Pat. & Trademark Off. Soc'y 568, 568-69 (2004) (arguing that Clarke's result of a 75% grant rate is more reasonable than Quillen and Webster's revised numbers).

n17. See E-mail to Cecil D. Quillen, Jr., Senior Advisor, Cornerstone Research, from Robert W. Bahr, Senior Patent Attorney, Office of the Deputy Comm'r for Patent Examination Policy (Apr. 22, 2006, 3:31 PM), available at http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp continuation/quillen.pdf (stating that the uncorrected grant rate for the PTO for its fiscal years 1993-1998 is 66%).

n18. See Harold Wegner, The USPTO's 54% Allowance Rate, ipFrontline, Dec. 30, 2006, http://www.ipfrontline.com/depts/article.asp?id=13796&deptid=5 (stating that the PTO announced a 54% allowance rate).

n19. See Quillen & Webster, supra note 4, at 3.

n20. See Quillen et al., Extended, supra note 4, at 38.

n21. See Clarke, supra note 16, at 335; Ebert, supra note 16, at 569; Ron D. Katznelson, Bad Science in Search of "Bad" Patents, 17 Fed. Cir. B.J. 1, 23 fig.2 (2007) (offering a running estimated grant rate of 59%-71% from 2000 through 2005).

n22. See, e.g., Craig Allen Nard, The Law of Patents 34 (2008) (asserting PTO grants patents on 39% of applications); Brief of the Boston Patent Law Ass'n as Amicus Curiae in Support of Genentech, Inc., on the Merits at 5, Medimmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (No. 05-608) (stating that only about 50% of applications become patents); Erik Belt, Medimmune Licensing Wars, Dispatch (Bromberg & Sunstein LLP, Boston, Mass.), Winter 2007, at 1, available at http://www.bromsun.com/media/Medimmune EB.pdf (same).

One notes that footnote 4 refers to the first two Quillen/Webster papers, but not to the third, which, although published in 2006, is no where to be found in the 2008 Emory paper. Footnote 4-->

See 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, 13 (2001). Quillen and Webster did subsequent work that caused them to revise that number downward, however. See Cecil D. Quillen, Jr., Ogden H. Webster & Richard Eichmann, Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office - Extended, 12 Fed. Cir. B.J. 35, 38 (2002) (lowering figures by 12% from earlier calculations) [hereinafter Quillen et al., Extended].

While Lemley and Sampat write --Even after accounting for continuations, the odds of an applicant getting a patent are pretty good, but it is an exaggeration to say that the PTO is a rubber stamp. --, it would have been helpful if they had managed

** to work through the timeline of the "patent grant rate debate", including Professor Lemley's incorrect assertions in 2004 in footnote 22 of "Ending Abuse..."

** to include the most up-to-date work on the topic. Is it too much to ask Lemley and Sampat, and the assembled commenters (including Microsoft Corp.) to include the 2006 paper of Quillen/Webster and the 2006 JPTOS by Ebert commenting thereon in a 2008 article? Any thoughts that law professors "shepardize" their sources in writing law reviews are clearly fanciful. Perhaps in an alternate universe...

DOE head Chu proposes sharing of IP protection in some energy areas

ANDREW C. REVKIN AND KATE GALBRAITH in dot earth ran a piece titled Energy Chief Seeks Global Flow of Ideas which included recent statements relating to DOE head Steven Chu:

Some energy experts say that a lack of intellectual-property protection in China is a big impediment to advancing and disseminating designs for less-polluting power plants and the like. But Dr. Chu proposed that dropping intellectual property protection might actually be the way to go on some technologies.

The linked video shows that Dr. Chu was including capturing/storing CO2 in the scope of his proposal to share intellectual property:

So any area like that I think is where we should work very hard in a very collaborative way — by very collaborative I mean share all intellectual property as much as possible.

IPBiz asks does "sharing IP" mean "dropping IP protection"?

Dot earth also included:

Asked about the idea of sharing clean technologies openly with other countries in a Green Inc. interview this week, Steve Fludder, the head of the green “Ecomagination” division of General Electric, aggressively refuted the idea.

Ecomagination plas to invest $1.5 billion next year in research and development, and Mr. Fludder is not about to give away any secrets. “Why would we invest $1.5 billion a year in innovation that just slips through your fingers?” he said. “I mean, why would anybody invest in anything that they would have to just give away?”

Mr. Fludder said that he and others at G.E. “totally support the notion that the technology needs to get to where it should get to” — for example, making sure solar panels are installed in sunny parts of the world — but that there is a different way to accomplish that. He noted, for example, that G.E. already has a wind-turbine manufacturing plant in China that is employing locals and competing directly with other Chinese manufacturers.

He said the focus should be more on “what are we trying to accomplish, as opposed to jumping to let’s make I.P. open as the answer. To me, that’s the potential means to what end?”

See also IAM blog post

US Energy Secretary drops an IP bombshell which includes:

If that is the case, it is an extraordinary thing for such a senior member of the Obama government to have said. If it in any way reflects what the President himself thinks, then it could signal a very worrying period ahead for IP owners in the US and elsewhere. Such a basic lack of understanding about how IP works is, quite frankly, terrifying.

Krivit on Park on "cold fusion"

New Energy Times ran a piece on Bob Park titled: Bob Park Concedes: LENR is Real Science which included text in Park's WN:

Incredibly, the American chemical Society was meeting in Salt Lake City this week and there were many papers on cold fusion, or as their authors prefer LENR (low-energy nuclear reactions). These people, at least some of them, look in ever greater detail where others have not bothered to look. They say they find great mysteries, and perhaps they do. Is it important? I doubt it. But I think it’s science.

See also


[As a footnote to this post, Park's 27 March WN entry is currently available using
IE7 but it is NOT available using Safari. [March 28 at 10:55am (eastern)] Similar lags have been observed for postings at the Federal Circuit.]

Friday, March 27, 2009

Do grade schoolers know that plagiarism is wrong?

A column by Dave Schlencker on 27 March 09 observed:

Condemning plagiarism is an easy saber to rattle. It's not a journalism thing; it's a common-sense thing. Grade-schoolers know better. And with the Internet, plagiarism is not only easy to do, it is easy to expose.

Less than ONE WEEK earlier, on 22 March 09, at a national meeting of the American Chemical Society in Salt Lake City, Professor George M. Bodner observed: Confusion about what constitutes plagiarism — not malicious intent — is the leading cause of plagiarism at the graduate school level.

IPBiz notes that, unless grade-schoolers lose their ethical compass on the way to grad school, Schlencker and Bodner both can't be right.

Schlenker also mentioned "unintentional" plagiarism, a theme well-discussed during the Poshard affair at SIU:

When I read Lee casually dismiss her alleged plagiarism as unintentional, I thought of the many real journalists who have lost their jobs through no fault of their own. This is a brutal time for the fourth estate, and it's a real bad time to defend fundamental sins.

**See also



Churchill plagiarism investigation the flip side of Poshard story?

Remember when defenders of SIU's Glenn Poshard complained about the manner in which Poshard's plagiarism came to light?
Fast forward to March 2009 and see how Ward Churchill, a politically problematic plagiarist, is treated:

And just because the misconduct investigation [of Churchill] grew out of the firestorm over the essay — which CU later determined to be protected free speech — didn’t mean the university could disregard the information it was getting about Churchill’s scholarship, [Michael] Carrigan testified.

As IPBiz noted in the Poshard matter, plagiarism is plagiarism, and can be evaluated independently of the motives of the exposer of the plagiarism.

Another issue with the Poshard investigation [that the committee investigating his plagiarism may have been biased] also shows up in the Churchill matter:

In a further sign the jury is giving serious consideration to Churchill’s claims, one juror asked Rosse if he ever considered assigning someone other than CU law professor Marianne Wesson — who Churchill accused of bias — to chair the investigative committee. Questions from jurors are reviewed by lawyers in the case and then posed to the witness by the judge.

Rosse said he couldn’t remember.

[Italicized text is from an article by John Aguilar titled Regent: Free speech doesn’t negate Churchill's misconduct.]

Thursday, March 26, 2009

"Cold fusion" hits ACS national meeting in Salt Lake City in March 2009

There is a link to a press conference about a symposium at the American Chemical Society on LENR ("cold fusion"), which took place in Salt Lake City in March 2009.

One talk was about the measurement of neutrons. This work arose from the Space Warfare Systems Center, San Diego (SWSCSD), and previous work had been presented at the APS in 2007. An IPBiz reader sent in the following text (source unknown):

The 'cold fusion' device produced this pattern of 'triple tracks' that may be caused by high-energy neutrons resulting from a nuclear reaction.
Twenty years ago this week, a pair of previously unknown scientists stunned the world by announcing they'd done the impossible by achieving nuclear fusion in a lab flask at room temperature.

Martin Fleischmann and Stanley Pons quickly became celebrities as the news media hailed them for discovering a cheap source of nearly limitless power. But it all fell apart as other scientists couldn't duplicate their results, and the pair later admitted they'd made mistakes in the experiments.

Now a U.S. Navy researcher, speaking on the anniversary of their announcement and in the same city where they made it, thinks Fleischmann and Pons may have been right.

In a paper presented on Monday (23 March 09), chemist Pamela Mosier-Boss told the annual convention of the American Chemical Society in Salt Lake City that her team had gotten "very significant" evidence of some sort of nuclear reaction.

"To our knowledge, this is the first scientific report of the production of highly energetic neutrons from an LENR device," said Mosier-Boss, a researcher at the Navy's Space and Naval Warfare Systems Center in San Diego, in a press release.

Highly energetic neutrons, which Mosier-Boss' team detected using special neutron-trapping plastic, are emitted from atoms splitting apart — or fusing together — and indicate that a serious nuclear reaction is going on.

"LENR" stands for "low energy nuclear reaction," which in this case happens in a lab flask containing palladium chloride mixed with deuterium, or "heavy water" made with a special form of hydrogen — the same setup Fleischmann and Pons used.

When an electrode was dipped into the flask and the power switched on, Mosier-Boss said, odd patterns of triple neutron strikes would appear on the adjacent plastic receptor.
Fleischmann and Pons' results centered on unexplainable excess heat resulting from the reaction. Mosier-Boss didn't get that, but the neutrons are even more significant.

"People have always asked 'Where's the neutrons?'" Mosier-Boss said in the press release. "If you have fusion going on, then you have to have neutrons. We now have evidence that there are neutrons present in these LENR reactions."

Time to end patent examinations?

The IAM blog had a post: Is it time to end patent examinations? which included text from Bowman Heiden:

In the knowledge economy patents need to take on the role of building rather than blocking. To create such a world firms will need to focus more on developing their patents focused on business goals not bonus schemes, as well as spending a great deal of time understanding the patents of others. In this world patent examination (note: examination not patents as such) becomes less important, as patents become more of a means to objectify knowledge for transfer as opposed to a means of blocking one another. Since only high quality patents are commercialised - studies suggest only 10% - and these 10% are scrutinised in depth, why is there a need to examine patents at all? Most examinations are irrelevant (the 90%) and the others are redundant. Just stamp all patents as valid and fine the hell out of those actors that later try to use those that were obviously not valid when submitted. Let the firms do more of the work as they need to do this anyway in the knowledge economy.

Later comments to the post included one from Bowman Heiden:

I don't really believe that patents will ever be automatically issued, nor do I really care, but issuing patents automatically is not any more ludicrous than filing patents without any thought of their business use or launching R&D and product development without a thorough understanding of the patent landscape. It was just a thought experiment to get people to focus on the responsibility of business and the significant effect that can have on the patent system outside of examing the patent system as a closed administrative system.

As a side note I'm not claiming that automatic issuance is a new idea and I am familiar with Lemley, who is a highly cited scholar. My argument is about business practice and the growing irrelevance or redundance of the patent institution if it is not better plugged into the strategic technology and business development of firms in the 21st century. This is the real challenge for us IP professionals - to be relevant to business not the PTO.

IPBiz notes that in the business world, there are "our patents" and "their patents." Of "their patents," an article in Harvard Business Review summed up the situation: "plagiarize with pride." Previously, one had the strategy, take it and make it your own. That's assuming the patents are read at all. The IT folks tell their engineers not to read the patents of others. Of "our patents," there will be expansion of claim scope and blocking patents. These uses by the business world of the patent system do not make the patent system either irrelevant or redundant, but they do create controversy.

None of this business use is directed to what the patent system is supposed to be about. The patent system is to foster disclosure of information, into the public domain for all to know, by giving protection to the inventor (information disclosure) against theft. Whether or not innovation arises is up to the free market system.


Of the remarks by Vic Kley, the PURPOSE of the US patent system is to foster public disclosure of useful information (inventions) by offering protection to the discloser from theft for a limited period of time. With the discloser-inventor protected, the free market system determines what inventions will lead to innovations, which actually change (and advance) the way we live. The patent system is directed to inventions, not to innovations.

Of Heiden, the issues with the patent system are NOT ones of irrelevance or redundance. Patent reform is not being sought because the system is irrelevant, but because some people think it is causing problems, largely in disputes over "how much" money should change hands.

What one learns at a conference can be held against one as to inequitable conduct

The 271blog discusses Golden Hour Data Systems, Inc. v. emsCharts, E.D. Tex and writes:

Shortly after the application was filed, the inventors and prosecution counsel received a brochure on the AeroMed system at a conference. The brochure indicated that the AeroMed system did indeed provide the features discussed in the application.

Awards to Ocala Magazine rescinded after plagiarism revealed

AFTER an anonymous source revealed plagiarism in articles written by Heather Lee of Ocala Magazine, THEN the North Central Florida Society of Professional Journalists Professional Chapter rescinded awards given for her work. The REAL STORY is why the North Central Florida Society of Professional Journalists Professional Chapter gave the awards in the first place.

[Ditto as to Florida Magazine Association: Association President Liesl O'Dell said Wednesday that other staff at Ocala Magazine "had no idea" that Heather Lee was plagiarizing during her five years on staff.]

An article by JACQUELYN WEINER noted:

In some cases, articles contained four cases of plagiarism, said Norman P. Lewis, an assistant professor of journalism at UF.

“It’s pretty unusual to have multiple sources for a plagiarism piece,” said Lewis, whose research specialty is plagiarism.

Of the 85 to 100 examples of plagiarism he has studied closely, Lee’s are some of the worst, Lewis said.

“It’s certainly one of the more serious cases I’ve ever encountered,” Lewis said.

IPBiz wonders if Lewis studied the Poshard matter at SIU or the plagiarizing English prof at the University of Florida.

In the Weiner story, there is no suggestion of "inadvertent" plagiarism. Quite the opposite. There is a quote by Ana–Klara Anderson, president of the North Central Florida Society of Professional Journalists:

“We really, as a chapter, had no other option than to rescind these awards because we found consistent and extensive use of plagiarism over the course of several years.”

Thus, one remains puzzled by recent commentary at a meeting of the American Chemical Society:

Confusion on the origin of most plagiarism?

What was George M. Bodner thinking?

Wednesday, March 25, 2009

SIU plagiarism policy to be unveiled

SIUDE noted: The committee charged with revising the university’s plagiarism policy is expected to release a final draft this week, administrators said Monday.
If all goes to plan, the draft would be given to constituency groups this week and a final report be presented to the SIU Board of Trustees during its May 7 meeting.
Paul Sarvela, vice president of academic affairs, said the committee met with the university’s four constituency heads Thursday to go over a few final revisions before the policy is made public this week.


"Law & Order" plotline follows Larry Mendte story and Madoff scam

The episode of "Law and Order" of 25 March 09 combined elements of Bernie Madoff with the Larry Mendte Philly KYW Channel 3 email snooping.

As an odd coincidence in timing, the Law & Order episode immediately preceded a Channel 10 story on Larry Mendte's house arrest. In the channel 10 report, a picture of the Law & Order cast flashed across the screen during the Mendte news story, which related to the end of his house arrest and future problems defending a civil suit by former KYW co-anchor Alycia Lane.

Law & Order was without mercy in portraying the jungle-like atmosphere of local tv news rooms. The "Mendte" character intercepted and deleted an email from the account of the "Lane" character, which action placed another person in a life-threatening situation (and then death). Relying on the ruthlessness of tv news people, the prosecutors "leaked" their intent to charge the "Mendte" character with "depraved indifference" to the "Lane" character, who responded predictably. There were two murders in the episode, one by the "Madoff wife" character and one really done by the Cartagena drug cartel, who were bilked by the "Madoff" character, who was about to swindle Arab oil people to pay off the drug lords, who had learned of the Madoff scam BEFORE the scam went public. The SEC did not fare well in the episode, either, having repeatedly cleared the Madoff character prior to the meltdown.

**As a footnote, Law & Order plotlines are "ripped from the headlines" and do parallel events that really happened. In 1995, there was an episode based on the deep-sixing of a grant proposal by a reviewer and subsequent theft of the idea by the reviewer. In 2009, LBE is told by certain academics that such things don't happen. When television is more authentic than "academic reality," we are in big trouble...

**Of details on the characters in the "Mendte/Madoff" episode, from pawatercooler:

“While investigating the murder of television reporter Dawn Prescott (guest star Audra Blaser), detectives Lupo (Jeremy Sisto) and Bernard (Anthony Anderson) discover that she was involved in a love triangle involving another reporter at the station. This leads them to another suspect, veteran anchor Joe Delaney (guest star David Rasche), who was threatened by the success of his younger co-workers and may have hacked into their email to gain an advantage. As they search for the killer, the detectives uncover that Dawn was working on a major story surrounding a huge hedge fund fraud and there may be a connection with the recent murder of Fred Decker, a whistle-blower who filed an SEC suit against hedge fund owner, Fredric Matson (guest star Edward Hermann) and his wife Irene (guest star Jill Eikenberry).

Tuesday, March 24, 2009

Negligence case filed against law firms in E-Pass/Palm matter

Law.com noted:

"In advising E-Pass to file and maintain their patent infringement claim, they spent $10 million in legal fees and costs without a sound basis to make the elemental case of patent infringement," said James Rosen of Rosen Saba, which filed the suit for E-Pass against its former lawyers at Moses & Singer and Squire Sanders.

900 year old book as prior art?

Buried as a comment on a just-n-examiner post on books as prior art is the text:

I use Google books search along with EAST/WEST, Google Scholar, and PubMed searches. Of course my art makes these databases readily useable. In fact just a couple of weeks ago I found some great prior art in a book that I would not have ever come across in any of my other searches. The book summarized information from a book in a foreign language originally written some 900 years ago. I would not have had access to this information if not for Google books.

IPBiz recalls a cite to Cleopatra as art against the use of some alpha-hydroxy acids in the skin care/nutraceutical area.

Monday, March 23, 2009

TomTom joins OIN on March 23, 2009

ComputerWorld noted:

TomTom joined OIN on March 23. The OIN is an intellectual property company that was formed to promote Linux by using patents to create a collaborative ecosystem. Its members include IBM, Novell, Sony, and Red Hat.

See also:


Sunday, March 22, 2009

Confusion on the origin of most plagiarism?

Taking a leaf out of the Glenn Poshard / SIU notebook, Purdue chemistry professor George M. Bodner gives us:

Confusion about what constitutes plagiarism — not malicious intent — is the leading cause of plagiarism at the graduate school level, according to an expert presenting here today [22 March 09] on the increasingly worrisome problem at the 237th National Meeting of the American Chemical Society (ACS). George M. Bodner, Ph.D., who serves on the Ethics Committee of the ACS, which is the world’s largest scientific society, was among a panel of scientists who discussed plagiarism.


Confusion about what constitutes plagiarism may be rooted in undergraduate education, Bodner said. “There is something happening at the undergraduate level. We don’t require enough writing and we do not do careful editing of what students write and, therefore, within the context of their own education, students are not properly educated and are more likely to fall into traps.”

At least the SIU folks asserted standards were different now than in Poshard's time. Bodner makes "confusion" a forever excuse.

Bodner's background: B.S., 1969, State University of New York at Buffalo; Ph.D., 1972, Indiana University.

[LBE served on the ACS Task Force on Ethics, which recommended the formation of the Ethics Committee of the ACS.]

On predicting outcomes of CAFC decisions

In December 2008, IPWatchDog wrote:

It is hard to imagine that GlaxoSmithKline and Dr. Tafas could have drawn a better three judge panel then they did for this appeal of Judge Cacheris’ ruling. The judges assigned to the panel hearing the case were Judges Rader, Bryson and Prost, who took turns laying it on the government attorney, USPTO General Counsel Toupin. It is hard to imagine based on the barrage of questions thrown at Toupin that this panel is going to do anything other than affirm Judge Cacheris’ decision and rule that the claims and continuations rules were beyond the authority of the Patent Office and cannot be implemented.

Hmmm, the 20 March 09 decision stated: we find that Final Rule 78 conflicts with 35 U.S.C. § 120 and is thus invalid.
Accordingly, we affirm the district court’s grant of summary judgment that Final Rule 78 is invalid, vacate its grant of summary judgment with respect to Final Rules 75, 114, and 265, and remand for further proceedings consistent with this opinion.

The IAM blog is currently making a big deal about future appointments to the CAFC. Of the Tafas panel:

Judge Prost was appointed by President George W. Bush in 2001. Prior to her appointment, Judge Prost served as Minority Chief Counsel, Deputy Chief Counsel, and Chief Counsel of the Committee on the Judiciary, United States Senate from 1993 to 2001.

Judge Bryson was appointed by President William J. Clinton in 1994. Prior to his appointment, Judge Bryson was with the United States Department of Justice from 1978 to 1994.

Judge Rader was appointed to the United States Claims Court by President George H. W. Bush in 1989 and served on that court until his appointment to the Federal Circuit in 1990. Prior to his appointment, Judge Rader served as Minority Chief Counsel, Staff Director, Senate Committee on the Judiciary, Subcommittee on Patents, Trademarks, and Copyrights from 1987 to 1988.

The 2 votes of the 2-1 decision were from a Republican appointee and a Democrat appointee. None of the judges has previous experience as a registered patent attorney.

Likely the most "reform-minded" judge of the CAFC is Judge Moore who was appointed by President George W. Bush in 2006, and who was editor of The Federal Circuit Bar Journal from 1998 to 2006, which journal published three articles by Quillen et al. on very questionable assertions of high patent grant rate. Judge Moore was co-author of "Ending Abuse..."

See also



While at Harvard, Obama said of the HLR: "Just remember, folks: Nobody reads it."

Extending Holmes: --Law reviews and blogs, the work of boys and always will be....---

**Separately, a blog on copyright issues is exclusiverights

Survey on top law reviews

Brian Leiter of the University of Chicago did a survey:

So I've closed the survey, and, with 265 votes, the results for "the top 20" are below. I think it tells us not a lot about "quality," though a fair bit about "perceptions," which certainly isn't irrelevant for younger scholars. But based just on the first issue, Journal of Legal Analysis is better than just about every journal in the top ten, though they failed to make the top 20 here. Of course, JLA may not sustain its quality or, more likely I think, perceptions will adjust with time.

The top six:

1. Harvard Law Review (Condorcet winner: wins contests with all other choices)
2. Yale Law Journal loses to Harvard Law Review by 112–66
3. Columbia Law Review loses to Harvard Law Review by 155–43, loses to Yale Law Journal by 153–45
4. Journal of Legal Studies loses to Harvard Law Review by 135–66, loses to Columbia Law Review by 109–92
5. Stanford Law Review loses to Harvard Law Review by 167–27, loses to Journal of Legal Studies by 100–99
6. University of Chicago Law Review loses to Harvard Law Review by 166–31, loses to Stanford Law Review by 106–79

Of Leiter:

Brian Leiter was a Visiting Professor at the Law School in the fall of 2006 and joined the faculty July 1, 2008, simultaneously founding the Law School’s Center for Law, Philosophy, and Human Values. Prior to that, he taught for more than a dozen years at the University of Texas at Austin, where he was the youngest chairholder in the history of the law school, and also served as professor of philosophy and founder and director of the University of Texas Law and Philosophy Program. He has also been a visiting professor of law at Yale University, of law and philosophy at University College London, and of philosophy at the University of California, San Diego.

Of Obama on law reviews:

Law reviews: nobody reads them

Perception, not reality.

Friday, March 20, 2009

Tafas decided. Rule 78 is out, but ...

The CAFC determined that the USPTO does get Chevron deference on procedural rules. Of course, what is a procedural rule?

With the analytical framework established, we turn to whether the Final Rules are
substantive or procedural. The parties agree that the USPTO has authority under
§ 2(b)(2) to promulgate procedural rules. They vigorously disagree, however, as to how
the boundary between “substantive” and “procedural” rules should be defined.

The CAFC looked to the JEM case (JEM Broad. Co. v. FCC, 22 F.3d 320,
326 (D.C. Cir. 1994)):

In doing so, the court noted that a “critical
feature of the procedural exception [in section 553 of the APA] is that it covers agency
actions that do not themselves alter the rights or interests of parties, although [they]
may alter the manner in which the parties present themselves or their viewpoints to the
agency.” Id. at 326 (emphasis added) (quotation marks omitted). The “critical fact” that
was “fatal to JEM’s claim,” the court held, was that the “hard look” rules “did not change
the substantive standards by which the FCC evaluates license applications.” Id. at 327.
The court recognized that the rules could result in the loss of substantive rights, but
found that they were nonetheless procedural because they did not “foreclose effective
opportunity to make one’s case on the merits.” Id. at 327-28 (quoting Lamoille Valley
R.R. Co. v. Interstate Commerce Comm’n, 711 F.2d 295, 328 (D.C. Cir. 1983)).
While we do not purport to set forth a definitive rule for distinguishing between
substance and procedure in this case, we conclude that the Final Rules challenged in
this case are procedural. In essence, they govern the timing of and materials that must
be submitted with patent applications. The Final Rules may “alter the manner in which
the parties present . . . their viewpoints” to the USPTO, but they do not, on their face,
“foreclose effective opportunity” to present patent applications for examination. JEM, 22
F.3d at 326, 328.

The PTO's rules were found by the CAFC procedural, and therefore entitled to Chevron deference.
The Chevron "two step" began.

Step 1: For such provisions, we must first determine “whether Congress has directly spoken to
the precise question at issue. If the intent of Congress is clear, that is the end of the

Step 2: “[I]f the statute is silent or
ambiguous with respect to the specific issue, the question for the court is whether the
agency’s answer is based on a permissible construction of the statute.”

Henriksen was mentioned: Additionally, the district court cited
this court’s predecessor for the propositions that “there is no statutory basis for fixing an
arbitrary limit to the number of [continuing] applications,” id. (quoting In re Henriksen,
399 F.2d 253, 254 (CCPA 1968)) (alteration provided by the district court), and that “a
limit upon continuing applications is a matter of policy for the Congress,” id. (quoting In
re Hogan, 559 F.2d 595, 604 n.13 (CCPA 1977)). In light of the USPTO’s presumed
“inten[t] to deny additional applications in almost all circumstances,” the district court
found that Final Rule 78 set forth a “mechanical rule” that “changes existing law and
deprives applicants of their valuable rights under 35 U.S.C. § 120 to an unlimited
number of continuation and continuation-in-part applications as a matter of right.” Id. at

The limitation on the number of continuations did not get past step 1 of the Chevron two-step:

We agree with the district court that Final Rule 78 is inconsistent with § 120,
although we rely on narrower grounds.
The narrower ground: Thus, Rule 78 is invalid because it attempts to add an additional requirement—that the application not contain amendments, arguments, or evidence that
could have been submitted earlier—that is foreclosed by the statute.

The bottom line:

However, we find that Final Rule 78 conflicts with 35 U.S.C. § 120 and is thus invalid.
Accordingly, we affirm the district court’s grant of summary judgment that Final Rule 78
is invalid, vacate its grant of summary judgment with respect to Final Rules 75, 114, and
265, and remand for further proceedings consistent with this opinion.

The opinion is fragmented into a majority, a concurrence, and a dissent (by Judge Rader, dissenting
on everything except the decision on Rule 78). Overall, it was a good day for the USPTO, in that
they got a remand on 3 rules, and a narrow ruling on Rule 78.

**UPDATE. To IAM blog:

Of --All I would add is that it is decisions such as this which show why there is such behind-the-scenes manouvering currently being conducted with regard to the next wave of judges --, see

The statute section in question is 120, not 121 [decision:"Because we conclude that the four rules are procedural, but that Rule 78 is inconsistent with 35 U.S.C. § 120, we affirm-in-part,
vacate-in-part, and remand." vs. IAM: "The Federal Circuit invalidated the “continuation” limitation as being inconsistent with the plain language of 35 USC § 121"]

**Update. Note the discussion by Professor Field on IPFrontline, titled 35 U.S.C. § 2(b)(2)(B) after Tafas v. Doll , which includes

Judge Rader dissents with regard to the classification of the rules in question. He begins by saying, “in my view, the Final Rules are substantive, not procedural.” Id. at *19. Yet he writes: “In the unique context of this case, it makes no sense to classify a rule as ‘procedural’ or ‘interpretative.’ Either of those labels leads to the same conclusion — that the rule is non-substantive.” Id. at 20. His later observations seem not only to dismiss the idea that a non-substantive rule can be both procedural and interpretive, but also cast doubt on the commitment to his initial point.

Beyond finding the PTO’s contested rules to be procedural and thus not facially invalid, Tafas II leaves many questions open: “This opinion does not decide any of the following issues: whether any of the Final Rules, either on their face or as applied in any specific circumstances, are arbitrary and capricious; whether any of the Final Rules conflict with the Patent Act in ways not specifically addressed in this opinion; whether all USPTO rulemaking is subject to notice and comment rulemaking under 5 U.S.C. § 553; whether any of the Final Rules are impermissibly vague; and whether the Final Rules are impermissibly retroactive.” Id.

Among those, the question concerning applicability of APA § 553 is most bothersome. It seems to reopen a central question about the meaning of § 2(b)(2)(B), something that, as noted above, was convincingly answered, if in dicta, in Cooper Technologies. That is particularly unsettling when, as seems true, all contested rules, regardless of obligation, were promulgated by notice and comment rulemaking.

Larson v. Aluminart on inequitable conduct; has the time come for en banc review?

This is a detailed case. Of some interest is the issue of failing to disclose to the USPTO Office Actions of the USPTO:

We now come to Larson’s failure to disclose to the Reexamination Panel the
Third and Fourth Office Actions from the ’039 Continuation. As noted above, both the
Third and Fourth Office Actions contained PTO examiner rejections and analysis
concerning claims similar to those in the ’998 patent’s reexamination. In addition, the
Fourth Office Action cited the DE ’478 patent.

Within this was an issue of inconsistent positions:

Relying on Dayco Products, Aluminart responds that Larson fails to recognize
that it is not only the references cited in the office actions that are important, but also the
substance of the examiner’s comments. According to Aluminart, the Third and Fourth
Office Actions contained remarks that are inconsistent with Larson’s arguments to the
Reexamination Panel. Specifically, in the Third Office Action, the examiner rejected the
claims at issue because the Johnson patent allegedly discloses a screen that extends
into tracks. Subsequently, Larson argued the exact opposite position to the
Reexamination Panel—that the Johnson patent does not show this feature. In addition,
Aluminart argues that the examiner in the Fourth Office Action, despite conceding that
the Johnson patent does not disclose a screen that extends into tracks, articulated a
new rejection based on the Johnson and Kemp patents, stating for the first time that the
Kemp patent discloses this feature.

The practice of mindless repetition of previous rejections arises:

Rather, Larson posits that it disclosed each material
reference disclosed in the office actions and that the examiner’s rejections were only
boilerplate reiterations of previous rejections.

The CAFC factually disagreed: This was the first time that the examiner of the ’039
Continuation conveyed such specific explanation about the Johnson patent in connection
with the “extending into screen tracks” limitation.

In the "why wasn't this done earlier" category:

The Fourth Office Action articulated a new rejection of the “extending into screen
tracks” limitation in view of the Johnson and Kemp patents. Specifically, in the Fourth
Office Action, the examiner found for the first time that the Kemp patent shows a
“screen end member actually being located in a screen track.”

Footnote 4 should be studied by patent prosecutors:

We do not find the Third Office Action material because of Larson’s
attorney arguments to the Reexamination Panel, which were contrary to the ’039
Continuation examiner’s interpretations in the Third Office Action. Cf. Line Rothman &
Glamourmom LLC v. Target Corp., No. 2008-1375, 2009 WL 349474, at *15 (Fed. Cir.
Feb. 13, 2009) (“While the law prohibits genuine misrepresentations of material fact, a
prosecuting attorney is free to present argument in favor of patentability without fear of
committing inequitable conduct.”); Young v. Lumenis, Inc., 492 F.3d 1336, 1349 (Fed.
Cir. 2007) (arguing contrary to an examiner’s rejection and attempting to distinguish the
claims from the prior art were not affirmative misrepresentations of material fact).
Rather, as explained, the Third Office Action was material because it contained an
interpretation and adverse decision by another examiner that refuted the patentability of
the claim limitations of the ’998 patent.

We agree with Aluminart on this point.

Of cumulative references: See, e.g., Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d
1559, 1575 (Fed. Cir. 1997) (“What is relevant is whether [the withheld material]
discloses subject matter relevant to the examination of the . . . patent application that is
not taught by the [material already before the PTO].”); Micro Chem., Inc. v. Great Plains
Chem. Co., 103 F.3d 1538, 1550 (Fed. Cir. 1997) (finding withheld reference merely
cumulative because patents disclosing the “relevant limitations of the claims” were
already before the examiner), abrogated on other grounds by Pfaff v. Wells Elecs., Inc.,
525 U.S. 55 (1998);

Judge Linn in a concurrence:

For the foregoing reasons, I respectfully submit that the test for inferring
deceptive intent, as it currently exists, falls short of the standard “need[ed] to strictly
enforce the burden of proof and elevated standard of proof in the inequitable conduct
context.” Star Scientific, 537 F.3d at 1365. The facts of this case suggest that the time
has come for the court to review the issue en banc.

Rickover and Bayh-Dole

John Simpson wrote on californiastemcellreport:

Of course taxpayers should benefit directly from the fruits of the research they have funded.

This is not some harebrained, wacko leftist idea.

Back when the Bayh-Doyle Act governing federal funding of research was being debated, Adm. Hyman Rickover, the "father" of the U.S. nuclear fleet testified against the legislation.

He warned that giving private companies exclusive rights to taxpayer-funded inventions was forcing the public to pay twice: once for the research and once for higher prices made possible by the monopoly granted under a patent.

You can read more about this in Jennifer Washburn's excellent book, "University Inc.: The Corporate Corruption of Higher Education."

LBE wrote a comment:

Simpson's allusion to Rickover understates an important point: Congress did not adopt Rickover's position.

Of Bayh-Dole itself, one notes that the federal government retains rights in patents arising from federally-funded projects, and is free to exercise those rights. Furthermore, Congress can interfere with rights of non-government funded patents, and even the executive branch can do things, as Simpson recognized in his previous allusion to the airplane patent pool during World War I (although Simpson misstated the outcome).

An issue with the "paying for things twice" viewpoint is that the costs of "making the invention" (the research and patenting costs) are generally DWARFED by the development/marketing costs. If someone can't get return on THOSE costs, they won't invest. If they don't invest, there is no product to benefit the public. All the public gets is an academic paper.

Simpson's argument about "paying for things twice" is more relevant to whether the public should get free access to the information, an issue which is currently being debated in the copyright context.

Of Washburn:

Los Angeles Times Article Way Off Base on Stem Cell Issues

Thinking negatively about Bayh-Dole

***Separately, whenever someone goes out of their way to state that something is NOT a harebrained, wacko leftist idea, look out.

***Of copyright-->

John Conyers and the ”Fair Copyright in Research Works Act”

***A further comment-->

As a separate matter, there has been previous discussion of Simpson's views of Bayh-Dole. See for example:

Fact check: Simpson misinformed on publicly funded research

but note comments by both Simpson and Ebert.

There is a "deck chairs on the Titanic" aspect to Simpson's position, in that there may not be any money to share in the case of stem cell patent royalties from Prop. 71.

Assuming for sake of argument that the funding of CIRM produced viable inventions/patents for therapies, one asks which the California taxpayer wants more in the next step of implementation: the cure or the royalty money?

In the Bayh-Dole world, the federal government generally stays out of the picture, and deals are made between the federal grantee as licensor and the private licensee.

Making an innovation, which really changes the way we live, is harder than merely making an invention. Incentives must be offered. Simpson would be advised to note the words of Lincoln:

The patent system changed this; secured to the inventor, for a limited time, the exclusive use of his invention; and thereby added the fuel of interest to the fire of genius, in the discovery and production of new and useful things.


A post on Patently-O titled Independent Inventors: Five Ways to Reduce the Cost of Patenting and Get a Better Patent Application has the text:

In the vast majority of cases, it is very expensive to bring an inventive idea to the marketplace, and the patent costs are typically a minimal part of those costs.

Thursday, March 19, 2009

TomTom goes after Microsoft with its own infringement action!

Further to Microsoft's patent suit against TomTom, and Tim Lee's comment on the tough situation of TomTom, TomTom has sued Microsoft.

From the now-infringement defendant, through Horacio Gutierrez, corporate vice president and deputy general counsel of Intellectual Property and Licensing, Microsoft Corporation :

"We are reviewing TomTom's filing, which we have just received. As has been the case for more than a year, we remain committed to a licensing solution, although we will continue to press ahead with the complaints we initiated in the U.S. District Court for the Western District of Washington and the International Trade Commission."

See also:

Catch-22 for TomTom?


One might ask if the TomTom infringement suit is a substantial threat, or if is a page out of Morgan State v. Oklahoma (When you are 24 points down to one of the biggest companies in the US, what do you do? Hire a major law firm (Morrison & Foerster) and sue).

Groklaw posted the TomTom complaint which asserts Microsoft's Streets and Trips product directly or indirectly infringes [claims of] TomTom's U.S. Patent Nos. 5,902,350 ("the '350 patent"), 5,938,720 ("the '720 patent"), 6,660,994 Bl ("the '994 patent") and 6,542,814 ("the "814 patent").

Yes, willful infringement is asserted, eg: Microsoft has received notice of the '350 patent and has continued its infringing
activity in spite of such notice. It's the usual licensing talks gone bad.

The case is filed in the relatively fast moving ED Va [Case 2:09-cv-00118-RAJ-JEB]

Data do not support an explosive growth of patent litigation

Peter Zura at the 271Blog comments on recent data on IP litigation from the Judicial Business of the U.S. Courts:

Claims of a patent litigation "explosion" continue to be unsupported by the latest data. Going back to 2004, the number of patent cases filed per year break down this way:

2004 - 3,075 patent cases
2005 - 2,720 patent cases
2006 - 2,830 patent cases
2007 - 2,896 patent cases
2008 - 2,909 patent cases

Considering that 9,573 IP lawsuits were filed in 2008, patent litigation made up only 30% of all IP litigation. Further, as 223,093 civil cases were filed in 2008, patent litigation made up only 1.3% of all litigation in the U.S.

The "urban legend" about an explosive growth of patent litigation evokes the previous "urban legend" that the USPTO might be allowing 97% of all patent applications. That wasn't true either, but the "urban legend" made its way to the US Supreme Court within a brief.

Wednesday, March 18, 2009

Catch-22 for TomTom?

Tim Lee writes in a post about Micosoft/TomTom:

A bit of background is helpful here. When the Free Software Foundation drafted version 2 of the GPL, it included a clause saying that if a vendor is forced to place restrictions on downstream redistribution of software covered by the GPL (due to a per-unit patent licensing agreement, for example), that vendor loses the right to distribute the software at all. This clause acts as a kind of mutual defense pact, because it prevents any firm in the free software community from making a separate peace with patent holders. A firm's only options are to either fight to invalidate the patent or stop using the software altogether. This clause of the GPL actually strengthens the hands of free software firms in their negotiations with patent holders. A company like Red Hat can credibly refuse to license patents by saying "we'd love to license your patent, but the GPL won't let us."

This creates a problem for a company like Microsoft that wants to extract licensing revenues from firms distributing GPLed software. Ordinarily, a patent holder sues in the hope that it will be able to get a quick settlement and a nice revenue stream from patent royalties. But the vendor of GPLed software can't settle. And if the patent holder wins the lawsuit, the defendant will be forced to stop distributing the software, depriving the patent holder of an ongoing revenue stream. Either way, the trial will generate a ton of bad publicity for the patent holder.

IPBiz notes: if the patent holder wins, and gets an injunction, it's easier the next time. Check out the early years of the litigations by the Wright Brothers. And, yes, there was bad publicity. But, the lower courts nominally follow the law, even if the Supreme Court follows the election returns.

Tim Lee predicts a patent fight:

Regardless, TomTom is now stuck between a rock and a hard place. The GPL has left the firm with only two options. It must either fight Microsoft's patents to the death (literally) or it must settle with Microsoft and immediately stop distributing GPLed software. Given how deeply-entwined GPLed software apparently is in TomTom's products, that second option may be no option at all. So expect a long and bloody fight in the courts.

One likely result will be to create a serious PR problem for Microsoft. Some people might remember the infamous GIF patent wars of the 1990s. When Unisys tried to collect patent royalties on the GIF format, the Internet community responded by switching in droves to the PNG format. In the process, Unisys earned a ton of bad press and a terrible reputation among computer geeks who care about software freedom. Microsoft risks a similar fate if it pursues this litigation campaign against Linux. And given that Microsoft is in a business where innovation is king, it's probably not a good idea to become a pariah in a community that includes many of the world's most talented software engineers.

Hmmm, what did Tim say about the Eolas patent?


TomTom denies Microsoft's patent infringement assertions

reminding us that non-infringement can be an alternative defense to invalidity.

Worse than plagiarism

Science News reports:

In two investigative news stories, Adam Marcus describes the case against anesthesiologist Scott S. Reuben. This prominent Massachusetts pain researcher is accused of faking data that served as the basis for a minimum of 21 published medical studies. At least plagiarists “borrow” data that are ostensibly real and therefore might have some medical validity. Fabricated data benefit no one but the author who is looking to bolster his reputation by fattening his portfolio of published studies.

IPBiz had written:

As background on this, recall that, although IPBiz takes a strong stance against plagiarism (repeatedly ridiculing the Harvard Business Review [HBR] text "plagiarize with pride"), IPBiz has always said that publishing false things does more damage to society than publishing true things, without giving credit to the original author. Both are bad, but circulating falsities does more damage.

With this background, observe that the IAM blog post Is it time to end patent examinations? is pushing the envelope on both points.

The text therein -- studies suggest only 10% - and these 10% are scrutinised in depth, why is there a need to examine patents at all? Most examinations are irrelevant (the 90%) and the others are redundant. Just stamp all patents as valid -- pushes what Lemley argued in 2001.

The fact that the numerous criticisms to what Lemley said were ignored in the IAM post pushes the "false things" part.

The final comment by Joff to LBE:

You are completely missing the point. Bo made a suggestion. I reported it. I was not breaking any news and I did not claim to. At no stage did Bo claim to have unique insight or a groundbreaking new opinion. He merely expressed what I considered to be an interesting idea. Why Bo should cite anyone else who has ever mentioned not examining patent applications when engaged in a casual conversation with me is, as I said before, not immediately obvious.

Various elements should be noted:

"not breaking any news" {Recall Eli Kintisch's "news of the week" story wherein Eli really wasn't breaking any news]
"did not claim to" [unless one says it's news, it isn't?, ditto "unique insight," "groundbreaking new opinion"]
"Why Bo should cite anyone else"

This approach sets an interesting baseline presumption: unless one says it's new, it probably isn't. Of course, that's the opposite presumption from the world of patents, wherein applications are presumed novel until the examiner says they are not. Patent "reformers" do not apply the rules of patenting to themselves.

"Reformers" do repeat a lot of things. The Quillen/Webster approach was accepted by Lemley, until he wrote "The Patent Office is Not a Rubber-Stamp," dumping Quillen/Webster sub silentio.

**UPDATE. Apart from Lemley's "rational ignorance," note F. Scott Kieff, The Case for Registering Patents and the Law and
Economics of Present Patent-Obtaining Rules, 45 B.C. L. Rev. 55, 99-100 (2003) (pointing out that the publicly recorded patent documents help coordinate commercialization by giving notice of the property right over which bargaining
or avoidance can occur)
[IPBiz questions whether UNEXAMINED patents would coordinate commercialization, given that many competitors don't "believe in" the science of many examined patents, already. Dropping scrutiny down a notch will drop coordination down at least a notch. Separately, footnote 6 of Kieff's 2003 paper cites Lemley's 2001 paper.]

Tuesday, March 17, 2009

Smith&Nephew whacks KCI vacuum bandage in Germany

EarthTimes reports: Smith & Nephew Inc.'s Advanced Wound Management division announced that the German Federal Patent Court in Munich has held the Wake Forest patent for negative pressure (NPWT) licensed to Kinetic Concepts, Inc. invalid in Germany.

BUT from yahoofinance:

Kinetic Concepts, Inc. announced March 17 that the German Federal Patent Court has ruled that a German patent licensed to KCI from Wake Forest related to KCI’s V.A.C.® technology is invalid. The validity of the German patent (EP 0620720 (DE 69224847)) is being challenged by Medela, Mölnlycke Health Care AB, and Smith & Nephew plc. The decision is not final and KCI and Wake Forest intend to appeal the decision to the German Federal Supreme Court. The patent remains valid in Germany until a final ruling from the appellate court. While today’s patent decision may result in new devices being marketed in Germany, should KCI prevail on appeal, it would be entitled to damages.

See also:

All appellants lose at CAFC in KCI v. Blue Sky on vacuum bandages
, wherein the patent was valid but not infringed.

Problem with Provigil?

Yahoonews reports:

A so-called "smart drug" popular with young people may carry more of an addiction risk than thought, a small government study suggests. Scans of 10 healthy men showed that the prescription drug Provigil caused changes in the brain's pleasure center, very much like potentially habit-forming classic stimulants. Modafinil, the drug's generic name, is sometimes used as an illegal study aid by college students.

"It would be wonderful if one could take a drug and be smarter, faster or have more energy," said Dr. Nora Volkow, director of the National Institute on Drug Abuse, who led the study with a Brookhaven National Laboratory scientist. "But that is like fairy tales. We currently have nothing that has those benefits without side effects."

The study, appearing in Wednesday's Journal of the American Medical Association, may bust the myth that the drug is safe for healthy people, experts said.

Of patent matters with Provigil, see


Enantiomers, racemates, and the chiral switch

CAFC reverses D Del on summary judgment findings in Crown Packaging

This was a patent case in the area of ends for beverage cans: Crown and Rexam are both in the business of selling can ends and bodies to fillers associated with major beverage companies.

The issue of "final judgment" arose: Even so, there must be a “clear and unequivocal manifestation
by the trial court of its belief that the decision made, so far as it is concerned, is the end
of the case.” Pandrol USA, 320 F.3d at 1362–63.

The doctrine of equivalents came up: A finding of infringement under the doctrine of equivalents requires a showing
that the difference between the claimed invention and the accused product was
insubstantial. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608
(1950). One way of doing so is by showing on a limitation by limitation basis that the
accused product performs substantially the same function in substantially the same way
with substantially the same result as each claim limitation of the patented product. See
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39–40 (1997). The
function-way-result test is particularly suitable for analyzing the equivalence of
mechanical devices, such as the ones at issue here. Id. at 39.

Of the previous summary judgment: Because Crown provided evidence in support of its position that the annular
reinforcing bead of claim 14 of the ’826 patent had only one function, and because we
must resolve any reasonable factual inferences in favor of the nonmoving party, we
conclude that there is a material issue of fact regarding the function of the claimed
bead. Accordingly, we reverse and remand the district court’s grant of summary
judgment of noninfringement.

The issue of patent marking arose: The law is clear that the notice provisions of § 287 do not apply where the patent
is directed to a process or method. Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578,
1581 (Fed. Cir. 1983). In Hanson, 718 F.2d at 1082–83, we held that 35 U.S.C.
§ 287(a) did not apply where the patentee only asserted the method claims of a patent
which included both method and apparatus claims. Hanson is factually identical to this
case, and we are therefore bound by the rule of Hanson.

The D Del decision was reversed and remanded.

Broadcom charge on patent exhaustion against Qualcomm lacks specificity

The San Diego Union-Tribune noted: Wireless giant Qualcomm said yesterday [March 16] that it scored a victory against rival Broadcom after a federal judge threw out a patent case that sought to upend Qualcomm's licensing business model.

from IDG :

Judge Hayes agreed with Qualcomm: "Although Broadcom acknowledges that Qualcomm possesses thousands of patents relating to wireless chipsets and handsets, Broadcom does not identify with any specificity the patents which it requests that the court declare exhausted," he wrote. "The court cannot make this determination on the facts as alleged in the complaint because Broadcom does not identify with any specificity a patent that was substantially embodied in a chipset or handset, or an exhaustion triggering sale or license."

Broadcom said in a statement it intends to refile the lawsuit within two weeks.

Monday, March 16, 2009

IAM blog re-cycling Lemley's "rational ignorance"?

In a 15 March 09 post titled Is it time to end patent examinations?, the IAM blog (Joff Wild) shamelessly re-cycles the old Lemley-ism presented in "rational ignorance." Bo Heiden, the deputy director of the Centre for Intellectual Property, states:

In the knowledge economy patents need to take on the role of building rather than blocking. To create such a world firms will need to focus more on developing their patents focused on business goals not bonus schemes, as well as spending a great deal of time understanding the patents of others. In this world patent examination (note: examination not patents as such) becomes less important, as patents become more of a means to objectify knowledge for transfer as opposed to a means of blocking one another. Since only high quality patents are commercialised - studies suggest only 10% - and these 10% are scrutinised in depth, why is there a need to examine patents at all? Most examinations are irrelevant (the 90%) and the others are redundant. Just stamp all patents as valid and fine the hell out of those actors that later try to use those that were obviously not valid when submitted. Let the firms do more of the work as they need to do this anyway in the knowledge economy.

Although this is basically a copy of Lemley's (bad) idea [and it may be Lemley was not the first], there is no mention of Lemley or of the various subsequent criticisms of Lemley's idea. If this were a patent application, one might be finding inequitable conduct here.

See various posts on IPBiz, including the following, and check for cites to Lemley's 2001 article in the Northwestern University Law Review.

from 2004: Putnam and Tepperman revisit rational ignorance

Further criticism of Lemley's "rational ignorance" at the USPTO


**comment submitted-->

It's truly sad when the IAM blog stoops to re-cycling an eight-year-old Lemley-ism, without even giving credit for the bad idea.

The first purpose of the patent system is to make useful information public (see for example 8 JMRIPL 80). To this end, not examining patent applications is about as reasonable as not reviewing/refereeing science papers. It's about the information, stupid.

See also

**second comment submitted-->

Thanks for the reply. I do think you missed several points.

First, the issue is whether or not to EXAMINE applications. By EXAMINING applications, one weeds out applications which are not useful, not novel, obvious, not enabled, or not even described. In the world of non-examination, an inventor would have to dig through a world of crap that would make up "published" applications. Reading Jules Verne doesn't teach you how to make a submarine or a rocket. If the IT people are complaining now, imagine what they would say in a world of non-examined applications. So, your bringing up publication, as distinct from examination is a bit of a red herring to this argument.

Second, in the world of patents, inventors are charged with knowing prior publications anywhere in the world. An inventor can't say, I'm from Sweden so I don't have to know what's going on in the United States. One would hope someone billed as a "prominent IP thinker" would be aware of the literature of the world, especially when the previous literature is directly on point to the argument at hand, examination of patent applications.

Of relevance to the similarity between Heiden-2009 and Lemley-2001, note text in Lemley's 2001 SSRN abstract:

Using available data regarding the cost and incidence of patent prosecution, litigation, licensing and other uses of patents, he demonstrates that strengthening the examination process is not cost effective. The core insight is that very few patents are actually litigated or licensed; most simply sit on a shelf unused, or are used only for noncontroversial purposes like financing. Because of this, society would be better off spending its resources in a more searching judicial inquiry into validity in those few cases in which it matters than paying for a more protracted examination of all patents ex ante.

As a third point, the issue of copying sometimes arises in the US, whether in speeches or in writings. I am not aware of anyone yet using a defense such as: Bo is based in Sweden and Qatar, I am based in the UK. Why either of us should mention Mark Lemley is not immediately obvious to me - even if this is a subject that he has written/talked about. Generally, a basic point of a patent system is to publish information so people don't "reinvent the wheel," and pass off as "news" something discovered eight years earlier, and subsequently criticized as not workable.

An irony here is that "patent reformers" who criticize patent offices for not finding prior art tend to show a remarkable ignorance of "prior art" relevant to patent reform.

<-- end

For reference

the SSRN link to Lemley's paper published in Northwestern University Law Review, Vol. 95, No. 4, 2001

**UPDATE. 2 Sept 09, to 271Blog

The arguments against a registration system are similar to those against rational ignorance. The patent system is about public disclosure of inventions which are (among other things) novel and nonobvious. We don't want the clutter of a registration system.


Is the Jaffe/Lerner Analysis of Patent Law Correct?

More on Mark Lemley's "rational ignorance" at the Patent Office

Detailed claim construction at the USPTO exam level is a Napoleonic code approach to a system already crumbling.

Roche to acquire Innovatis

from GEN: Roche is taking over innovatis, a provider of automated cell analysis solutions, for €15 million, or $19.56 million. The firm focuses on cell counting, viability testing, and cell function analysis in research as well as bioproduction.

Microsoft switching to offense in patent litigation?

John Fontana at network world writes that analyst firm Gartner said it has little doubt that Microsoft will switch to playing offense with its patent interests and that Microsoft is clearly “beginning to treat its burgeoning patent portfolio as a revenue-generating business." He gives a look at the 10 most recent patent applications from Microsoft.

In terms of "patent quality", which has been a little less discussed in "patent reform 2009" than in "patent reform 2005", Fontana might have mentioned Microsoft's published application 20070300174 (MONITORING GROUP ACTIVITIES ).

Microsoft "spyware" for monitoring activities?

See also

on patent reform 2005

Sunday, March 15, 2009

"Promoting intellectual discovery"

The March 6, 2009 issue of Science has an article titled--> "Promoting Intellectual Discovery: Patents Versus Markets", written by Debrah Meloso, Jerney Copic, and Peter Bossaerts. Meloso is affiliated with Bocconi University in Milan (debrah.meloso at
unibocconi.it). [323 Science 1335]

Within the article is discussion of the knapsack problem (KP). There was a comparison of the "prize system" to the "market system." One conclusion: "significantly more participants reported the correct solution [in the market system] than under the prize system.

The conclusion: "our experimental findings suggest the patent system is not a universally superior way to incentivize intellectual discovery." In their model of "markets-based system", compensation for inventions is shared.

IPBiz note: Meloso et al. might contemplate the "compensation shared" angle with history, as in Rockefeller, Vanderbilt and various empire-builders. "Take it and make it your own" is not about patents/prizes but it is not about sharing, either. The Venetians knew what they were doing; does Meloso?

The March 6 issue also contains the article "Responding to Possible Plagiarism," by Tara C. Long, Mounir Errami, Angela C. George, Zhaohui Sun, and Harold R. Garner." See 323 Science 1293. It includes the line: "Authors must all commit to both the novelty and accuracy of the work they report." Relevant to peer review: "Volunteers who agree to provide peer review must accept the responsibility of an informed, thorough, and conscientious review." As to editors, the article states they must also "verify the originality of the manuscripts they publish."

***Also, on intellectual discovery-->

8 Brilliant Scientific Screw-ups

Legal associates and law reviews

Someone commented to an IPbiz post titled: Citations of blogs by law reviews

This is part of the reason why, when I was an associate in BigLaw, I always had to suddenly go to the restroom whenever some partner said "We should write a law review article / white paper on that." I also scrupulously avoided any kind of law review in law school.

While IPBiz might appreciate the sentiment, IPBiz is not sure of its relevance to THAT IPBiz post.

The affirmative act of providing a cite can be related to mutual back-scratching (like blogrolling?) and the neglectful act of omitting a relevant cite (legally disfavored for patent applicants but not so for patent law professors) is problematic. Neither is a reason for not writing a law review (or a blog). The fact that "no one" reads them (refer to Barack Obama) is a different matter.

Lots of lawyers getting terminated

Karen Sloan has a piece in the 16 March 09 NLJ titled: How Do Firms Lay Off Lawyers? Very Carefully , which includes the text:

Layoffs can tarnish a firm's reputation and hurt recruitment, though experts say that stigma is fading, given that firm layoffs are now widespread. That grim reality was on display during the week of Feb. 9 to 13, when more than 1,000 attorneys and staffers were given their walking papers from at least 10 firms.

Gerald Hathaway was quoted:

This [use of layoff criteria] is increasingly important because more attorneys than ever before are taking legal action against their former firms, Hathaway said.

"Ten years ago, associates wouldn't sue [law firms] because it hampered their employment prospects," he said. "We're seeing more of that now. It's a new phenomenon."

Indeed, Nixon Peabody; Dechert; and Skadden, Arps, Slate, Meagher & Flom are among the major firms sued in recent months by fired associates.

Intellectual Ventures works on mosquito laser

From ROBERT A. GUTH at careerjournal :

Its [SDI, "Star Wars} rebirth as a bug killer came thanks to Nathan Myhrvold, a former Microsoft Corp. executive who now runs Intellectual Ventures LLC., a company that collects patents and funds inventions. His old boss, Mr. Gates, had asked him to explore new ways of combating malaria. At a brainstorming session in 2007, Dr. Wood, the Star Wars architect, suggested using lasers on mosquitoes.

Soon Dr. Wood, Dr. Kare and another Star Wars scientist teamed with an entomologist with a Ph.D in mosquito behavior and other experts. They killed their first mosquito with a hand-held laser in early 2008.

One can track IV on topix

See also

Mosquito laser gun offers new hope on malaria: The laser – dubbed a weapon of mosquito destruction (WMD) – has been designed with the help of Lowell Wood, one of the astrophysicists who worked on the original Star Wars plan to shield America from nuclear attack. Note Times Online does NOT mention the Intellectual Ventures connection but does note The WMD laser works by detecting the audio frequency created by the beating of mosquito wings. A computer triggers the laser beam, the mosquito’s wings are burnt off and its smoking carcass falls to the ground. The research is backed by Bill Gates, the Microsoft billionaire.

has a piece: Scientists Develop Anti-Mosquito Laser

engadget has: Scientists shoot down malaria-carrying mosquitoes with frickin' lasers

Copying of a university website

A story about the copying of the Brown University website revealed an interesting snag:

Fortunately for UAH, Brown University takes an equally tolerant attitude towards the borrowed copyrighted code. According to Scott Turner, the Director of Web Communications at Brown University, his school “viewed the similar designs as a compliment.” The only issue Brown had with the duplicate website arose because of Brown’s use of Google Analytics. Google Analytics is a service that tracks data about the use of a website using code from the page. Statistics about use of the UAH website were feeding into the statistics for Brown website. Turner confirmed that “For the period April 29 to July 4, 2008, we were recording hits on the UA Huntsville home page. This is because our Google Analytics code was copied and pasted into the code of the Huntsville home page.”

story by Lisa Barbella, Lessons in Plagiarism: The UAH Copycat Website

[UAH = University of Alabama, Huntsville]

As they say at the Harvard Business Review: Plagiarize with Pride! (unless you are Lee Simon).

Saturday, March 14, 2009

James Greenwood on patent reform/stem cells

James Greenwood in the Miami Herald:

That's why the president and Congress must protect incentives for private investment into stem-cell research and the continued development of cures and therapies. Doing so requires that they pursue public policies that balance the need to increase access to today's medicines with the need to develop tomorrow's cures.

One early test will come as Congress considers reforming our nation's patent laws. The recently introduced Patent Reform Act would weaken intellectual property rights by softening penalties for those who violate them. If patent laws are watered down, investors will redirect their money toward industry sectors that provide more certainty and a faster rate of return, creating a chilling effect on scientific innovation and the race to find cures for unmet medical needs.

But see also IPBiz posts on patent application of Gerald Schatten in the area of stem cells. Schatten collaborated with Hwang Woo Suk in the fraudulent paper published in the journal Science.

Harvard's Simon resigns over plagiarism

Bloomberg noted on March 13: Dr. Lee Simon stepped down after the school completed a review of the charges of plagiarism, which began last year, Cameron said. Simon, a clinical professor of medicine at Harvard, also gave up his job at Beth Israel Deaconess, where he has not seen patients in at least a year, said Jerry Berger, a spokesman for the hospital.

There is a connection to UTexas Southwestern: “Multiple consecutive pages of text in Simon’s 32-page article were nearly identical to passages” in an earlier study by Roy Fleischmann, a University of Texas Southwestern researcher, Scientific American said in a Jan. 30, 2008, report. Fleischmann’s paper originally appeared in the journal Expert Opinion on Drug Safety, the magazine said.

There is a connection to New Jersey: Simon was an associate professor of medicine at Harvard in 1995 to 2003, according to a 2008 statement from Savient Pharmaceuticals Inc., of East Brunswick, New Jersey, where he has been a director since 2006. As an FDA staffer, Simon directed the agency’s division that oversees pain and arthritis drugs from 2001 to 2003, the statement said.

There is a connection to Glenn Poshard who copied multiple pages. Poshard copied in his Ph.D. thesis, while Simon copied for a review article on "Best Practices". Poshard remains President of SIU.

See previous IPBiz post
More plagiarism at Harvard
. Laurence Tribe and Doris Kearns-Goodwin remain at Harvard.

Friday, March 13, 2009

Paul Hastings gets Rule 11 sanctions in patent case

The NLJ gave some background:

After losing a motion for a temporary restraining order, at which time Judge Pfaelzer raised questions about the patent's validity, ICU and its lawyers at Paul Hastings filed an amended complaint with new infringement claims. With the new claims, ICU accused Alaris of infringing on a valve that did use a "spike."

Judge Pfaelzer found that the patent with the "spikeless" claims was invalid and that the "spike" claims weren't infringed by Alaris' valves. The "frivolous construction and assertion of the 'spike' claims in the amended complaint, concurrently justified sanctions under Rule 11," she wrote at the time.

On top of that, according to the courts' rulings, internal documents revealed in the district court case showed that ICU itself didn't even believe that Alaris was infringing on its "spike" claims.

The NLJ had some interesting quotes:

"Normally, [patent lawyers] do thorough prefiling investigations or they don't take positions that are contrary to their own records," said Neil Smith.

At the Federal Circuit, ICU Medical was represented by Fish & Richardson's Frank Scherkenbach. Asked for comment, Scherkenbach e-mailed that "we [Fish & Richardson] were not counsel who were unsuccessful in, and sanctioned by, the District Court."

Of legal analysis:

ICU further argues that we should not import the functional limitation of piercing
where that function is not recited in the claim. We have explained, however, that it is
“entirely proper to consider the functions of an invention in seeking to determine the
meaning of particular claim language.” Medrad, Inc. v. MRI Devices Corp., 401 F.3d
1313, 1319 (Fed. Cir. 2005).

Although claim differentiation counsels against construing the spike term to
require the pointed/piercing features of claim 13, this doctrine is not a rigid rule but
rather is one of several claim construction tools. See Nomos Corp. v. Brainlab USA,
Inc., 357 F.3d 1364, 1368 (Fed. Cir. 2004); Laitram Corp. v. Rexnord, Inc., 939 F.2d
1533, 1538 (Fed. Cir. 1991) (quoting Autogiro Co. of Am. v. United States, 384 F.2d
391, 404 (Ct. Cl. 1967) (“Claim differentiation is a guide, not a rigid rule. If a claim will
bear only one interpretation, similarity will have to be tolerated.”)). We agree with the
district court.

Written description came up:

“[T]he purpose of the written description requirement is to ‘ensure that the scope
of the right to exclude, as set forth in the claims, does not overreach the scope of the
inventor’s contribution to the field of art as described in the patent specification.’” Univ.
of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004) (quoting Reiffin
v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000)). This requirement protects
the quid pro quo between inventors and the public, whereby the public receives
“meaningful disclosure in exchange for being excluded from practicing the invention for
a limited period of time.” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 970
(Fed. Cir. 2002). To satisfy the written description requirement, a patent applicant must
“convey with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.

LizardTech came up-->We addressed a similar issue in LizardTech, Inc. v. Earth
Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005), where a patent specification
described a method of digital image compression.

-->Of bad acts-->

These misrepresentations related to (1) ICU’s assertion of claims in the ’509 patent that
were identical to claims in the ’592
patent (i.e., assertion of double-patented claims); (2) ICU’s assertion of more double-
patented claims from the ’509 patent even after Alaris and the district court warned ICU
of the double-patenting issue; (3) ICU’s misrepresentation of Federal Circuit authority;
(4) ICU’s representation that figures 13 and 20–22 of the common specification “clearly”
disclosed a spikeless embodiment, only to later acknowledge that these figures do not
disclose such an embodiment and state that its representation was an “honest mistake.”

**On Rule 11, see Philip Brooks' Patent Infringement Updates,
including the text:

Via Rule 11 of the Federal Rules of Civil Procedure all actions brought in federal court have a pre-filing investigation requirement. Rule 11 demands that before any claim is asserted, the party asserting the claim must have performed an "inquiry reasonable under the circumstances" as to the legal and factual merits of the claim. Fed. R. Civ. P. 11(b). The Supreme Court has instructed that Rule 11 "imposes on any party who signs a pleading, motion, or other paper – whether the party's signature is required by the Rule or is provided voluntarily – an affirmative duty to conduct a reasonable inquiry into the facts and the law before filing, and that the applicable standard is one of reasonableness under the circumstances." Business Guides, Inc. v. Chromatic Communications Enterprises, Inc., 498 U.S. 533, 551 (1991) (interpreting Rule 11 pre-1993 amendments).