Thursday, June 29, 2006

On cert in KSR v. Teleflex on obviousness in patent law

MarketWatch views the patent cases taken by the US Supreme Court as part of an increased interest (in the Roberts court) in business cases.

The justices have agreed to hear two appeals so far on patent laws.

The first, granted earlier this week, will re-examine the standard under which an invention is too obvious to get patent protection. The case involves KSR International Inc., a Canadian maker of gas pedals, and Teleflex Inc. (TFX), an engineering company that claims KSR violated several patents it owned.

The court will also decide whether a company challenging the validity of a patent held by another firm must first refuse to pay royalties before lodging a legal challenge. The case involves a dispute between Genentech Inc. (DNA) and MedImmune Inc. (MEDI) over whether patents licensed to MedImmune for a respiratory infection drug are valid. Federal courts have refused to hear the case because MedImmune continued to pay royalties after it filed suit.

Of the KSR v. Teleflex case on obviousness, infringement defendant KSR makes the the accused infringing brake pedals for General Motors Corp.'s Chevrolet and GMC trucks and sport utility vehicles.

KSR is arguing that the standard for declaring a patent invalid for obviousness should be made more lenient, so that it becomes EASIER TO FIND A PATENT OBVIOUS AND THUS INVALID. The particular aspect they are attacking is the requirement that there be a MOTIVATION TO COMBINE different references, when multiple references are needed to show all aspects of the patent claim. The requirement for motivation has been used to prevent hindsight reconstruction of the patent claim from disparate sources after the invention has been made.

Supporting KSR's position on obviousness are companies including Microsoft, Cisco Systems Inc. and Hallmark Cards Inc. "This is probably the most important case the Supreme Court has taken on patents in the past 25 years," said Frank Porcelli, a patent lawyer with Fish & Richardson in Boston. ``This could mean a major revolutionary change." [See the Boston Globe for the quote, the newspaper that otherwise talks of "charcoal crystals" in discussing the "recent" invention of the capacitor.]

The website outlaw made an analogy to what is termed "mosaic-ing" in Europe:

KSR argued that all the integers of the claim were disclosed previously in various sources and that the skilled person would have combined those sources. When that was done, the invention was obvious," said Bould. "This is known in Europe as mosaicing – combining pieces of prior art. It is generally not allowed unless the sources cross refer to each other or it would have been obvious to the skilled person to combine them."

Although outlaw asserted "Claims of obviousness are often the most successful way to defend patent infringement actions," the study by Lunney has already shown that noninfringement, rather than invalidity, is the most successful path for an accused infringer. Within invalidity, obviousness has not been a particularly easy defense.

Palm to pay Xerox $22.5 million to settle Unistrokes patent case

Back in 1997, Xerox filed a patent infringement suit against a predecessor to Palm, charging that the handwriting-recognition technology sold as Graffiti and formerly used in some Palm devices infringed claims of a Xerox patent which covered a Xerox system known as Unistrokes.

There was recently a legal decision favorable to Xerox, which however did not end the case. See the post on IPBiz of June 10, 2006 concerning validity/invalidity rulings concerning certain claims of US 5,596,656. Palm may have tired of this protracted patent litigation, concerning an infringement assertion over technology Palm no longer used.

One should note the following "patent peace" aspect of the settlement: The two sides also agreed to "patent peace," or a seven-year mutual covenant not to sue within mutually agreed fields of use.

Wednesday, June 28, 2006

Lustgarten case illustrates difficulty in obtaining experts for plaintiff in malpractice cases

Gary Lustgarten's case is one of the most prominent examples of the growing campaign by medical societies nationally to discipline doctors for their testimony in malpractice cases. Medical groups say the efforts are needed to stop doctors from providing fraudulent or unsupported testimony. But plaintiffs lawyers say it's a naked effort to eliminate malpractice suits by intimidating medical experts from testifying for plaintiffs.

Several South Florida lawyers who represent medical malpractice plaintiffs and who were not involved in the case said Dr. Lustgarten's vindication won't solve the difficult problem of finding reputable medical experts willing to testify for their plaintiff clients.

"[Given] the fact that Lustgarten was put through that ordeal unjustly, most [doctors] think [testifying] is too risky to engage in," said Robert Boyers, a plaintiffs attorney with Hannon & Boyers in Miami.

"Lustgarten being vindicated hasn't made others want to testify," agreed Manuel "Alex" Reboso, a plaintiffs attorney with Rossman Baumberger Reboso & Spier in Miami. Efforts by state and special medical societies to step up scrutiny and sanctions against doctors who testify for malpractice plaintiffs have had a "chilling effect," he said.

In the case, defendant Dr. Jaufmann made a note that the cerebral fluid was not under any increased pressure. Expert Lustgarten testified that in his medical opinion Jaufmann's notes were inaccurate.

The North Carolina Medical Board found that Lustgarten had "misrepresented the standards of care applicable in [the case], had wrongfully stated that Drs. Keranen and Jaufmann [the defendants] had failed to have a meaningful exchange of information, and had testified that Dr. Jauffman falsified a medical record with 'absolutely no direct evidence to support this extremely serious allegation.'" The board revoked Lustgarten's license to practice in North Carolina.

A superior court reversed the board on the first two charges. Lustgarten appealed to Wake County Superior Court. The court partly reversed and partly upheld the medical board's decision. It said Lustgarten could not be disciplined for his testimony about the applicable standard of care and the meaningful exchange of information between Keranen and Jaufmann. But the court said Lustgarten could be sanctioned for his "unprofessional conduct" in alleging Jaufmann had "falsified medical record."

The case was remanded to the medical board, which suspended Lustgarten's license for one year. The Wake County Superior Court upheld that decision. Lustgarten appealed.

This month the North Carolina Court of Appeals reversed the lower court. "We conclude that the superior court erroneously affirmed the board's determination, as the substantial record evidence does not permit an inference that Dr. Lustgarten made an entirely unfounded statement concerning Dr. Jauffman's notes," the appellate panel wrote.

It is difficult to find experts for plaintiffs.

Plaintiffs attorney Thomas Culmo, of Culmo & Dolan in Coral Gables, said he has had a number of cases where he couldn't get doctors to even review the file once they found out he represented the plaintiff. In one case, he said he spoke with about 30 medical experts, none of whom would testify against the prominent doctor his client was suing. Culmo eventually had to drop the case.

[from Rebecca Riddick, Daily Business Review]

Who is funding what in embryonic stem cell research?

The californiastemcellreport discusses a CIRM document "Overview on the Current State of the Development of New Human Embryonic Stem Cell Lines," which purports to give annual funding levels in embryonic stem cell research:

China appears to have the largest annual program with a total as high as $249 million with the United Kingdom following at about $193 million, although it is not clear that all of the UK funding is available. Likewise, China's spending may be less.

Australia comes in at about $47 million, Singapore at $25 million, Korea at $18 million, Canada at $17 million, Israel at $7 million, Sweden at $2.2 million and India at $1.9 million. You may think some of these numbers seem strange. So do we, for a variety of reasons.

The californiastemcellreport questions the Singapore number.

IPBiz notes that the June 4, 2006 issue of the Atlanta Journal-Constitution wrote:

Partly, Singapore has been able to attract top talent by building
world-class laboratories and creating a research-friendly environment. Last year,
the government announced that it will spend $7.5 billion on biomedical
sciences over the next five years, up from nearly $4 billion it spent between 2000
and 2005.

The Atlanta article also noted:

The clearest example of the difficulties facing scientists in the
United States is wrangling over the use of stem cells. In 2001, President Bush
limited federally financed research to existing stem cell lines because of
opposition to the work, which requires destroying newly formed embryos.

Singapore has adopted guidelines similar to those used in the United
Kingdom, which offer "a lot more flexibility . . . in terms of what can be
done," Taiwan-born Jackie Ying said.

The text of the CIRM document mentioned by californiastemcellreport did not mention embryonic stem cell research efforts in Spain.

The californiastemcellreport also quotes John Simpson on WARF's patents:

"Patenting embryonic stem cells because you have a method to isolate them is like patenting chickens because you have a new method to provide chickenfeed. Or, like patenting food because you can cook. Nonetheless, WARF claims and has, at least for now, been granted the rights to all human embryonic stem cells in the United States. The patents' dubious validity is underscored by the fact that no other country in the world recognizes these claims."

One notes that Simpson is not a patent attorney.

Authentication system based on individual's memory

Touted as a "third authentication method" where the task of authentication is conducted not by machines or computers as with biometric or password systems, but rather within the human brain, the system comprises names of familiar friends or places, old photos, and sounds familiar to users themselves are registered in advance. When the system is used for authentication, registered data is mixed with decoy data, and users are prompted to choose correct answers in rapid succession.

The patent (US 7065786) is to Kai Corporation.

Patent application on password-protected guns and ammo?

Herbert Meyerle, a German who now lives in the US, has applied for a patent designed to secure ammunition as well as guns with passwords.

Published application 20060117632 (US app 10/537978 claiming priority of PCT/EP03/10180) is entitled "Safety device and method for weapons and cartridges" and has a first claim which recites:

An apparatus for the firing of a cartridge for firearms, wherein the apparatus is arranged within the cartridge, having an interface for communicating with an apparatus which is arranged out of the cartridge, a control means and a security means which can be released by a signal transmitted from the control means.

Claim 27 states:

Munitions for firearms, characterized in that the munitions comprise a securing device which can be released by transmitting of predetermined data.

Pfizer beats Ranbaxy over Lipitor, again

Of the Lipitor patent battles, Reuters reports: Pfizer Inc. on June 28, 2006 said a British appellate court had upheld the main patent covering its top-selling cholesterol drug Lipitor, blocking India's Ranbaxy Laboratories Ltd. from launching a generic early. The ruling prohibits Ranbaxy from introducing a generic version of Lipitor in the United Kingdom before the expiration of the basic patent in November 2011, subject to a possible further appeal.

Although interesting, the story neglects to observe that the main threat to Pfizer's Lipitor is not Ranbaxy's efforts over the patents, but the passing of Zocor into off-patent status. Pfizer did a terrific job marketing Lipitor, which was NOT the first drug in the cholesterol-reducing family. HOWEVER, the Lipitor/Zocor story illustrates the DOWNSIDE when the first member of the class goes off-patent. Then, there is economic pressure from the health plans for use of the cheaper (now generic) drug, whose function is "good enough" for most uses. Now, if the thinking about "good enough" had been employed when Celebrex/Vioxx hit the market ...

Tuesday, June 27, 2006

Newsweek quoting Varmus on stem cells

Varmus bemoans the patchwork approach to stem cell research brought on by state funding. IPBiz agrees, perhaps for reasons different from those recited by Varmus. IPBiz worries about balkanization of patent rights. From Newsweek-->

Wake Up About Stem Cells

A patchwork approach may have unfortunate consequences.

Five years ago, President Bush allowed the federal government to
fund research on human embryonic stem cells, but he limited the work to cell
lines derived before his speech. The number of usable lines was never as
large as he indicated then, and it has dwindled since. Because scientists and the
public recognize the great potential of stem-cell research, various ways have
been sought to overcome the restrictions on federal support. For example,
several states, like California and New Jersey [IPBiz: NJ has NOT passed an initiative! Harold Varmus and Newsweek have it wrong.] , have passed initiatives to fund stem -cell research. And stem-cell scientists at certain institutions, notably in New York and Massachusetts, have been helped by philanthropy. In these ways, important stem-cell work is occurring in the United States, and we can compete with other countries with more supportive policies.

Our medical-research enterprise has benefited enormously from federal funding and oversight; ultimately, the new patchwork-quilt approach may have unfortunate
. Young scientists may be reluctant to enter the stem-cell
field, with its unpredictable state and federal policies. Furthermore, with
Congress under increasing strain to find money to support the National
Institutes of Health, state and private funding may be viewed as an alternative, not
just a supplement, to federal funding in other areas of medical research. This
could undermine the opportunities traditionally expected by scientists and
citizens in all the states of our nation.

Various discussions of research fraud in China

BusinessWeek (May 29): The outcry reached a crescendo on May 12, when Shanghai Jiaotong University announced the firing of star professor Chen Jin for
allegedly faking research on computer chips. Chen is just one in a crowd of academics
accused of everything from falsifying or plagiarizing results to embellishing
resumes. (...) The rise of an entrepreneurial class further complicates the
situation. As professors team up with business partners to commercialize their lab
results, the nexus between science and the rough-and-tumble world of Chinese
capitalism has not been pretty. One of the country's seamiest cases involves Dr.
Qiu Xiaoqing, a professor at Sichuan University in Chengdu, and his onetime
business partner, an investment company called Sichuan NTC Holdings. (IPBiz: Bayh-Dole, anyone?)

The Irish Times (June 27): The headlong rush to add innovation to China's growing list of achievements has led to a spate of academic fraud in the country's top universities, prompting the government to step up efforts to stamp out the
plagiarists and charlatans.

The rash of scandals has led to much grumbling in China's academic
community - a recent survey found nearly 80 per cent of top scientists thought
China faced a "grave decline" in academic ethics.

In March, Liu Hui, a professor in the medicine department of
Beijing's Tsinghua University was dismissed for faking his academic achievements
and work experience. As many Chinese people have the same surname, he had simply
appropriated research by another Liu and put it on his curriculum
vitae. [IPBiz: long ago a certain worker at Exxon benefitted by having the same surname, and initials, as a very well cited other person.]

Academic rigour has been hotly debated in Asia since South Korean
stem-cell scientist Hwang Woo-suk was found to have fabricated his published

IPBiz: Doesn't anyone remember Jan-Hendrik Schon anymore? Furthermore, what about the retraction spree in the lab of Dalibor Sames at Columbia University?
On June 16, 2006, C&E News reported that four our more papers are being retracted by Columbia University Professor of Chemistry, Dalibor Sames, again because work by his coauthor and former Ph.D. student, Bengü Sezen, allegedly could not be reproduced. Three of these were in the Journal of the American Chemical Society [JACS]. And, going back to Hwang, when is the report of the Brauman panel at Science going to be made public?

Wisconsin paper discusses Stanford's Clark Center

On June 5, the Milwaukee Journal Sentinel discussed Stanford's James H. Clark Center as a model for UW's Wisconsin Institutes for Discovery.

Since the Clark Center opened in 2003, it has won several large
National Institutes of Health grants. The NIH has awarded $20 million over the
next five years to a team of researchers at the Clark Center and selected it as a
nano-cancer center, which will develop tools and methods to evaluate
the effectiveness of cancer therapies such as chemotherapy and radiation.

The Clark Center became home to another NIH center, Simbios, which
will provide $19.9 million over five years. The program is designed to bring
physicists and biologists together to develop a simulation toolkit that
will enable researchers to model biological systems.

IPBiz: now, if WARF and CIRM can cut a deal on stem cell patents ...

Backdating and springloading

While various high-tech companies complain about the patent system and urge patent reform, some interesting new words are entering our vocabulary to describe bad acts of the high-tech execs.

"Backdating" occurs when executives are granted a stock option -
allowing them to sell a certain amount of company stock at a later date and pocket
any difference between the grant price and the sale price - after altering
the date the option was issued to take advantage of lower share value at an
earlier date.

"Spring-loading" is the practice of manipulating the date stock options
are granted based on insider information - say, the release of earnings
reports or new product announcements.

[see Rocky Mountain News, June 25, 2006]

Issues of patent reform seem almost trivial compared to this evil stuff.

Nanotubes for bullet proof vests, joint replacements and rope

Researchers at the Hong Kong University of Science and Technology created a fiber by combining a thermoplastic substance called ultra-high-molecular-weight polyethylene (UHMWPE) with carbon nanotubes.

The researchers say the material can make bulletproof vests stronger and lighter and that it could also be used for joint replacements and making extra-durable rope for ships.

The university has been working with Dutch company DSM for four years to
produce and patent the extra-strength fibre. The technology to create the
material has been patented in the EU.

[IPBiz post 1706]

Phantom cites in eBay v. MercExchange?

New commentary on case citation issues in eBay v. MercExchange 126 S. Ct. 1837, 1839; 164 L. Ed. 2d 641, 645-646, 78 USPQ2d 1577 (2006)is up on ezines. Note that there is no four-factor test in Weinberger v. Romero-Barcelo, 456 U.S. 305, and that the Weinberger case itself manifests some citation problems.

Click here for link to ezine.

[IPBiz post 1705]

Johnson Matthey to benefit from new Euro standards on diesels

Investor's Chronicle:Environmental legislation doesn't always benefit big business, but it is paying dividends for Johnson Matthey. The company's diesel catalysts
are selling like hot cakes thanks to new European emission control standards for
heavy-duty diesel (HDD) trucks.


Of a different kind of fuel issue-->

Waltrip was docked 100 series points for tampering with fuel. Crew chief David Hyder was fined $100,000. Hyder and team director Bobby Kennedy also were kicked out of Daytona International Speedway.


Although the Boston Globe on June 26 headlined "MIT RESEARCH MAY SPELL END FOR THE BATTERY," I would not bet on carbon nanotube capacitors eliminating the end of batteries.

Hiawatha Bray reported: The [MIT] researchers are working on a new device that uses carbon nanotubes to store and release electrical energy in a system that could carry as
much power as today's lead or lithium batteries.

IPBiz notes that the idea of capacitors as an electrical storage device is not new.

The article continues: In a basement laboratory at MIT, [Joel] Schindall and his colleagues are using acetylene gas to deposit carbon nanotubes on pieces of silicon.
Schindall says that the technology isn't much different from the kind used to produce
microchips, and so mass production shouldn't be too difficult. [IPBiz: that statement won't improve the patent prospects!] Still, he said, "It's one thing to postulate it, but that's a long way from being commercially viable and competitive in price." Schindall says he hopes to have a finished example by the fall.

The article says: During the 1960s, scientists discovered that they could make more
powerful capacitors by coating their electrodes with finely ground charcoal a
form of carbon. The charcoal crystals [IPBiz: charcoal crystals !?!?] greatly increased the surface area of each electrode, allowing it to collect a greater electrical charge.

Monday, June 26, 2006

BusinessWeek on Myhrvold of Intellectual Ventures

BW on Nathan Myrhvold: With his pink cheeks, curly blond hair, and jovial manner, he can seem almost cherubic. But not everybody views Myhrvold as an angel—far from it. That's because Intellectual Ventures is not just a think tank where big brains sit around dreaming up ideas. It also has a second business, one that is generating controversy: buying patents. In fact, that's a much larger part of the operation. Maintaining secrecy through shell companies and nondisclosure agreements, often swooping in aggressively to seal deals, it has scooped up thousands of patents and is on the prowl for many more. That has many people in the tech world worried.

What's so frightening about patents? Inscrutable documents with funny schematic drawings, patents reward inventors with an exclusive right to their inventions. They seem so all-American, evoking images of Thomas Edison and Eli Whitney. But lots of small companies, disparagingly called trolls, have gone into business solely to own a handful of patents. They then make money, sometimes lots of it, by going out and suing companies they think have ripped off the inventions. The case that has thrown the most fear into big companies is NTP Inc.'s lawsuit against BlackBerry maker Research in Motion Ltd., which RIM paid $612 million to settle in March.

**BW discusses brainstorming sessions at Intellectual Ventures:

A rocket scientist, a mathematician, a brain surgeon, and a lawyer walk into a room. It sounds like the beginning of a joke, but at Intellectual Ventures it's something more serious—a business model. IV traffics in a single product: invention. On June 17, 2006 it invited 10 of the most blindingly brilliant doctors and scientists in the country to a daylong brainstorming session at its headquarters in a nondescript office building next to a swamp in Bellevue, Wash. Assembling around a conference table, the diverse group, which included physicists from Lawrence Livermore National Laboratories, physicians from several major medical centers, and a Stanford University postdoctoral fellow in bioengineering, spent the day pondering a complex question: How can surgery be improved? The goal wasn't just incremental advances but multibillion-dollar lightning bolts that could change the world and, not incidentally, make all of the participants rich.

As the experts spoke, Intellectual Ventures' patent lawyers, many of them with doctorates in science themselves, monitored the highly technical interchange, taking notes, recording the conversation from two microphones hanging from the ceiling, and snapping pictures of whiteboard drawings. [IPBiz: snapping pictures? Isn't the whiteboard digital?]

Sunday, June 25, 2006

Earlier version of American Inventor?

In a post on IPBiz in 2005, we described an "American Inventor" - like tv show in Charlotte, NC.

The panel of four judges included Charlotte patent attorney Chad Tillman of Tillman Ivsan PLLC, as well as three members of area design firm Enventys, who included Louis Foreman, CEO; Managing Partner Matthew Wynn; and Ian Kovacevich, vice president of engineering and design.

Tillman said the auditions allowed people to learn more about complicated patent law and revealed how difficult it is to get something marketed.

Lipitor caught in a squeeze?

Health insurers are arguing that MOST patients do NOT need the 57 percent reduction in cholesterol that the 80-milligram dose of Lipitor provides. For example, at Blue Cross of Northeastern Pennsylvania, which covers about 600,000 people, 81 percent of people taking Lipitor are taking 20 milligrams or less a day. Only 4 percent are taking 80 milligrams. Patients on the lower Lipitor doses can easily be switched to (generic) Zocor, Frank Koronkiewicz of Blue Cross said.

For those patients that DO need a large increase, Lipitor is separately facing competition from two drugs that lower cholesterol even more than Lipitor. One is Vytorin, made by Merck and Schering-Plough, which combines Zocor and Zetia, another cholesterol-lowering drug that has a different mechanism of action than statins. Merck is now heavily promoting Vytorin, which had sales of $378 million in the first quarter — about double its sales for the period last year. The other Lipitor challenger is Crestor, a drug from AstraZeneca that is generally considered the most potent statin.

IPBiz had noted in October 2005: "In Europe, the transfer of patient share from branded statins to generic simvastatin is already a prominent dynamic, and we expect a similar trend in the United States," said Nikhil Mehta, analyst at Decision Resources, Inc. "Although new therapies that target low high-density lipoprotein levels will address an important unmet need and add to market value, experts in the field remain uncertain as to whether their mechanisms of action will indeed confer clinical benefit."

Merck's current efforts with Zocor parallel the efforts of other proprietary companies. From IPBiz: Novartis' French rival Sanofi-Aventis, the world's third largest seller of branded drugs has equally followed suit and established its own generics division, Winthrop Medicines. Winthrop is planning to launch at least 30 generic medicines, including copycat versions of Sanofi-Aventis brands about to lose their patents.

***On authorized generics -->

from senior journal:

Today, a number of research pharmaceutical companies, seeing the need to provide lower-cost alternatives, are beginning to partner with generic manufacturers to develop "authorized generic" versions of the drugs the research company originally discovered. It's a way to get more medicines to patients at lower prices.

Under these partnerships, a generic version of the research company's medicine is either made by the company itself or made under a license granted to its generic partner. Like other generic equivalents, this new "authorized generic" is then marketed and sold for less than the original medicine of which it is a copy.

An 'authorized generic" can come into the market very quickly to provide consumers with lower prices because the know-how of the medicine's original developers can be quickly and efficiently transferred.

It can be brought to market near the end of an original medicine's patent, which is essentially identical to the way generic drug makers have introduced their copies for years. It also can be introduced at the same time as the first generic manufacturer brings its copy to market.

Either way, the competition should be welcome because it serves the needs of consumers. The original brand-name medicine now faces two competitors -- the "authorized generic" and the copy made by the first traditional generic drug maker who enters the market. Because consumers now have more choices, all of the drug companies are forced to price their products lower to stay competitive. This can only benefit consumers.

On April 28, 2006, IPBiz discussed "authorized generics"

Apotex Corp., a Canadian generic manufacturer, had six months' exclusivity for a generic version of the anti-depressant Paxil [paroxetine] in 2003. The company expected sales of up to $575 million in the first six months. But the maker of Paxil, GlaxoSmithKline, introduced an authorized generic version and Apotex's six-month sales topped out at between $150 million and $200 million.


One sees that the expiration of a patent on ONE DRUG in a field can adversely impact the sales of ANOTHER DRUG which remains on patent. Anticipating the expiration of one patent, Express Scripts, one of the nation's largest pharmacy benefit companies, recommended in 2005 that drug plans under its management make the cholesterol-lowering statin, Zocor (patent expiry June 2006), their preferred medication instead of the top-selling Lipitor.

[IPBiz post 1700]

Disclosure of confidential information through metadata a disciplinary rule violation?

Every time a Microsoft Word document is created, metadata is automatically added to it. Some of the information stored in the document may also be confidential (i.e., previous versions or information that may have been rejected or accepted) and may also expose businesses and individuals to hidden risks when it is communicated to people outside the firm or the company. And because this type of information travels with the document every time it is electronically communicated to others, sensitive or confidential information may be transmitted unknowingly.

The New York State Bar has already tackled the metadata issue:

Lawyers have a duty under DR 4-101 to use reasonable care when transmitting documents by e-mail to prevent the disclosure of metadata containing client confidences or secrets.

Of course, it is not just transmitting through email that can be a problem. Posting an electronic document can be an issue.

A footnote to Ethics Opinion 782 observed: Richard M. Smith, “Microsoft Word bytes Tony Blair in the butt,” June 30, 2003, at (describing how the British government was embarrassed in February 2003 when 10 Downing Street published a dossier on Iraq’s security and intelligence organizations and posted it as a Microsoft Word document on their Web site, which through its metadata revealed the identities of the four civil servants who worked on the document as well as various other documents that contained the same information).

An article in the March 2005 issue of the Nebraska Lawyer explicitly noted that Adobe Acrobat had similar issues with metadata. Thus, the DOJ's recent screw-up is hard to fathom.

The DOJ’s Redaction Gaffe
Posted by Peter Lattman

The Justice Department suffered an embarrassment this week when the New York Sun’s Josh Gerstein discovered that he could read electronically redacted sections of a government court filing in Adobe Acrobat format by pasting them into Microsoft Word.

Gerstein, reporting on the Major League Baseball steroid investigation, discovered underneath the blacked-out lines a juicy e-mail correspondence between the San Francisco Chronicle reporter and Victor Conte, the founder of BALCO, the drug lab that has been implicated in the probe. The email exchange suggests that Conte might have leaked information to the reporter, which he has denied in sworn testimony.

The New York Times’s Adam Liptak has a follow-up story on the government’s gaffe. A DOJ spokesman said, “The electronic filing by the Department of Justice — which appropriately redacted certain material — was not as secure as it should have been. It is an unfortunate error, one that we regret.”

***Previous issues with disclosure of metadata

In March 2004, a gaffe by the SCO Group revealed which companies it had considered targeting in its legal campaign against Linux users.

Lawyers for AT&T accidentally released sensitive information while defending a lawsuit that accuses the company of facilitating a government wiretapping program

[IPBiz post 1699]

How will generic Zocor affect patented Lipitor?

Curiously, while Pfizer's Lipitor grabbed market share even though it was NOT the first patented cholesterol reducer to market, Pfizer may suffer as Merck's Zocor is now off-patent. Forbes writes: Doctors who treat heart attacks are excited at having a new cheap option that can take a big chunk out of patients' cholesterol. "I'm very happy to see it," says Jim Stein, a cardiologist at the University of Wisconsin. He adds that health plans are justified in their efforts to start patients on generic Zocor before they try brands like Lipitor, Crestor or Vytorin.

As to Zocor, we have entered a period in which Teva has a 180 day period of exclusivity under Hatch-Waxman. HOWEVER, Merck is doing the branded generic thing. Forbes writes: The drop in Zocor's price will get more dramatic as time goes on. For six months, under U.S. law, Israel-based drugmaker Teva Pharmaceutical Industries will be allowed to sell generic Zocor in widely used doses. Generic drugmaker Ranbaxy Laboratories will make the biggest, 80-milligram dose, which is rarely used because of an increase in side effects with high doses of the drug. Swiss drug giant Novartis, which is also one of the biggest makers of generics, has already sued to try to break Teva's exclusivity and launch its own generic. (...)
Merck is actually selling Zocor to some health plans at such a big discount that they are using it instead of the generic, cutting into Teva's profits. Pfizer has long used a similar strategy, using an in-house generics firm to sell copycats of its own drugs after they lose patent protection.

Forbes also writes: More big pharmaceutical firms may enter the generic drug business, both to spite copycat firms and to take advantage of a booming market. The percentage of prescriptions that are generic is expected to increase to 75% in 2011 from 56% now.

In 2006:

16 drugs face patent expiration

Total sales at stake: $14 billion

Biggest losses: Zocor for high cholesterol (maker: Merck, U.S. sales: $3.1 billion)
Zoloft for depression (Pfizer, $2.6 billion)
Pravachol for high cholesterol (Bristol-Myers Squibb, $1.3 billion)
Toprol XL for high blood pressure (AstraZeneca, $1.3 billion)

In 2007:

23 drugs face patent expiration

Total sales at stake: $11 billion

Biggest losses: Norvasc for high blood pressure (maker: Pfizer, U.S. sales $2 billion) Ambien for insomnia (Sanofi-Aventis, $2 billion)
Zyrtec for allergies (Pfizer, $1.4 billion)
Lotrel for high blood pressure (Novartis, $1.1 billion)

In 2008:

14 drugs face patent expiration

Total sales at stake: $11 billion

Biggest losses: Advair for asthma (maker:GlaxoSmithKline, U.S. sales: $2.8 billion)
Effexor XR for depression (Wyeth, $2.2 billion)
Risperdal for schizophrenia (Johnson & Johnson, $1.5 billion)
Fosamax for osteoporosis (Merck,$1.5 billion)

More on QWIII

The approach to grant rate taken in the third paper by Quillen and Webster (QWIII) is a bit different from that in the second paper by Quillen and Webster (QWII). To give an example, consider the year 1993.

In my 2004 paper in JPTOS, I had worked through their corrected grant rate for 1993 to illustrate how they were obtaining their numbers:

The 85% number in QWII is an average of data for the six years from 1993 to 1998, and is presented as a grant rate adjusted for patents granted on a continuing application and its parent. In general, the objective is to obtain a grant rate based on (patents granted)/(applications submitted). In the particular approach of Appendix V, one attempts to use data only from one year. The number "applications submitted" is measured by the sum of "applications allowed" and "applications abandoned" in one particular year. To correct for the effect of continuing applications, QW2 have a two step approach to calculate an "adjusted applications abandoned." The grant rate presented in QWII become (patents granted)/(patents granted + adjusted applications abandoned), so that the accuracy of the approach depends critically on the term "adjusted applications abandoned." To measure this term, QWII take the number of applications abandoned and subtract from that number 0.69 X the number of continuing applications in that year. The multiplier 0.69 is derived from the sampling of the 1000 patents and numerically is (1-97/297), purportedly the fraction of continuing applications on which the parent application does not issue as a patent. To illustrate the methodology, consider the data for the year 1993. There were 104,351 patents granted, 60,763 applications abandoned, and 50,896 continuing applications. QWII multiplies 50,896 by 0.69 to obtained 35,130 "adjusted continuing applications" . The 35,130 number is subtracted from 60,763 to obtain the number of "adjusted applications abandoned," 25,633. The grant rate becomes 104,351/(104,351 +25,633) or 80%.

In the current variation (QWIII), the new grant rate numbers for 1993 are

corrected for continuation applications 76%
corrected for continuation and CIP applications 84%
corrected for all continuing applications 91%

In QWIII, the term "corrected for _____ applications" means the number of "_____ applications" is subtracted from abandonments. Thus, correcting for "all continuing applications" means a larger number is subtracted from abandonments, and the grant rate is higher than correcting only for "continuation applications."

In QWII, an attempt was made to correct for multiple patent families, because, if this were not done, one would be counting the patent grant, but not the application, therefore, obviously creating a grant rate in excess of 100%. In QWIII, this problem still exists, as one notes grant rates in excess of 100% for "corrected for all continuing applications" for the years 1995 (116% !!!), 1999 (101%), 2000 (107%), 2001 (111%), 2002 (103%), 2003 (103%), 2004 (100%), and average 1995-2004 = 103%.

Even in QWII, the correction was not done properly:

To correct for inaccuracies in their model arising from situations wherein both a parent and a continuing application issued as patents, QWII relied on data from a sampling of 1000 patents which sampling had been published by John R. Allison and Mark A. Lemley [denoted hereafter as AL], 53 Vand. L. Rev. 2099, 2100 (2000) [see 12 Fed. Cir. Bar J. at 37-38]. In the AL data, of the sample of 1000 randomly sampled issued patents, 297 represented patents resulting from continuing applications, which includes continuations, divisionals, and continuations-in-part. For 92 of the 297 patents [31%], a patent issued on the parent. Of the 297 patents, 141 of the patents arose from continuation applications (as distinct from divisionals or continuations-in-part), and of these 141 patents, there were 19 in which a patent issued on the parent, which corresponds to 6.4% (19/297).

QWII did NOT even ATTEMPT correction for multiple patent families wherein NO PATENT ISSUED ON THE PARENT.

Saturday, June 24, 2006

Clueless commentary on eBay by Eric Chabrow of InformationWeek

Eric Chabrow completely misunderstood the Supreme Court's use of Continental Paper in eBay v. MercExchange: Among the most recent and visible business-method patent cases was eBay vs. MercExchange, in which the online auctioneer was found to have violated a MercExchange patent used for eBay's buy-it-now feature. Last month, the Supreme Court ruled--reversing a century-old precedent--that trial courts must not automatically impose an injunction for patent infringement. Many saw the LabCorp.-Metabolite case as another chance to overturn or refine a long-standing practice of granting business methods patents.

The opinion by Justice Thomas cited Continental Paper AGAINST the reasoning of the district court in eBay. The opinion did NOT reverse Continental Paper.

Teva wins 180 day period of exclusivity on Zocor

Merck's Zocor went off patent on Friday, June 23. Teva said it had been granted 180 days of market exclusivity. Under federal law, the first generic company to file a patent challenge against the brand-name maker can win 180 days as the sole generic marketer of a drug.

The bulk of a generic company's profit on a product comes during the 180-day exclusivity period because the lack of competition means it doesn't have to slash prices deeply.


On Wednesday, June 21 the Wall Street Journal confirmed that health care insurer UnitedHealth Group will move Zocor to a reimbursement tier making it cheaper than Teva's generic version of the drug after negotiating lower prices with Merck.

On Tuesday, June 20 Sen. Charles Schumer accused Merck of conspiring with health insurance companies to undercut Teva's generic version of Zocor days before the patent expires.

look here.

[IPBiz post 1695]

The Kennedy era of the Supreme Court?

In an AP report, Duke Law School professor Erwin Chemerinsky is quoted: "We have entered the era of the Kennedy court. It's striking what a pivotal role Kennedy has come to play."

Although the AP report discusses Kennedy's role in non-patent cases, Kennedy's concurring opinion in eBay v. MercExchange is significant. If Kennedy commanded one more vote, it would have been even more significant.

The AP noted:

In conservative victories, Kennedy wrote a 5-4 decision that said public employees do not have free-speech protections for what they say as part of their jobs. He also broke a 4-4 tie to make it easier for police with search warrants to enter homes without knocking or waiting.

Kennedy wrote the term's two biggest death penalty cases, which made it easier for death row inmates to contest lethal injections and to get DNA evidence before the courts.

Kennedy also blocked conservatives from dramatically scaling back the Clean Water Act. The 5-4 decision preserves government authority to block development on wetlands as long as the wetlands meet Kennedy's test.

The issue of "when" something is published

As noted in an earlier IPBiz post, Quillen and Webster criticized me for not citing the 2004 article Patents and Innovation: Trends and Policy Challenges in my two papers on the patent grant rate which were appeared in publication in mid-2004.

The issue of "when" something is published can be quite important in patent law, such as in addressing the statutory bar under 35 USC 102(b). The publishers of scientific articles are typically quite helpful in this regard. Scientific publishers usually include article submission date and revision date (if any) in the text of the published paper, and the publication date of the journal usually can readily be determined. For example, in the ill-fated paper by Hwang Woo-Suk, et al., "Patient-Specific Embryonic Stem Cells Derived from Human SCNT Blastocysts," 308 Science 1777-1783 (June 17, 2005), we have information that the paper was received by Science on March 15, 2005, accepted on May 12, 2005, and appeared in an online version May 19, 2005, seven days after acceptance, and appeared in paper version on June 17, 2005.

Sadly, such information is not typically provided in legal publications. For example, in the OECD paper cited by Quillen and Webster in Continuing Patent Applications and the U.S. Patent and Trademark Office--Updated, 15 Fed Cir B J 635-677 (2006) [see footnote 65 of QW3 at page 644], there is no indication of "when" the study appeared in the on-line version of the OECD paper. I emailed the OECD people to determine when the paper appeared, but got no response. Further, when a paper appears only on-line, there is the possibility that the paper can be subsequently changed, without comment, at a later date, as was dramatically illustrated by none other than the USPTO. [See
Internet Publishing: Online Today, But What About Tomorrow Or Where Have You Gone, 406,302?

As noted in an earlier IPBiz post, the OECD paper only referenced the first paper by Quillen and Webster, which paper had been thoroughly criticized by Robert Clarke in JPTOS in 2003 (85 JPTOS 335, which 2003 article was not cited in the 2004 OECD paper). Further, John R. Allison and Emerson H. Tiller, The Business Method Patent Myth, 18 Berkeley Tech. L.J. 987, at footnote 139 spoke of the second paper by Quillen and Webster (QW2): "adjusting assumptions from previous study [i.e., the first Quillen/Webster paper, QW1] to correct a probable flaw, but still producing an estimated allowance rate much higher than reported, and higher than in Japan and Germany." The OECD paper didn't talk about the second Quillen and Webster paper, which was the subject of my two papers in 2004 [86 JPTOS 568 and 4 Kent-JIP 104].

**UPDATE. 1 July 06

The OECD people never did get back to me about the publication date of the paper.

For another example of a history re-write on the internet, consider the Stanford role in the Bengu Sezen saga from tenderbutton:

Yesterday [16 March 06] I compared this page (it came up in a simple google
search for the culprit) which was last edited March 14

to its google-cached version which was dated Oct. 2005 (I kept
a copy at work). Bengu Sezen, in that cached webpage appeared as a
post-doc in the Stanford group.

Today, the google-cached webpage has been “sanitized” of the miasma
and now the cached page is identical to the published webpage.
Now where in the world is Carmen San Diego?

When the heat turned on, Bengu Sezen's name got removed. What position at Stanford?

Application recycling and patent quality?

Some thoughts on the paper "Application Recycling" which appears in the May 2006 JPTOS.

p. 433
So how does patent recycling relate to patent quality? If quality is judged purely by USPTO grant rates, then the USPTO's report of grant rates is systematically flawed, due to failure to account for the impact of continuation filings, and quality is much poorer than what the USPTO historically reports.

IPBiz: This is a purely contrived argument. Patent examination quality relates to how well the USPTO is conforming to the requirements of the patent statute. If every applicant submitted claims that met the requirements, the patent grant rate could be 100%, and there would be patent quality. Thus, one can't judge patent quality purely by USPTO grant rates.

p. 435
The irrational result is that RCEs enable patent applicants to be more successful but, at the same time, they cause the USPTO to report grant rate statistics that suggest to the public that applicants are being less successful.

IPBiz: If the resultant claims allowed AFTER the RCE were the SAME as in the parent, this might be a good argument. HOWEVER, most of the time the resultant claims are narrower in scope. So one asks "successful AT WHAT"? If the ALLOWED claim is of the proper scope, but the initial claim was not, the applicant got what he deserved, neither more nor less. The applicant did NOT succeed in obtaining the INITIAL claim scope.

p. 435
All one needs to do is keep time while reading a typical patent or prosecution file and it is likely to result in the conclusion that 18.9 hours is a remarkably short time to grant a right that might lead to a company-breaking injunction.

IPBiz: A company-breaking permanent injunction is not going to issue UNTIL AFTER a court has found patent validity and infringement. To blame the USPTO for something that occurs after hundreds of hours of legal review in litigation is silly. It is likely true that the USPTO should get more resources to review patent applications, but there is plenty of time and money allocated to patent litigations.

Alaska, 2006 or Florida 1962?

The current discussion about Korean missiles reaching the western US reminds one of talk in Florida in 1962 about Cuban missiles.

Around Alaska's Fort Greely, which has nine of the interceptor rockets, folks weren't fretting either. Pete Hallgren, city manager of nearby Delta Junction, said he and other city officials met at the base this week to discuss a construction project and the missile issue never came up.

"Nobody seemed to show any concern about the flurry of press reports about North Korea," he said. "The talk around here is the potential for the hotel, power plant and clinic."

It's also business as usual in Nome, a western Alaska city of 3,500.
Bruce Klein, executive director of the Nome Community Center, acknowledged his neighbors can be somewhat insulated — and that's not always a bad thing.
"If we were thinking about all this stuff and everything that's out there, and of course the situation with the missiles in North Korea, I think we would all be on Prozac."

Friday, June 23, 2006

Lemley comment on Metabolite case

Patently-O has a quote from Mark Lemley concerning the Metabolite case:

Don't believe everything you read in dissents. I represented the patent owner in this case. The idea that the patent could be infringed merely by "thinking about" a correlation is a misunderstanding caused by lack of knowledge of patent law. The claimed process had two steps (1) drawing blood and assaying it for total homocysteine, and (2) correlating an elevated level of total homocysteine with a vitamin deficiency. Step 2 could be performed mentally, but that doesn't mean that patent could be infringed just by thinking.

Dennis Crouch responded:

Mark, I agree that the dissent's description of the claim in question was not correct. But, yours might not be correct either. The claim requires "assaying a body fluid for an elevated level of total homocysteine; and correlating an elevated level of total homocysteine in said body fluid with a deficiency of cobalamin or folate." I don't see any blood draw requirements.

The patent at issue is US 4,940,658.

Claim 13 states:

A method for detecting a deficiency of cobalamin or folate in warm-blooded animals comprising the steps of:

assaying a body fluid for an elevated level of total homocysteine; and

correlating an elevated level of total homocysteine in said body fluid with a deficiency of cobalamin or folate.

Claim 1 is directed to a method of assaying:

A method of assaying for the amount of one or more sulfhydryl amino acid species present in a given sample, said method comprising:

(a) combining said sample with an internal reference standard comprising a known amount of each sulfhydryl amino acid species to be assayed, labelled with a suitable marker;

(b) adding sufficient reducing agent to insure randomization of the labelled and unlabelled sulfhydryl amino acids present;

(c) measuring the relative amounts of labelled and unlabelled sulfhydryl amino acid present for each species with a mass spectrometer;

(d) calculating the ratio of labelled to unlabelled sulfhydryl amino acid present for each species; and

(e) deriving the amount of unlabelled sulfhydryl amino acid present for each species in said given sample.

The only mention of "assaying" outside of the claims is in the sentence:

Accordingly, the present invention provides a preferred method of assaying the total cysteine and/or total homocysteine in a given sample using mass spectroscopy.

Although Dennis Crouch wrote: An assay is simply a test, and this particular claim provides no limit on what the assay could be, the text in the specification suggests that the disclosure is an assay using mass spectrometry [the inventors mistakenly state "spectroscopy" but mass spectrometry is not a "spectroscopy."] However, the inventors speak of a preferred method, so that the assay is directed to measuring the amount of cysteine or homocysteine, by whatever approach.

The word "correlating" appears only in claims 13 and 14, and not in the specification itself.

Within the specification, one has:

It has now been discovered that the clinical spectrum of cobalamin deficiency is much broader than previously recognized and that many cobalamin-deficient patients are not anemic, or only moderately anemic; that in many cases their red blood cells are not macrocytic, or only moderately macrocytic; that in many cases a variety of neurologic abnormalities other than peripheral neuropathy and ataxia are present; and that in many cases the serum cobalamin level is only slightly decreased and may actually be normal, even with the improved assays above using purified intrinsic factor. Accordingly, there is a need for an improved assay for cobalamin deficiency, preferably one in which cobalamin deficiency can be distinguished from folate deficiency. [IPBiz: !]

The first sentence of the "summary of invention:"

It has now been discovered that an elevated level of total homocysteine in tissues of warmblooded animals correlates both with cobalamin deficiency and with folic acid deficiency; an animal with elevated levels of total homocysteine is likely to have one or both deficiencies but the assay does not distinguish between the two.

Later in the summary:

It has been discovered that elevated levels of homocysteine in body tissue correlate with decreased levels of cobalamin and/or folic acid in said body tissue. Accordingly, assays for homocysteine can be used to determine the presence or absence of cobalamin and/or folic acid deficiency in warm-blooded animals. Suitable assays for this purpose include any assays capable of determining levels of homocysteine in body tissues, preferably body fluids, preferably urine or blood. Serum and plasma are particularly preferred.

The use of the word "or" in claim 13 becomes interesting.

The next installment of Professors of Paranoia may come from patent law?

The June 23 Chronicle of Higher Education has a piece Professors of Paranoia? which might be subtitled Professors Gone Wild! If the Chronicle ever gets a hold of some of the recent legal research on patent reform, they might have to do a sequel.

The Federal Circuit Bar Journal (Kimberly Moore, editor), which brought us Quillen/Webster 1 and 2, has now brought out the third installment: Cecil D. Quillen, Jr. and Ogden H. Webster, Continuing Patent Applications and the U.S. Patent and Trademark Office--Updated, 15 Fed Cir B J 635-677.

If you naively thought that models for patent grant rate should be required, as a constraint of logic, to be limited to a grant rate of no more than 100%, the Federal Circuit Bar Journal is not for you. From page 661:

When the USPTO Grant Rate is determined on the assumption that all continuing applications are an attempt to patent the subject matter of their parents and that the parent applications were abandoned in favor of the continuing applications, the overall Grant Rate for 1981 - 2005 is 95%. This calculation establishes an upper bound for Grant Rate estimates. The assumption on which this calculation is based is not true in all instances, e.g., when a divisional or other continuing application is filed and its parent is not abandoned. The result is that, in some instances, this calculation produces a Grant Rate estimate that is above 100%. Such a result is not realistic and results form the fact that not all parent applications are abandoned in favor of continuing applications that claim benefit of the filing dates of such parent applications, e.g., divisional applications in which the parent applications are not abandoned.

As they did in the first two papers, Quillen and Webster continue to neglect situations in which more than one patent is issued in a patent family, especially wherein a patent does NOT issue on the parent. Quillen and Webster continue to neglect PCT by-pass route applications.

In QW3, I get taken to task for ignoring a 2004 paper Organization for Econ. Co-operation and Dev., Patents and Innovation: Trends and Policy Challenges 1 (2004).
available at
in my 2004 papers on patent grant rate in JPTOS and JIP, which concerned QW2.

In reality, the OECD paper cites ONLY TO QW1 (not to QW2, of concern to me in my 2004 papers) AND

--> the 2004 OECD paper cites to QW1 for a point about foreign prosecution yielding different results than US prosecution [!!!]

--> the 2004 OECD paper fails to cite to Clarke's 2003 paper in JPTOS, which demolished QW1

--> the 2004 OECD paper has nothing to do with the issues I raised in my 2004 papers [that QW'2 methodology was wrong both legally and numerically]

Although QW3 raises the bogus issue that Clarke's 2003 paper did not talk about patent grant rate, QW3 failed to cite my second paper in JIP, which discussed the difference between "allowance rate" and "issue rate."

from my second paper in JIP:

As noted in our previous article, there was some divergence in the raw data for applications filed and applications allowed between the papers of Quillen/Webster and Clarke. This divergence was insufficient to account for a divergence in grant rate between 85% (adjusted Quillen/Webster in QWII) and 74% (Clarke). There has been a suggestion that the divergence in grant rate arises from a difference in use of "allowed" applications (Quillen/Webster) and "issued" applications (Clarke).


The difference in basic grant rate percentage between using "allowed" applications and "issued" applications is of the order of 2%. The difference in using "allowed" applications and "issued" applications does not account for the difference in the numbers for corrected grant rate between Quillen/Webster (85%) and Clarke (74%).

Separately, my second paper in JIP pointed to an inconsistency in the way Quillen/Webster and Lemley/Moore were distinguishing "allowed" and "issued" applications:

Third, in working with data on issued patents to identify the number of patents based on continuing applications, Clarke merely did a more thorough job of what was attempted in the QWII. As stated in the footnote of Lemley and Moore: "The 85% number provided in the revised Quillen et al. study is based on actual data about the applications that ISSUE based on continuations," [emphasis added], QWII made their correction based on data on ISSUED applications, not on ALLOWED applications. If the use of data on ISSUED applications means an assumption that every allowed continuation resulted in a patent, then it is an assumption made by both Quillen/Webster and Clarke. Because it is assumed by both, this assumption is not a basis to select the results of Quillen/Webster over those of Clarke, as was done by Lemley and Moore.

[IPBiz post 1689]

Formal request made to KBS to broadcast pro-Hwang documentary

For completeness, supporters of Hwang Woo-Suk have been calling for broadcast of a documentary by KBS television that raised questions as to whether Gerald Schatten, a professor at the University of Pittsburgh, stole patentable ideas from Hwang as they worked together on stem-cell cloning. So far, KBS has decided not to air the tape after previewing the footage because it was concerned about possible legal claims against unconfirmed evidence.

Note that KBS is distinct from MBC, which aired shows ADVERSE to Hwang Woo-Suk in 2005 (PD Notebook).

Nayernia to join stem cell effort at Newcastle

The University of Newcastle has recruited Karim Nayernia, a top stem cell scientist from the Georg-August University of Göttingen, Germany to pursue research with the potential to lead to future therapies for a range of medical conditions, such as heart disease, Parkinson's disease and male infertility.

Scientists in Newcastle were the first in Europe to clone a human embryo - which now looks a world first, following the disgrace of the Korean scientist Woo-suk Hwang who had claimed to have done so. [IPBiz note: curiously, the Newcastle folks did NOT follow up with any further papers.]

A key member of the pioneering team at Newcasstle, Miodrag Stojkovic, departed from Newcastle for a better-paid position in Valencia in what appeared to be a dispute over the apportionment of credit for the discovery.

Newcastle said another top scientist, Colin McGuckin, joined the ISCBRM last year to pursue work using stem cells from babies' umbilical cords with co-researcher Nico Forraz. In May they agreed a £160,000 deal with an American stem cell company, which will provide additional funding for their research.

**posted to californiastemcellreport on 22 July 06:

It should be self-evident that scientists working in areas perceived to be trendier will receive more job offers than scientists working in areas considered to be backwaters. But should state and federal governments spend money based on perceptions?

Funding is an issue motivating scientists. Getting proper credit is another. In terms of what has actually motivated "big name stem cell scientists" to move, greater attention should be paid to the latter.

The Scientist said: Miodrag Stojkovic, formerly of Newcastle but now deputy director of Principe Felipe Centro de Investigacion in Valencia, Spain, said Ian Wilmut of Dolly the Sheep fame took too much credit and should not have been first author. "Yes, this is common practice in scientific publishing," he told The Scientist. "But, in my opinion, it is not fair practice." Stojkovic created the UK's first cloned human embryo while working at Newcastle University, but left earlier this year for Spain in part because he felt a colleague took too much credit for his team's work.

Of scientific substance, as opposed to who is getting what job offer, one observes that neither Stojkovic nor his former colleague still at Newcastle (Murdoch) have followed up with any work on their 2004 report of an SCNT-created human blastocyst. Both have plenty of funding. The opportunity to take credit for the first SCNT-created human stem cell line is there for the taking, now that the work of Hwang Woo-Suk is discredited.
The silence is deafening.

See also:

More on the Metabolite decision

Of Metabolite, Reuters wrote: The U.S. Supreme Court on Thursday, June 22, 2006, dismissed an appeal of a key patent case by medical testing company Laboratory Corporation of America Holdings

Also, Writing for the three dissenters, Justice Stephen Breyer said the patent amounted to "no more than an instruction to read some numbers in light of medical knowledge."

The $64 question is whether the patentees, who gained the medical knowledge by their research (and which knowledge was not readily accepted by medical peers) should be able to benefit from a "correlation type" patent claim.

In passing, one notes the irony of Justice Breyer citing to a paper by Professor Lemley in Breyer's dissent, in light of Lemley's position on the Metabolite case.

Thursday, June 22, 2006

Cert in Metabolite found improvident, but three justices dissent

As anticipated by conventional wisdom, the Supreme Court ruled that cert in the Metabolite case was improvidently granted. Further, a separate prediction (mentioned in IPBiz that members of the Kennedy concurrence in eBay v. MercExchange might try to invalidate the patent at issue also proved true. Justice Breyer, joined by Justices Stevens and Souter, would have invalidated the patent. For the future, one notes that there is this core at the Supreme Court more likely to act on calls for patent reform.

Wednesday, June 21, 2006

UHawaii drops patent covering taro (poi)

Note at the bottom of the article that the patent on taro wasn't making any money.

See also the report at KGMB9.

Recall the earlier fight on the plant patent on yage.

Tuesday, June 20, 2006

NBC reports "stem cell breakthrough" on June 20, 2006

On Tuesday, June 20, 2006, NBC Nightly News featured work [on spinal cord injured mice] of Dr. Douglas Kerr, a neurologist at Johns Hopkins University who led the research separately being published [next] Monday in the journal Annals of Neurology.

The new research details a complex recipe of growth factors and other chemicals that entice the delicate cells to form correctly and make the right connections. Miss a single ingredient, and the cells wander aimlessly, unable to reach the muscle and make it move.

An AP report obliquely compared this work to other work in rats. The Hopkins experiment isn’t the first to use stem cells to help paralyzed rodents move. But previous work bridged damage inside the spinal cord that blocked nerve cells from delivering their “move” messages to muscles, sort of like fixing the circuit that brings electricity to a fan. The new work essentially installs new wiring: replacing motor neurons — specialized nerve cells for movement — that have died to make a new circuit that grows neuronal connections out of the spinal cord and down to a leg muscle.

Unlike the UCal/Irvine work that used HUMAN embryonic stem cells, Kerr mixed embryonic stem cells FROM MICE with chemicals that caused them to turn into motor neurons. He transplanted them into the spinal cords of partially paralyzed rats [mice].

A post on IPBiz had presented reporting by "60 Minutes" of work by Hans Keirstead at UC/Irvine. The work by Keirsted used HUMAN embryonic stem cells [Here, we show that transplantation of human embryonic stem cell (hESC)-derived oligodendrocyte progenitor cells (OPCs) into adult rat spinal cord injuries enhances remyelination and promotes improvement of motor function.] Curiously, the stem cell line used was pre-August 2001 and thus "Bush-approved."

Bloomberg reported:

In the study, stem cells taken from mouse embryos were chemically transformed in a lab into motor neurons, cells that carry impulses from the brain and spinal cord to receptors in the muscles. Researchers then injected the neurons into the mice in such a way that three in every four animals were able to bear weight on their hind legs and take steps after six months.

The study, to be published in the Annals of Neurology next week, was funded in part by the NIH. It suggests similar techniques may eventually be useful for treating such disorders as spinal cord injury and Lou Gehrig's Disease, also known as ALS, both of which leave people unable to use their limbs, the researchers said. They cautioned that such an advance in humans remains many years away.

The research used a cocktail of chemicals that help build nerves while inhibiting the body's ability to protect itself from the new cells. The cocktail allows the motor neurons to re- connect, essentially re-establishing the circuitry that allows the body to signal muscles that they're needed.

Forbes noted:

"In the simplest [neuronal] relay, a brain cell talks to the motor neuron in the spinal cord and says, 'Move that muscle,' " Kleitman explained. "Then, the motor neuron reaches out of the spinal cord to the muscle using these long fibers called axons. They communicate with the muscle, send an impulse, and the muscle contracts."

But this seemingly simple network relies on a complex partnership of growth factors and signaling chemicals -- each vital to the process. So, research aimed at deciphering these players and their connections has continued.

"It's like a detective story where if you don't put all the clues in order, you wind up going off in the wrong direction," Kleitman said.

Starting in the laboratory, Kerr first used specific growth factors to spur mouse embryonic stem cells to differentiate into motor neurons. Then they added two chemicals -- retinoic acid and sonic hedgehog protein -- to help these new cells feel more at home in the spinal-cord environment.

The next step was to deliver these primed cells into the spinal cords of mice previously paralyzed by a viral infection.

But another roadblock loomed.

"We know that there are proteins in this area that inhibit axons from growing in adult animals," Kleitman explained. The proteins are linked to the protective myelin sheath that coats nerve fibers. "They're part of how we keep our nervous system from going haywire during normal function," she said.

To overcome this resistance, the Hopkins team added two agents -- cyclic AMP (cAMP) and the drug rolipram -- to the mix. According to Kleitman, these molecules "block the 'stop sign,' so that now the axons can grow."

But there was one more hurdle -- it's one thing to allow axons the freedom to grow, but to grow where? "You've got pretty long distances to cover, so one of the things you need is a 'target' that's screaming out like a neon sign, 'Come here!' " Kleitman said.

The Hopkins group created just such a target by applying a powerful neural growth factor, called GDNF, to the remains of nearby, deadened sciatic nerve cells. The GDNF -- derived from fetal mouse neural stem cells -- essentially "called out" to the growing axons, urging them to make the connection.

Korean prosecutors seeking to attack academic fraud?

from english.chosun: Prosecutors called for strict punishment, saying the academic fraud was “a historically significant case capable of ending a widespread practice where academics manipulate research results with impunity,” despite the fact that there is no precedent of legal punishment for academic fraud. Prosecutors cited the disappointment among the public, for whom Hwang was at one stage a national hero, among aggravating circumstances.

IPBiz: Wow!


But Kim Sun-jong, a former researcher at the MizMedi Hospital accused of misleading Hwang over stem cells from in-vitro fertilized eggs, was loudly booed when he took the stand, obliging the judge to halt proceedings several times.

Another law professor fails to shepardize

The persistent failure of legal academics to shepardize their sources is manifested in a paper by Lee Petherbridge, who apparently hasn't checked on current papers about the patent grant rate approach of Quillen and Webster. The irony of course is that the legal academics criticize the USPTO for not finding (and applying) prior art when the legal academics themselves demonstrate their inability to find prior art.

Footnote 45 of "Positive Examination," 46 Idea 173, states:

n45 Because patent examination procedure is effectively structured
such that an applicant is entitled to a patent unless the office can prove that
the statutory standards are not met, the reality is perhaps less like
haphazardness or randomness an more like an automatic green light to patentability
reminiscent of a registration, rather than examination, system. Recent studies
indicate that where applicants vigorously pursue applications, patents are highly
likely to issue. One recent study reports that when applicants are prepared to
pursue applications all the way, that is they are prepared to file
continuation applications, continuations-in-part, and divisional applications, the
Patent Office eventually issued patents at least 85 percent and perhaps as
high as 97 percent of the time. Cecil D. Quillen & Ogden H. Webster, Continuing
Patent Applications and Performance of the U.S. Patent and Trademark Office,
11 Fed Cir B.J. 1, 12, 17 (2001). In a follow up study, designed to refine the
number of issues by accounting for patents that issue from the same disclosure,
e.g. where a patent issues from both a parent application and a continuing
application, the authors found the issue rate to be 83 percent. Cecil D. Quillen, Ogden H. Webster, & Richard Eichman, Continuing Patent Applications and
Performance of the U.S. Patent and Trademark Office, 12 Fed. Cir. B.J. 35, 38, 54

An email was sent to Professor Petherbridge on June 20 at 8am (eastern:

I am curious why your footnote 45 cites the second paper by Quillen et al., but not the various papers showing why the approach in the second paper is incorrect.

No response has been by Professor Petherbridge as of June 23.

Separately, other papers on "patent grant rate" that also bear watching:

88 JPTOS 426 (May 2006)

15 (4) Fed. Cir. Bar J. 635 (2006)

Trial of Hwang Woo-Suk starts Tuesday, June 20, 2006

Relevant to various claims that California's CIRM has adequately addressed ethical and conflict of interest issues in implementing Proposition 71, one notes the following text surrounding the trial of stem cell fraud Hwang Woo-Suk:

Prosecutors called witnesses who testified about how Hwang's team may have skirted proper regulations for grants. One researcher for Hwang's team said even if junior associates noticed any irregularities, they could not question the boss. "I was in a position where I could not disobey what Dr. Hwang said," Yoon Hyun-soo testified.

It needs to emphasized and re-emphasized that there were regulations in place, and various people knew that Hwang Woo-Suk was violating the regulations.

There were no comments from Hwang on entering the court: Hwang did not speak to reporters when he entered the Seoul Central District Court.

Hwang violated a bioethics law that was in place at the time of his research. In his 2005 paper to Science, Hwang explicitly (and falsely) claimed he complied with that law: Prosecutors have said the misuse of state funds carries a jail term of up to 10 years while a violation of the bioethics law can mean up to three years behind bars.

As an aside, the Los Angeles Times still has not discussed Mr. Klein's use of a lobbying group to criticize Senator Ortiz right before the California primary election. Senator Ortiz was critical in getting stem cell work advanced in California, but leaving her behind as road kill is of no moment to the Times.

Which is the first post-eBay district court injunction case?

The blog IP Updates refers to the z4 case as being the first post-eBay permanent injunction decision: "The first, post-eBay patent injunction decision in z4 Technologies, Inc. v. Microsoft Corp., __ F.Supp.2d __ (E.D.Texas 2006)(Davis, J.)(citing eBay, Inc. v MercExchange, LLC, 126 S.Ct. 1837, 1839 (2006)) is perhaps most-notable for its discussion of 1) the lack of irreparable harm suffered by z4 and 2) the adequecy of remedies at law to compensate z4 for use of its product activation technology by Microsoft's Windows XP and Office software..."

The z4 decision was filed June 14, 2006 (Judge Leonard Davis).

In KEG TECHNOLOGIES, 2006 U.S. Dist. LEXIS 37726 (decided June 8, 2006), the district court cited eBay, Inc. v. MercExchange, LLC, -- U.S. --, 126 S. Ct. 1837, 164 L. Ed. 2d 641 (2006).

Of satisfaction of the four factor test in eBay, the district court noted: In the instant case, the Court finds that the evidence of record adequately demonstrates satisfaction of the first [irreparable injury] and fourth [public interest] elements of the foregoing test. But Plaintiffs did not show, and indeed, had little if any notice of the need to show, satisfaction of the remaining two elements, i.e., that a
monetary award would be inadequate, and that the balance of hardships tips in
their favor.

Thus, ND Georgia made the first post-eBay determination on irreparable injury in a patent case.

An interesting aspect of the eBay decision arises in the area of permanent injunctions, not necessarily in patent law. In ZEN INVESTMENTS, 2006 U.S. Dist. LEXIS 37171 (decided June 2, 1006), the court noted: The Third Circuit has been unsettled n5 on whether a plaintiff must prove irreparable harm to receive a permanent injunction, as opposed to a preliminary injunction which always requires a showing of irreparable harm.

One wonders how the Third Circuit could have considered the requirement for "irreparable harm" to be unsettled in a permanent injunction if the Supreme Court already had created a list of four factors including "irreparable harm." That's an interesting point.

The pertinent text in the Supreme Court eBay decision is the following:

According to well-established principles of equity, a plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant such relief. A plaintiff must demonstrate: (1) that it has suffered an irreparable [164 L. Ed. 2d at 646] injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. See, e.g., Weinberger v. Romero-Barcelo, 456 U.S. 305, 311-313, 102 S. Ct. 1798, 72 L. Ed. 2d 91 (1982); Amoco Production Co. v. Gambell, 480 U.S. 531, 542, 107 S. Ct. 1396, 94 L. Ed. 2d 542 (1987).

Hmmm, the Supreme Court cites to Amoco Production, which is a PRELIMINARY INJUNCTION case. ["Accordingly, the Ninth Circuit erred in directing the issuance of a preliminary injunction.'] For example: The Court of Appeals' direction of a preliminary injunction conflicted with Weinberger v. Romero-Barcelo, 456 U.S. 305 , and was [480 U.S. 531, 532] in error. The only mention of the words "permanent injunction" in Amoco is in footnote 12: Finally, the Ninth Circuit distinguished Romero-Barcelo on the ground that the District Court in that case refused to issue a permanent injunction after a trial on the merits whereas in this case the District Court denied preliminary injunctive relief. We fail to grasp the significance of this distinction. The standard for a preliminary injunction is essentially the same as for a permanent injunction with the exception that the plaintiff must show a likelihood of success on the merits rather than actual success. See, e. g., University of Texas v. Camenisch, 451 U.S. 390, 392 (1981).

One will not find the four factors enumerated in Amoco. One will find the text:
We reviewed the well-established principles governing the award of equitable relief in federal courts. 456 U.S. at 311-313. In brief, the bases for injunctive relief are irreparable injury and inadequacy of legal remedies. In each case, a court must balance the competing claims of injury and must consider the effect on each party of the granting or withholding of the requested relief. Although particular regard should be given to the public interest, "[t]he grant of jurisdiction to ensure compliance with a statute hardly suggests an absolute duty to do so under any and all circumstances, and a federal judge sitting as chancellor is not mechanically obligated to grant an injunction for every violation of law." Id., at 313.

Ironically, the bigger impact of eBay may be in non-patent cases!

[IPBiz post 1679]

Monday, June 19, 2006

European Union to hold public hearing on patent policy on July 12

Further to an earlier IPBiz post on EU policy on stem cells, one notes that that the EC said it will hold a public hearing on patent policy on July 12, 2006.

Sunday, June 18, 2006

Clive Cookson on Stem cell dispute threatens Europe's ambition

At least eight research teams (in the US, UK, Spain, Sweden and
China) are believed to be trying to succeed where Prof Hwang failed, in cloning
human embryos and then deriving stem cells from them. In the US, private and
state support fills the gap left by Mr Bush's restrictions on federal

Sir Richard Gardner, head of stem cell policy at the Royal Society,
the UK national academy of sciences, said there was little hope of achieving a
unified European policy. "Everything is such a muddle in Europe that the stem
cell research will depend on national funding," he said.

**Too much ethics?**

Toine Manders, Dutch liberal MEP, says: "If you look at all the
discussions surrounding biotechnology, I feel that we are clearly focusing too much on ethics. Of course we should prevent abuses, but we shouldn't leave it
to others to do the research. Otherwise we will eventually have two classes of
European health patients: those who have to get treatment at home and those who
will be able to afford a trip to China or elsewhere to get access to the latest
medical advances."

More on Harvard effort in embryonic stem cells

An article in the Republican includes the text: Harvard's involvement provides a vital boost to a field that has been marred by scandal - notably when Korean scientist Hwang Woo Suk's claim that he had cloned the first human embryonic stem cells was proven fraudulent.

Although a recent report by SNU did conclude that Hwang's assertion of SCNT human cloning (the 2004 paper in Science) was false, the Newcastle claim of SCNT human cloning has not been retracted. The Newcastle group did NOT create a stem cell line from the cloned blastocyst.

The Republican also noted:

Harvard scientists have already laid some important groundwork by obtaining building and laboratory space and securing necessary approvals. The project, which involves two teams of scientists - one from Harvard University's main campus and the other at Children's Hospital Boston - has already begun some experiments.

While the research is unlikely to turn up treatments or cures for at least a decade, embryonic stem-cell work holds the greatest promise of unraveling the causes and unlocking cures for diseases that continue to stump scientists.

Sigma-Aldrich Corp. suing Open Biosystems over research tool patent

Sigma-Aldrich Corp. and Oxford BioMedica are suing Open Biosystems Inc. in ED Mo for alleged patent infringement on a tool used in genetic research. Sigma-Aldrich in October 2005 obtained an exclusive license on Lentiviral LTR Deleted Vector technology from Oxford BioMedica, a British gene therapy company. The two firms claim that Open Biosystems, of Huntsville, Ala., is marketing and selling a product to researchers that infringes on their intellectual property on the research tool.

[IPBiz post 1675]

Lobbying efforts over Angiomax patent extension

Legislation sought to overcome a patent application (patent extension) filing error by The Medicines Company concerning Angiomax is discussed in an article in the Boston Globe.

The Medicines Company expended $440,000 in lobbying efforts last year.

Saturday, June 17, 2006

Geron prevails in European patent case

Biopharmaceutical company Geron Corp. said June 15, 2006 that the European patent office [EPO] has upheld 44 of its 47 claims in a patent related to the cloned human telomerase gene and its uses.

Denmark's Pharmexa had filed an opposition to the patent, seeking revocation of all 47 claims. The three canceled claims are related to immunogenic peptides of telomerase useful as vaccines, Geron said, adding that they are not relevant to the company's anticancer vaccine candidate.

"It's about the entrepreneurial ethos of Californian universities."

The Register: One thing Lisbon saw from its economic perspective was that in order for Europe to become as "dynamic" as the US, its citizens need be clued up on technology. George Osbourne had something of Lisbon in him when he said to an audience of Silicon Valley go-getters, you're better than anyone else, and you have more to show for it, and you know why? "It's about the entrepreneurial ethos of Californian universities."

If only European universities could foster the "growth of dynamic new companies" like the Yanks do with the help of their easy capital and "cheap and effective" patent system, he said.

Patents offer an interesting perspective on Osbourne's question. Most European experts agree that the US system is cheap, but they also think it is lax and of poor quality.

The European system may not be perfect, frayed by national differences as it is, but it is steeped in proud tradition and its officers are meticulous about quality. It is also fettered by heritage enshrined in different national constitutions. The European patent office expects it could take 10 years before current reform of the European system will deliver the first ever Community patent. The last set of reforms, the 2000 revision of the European Patent Convention, is still to be ratified.

Oh, for a blank sheet of paper and a decent draughtsman. The US system, like much of everything else they have, was drawn on a blank sheet (the competence of the draughtsman is _).

The EC thinks the blank sheet afforded East European countries like Estonia by the wholesale rejection of their Communist heritage has given them the opportunity to leapfrog much of Western Europe in the official league of dynamic digital societies.

JP Enterprises (lovecity) filed suit against Yahoo over metatags

The suit contends that Yahoo and the other defendants inserted metatags containing the word "lovecity" as keywords into Google's AdWords paid search advertising system.

Comments on intellectual property blogs

An article in Intellectual Property Today in May 2006 ("Article Writing as a Credentialing Tool") contained some statements about intellectual property blogs which might be further contemplated:

1. "there are not a lot of IP related blogs out there"

Actually, there are a lot of IP related blogs on the internet. For example, I/P Updates provides links to 28 IP related blogs (not even including IPBiz). The Pierce Law IP News Blog lists even more IP related blogs (and includes IPBiz).

2. examples of "really good IP blogs"

theiplawblog (3 posts in month of May 06; On June 16, the most recent entry is for May 24)
patentprosecutionblog (On June 16, the most recent entry is for April 7)

[neither of which is given a link on Pierce Law blog]

3. blog "material is easily indexed by search engines"

In theory "yes," but in practice "no." For example, see previous IPBiz posts about my google searches on +"patent reform" +2795.

Princeton gave Abraham Lincoln "doctor of laws" degree in 1864

Abraham Lincoln accepted an honorary degree of Doctor of Laws from the College of New Jersey [now Princeton University] in 1864 after his reelection to a second term. New Jersey did not vote for Lincoln in 1864, and Lincoln's opponent in 1864 would later become Governor of New Jersey. In the timeline of Civil War events, Lincoln's reply letter to the College of New Jersey was written just after the fall of Savannah, Georgia to troops of General Sherman, so that Lincoln was likely in an upbeat mood. One notes that Princeton contributed roughly equal numbers of troops to Union and Confederate forces.

The honorary degree was conferred at a meeting of the trustees on December 20, 1864, and President Maclean wrote to Lincoln the same day to inform him of their action.

Just as Ben Franklin is referred to as "Dr. Franklin" (because of an honorary degree), one could refer to "Dr. Lincoln."

Lincoln's reply letter is as follows:

Executive Mansion
Washington, December 27, 1864

My Dear Sir:
I have the honour to acknowledge the reception of your note of the 20th of December, conveying the announcement that the Trustees of the College of New Jersey have conferred upon me the Degree of Doctor of Laws.

The assurance conveyed by this high compliment, that the course of the government which I represent has received the approval of a body of gentlemen of such character and intelligence in this time of public trial, is most grateful to me.

Thoughtful men must feel that the fate of civilization upon this continent is involved in the issue of our contest. Among the most gratifying proofs of this conviction is the hearty devotion everywhere exhibited by our schools and colleges to the national cause.

I am most thankful if my labors have seemed to conduce to the preservation of those institutions under which alone we can expect good government and in its train sound learning and the progress of the liberal arts.

I am, sir, very truly
Your obedient servant

Dr. John Maclean

Of Lincoln's text about "approval of a body of gentlemen," see however

an earlier IPBiz post

In passing, I note that Dean Badger of the University of Chicago Law School had a great comedic skit on taking (and keeping) applications and money sent to the Princeton University School of Law (a nonexistent entity.)

House hearing: "Patent Trolls: Fact or Fiction?

At a Congressional hearing on "patent trolls," Paul Misener, Amazon's vice president of global public policy suggested that politicians should concentrate mainly on rewriting the law around damages. Since products may rely on hundreds of thousands of distinct patented components, juries could be required to award money to patent holders based solely on the infringed patent's contribution to the overall product, not on lost sales for the entire affected product.

However, Misener's suggestions prompted Congressmen Smith and Berman to take jabs at Amazon's one-click patent, which covers a process for making online purchases in a single step, and caused controversy when the e-commerce giant asserted it against

"Could not be accused of being a troll for patenting the one-click?" Smith asked, a wry smile on his face.

Misener defended the patent as "a radical departure from the shopping cart model" when it was granted in 1998. "We only exercised the patent against someone who at the time...had publicly announced intention to crush our business," he said. "This wasn't some scheme to hit up small users."

The interchange among Misener of Amazon and Smith and Berman illustrates the plastic nature of the definition of "patent troll." Misener seems to imply one is not a troll if one enforces a patent against LARGE users, like barnesandnoble [BN].

This view was not inconsistent with remarks by Segway inventor Dean Kamen who argued that politicians should not penalise legitimate inventors, in a quest to root out the trolls. "If a big company repeatedly disregards people's rights, they are as bad as the trolls at the other end," Kamen said. He suggested that a way to quell abuses by both sides could be to institute "some form of loser-pays" approach to "penalise people who are abusing the system."

Post-grant opposition came up. Bills by both Smith and Berman would establish a "post-grant opposition system" in which the public would have a certain number of months to dispute the validity of patents after they are issued, without having to go to court. Presumably, Smith and Berman have not considered the various arguments AGAINST a post-grant opposition system.


ComputerWorld reported:

A House of Representatives subcommittee, seeking to reduce legal claims by owners of illegitimate patents, heard June 15 that it's difficult to define just what is a bogus patent claim.

The goal of Thursday's hearing, said subcommittee Chairman Lamar Smith, was to define so-called patent trolls, which some patent-reform advocates say are those who own patents solely for the purpose of collecting license fees or suing alleged infringers.

"The patent system should reward creativity, not legal gamesmanship," said Smith, a Texas Republican and sponsor of patent overhaul legislation called the Patent Reform Act. Smith's wide-ranging bill would limit damages in some patent cases, allow a new patent challenge mechanism and allow third parties to submit evidence that a patent application contains someone else's invention.

But four witnesses, including Segway scooter inventor Dean Kamen, told the House Judiciary Committee's Subcommittee on Courts, the Internet, and Intellectual Property that defining who exactly is a patent troll become complicated in the details. Some people have defined patent trolls as patent holders who don't develop their inventions, and Kamen's firm pitches its patents to a larger company to develop the products, he said.

"I only recently found out, after reading the definition of a troll, that I am one," said Kamen, whose DEKA Research and Development Corp. has invented several medical products. "It's maybe a little bit unfair and dangerous to characterize people who license products as trolls."

Microsoft loses appeal in case of patent infringement involving Office

On June 14, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a verdict that Microsoft's Office software infringed on a patent held by Carlos Armando Amado. In June 2005, an Orange County, Calif., jury awarded Amado $6.1 million, ruling that Microsoft's method of linking its Access database and Excel spreadsheet infringed on Amado's technology.

"This ruling signals the validity of the patent and confirms Microsoft's liability of infringement on Mr. Amado's software program," Vince Belusko, a Morrison & Foerster partner, said in a statement. A Microsoft representative did not immediately have a comment to CNET.

Morrison & Foerster said it is hoping that the federal court will award Amado further damages for continuing infringement, out of an escrow account that now has more than $65 million in it.

Since the jury verdict last year, Microsoft has altered Office, alerting businesses back in January, 2006 that they will need to upgrade to the modified

Given Microsoft's modification of Office, in response to the Amado case, the argument of Microsoft in the z4 case is interesting. From Patently-O, discussing the case z4 Technologies, Inc. v. Microsoft (E.D.Texas 2006):

Microsoft argued that it would be really hard to redesign even a small component of Microsoft office. From what I have heard about the complicated code noodle, that assertion must be true. Thus, the court found that the balance of the hardships weigh in favor of Microsoft.

Separately, of the eBay injunction issue, from an earlier IPBiz post:

It's a curious solution to issues of patent reform. Rather than solving the direct upstream problem (get the patent examination done right in the first place), one relaxes the downstream rules, so the picture gets fuzzier. Maybe there will be an injunction, maybe there won't be. Kinda depends on what I think about the patent (although I've determined it valid, it might be like a business method or a law of nature, so I'll discount it a bit) and the addiction the public has developed to the infringing product (if there's lots of infringing product, the public interest might be to continue the use, so I'll weight that factor for the infringer because he's been a very successful infringer). And the patentee does get money damages. Of course, patentee didn't get to pick who developed his invention, or how it developed, but patentee should be grateful because someone developed it.

I had written upon injunctions based upon infringement of one element of a multielement product.

See also Professor Epstein's commentary.

See also a more complete discussion of Continental Paper.

[IPBiz post 1667]

Friday, June 16, 2006

Was Edison a patent troll, and where is California going in stem cell research?

In March 2006, I had prepared an article for the April 2006 issue of Intellectual Property Today which discussed Thomas Edison's light bulb and stem cell research. I cited this article in my comments to the USPTO about proposed rulemaking in the area of continuing applications. Unfortunately for me, Intellectual Property Today didn't publish the article, either in April or May 2006.

Certain portions of that article have been placed in an ezine article,

Edison as a Patent Troll, or Where is California Going in Stem Cell Research?

[Of allegations that Edison did not make product, see an earlier IPBiz post about misstatements by Alan Murray of the Wall Street Journal.]

[IPBiz post 1666]