Tuesday, October 10, 2006

Decreasing attrition of USPTO examiners, when?

On the topic of patent examiner attrition, POPA noted:

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

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

While the USPTO talks of limiting continuing applications, there is not so much talk of decreasing examiner attrition. The USPTO planned to hire 1,200 patent examiners in FY 2006 and 1,200 per year in subsequent years. Plans for hiring patent examiners need to include plans for retaining patent examiners.

The case In re Rasmussen, 211 USPQ 323, cites to In re Barker, 559 F.2d 588, concerning whether a rejected claim found support in the original disclosure. This issue is relevant to the discussion of Kintisch's July 28 Science article that appears in 88 JPTOS 743. Kintisch did not discuss the impact of the examiner attrition problem on USPTO performance.

Of third parties, Net Gear was peripherally involved in the case BroadCom v. Microtune (W.D. Wisconsin). Net Gear sold modems, which included tuners from Hiltron (Taiwan) which came from Microtune, which was accused of infringement by Broadcom. Broadcom had brought a related patent infringement suit in the rocket docket of ED Texas, but dismissed the suit after finding invalidating prior art. Also, Microtune asserted its own patent (5,737,035) against Broadcom, and Broadcom sought re-examination of the '035 patent. The issue of dilatory litigation practice came up. The Wisconsin case was merely a venue matter. However, it is of interest to note that BroadCom asserted ED Texas was UNABLE to provide plaintiff with speedy resolution that its intellectual property rights require. Thus, litigation speed is in the eye of the beholder, and someone has asserted that ED Texas is not so fast!

Of obviousness, of current interest in KSR v. Teleflex, note the CAFC in Kahn said we "have explained that this test begins the inquiry into whether a skilled
artisan would have been motivated to combine references by defining the prior art
relevant for the obviousness determination, and that it is meant to defend against
hindsight. See id.; In re Clay, 966 F.2d 656, 659-60 (Fed. Cir. 1992)"

Further of obviousness, how "obvious" are designs of printer cartridges and inks? In August 2006, Hewlett-Packard sued China's G&G Ninestar Image Co., a cartridge manufacturer, alleging G&G had violated seven H-P patents in cartridge design. The complaint also targets four online retailers. H-P also asked the International Trade Commission to open an investigation against Ninestar. A Ninestar spokeswoman said the company had no comment. This latest suit follows other actions over the past year. In June, H-P said retailers Walgreen Co. and OfficeMax Inc. had infringed on H-P ink patents with ink used at in-store ink-cartridge-refilling stations; Walgreen and OfficeMax both deny the claims. Last year, H-P similarly warned the U.S. arm of Cartridge World Inc., a domestic retail ink-cartridge refiller; Cartridge World says it is working to resolve the issue.

Also of relevance in the printing area is the case Agfa v. Creo (CAFC June 26, 2006), concerning inequitable conduct as to Agfa's patents. Creo contended that Agfa did not disclose prior art including the Barco lithosetter and the Gerber Cressent. The CAFC gets into a bit of history of 37 CFR 1.56, and cites Digital Control, 437 F.3d 1309. The CAFC also cites a JPTOS paper by Walterscheid on the early evolution of US patent law. The CAFC even cites to Curtiss-Wright, 438 F.3d 1374, concerning independent claims. GFI v. Franklin, 265 F.3d 1386, is cited on deceptive intent. Hofmann LaRoche v. Promega, 323 F.3d 1354, is also cited. Curtiss-Wright v. Velan pertains to US patent 6,565,714 on a coke drum valve (see also US 7,033,460) and standards for preliminary injunction.

The case TriStrata against Mary Kay Cosmetics over technology employing alpha-hydroxyacid (AHA) involved a permanent injunction issue and $26.4 million. Cleopatra used alpha-hydroxy acids as beauty aids.

In In re Bogese (CAFC 2002), the CAFC followed established precedent in holding that the US Patent & Trademark Office has the authority to reject applications for patents that would be unenforceable due to unreasonable and unexplained delay in prosecution, regardless of statutory compliance by the applicant.

In June 2006, Bestex filed a counterclaim against Taser International. Park of Bestex stated: "Bestex Company, Inc. will be seeking arrangements to cooperate to exchange expert information with any Plaintiffs, who have products liability suits pending against Taser International, Inc. Bestex Company, Inc. believes that its suit against Taser International, Inc. will benefit from any such information supplied it by any such Plaintiffs.

BCGI CEO E.Y. Snowden ("Our fight is far from over") began his term as chairman in Oct. 2006.

Also of interest, Life Techs., Inc. v. Clonetech Labs, 224 F.3d 1320 (CAFC 2000) on the subject of inequitable conduct.

Also of interest, Mike Wotton on patentbusting: Prior Art Materials have fascinated me for years and I have accumulated library of over 250,000 Consumer Product and Wholesale Trade catalogs, ( I've lost Count). Until last week, I have NEVER used them for Prior Art searches outside my own work as a product designer.

I am in the process of helping someone overcome the claims in a patent filed on a type of writing instrument filed in 1998. This is my VERY first effort at Patentbusting.

Also, Eon-Net sued banker Flagstar Bancorp for infringing U.S. Patent No. 6,683,697, to Robert Lech of Millenium L.P., entitled Information processing methodology, and having first claim reading:

A multimode information processing system for inputting information from a document or file on a computer into at least one application program according to transmission format instructions, and to operate in at least one of: a. a definition mode wherein content instructions, at least one of which is not a location of said information derived from a pre-scanned image of a blank form, are used to define input information from within said document or file required by said at least one application program; and b. an extraction mode to parse at least a portion of said document or file to automatically extract at least one field of information required by said at least one application program and to transfer said at least one field of information to said at least one application program.

In Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline PLC et al., 189 F.Supp.2d 377 and 213 F.Supp.2d 597 (2002), aff'd, 349 F.3d 1373 (Fed. Cir. 2003) Kenyon & Kenyon was able to obtain for its client, through summary judgment motions and trial, decisions invalidating seven GlaxoSmithKline patents relating to clavulanic acid.

In IPXL v. Amazon, the CAFC found that the IPXL claim was unclear whether it required only a system that allows the user to use the input means or instead required that the user actually use the input means. “Because claim 25 of Amazon's patent recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2.” See previous IPBiz post.
In September 2006, Toshiba and Micron settled all outstanding NAND flash memory litigation.
PatentHawk had noted "The new web version of MPEP 8r3 differs significantly from the 8r2 HTML version. MPEP 8r2 was fine, while 8r3 is not." A post on intelproplaw noted: This includes the Maheu printed MPEP 8r3 (August 2005). The USPTO will move to testing on r4 in 2 weeks, but the differences between r3 and r4 are minor.
In Nichols v. Scantibodies, the CAFC addressed a partial summary judgment of invalidity of US 6,030,790. The CAFC reversed the district court and found anticipation under 35 USC 102. Nichols was the exclusive licensee of the '790 patent. On anticipation, the CAFC cited SmithKline Beecham, 403 F.3d 1331. There was an issue of whether an abstract was a printed publication. The CAFC cited Wyer, 655 F.2d 221 and Klopfenstein, 380 F.3d 1345. The CAFC found that the abstract in question inherently disclosed the claimed antibody. On the issue of non-recognition, the CAFC noted both SmithKline, 403 F.3d at 1343, and Schering, 339 F.3d at 1377.

In re Angstadt, 537 F.2d 498, 502-503, 190 USPQ 214, 218 (CCPA 1976) deals with the issue of undue experimentation.


Blogger Lawrence B. Ebert said...

In all the talk about "how many" continuing applications are filed, the legal academics never get into discussing the many DIFFERENT reasons why continuing applications are filed. The following shows a reason for an RCE filing that has nothing to do with issues raised by Lemley and Moore (who in any event never discussed RCE numbers in their article in the Boston University Law Review [BULR]).

From a board on Oct. 12, 2006:

Examiners review their dockets for the easy cases. I had an application a few years ago where I had a Notice to File Missing Parts, and was trying to get the dec signed. *Before* I responded, I got a Notice of Allowance. Yup, you read that right. The examiner must have seen the application in PAIR, and pulled it out of the queue.

Because I hadn't yet filed the IDS, I had to file an RCE to get the references considered. So when all was said and done, that examiner got one point for taking up the case, one for the first allowance, one for my forced RCE, and one for the second allowance. If I remember correctly, that first allowance was mailed at the end of a fiscal year (Bing! Two points!)

6:45 AM  

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