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Archived updates for Tuesday, January 31, 2006

USPTO Seminar in Atlanta: China's Impact on I/P

China's Impact on Intellectual Property:
Understanding the New Realities Within a Global Economy
March 2-3, 2006
8:00 am to 6:00 pm
Hyatt Regency Atlanta

The United States Patent and Trademark Office (USPTO) is sponsoring a seminar on "China's Impact on Intellectual Property: Understanding the New Realities within a Global Economy," on Thursday and Friday, March 2 and 3, 2006, at the Hyatt Regency-Atlanta in Atlanta, Georgia.

The free, two-day program will provide comprehensive information on protecting and enforcing intellectual property in China for companies of any size -- from those contemplating entering the China market to those with an established presence in China as well as those who simply want to know more about better protecting themselves against IP theft from abroad.

Topics will include a review of China’s laws and regulations that may affect how a business protects and enforces its intellectual property, how best to protect business assets to avoid intellectual property problems from China in the first place, how to recognize when an intellectual property asset has been infringed, what to do if infringement occurs, and what the U.S. government is doing to improve the intellectual property protection and enforcement environment in China for U.S. industry. Speakers at the seminar will include representatives from U.S. law firms servicing clients in China, Chinese law firms representing U.S. companies, academic experts on China's intellectual property system, representatives from various U.S. companies, Chinese government officials, and members of the USPTO’s China intellectual property rights team.

For more information and registration, go to

I hope to see you there.
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Patent Law Judges Panel Discussion in Des Moines

"Impressions and Observations of Patent Trial & Markman Hearings" with
Chief Judge Mark W. Bennett, Northern District of Iowa
Chief Magistrate Judge John A. Jarvey, Northern District of Iowa
Judges Robert W. Pratt and ames E. Gritzner, Southern District of Iowa

March 9, 2006 at 12:00-1:30 p.m. Central Time
Drake Law School
Old Main Building, Levitt Hall
2507 University Ave
Des Moines, Iowa

$35 cost includes a light lunch

The Association of Patent Law Firms and Drake University Law School invite you to join them at a lunch presentation & discussion led by Edmund J. Sease, of McKee, Voorhees & Sease P.L.C., and a distinguished panel of Judges. For reservations and lunch payment options, go to

CLE has been applied for in Iowa and Illinois.
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Disclosed Pivot Joint Excluded Sliding

In Minebea Co, LTD. v. Think Outside, Inc., et al. (Fed. Cir., January 25, 2006, not citable as precedent) the court held that the term "pivot" was properly construed to exclude sliding motion in U.S. Patent No. 4,433,225 (left) in connection with claim language reciting "a pair of lever arms joined at intermediate portions thereof by a pivot to form a scissors-like linkage."
n particular, the parties disagreed as to whether the "pivot" of claim 1 must be "fixed relative to the two arms." According to Circuit Judge Lourie,

In Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005), we
noted that it is "entirely appropriate for a court, when conducting claim
construction, to rely heavily on the written description for guidance as to the
meaning of the claims." Although the dictionary definition of the term "pivot"
does not appear to exclude sliding motion, the district court properly
determined that the written description limits the scope of the claim term
"pivot" to a structure that is fixed in position relative to the lever arms, and
thus excludes sliding motion.

As the written description provides, "the levelling [sic] mechanism of the present invention utilizes a scissors-like linkage" fixed at an intermediate position relative to the lever arms. See ’225 Patent, col. 4, ll. 8-11. Because the linkage in a pair of scissors is fixed in position relative to the scissors, it necessarily follows that the central pivot of the written description must also be in a fixed position, as the district court’s claim construction requires. Moreover, a sliding central pivot would be inconsistent with the engineering principles behind the leveling mechanism disclosed by the specification. Applying basic mechanics, because the joints at the ends of the lever arms in the specification’s disclosed embodiment are capable of sliding in their respective slots, the leveling mechanism would not also need a sliding central pivot in order to allow the keytop to travel downward when it is pressed down.

In Phillips, we also stated that "[q]uite apart from the written description and the prosecution history, the claims themselves provide substantial guidance as to the meaning of particular claim terms." 415 F.3d at 1314. There is no question in this patent that sliding and pivoting are different motions. Indeed, claim 1 provides that certain structures will "slide in addition to pivot." Such language would be superfluous if sliding motion were subsumed in pivoting motion. See id. at 1317 (explaining that the term "steel baffles" strongly implies that the term "baffles" does not inherently mean objects made of steel). Moreover, claim 1, like the written
description, requires the "pivot" to "form a scissors-like linkage." Inherent in
this language is the requirement that the "pivot" of claim 1 must have
structural characteristics that allow it to "form a scissors-like linkage." As
explained above, a structural characteristic of a pivot with "a scissors-like
linkage" is to be fixed in position relative to the lever arms.

Lastly, we find unavailing Minebea’s argument that because the district court did not construe the term "scissors-like," we too should not consider that term in our review of the court’s construction of "pivot." Such a request is tantamount to construing
claim limitations in a vacuum, and is plainly inconsistent with Phillips, which
compels us to construe claim limitations in the context of the claim in which
they appear. Id. at 1314.

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Inconsistencies in U.S. Antecedent Basis Requirements?

In Energizer Holdings, Inc., et al. v. International Trade Commission, et al. (Fed. Cir. January 25, 2006), the court reversed the Commission's ruling that independent claim 1 and dependent claims 2-7 were invalid for indefiniteness under 35 U.S.C. §112 ¶2, on the ground that the claim term "said zinc anode" lacks antecedent basis in the claim. Claim 1 read as follows
1. An electrochemical cell comprising an alkaline electrolyte, a cathode
comprising manganese dioxide as an active cathode component, and an anode gel comprised of zinc as the active anode component, wherein the cell contains less
than 50 parts of mercury per million parts by weight of the cell and said zinc
has a gel expansion of less than 25% after being discharged for 161
minutes to 15% depth of discharge at 2.88A.

The Commission also held that even if "said zinc anode" is construed to have as antecedent the "anode gel comprised of zinc as the active anode component" recited earlier in the claim, the claim would still be indefinite because, as written, it requires that the anode of every cell has been "discharged for 161 minutes to 15% depth of discharge at 2.88A."

According to the Federal Circuit,

Whether this claim, despite lack of explicit antecedent basis for "said zinc
anode," nonetheless has a reasonably ascertainable meaning must be decided in
context. In prosecuting the '709 patent, the examiner made several objections to
the claims, but the claims were not rejected or objected to on the ground of
lack of antecedent basis. In Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed.
Cir. 2001) the court held that despite the absence of explicit antecedent basis,
"If the scope of a claim would be reasonably ascertainable by those skilled in
the art, then the claim is not indefinite." Moreover, we noted in Slimfold that
an antecedent basis can be present by implication. Slimfold, 810 F.2d at 1116.
See Cross Medical Products v. Medtronic Sofamor Danek, 424 F.3d 1293, 1319 (Fed. Cir. 2005).

Neither the Commission nor the Intervenors argued that they did
not understand the intended scope because of the absence of an antecedent. The
Commission erred in holding that the need to construe a claim, or the proffer of
alternative constructions, renders the claim indefinite. A claim that is
amenable to construction is not invalid on the ground of indefiniteness. In
Exxon Research & Engineering, 265 F.3d at 1375, the court stated that "if
the meaning of the claim is discernible, even though the task may be formidable
and the conclusion may be one over which reasonable persons will disagree, we
have held the claim sufficiently clear to avoid invalidity on indefiniteness
grounds." See also Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1353
(Fed. Cir. 2003) (determining whether claim is "amenable to construction");
Honeywell Int’l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332, 1338 (Fed. Cir.
2003) (a claim is not indefinite because it is hard to construe). Here, it is
apparent that the claim can be construed. In that regard, we conclude that
"anode gel" is by implication the antecedent basis for "said zinc anode." The
Commission's holding of invalidity on the ground of indefiniteness is reversed.

While the Commission's ruling might, at first glance, seem sorely out of step with current prosecution practice, Professor Wegner has pointed out that whether a clear grammatical mistake will be held against a patentee is very often panel dependent. "With a different panel an even less obvious mistake – using 'to' instead of 'at' to describe the heating of a bakery dough to (instead of at) incineration temperatures – led to the nonsensical interpretation of a process to make ruined, incineration particles of dough." See Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004)(Schall, J.). "Neither the fairness/equity ruling in Energizer Holdings (which also differs from PTO holdings) nor the straight forward legal ruling in Chef America is necessarily “right” or “wrong”: But what is wrong is the lack of consistency at the court when it deals with attorney claim drafting mistakes." See also Ex parte Boswell, 1995 WL 1747745 (PTO Bd. App. & Int. 1995); Ex parte Lafferty, 1997 WL 1935437 (PTO Bd. App. & Int. 1997); Ex parte Durrani, 1999 WL 33224340 (PTO Bd. App. & Int. 1999).
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Management Pressure, Late Opinion, and Lack of Reliance Supported Willfulness Verdict

In Applied Medical Resources Corp. v. United States Surgical Corp. (Fed. Cr. January 24, 2006), the federal Circuit agreed with Applied that substantial evidence supported the jury’s verdict of willful infringement.

As the district court correctly noted, Applied presented evidence from which a jury could reasonably infer that U.S. Surgical desperately needed a universal seal trocar to remain competitive in the surgical business, that U.S. Surgical’s management did not properly oversee or adequately participate in the development of Versaport II, and that U.S. Surgical’s management placed intense time pressure on their engineers to create a new product.

At trial, U.S. Surgical produced three written opinions from outside counsel dated May 29, 1997, May 30, 1997, and June 30, 1997, in an attempt to show that it relied on legal advice to make and sell the infringing trocars. However, the first letter
was simply "ship[ped] off in the mail," the second letter did not address infringement of the claims of the ’553 patent and was limited to the issue of contempt, and the third letter arrived after U.S. Surgical began selling Versaport II. Based on this evidence, a jury could have reasonably concluded that U.S. Surgical paid little if any attention to the opinion letters.

Other evidence also undermines U.S. Surgical’s alleged good faith reliance on the
legal opinions. Thomas Bremer, U.S. Surgical’s former Senior Vice President and General Counsel, testified that U.S. Surgical wanted "no gap" in the supply of Versaport trocars once the Applied I injunction took effect on May 20, 1997. A
reasonable jury could have believed that U.S. Surgical was not concerned about
infringement and would have proceeded to manufacture Versaport II despite
receiving outside legal opinions. Mr. Bremer also offered additional testimony
from which a jury could have inferred that he did not rely on the legal opinions
as legitimate advice as to whether Versaport II infringed, but rather sought legal opinions for their potential evidentiary value on the issue of willful infringement in future litigation. This could have suggested to the jury that U.S. Surgical did not rely on any opinions of counsel in good faith.

We conclude that the jury’s finding of willfulness was supported by substantial
evidence, and therefore that the district court did not err in denying U.S. Surgical’s motion for judgment as a matter of law of no willful infringement.

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Archived updates for Monday, January 30, 2006

US-ITA Requests Comments on Protection of I/P at Trade Fairs

The International Trade Administration of the U.S. Department of Commerce has requested comments from interested parties regarding issues related to Intellectual Property Rights (IPR) protection at trade events, including policies and current practices, and problems of infringement. Comments are due by February 11, 1006.

The Department is particularly interested in:
  1. The frequency and nature of IPR infringement incidents that they believe occur at trade events, including specific instances where they have experienced problems with IPR violations at a trade event;
  2. any measures or written policies that trade events organizers currently implement pertaining to IPR protection; and
  3. the benefits, and burdens, of the Department initiating reasonable IPR policies at trade events that it supports.

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Sense of the Senate on Patent Law Reform

Thanks to J. Matthew Buchanan at Promote the Progress for pointing out that the PACE Through Education and Research Act, S.2198, includes a "sense of the Senate" section relating to patent reform. In what he calls "nothing more than smoke signals -- they're short on details and calculated to send signals of support," Section 321 of the bill calls for
  • a 20 percent increase in overall funding to hire and train additional examiners and implement more capable electronic processing
  • a first-inventor-to-file system
  • an open review process following the grant of a patent
  • shielding researchers from infringement liability, and
  • reducing barriers to innovation in specific industries with specialized patent needs
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Suffering from Trademark Trolls?

"Isn't it time for trademark practitioners to demand that the USPTO and the TTAB crack down on trademark trolls?" asks John Welch at the TTABlog.
Patent law reformers are upset at what they call "patent trolls" -- individuals or companies that take improper advantage of the patent system. But what about the trademark system? It has its own "trademark trolls" who take improper advantage of the system by filing groundless requests for extension of time to oppose (now facilitated by ESTTA), or by filing opposition or cancellation proceedings, or by suing or threatening to sue legitimate applicants and owners. A patent troll at least has to get its hands on an issued patent; a trademark troll need only claim common law rights in a supposed "mark" in order to make its threats.
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Fixed-Term Exclusive License Not an Assignment for Standing

In Aspex Eyewear, Inc., et al. v. Miracle Optics, Inc (Fed. Cir. January 10, 2006) the court found that a termination provision in an agreement between Contour and Chic precluded finding that the agreement was an assignment. It therefore concluded that Contour was the owner of the ’747 patent when the original complaint was filed, and thus it had standing to sue.

According to the opinion by Circuit Judge Lourie,

[T]the dominant factor in the Contour/Chic agreement on which we differ with the district court’s otherwise well-reasoned opinion is the provision limiting the term of the license. Chic’s rights, however substantial in other respects, are unquestionably valid for only a limited period of time, ending no later than March 16, 2006. As of March 16, 2006, Contour, absent an amendment of the agreement, will regain all of the rights under the ’747 patent that it had previously transferred to Chic. It is thus the unquestioned owner of the patent, and, whatever rights Chic had up until 2006, it is clear that Chic never had all substantial rights to the patent, i.e., it never was the effective owner of the patent. Barring the ’747 patent being found invalid or unenforceable, as of March 16, 2006, Chic will have possessed its rights for approximately five years, in contrast to Contour’s sole and exclusive rights for
the remainder of the patent term. Chic never had effective ownership of the ’747 patent. It was not a situation in which Chic had an exclusive license with all substantial rights that was only defeasible in the event of a default or bankruptcy, or some other condition subsequent. By having rights for only a limited portion of the patent term, it simply did not own the patent. It was merely an exclusive licensee without all substantial rights. The ’747 patent was never assigned; it was exclusively licensed for only a fixed period of years, which does not meet the all substantial rights standard. Thus, we hold that the Contour/Chic agreement was a license, not an assignment, and Contour was the owner of the patent when the complaint was filed and entitled to sue.

Our conclusion that the termination provision in the Contour/Chic agreement precludes a finding that the agreement was an assignment is consistent with the policy concerns that we expressed in Vaupel. In Vaupel, while considering the importance of an agreement’s right to sue provision, we noted the public policy in favor of preventing multiple lawsuits on the same patent against the same accused infringer. 944 F.2d at 875-76. That policy favors finding Chic not to be the effective owner of the ’747 patent. If we were to consider Chic the assignee of the patent under the Contour/Chic agreement, as appellants recognize, it is possible that Chic could assert that patent against an accused infringer during the term of the agreement without Contour’s participation in the lawsuit, and Contour could later assert the patent against the same accused infringer once the agreement expired. After all, the six-year limitation on damages could encompass a period when Chic, according to the district court's holding, and Contour both had rights to sue under the patent.

The cases cited by appellees in its argument that a reversionary interest alone should not compel us to conclude that the Contour/Chic agreement is a license, and not an assignment, are readily distinguishable. As we have stated, this case involves more than a reversionary clause. Moreover, none of the cases that appellees cite, Vaupel, 944 F.2d at 874 (termination provision triggered only in the case of bankruptcy), Prima Tek II, 222 F.3d at 1378-79 (agreement provided for one-year renewals, but otherwise, the agreement did not contain a fixed termination date), or Waterman, 138 U.S. at 261 (patentee could regain rights to the patent by paying off a mortgage), addressed an agreement with a definite termination date, as is the case here. On the contrary, in each of the agreements in appellees’ cited cases, the term of the agreement existed potentially for the life of the respective patents, and it was presumable that the transferred patent would never return to the assignor. That is not the case here.

We therefore vacate the district court’s decision that Contour lacked standing to bring this action in view of our conclusion that Contour was the owner of the ’747 patent when the original complaint was filed.

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More Data on Software Patents

According to David J. Stein, whose data is shown above, "It's interesting to note the logarithmic growth of issuing patents with titles containing terms like 'computer program' and 'software' that predates State Street Bank. This would seem to disprove the notion (common amongst opponents of software patents) that State Street led to a flood of software-related patent filings - rather, it looks very much like State Street merely acknowledged the inexorable trend of patent-worthy software."

Stein also observes from his data that "While the overall growth in software patents is logarithmic, the largest firms - IBM, HP, Intel, and Texas Instruments - seem to have plateaued. Even Microsoft, which has made a point of broadcasting its intention to bolster its patent practice, has only achieved linear growth. Thus, the largest developers of software appear to be securing a shrinking proportion of the annual software patent pool. This would seem to disprove another notion common amongst opponents of software patents: that these patents are primarily intended to benefit and entrench the positions of large, established firms."

Stein has written some software that builds a relational database modeling the patent class/subclass hierarchy so that it can be explored in a more user-friendly format. There's an online version and a downloadable version; both versions allow you to browse the hierarchy in tree/node format, jump to a particular class or subclass, and query the database by title or description keyword. The online version is available at while the the downloadable version is available at

Here is another bit of infomation that his software has uncovered:

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Archived updates for Friday, January 27, 2006

TGIF for the Youth League for Monitoring Internet Piracy

According to Benjamin Wong writing for the South China Morning Post on January 20, 2006, about 200,000 young people have been invited to join the Youth League for Monitoring Internet Piracy, which was to be given its trial run this week.

"Under the scheme, the youngsters will be given a blacklist of websites to monitor when they are using the internet. If they notice anything that infringes on copyright, such as the illicit uploading of files, they can contact customs through a dedicated website.Even if the department does not pursue infringements in the courts, copyright owners will be alerted so they can launch civil action."

According to Managing Intellectual property on January 23, a team from Hong Kong's Customs' IP department was expected to start training around 100 Civil Aid Service (Cadet Corps) members this week as a pilot project. "Members of the Youth League will use a password-protected webpage to point out websites they believe are posting copyright-infringing material," they write.

"Nope, not going to do it," comments Jason Schultz at Law Geek. "Not going to violate Godwin's Law by pointing to other historical efforts to get young people to monitor and punish their peers."

Thank Goodness It's Friday,

--Bill Heinze
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Archived updates for Thursday, January 26, 2006

Fair Auctions for Legal Services

In "Get More for Your Money: Auction Off Your Legal Work," Rees W. Morrison writes for the Legal Times on January 25, 2006 about four kinds of auctions and how law departments should choose among them. He also suggets solutions for several problematic aspects of auctions: one-shot bidding, unstated assumptions, the focus on costs, and the winner's curse.

According to Morrison, both research and theory have shown that a Vickrey auction leads to the best outcome for law departments.
"Of these four kinds, Vickrey has the strongest backing from academics who have studied the best way to conduct an auction. Contingent auctions add complexity, but they may have a place in the final stages of an auction, where the remaining few law firms can toss a contingent hat in the ring. Dutch and English auctions are most familiar to everyone. I believe it's usually too complicated to explain to law firms the law department's projected cost and have the firms bid larger gaps, as in English auctions. I favor Vickrey-Dutch auctions with a contingency or two available at the end."
The Vickrey auction, also known as a "sealed second-price auction," is identical to the sealed first-price auction, except the winning bidder pays the second highest bid rather than their own. In theory, this is mathematically equivalent to the English auction, because in both the first-place bidder receives the item at a price equal to the second-place bidder's willingness to pay, plus the bid increment.

"Regardless of the type of auction a law department conducts," writes Morrison, "the department needs to avoid five pernicious traps:"
  • Unanticipated major changes in workload -- "With a collar, or one of its infinite permutations, both sides feel more comfortable that if the actual workload varies significantly from the projected workload, they will avoid rank injustice."
  • Inflated bids on unexpressed assumptions -- "The proposing law firms and the law department should both state as many assumptions as they can and how they are relying on them."
  • Single-shot bidding -- "If your law department lets firms submit only one proposal, no one fares as well."
  • Whether to disclose hours -- "If you convert the past amounts you have spent into lawyer hours worked, firms will diverge more in their bid amounts, since they have different billing rates."
  • The winner's curse. -- "Neither the law department nor the firm is served by a gross error in pricing. The remedy comes partly through a Vickrey auction and partly through multi-round bidding, collars, exposure of assumptions and describing the work in terms of activities and hours rather than in dollars."

And, I'll add one more -- It's not finished 'till we say so. -- Law departments (and service customers in general) can greatly improve the quality they receive by making their expectations clear before any auction with DETAILED specifications concering what the final product should look like and how the service provider is expected to get there. "I'm not satisfied, you'll just have to redo it" is never an acceptable response from a fixed-price purchaser of creative work.

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Cybersquatting Data and Information from WIPO

from a press release by the World Intellectual Property Organization on January 25, 2006:
  • An average of 4 UDRP and UDRP-based cases were filed with WIPO per calendar day in 2005, bringing the total number of cases received in 2005 to 1,456 – an increase of 280 cases (almost 20%) as compared to 2004.
  • Of the total of 8,354 UDRP and UDRP-based cases the Center has received, 8,054 (96.41%) have been resolved. In the 6,349 decisions they have rendered, WIPO panels have found for the complainant in 5,327 (83.9%) cases. The remainder of the resolved cases were settled by the parties.
  • WIPO’s UDRP and UDRP-based cases filed since 1999 have by now covered some 16,000 separate domain names.
  • Most disputes concern international domains, with .com again representing over 80% of names involved. However, in 2005 the Center also dealt with 44 cases involving country code top-level domains (ccTLDs).
  • So far, parties to WIPO UDRP disputes have come from 127 different countries. The Center has managed proceedings in 12 languages, namely, Chinese, Dutch, English, French, German, Italian, Japanese, Korean, Norwegian, Portuguese, Russian and Spanish.
  • The Center has handled 52 multilingual domain name (with characters from in non-English scripts) disputes so far, with further growth expected as the Internet becomes increasingly multilingual.

All domain name decisions handled by WIPO's Domain Name Dispute Resolution Service Center are fully indexed and published on the Center’s web site at; this legal Index rates among the most-viewed WIPO web pages. The new WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which the Center has created to offer parties and panelists an overview of broad decision trends, is available at

The Center’s new report, "New Generic Top-Level Domains: Intellectual Property Considerations", recommends the introduction of a uniform preventive intellectual property protection mechanism in all new gTLDs, in order to complement the curative relief provided by the UDRP. The Report is available at

Non-domain name activities of the Center:- Model WIPO arbitration and mediation clauses can be downloaded from The optional WIPO Electronic Case Facility (WIPO ECAF) introduced in 2005 may be viewed at

The next Center training events: WIPO Workshop for Mediators in Intellectual Property Disputes on June 15 and 16, 2006; WIPO Advanced Workshop for Mediators in Intellectual Property Disputes on June 19 and 20, 2006. Program information and registration at

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USPTO PatentIn Software Training Course

The United States Patent and Trademark Office (USPTO) is conducting a free training session for PatentIn 3.3 on Friday, March 24, 2006 at the USPTO's new headquarters in the Madison West Building at 600 Dulany Street, Alexandria, Virginia. The session will run from 9:30 AM to 3:30 PM, with a one-hour lunch break from 11:30 AM to 12:30 PM.

PatentIn is a computer program designed to expedite the preparation of patent applications containing nucleic acid and amino acid sequences by generating sequence listings that comply with all format requirements specified in the World Intellectual Property Organization (WIPO) Standard ST.25 and the related U.S. final rule, "Requirements for Patent Applications Containing Nucleotide Sequence and/or Amino Acid Disclosures," 37 CFR §§1.821 - 1.825 effective July 1, 1998.

Robert Wax, Primary Examiner in Art Unit 1653, former Project Manager of PatentIn, and one of the USPTO's sequence rule experts will present the following materials:

  • Overview of molecular biology
  • Overview of the sequence rules
  • Hands-on authoring of several sequence listings varying in complexity

Questions are welcome throughout the training and Mr. Wax will be available after class to assist customers with their sequence listings.

To register for this class or for additional information, please send an email to or call (571) 272-0623.

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Archived updates for Wednesday, January 25, 2006

The Lawyer Personality

According to Larry Bodine writing for his "Law Marketing Newsletter," Dr. Larry Richard of Hildebrandt International has come to a few conclusions after using the Caliper Profile to measure 18 different personality traits of lawyers over the last 40 years:
  • Skepticism: 90% of lawyers have this trait, compared with only 50% of the general public.
  • Autonomy: 89% of lawyers have it, compared with only 50% of the general public.
  • Sociability: 7% of lawyers have it compared with 50% of the public. “I think a block of wood has 8% sociability,” Richard joked.
  • Abstract Reasoning: 82% of lawyers have this trait compared with 50% of the general public.
  • Urgency: 71% of lawyers have this trait, compared with 50% of the general public.
  • Resilience: Only 30% of lawyers have this trait compared with 50% of the general public.
  • Using the Meyers-Briggs definitions, the main type for lawyers is INTJ, which is five times more common in lawyers than general population.

Although only 20% of lawyers are natural born marketers, 55% of lawyers can learn to be rainmakers. “They will make efforts to do marketing; so your goal should be to reduce their discomforts,” says Richard. "The remaining 25% are hopeless at marketing and should be ignored. The trick is to figure out who they are and not to waste time on them.”

For the latter group, try the Lawyer Coloring Book instead:

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Single Disclosed Embodiment Did Not Limit Claim

According to Professor Hal Wegner, even the dissent in Ncube Corp. (now C-Cor, Inc.) v. Seachange International, (Fed. Cir.; January 9, 2006) "was careful to distance itself from the extreme language of LizardTech, Inc. v. Earth Resource Mapping, Inc., which suggests that a claim may be limited to the embodiments disclosed in the specification." In his view, the dissent sub silentio repudiates the extreme views of LizardTech by citing Liebel-Flarsheim Co. v. Medrad Inc. (Fed. Cir. 2004), for the proposition that “[o]f course, that a patent describes only a single embodiment does not mean the claims of the patent must be construed as limited to that embodiment.”

The case involved whether the term "upstream manager" required the use of logical (rather than physical) data addressing when only logical addressing was disclosed in the specification. According to the minority opinion by Circuit Judge Dyk:

The majority [opinion by Circuit Judge Rader] relies on three theories in support of the proposition that "the [upstream manager] may route messages using either logical or physical addresses." Maj. Op., ante, at 6-7.

First, although the majority appears to recognize that there is no reference in the specification to the use of physical addresses, the majority suggests that the specification’s explicit statement that "all routing is accomplished based on logical addresses, not physical addresses" applies only to the preferred embodiment. Col. 23 ll. 1-2.

Of course, that a patent describes only a single embodiment does not mean the claims of the patent must be construed as limited to that embodiment. See, e.g.,
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004).
However, the claims will be read restrictively if the patentee has demonstrated
a clear intention to limit the claim scope. Id.; see also Teleflex, Inc. v.
Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002). Moreover, "the
characterization of [a limitation] as part of the ‘present invention’ is strong
evidence that the claims should not be read to encompass the , 75 F.3d 1545,
1551 (Fed.Cir.1996). opposite structure." SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001); see also Wang
Labs., Inc. v. America Online, Inc., 197 F.3d 1377, 1383 (Fed.Cir.1999); Modine
Mfg. Co. v. U.S. Int’l Trade Comm’n.

Here, the patentee clearly demonstrated that the upstream manager accomplishes routing by logical addressing. The specification characterizes the "present invention" as including the logical addressing limitation:

"[b]ecause a packet may travel through several different types of underlying networks, each with their own [physical] addressing schemes, the network protocol of the present invention defines its own independent [logical] address space. This technique hides the many different types of addresses in use for each type of data link." Col. 13 ll. 11-16 (emphasis added).

Under SciMed, the use of the term "present invention" is strong evidence that the use of logical addressing applies to the invention as a whole, not just the preferred embodiment. Moreover, as noted above, if the client could not send messages using logical addresses, the purpose of the "present invention"--to substitute logical for physical addresses--would be defeated.

Second, the majority urges that reading claim 1 to include a logical addressing limitation would "impermissibly read the ‘virtual connection’ limitation of claim 2 into claim 1, making these claims redundant." Maj. Op. at 6-7. Claim 2 recites: "The server in claim 1 wherein said connection service further creates a virtual connection between an upstream address and a downstream address for said client." Col. 25 ll. 17-20. Even assuming that logical addressing is sufficient to create a virtual connection, reading claim 1 to include logical addressing does not make the two claims redundant, because claim 1 does not contain a requirement that the connection service create a virtual connection. Claim 2 adds simply that requirement. There is thus no inconsistency in reading "upstream manager" in claim 1 to require logical addressing.

Third, the majority points out that unasserted claims 5 and 11 specifically refer to logical addresses. Maj. Op. at 6-7. In contrast, the asserted claims do not. The majority suggests that the presence of the references to logical addresses in the unasserted claims indicates that the omission of logical addresses from the asserted claims was intentional; hence, the asserted claims do not require logical addressing. Id.

In my view the majority misreads claims 5 and 11 to add the requirement that routing be accomplished by logical addressing. Id. Rather, these claims simply recite a specific means of using logical addresses that are already required by the
upstream manager. Claim 5 recites:

5. The computer-implemented method in claim 4 wherein further comprising the steps of:

receiving a service request message from said client to said server via said upstream manager, said service request corresponding to said service on said server, said service request message including said client downstream logical address and a service destination logical address;

generating a response message from said server to said client, said response message including said client downstream logical address; and

sending said response message to said client via said downstream manager. Col. 25, ll.43-55 (emphases added).

Claim 5 describes a method of handling logical addressing when a specific type of message--a service request message--is sent by the client device. It describes a situation in which the client logical address and downstream logical address are provided in the service request message, and a response is generated which includes the downstream logical address. The purpose of the claim is to claim that particular
method, not to add a requirement for logical addressing. Therefore the omission
of the term "logical address" from the asserted claims does not reflect the
claimant’s intent that logical addressing not be part of those claims. The same
analysis applies to Claim 11, which rewrites Claim 4 in means-plus-function

In my view the upstream manager includes a requirement that the upstream manager route messages using logical addresses. Because nCube presented no evidence that the alleged upstream manager in the accused device uses logical
addresses to send messages to any service on the server, I would reverse the
verdict of infringement. I thus would not reach the question--addressed by the
majority--whether all client communications must be routed through the upstream

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Countries with Foreign Patent Filing Restrictions

In "Awareness Of Foreign Filing Requirements For Inventions Originating Outside The United
States Can Prevent Adverse Consequences,"
(PLI Fundamentals of Patent Prosecution Winter 2005) Aaron Wininger and Marc Sockol write that "the following is a sample list of countries that require a foreign filing license or have restrictions on an inventor’s right to file original patent applications outside the originating country:"
  • United States
  • Korea
  • China
  • France
  • United Kingdom
  • Germany
  • New Zealand
"In summary," they conclude "before engaging in any foreign filing, ask where the invention was developed. A failure to do so could subject your client to severe consequences, including patent invalidity, criminal prosecution and monetary penalties, and subject you to a malpractice claim."
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Archived updates for Tuesday, January 24, 2006

Supreme Court Reverses Unitherm Antitrust Decision on Procedural Grounds

In Unitherm Food Systems V. Swift-Eckrich (January 23, 2006) the U.S. Supreme Court reversed the antitrust judgment of Federal Circuit Court of Appeals on procedural grounds holding "that since respondent failed to renew its preverdict motion as specified in Rule 50(b), there was no basis for review of respondent’s sufficiency of the evidence challenge in the Court of Appeals. "

In the district court (of first instance) the Defendant's had sought a declaration that ConAgra’s patent was invalid and unenforceable and alleged that ConAgra had violated §2 of the Sherman Act by attempting to enforce a patent obtained by fraud on the Patent and Trademark Office, see Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172, 174. The District Court found the patent invalid and allowed the Walker Process claim to proceed to trial. Before the case was submitted to the jury, ConAgra moved for a directed verdict under Federal Rule of Civil Procedure 50(a) based on legal insufficiency of the evidence. The court denied the motion, the jury returned a verdict for Unitherm, and ConAgra neither renewed its motion for judgment as a matter of law pursuant to Rule 50(b) nor moved for a new trial on antitrust liability pursuant to Rule 59.

On appeal to the Federal Circuit, ConAgra maintained that there was insufficient evidence to sustain the Walker Process verdict. The court applied Tenth Circuit law, under which a party that has failed to file a postverdict sufficiency of the evidence challenge may nonetheless raise such a claim on appeal, so long as the party filed a Rule 50(a) motion before submission of the case to the jury. The only available relief in such a circumstance is a new trial. Freed to examine the sufficiency of the evidence, the Federal Circuit vacated the judgment and ordered a new trial.

According to Justice Thomas writing for the majority,

The text of [Federal Rule of Civil Procedure] Rule 50(b) confirms that respondent’s preverdict Rule 50(a) motion did not present the District Court with the option of ordering a new trial. That text provides that a district court may only order a new trial on the basis of issues raised in a preverdict Rule 50(a) motion when “ruling on a renewed motion” under Rule 50(b). Accordingly, even if the District Court was inclined to grant a new trial on the basis of arguments raised in respondent’s preverdict motion, it was without the power to do so under Rule 50(b) absent a postverdict motion pursuant to that Rule. Consequently, the Court of Appeals was similarly powerless.

. . . Thus, the District Court’s denial of respondent’s preverdict motion cannot form the basis of respondent’s appeal, because the denial of that motion was not error. It was merely an exercise of the District Court’s discretion, in accordance with the text of the Rule and the accepted practice of permitting the jury to make an initial judgment about the sufficiency of the evidence. The only error here was counsel’s failure to file a postverdict motion pursuant to Rule 50(b).

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Free Teleseminar: Apportionment Issues in Intellectual Property Damages

Free Teleseminar
Thursday, February 09, 2006
1:00 PM EST to 2:00 PM EST

Mary Woodford, of Cornerstone Research, will address apportionment issues that arise in intellectual property litigation. In many cases, when a protected feature is but one aspect of a more complex product, an important question is: What is the relative contribution of the protected invention to the product or service that incorporates it? The presentation will cover some case law examples, some analytical tools, and a few illustrative examples from actual cases.

Free registration here.
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Madrid/Section 8 Trademark Grace Period Inconsistencies

Frank Terranella recently noted on the Madrid Listserv that "the legislation enacting US participation in the Madrid Protocol has a quirky maintenance scheme with no grace period for the 6-year affidavit and only a 3-month grace period for the 10-year affidavit."

"I suspect the Madrid legislation (which was hanging around for years) was first drafted back in the days when there was no grace period for a Section 8, and the renewal grace period was three months," responded John Welch. "Apparently someone forgot to update it."

It appears that we have another few years before it becomes an issue unless Congress amends the Madrid practice to match the Section 8 practice.
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Archived updates for Monday, January 23, 2006

Revised AIPLA Model Patent Jury Instructions

The 2005 revision of the American Intellectual Property Law Association's Model Patent Jury Instructions are now publicly available on the AIPLA web site, here.

The original work was drafted in July of 1997 by Model Patent Jury Instruction Subcommittee of AIPLA’s Federal Litigation Committee with the objective of resisting any bias for either patent owners or accused infringers. In January 2004, the Patent Litigation Committee of the American Intellectual Property Association undertook the task of updating the 1997 version of the association's model jury instructions. One goal of the project was to update the 1997 version of the association's model jury instructions. Researchers were told to limit their examination of the case law through the end of September 2005. Thus, these instructions should only be considered in the context of this timeframe.

Another goal was to simplify and shorten the instructions. In meeting that goal, the subcommittee hoped to produce a set of jury instructions that would be useful for a typical patent case, rather than a set that covered every conceivable situation that might arise. As a result, some of the less-used instructions from the 1997 version were removed. Those removed instructions could be appropriate in a particular case, if they still reflect the current law.

Finally, stylistic changes were made for readability and consistency. For instance, bracketed terminology was made consistent to allow the use of "find and replace" features in today's word processing programs. The instructions now can easily be tailored to a particular case by quickly substituting the bracketed term with the custom term for the case. For example, all instances of the term "[full patent number]" can be replaced with "U.S. Patent No. 4,045,901" using a word processor's "find and replace" feature. This enhancement to the model jury instructions should make them much easier to use during trial.
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Archived updates for Friday, January 20, 2006

TGIF for Illegal Hockey Sticks

U.S. Patent No. 6,926,629
for "Attachment for Blade of Hockey Stick"
to Martin Dehen of Plymouth, Minnesota
(via Patently Silly)

Thank Goodness It's Friday (and Ilya Kovalchuk doesn't play with one of these),

--Bill Heinze

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CIPO Updates Wares and Services Manual

The Canadian Intellectual Property Office's Wares and Services Manual is intended to serve as a guide for specifying wares and services in trade-mark applications. The intended users of this Manual are trade-mark examiners, trade-mark agents and trade-mark applicants. The Manual contains a representative listing of acceptable wares and services pursuant to paragraph 30(a), as well as directions for rendering insufficiently specific wares and services acceptable.

The Trilateral Acceptable Goods ID Manual has been incorporated into the U.S. Goods and Services ID Manual.
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Canadian Patent Fee Amnesty Period Starts February 1

Amendments to the Canadian Patent Act that come into force on February 1, 2006 will provide a 12-month window of opportunity for patent holders and applicants to review the fees paid on their patents and patent applications and make the necessary corrective payments to secure their patent rights.

Bill C-29, An Act to amend the Patent Act, received Royal Assent May 5, 2005 and the new section 78.6 is the Government's response to a court decision holding that a patent application had become irrevocably abandoned because insufficient fees were paid. The Court's decision did not support the prior common understanding that, as the entity size changed, so would the required fee.

To determine whether a corrective payment needs to be made, relevant fee schedules and fee payment history with respect to specific patent applications or patents can be found under the Administrative Status of the Canadian Patents Database. To assist you in determining whether a corrective payment needs to be made, relevant fee schedules and fee payment history with respect to specific patent applications or patents are available through the Canadian Patents Database. To meet the requirements of section 78.6, in addition to submitting your payment, you will need to provide CIPO with your patent or patent application number, and an indication of the type of fees that were underpaid (e.g., fee on filing an application, fee on requesting examination of an application, etc.).

More from the CIPO here.
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Join the IP Corp of the PIIPA

Thanks to The IPKat for pointing us to PIIPA (Public Interest Intellectual Property Advisors, Inc.), an international non-profit organization that makes intellectual property counsel available for developing countries and public interest organizations who seek to promote health, agriculture, biodiversity, science, culture, and the environment. According to their website, PIIPA has three main activities:
  1. expanding a worldwide network of IP professional volunteers (the IP Corps);
  2. operating a processing center where assistance seekers can apply to find individual volunteers or teams who can provide advice and representation as a public service (free or pro bono); and
  3. building a resource center with information for professionals and those seeking assistance.

Volunteer to join the IP Corps of intellectual property (IP) professional volunteers (attorneys, agents, licensing specialists, and others specializing in IP matters) who agree to put their services to good use for global communities.

Apply for assistance from IP professionals who are willing and able to assist.

Browse their IP Resources.

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Free Foreign Patent Filing and PCT Reminder Service

Thanks to Steve Nipper at the Invent Blog for pointing to Pipers's has a PCT REMINDER service which was
created to provide a free automated web-based reminder service for patent
attorneys and IP Management Departments around the world. It is designed so that
those important milestones in a PCT application (or an originating priority
application for that matter) can be tracked easily and simply and acted upon as
At Piperpat, they enter the priority date shortly after filing the application and PCT Reminder sends them reminders at the priority date plus 6 months, plus 9 months, plus 12 months, so that they can review developments with their client at the relevant time, and have ample time to prepare the PCT or other specification before the expiration of the 12 month priority period.

Here's what it looks like for a first application filed on January 19, 2006:

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Archived updates for Thursday, January 19, 2006

A Security Officer's View of Chinese Counterfeiting

In "Faked in China," Todd Datz writes for Chief Security Officer Magazine about a 2005 report from the National Chamber Foundation (a think tank affiliated with the U.S. Chamber of Commerce) with an interesting comparison between counterfeiting and cocaine dealing:

A kilo of cocaine costs about $47,000, and a dealer can sell it on the street for $94,000; that same $47,000 can purchase 1,500 bootleg versions of Microsoft Office 2000, which can be sold for $423,000. Although an unscientific example, the point is clear—counterfeiting pays well. "There's no marketing overhead, no taxes, and you're not paying workers normal rates," says Simone. Annoying expenses like R&D, advertising and other costs associated with turning an idea into a brand also conveniently disappear.
He goes on to descibe the three major types of counterfeit operations in China identified by Phil Yang, who formerly led Gillette's anticounterfeiting efforts in China. The first is legitimate factories that have licenses to produce goods on behalf of brand-name companies but also produce fakes as well. The second involves joint ventures between a multinational and a Chinese partner who uses excess capacity to make surplus product. The third kind of operation is the hidden, underground (and sometimes mobile) facilities that make fake items such as cigarettes.

Among the suggestions for combating the problem:
  • Find out whether partners and service providers are reputable, not in financial trouble, and not involved in any IP-related violations.
  • Budget smartly; basic investigations cost between $500 and $1,500.
  • Even if you don't sell there today, it's a good idea to register you intellectual property if you might do business there in the future.
  • Show your presence; if you have manufacturing operations make sure you have good supervision in place.
  • Consider anticounterfeiting technologies for your products.
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USPTO Roadshow On Proposed Patent Rule Changes

In an upcoming series of Town Hall Meetings, the United States Patent and Trademark Office (USPTO) will provide background information regarding proposed patent rule changes relating to the examination of claims, continuing applications, requests for continued examination, and applications containing patentably indistinct claims.

The Town Hall Meetings are for patent attorneys, patent agents, independent inventors and members of the small business community. The first Town Hall Meeting will be held February 1, 2006, in Chicago, at the downtown campus of Northwestern University, in the Arthur Rubloff Building Thorne Auditorium, from 2:00 p.m. - 4:00 p.m. Details regarding future Town Hall Meetings in California, Texas and Washington, D.C., will be posted on the USPTO Web site at a later date.

Registration is free and CLE credit "may be available."For registration information, please go to or call 571-272-8850.
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F&G Research requests Investigation of Computer Mice from Taiwan

On January 17, 2005, F&G Research, Inc. filed a "Section 337" complaint requesting that an unfair import investigation be instituted involving "Certain Scrolling Wheel Computer Mice and Components Thereof."

The proposed respondents are: Primax Electronics Limited, Taipei, Taiwan; Sony Corporation, Tokyo, Japan; Giga-Byte Technology Company Limited, Taipei, Taiwan; Chicony Electronics Company Limited, Taipei, Taiwan; Behavior Tech Computer Corp., Taipei, Taiwan; Adomax Technology Company Limited, Taipei, Taiwan, Paten Wireless Technology, Inc., Taipei, Taiwan and Darfon Electronics Corp, Taoyuan, Taiwan. The complaint has been designated as confidential and assigned Docket No. 337-2464.

Such complaints typically include an allegation of intellectual property infringement and a request that the infringing godds be excluded from entry into the United States. The Commission now has 30-35 days from the filing date of the complaints in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible.

Click here for more information on the importance of monitoring these ITC investigations, and click here for a free audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission." For the latest details on a particular Section 337 investigation and/or other intellectual property matter, contact me, Bill Heinze (, at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia.
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The Music Plagiarism Project

Thanks to Robert Ambrogi's Law Sites for pointing to the Music Plagiarism Project at Columbia Law School which provides court decisions on music copyrights, editorial commentary on the case, and audio recordings of the works of both the complainant and the defendant. According to its creator Charles Cronin:
The purpose of this project is to capitalize on the distributed nature of
digital information systems to collect, organize and distribute graphic and
audio materials associated with music copyright infringement cases in the United
States from the middle of the nineteenth century on. This documentation,
especially for cases over twenty-five years old, is difficult to obtain and has
never before been systematically collected or published in print or electronic
format. Our goal is to accumulate and publish a complete collection of music
copyright infringement opinions, comments about the musical works they consider,
and graphic and sound files of relevant portions of these works.

Click here for the song list.
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Archived updates for Wednesday, January 18, 2006

Expert Mistakes

According to Michael J. Abernathy in IMS Expert Services' Bullseye Experts Rag, the two most frequent mistakes intellectual property lawyers make while working with an expert witness are 1) the lawyer who relies too heavily on the expert for technical help without reviewing the technology himself, and 2) the lawyer who micromanages the expert until his credibility is damaged.

"Your job as a lawyer is to take information and synthesize it and have it comport with your case themes," Abernathy explains. "Often that which may be important to the expert does not comport with the theme, is not easy to understand and is not persuasive."

Abernathy believes there are two keys to achieving the right balance. The first step is to bring the expert into the case early, while the second is to involve the expert throughout discovery.

Too often, lawyers fall into a predictable pattern while working with experts, he explains. The lawyer is deeply involved with the expert at the outset when the expert is retained, but as discovery progresses, the lawyer lets the expert sit on the sideline. Then, when the time comes for expert depositions, the expert again regains prominence in the lawyer's mind. "The care and feeding of an expert should be constant and should be at a very high level so that the expert is an integral part of the process and knows where the lawyer's thinking is at all times," Abernathy suggests.
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US-TTAB Proposes New Service and Discovery Rules

On January 17, 2006, the United States Patent and Trademark Office published a Notice of Proposed Rulemaking for amending its rules to require plaintiffs in Trademark Trial and Appeal Board inter partes proceedings to
  1. serve on defendants their complaints or claims;
  2. to utilize a modified form of the disclosure practices included in the Federal Rules of Civil Procedure; and
  3. to delete the option of making submissions to the Board in CD–ROM form.

In addition, certain other amendments clarify rules, conform the rules to current practice, and correct typographical errors or deviations from standard terminology. Comments must be received by March 20, 2006 to ensure consideration.

Under the current rules, the plaintiff in a Board proceeding files notice of its complaint (or claim of right to a concurrent use registration) with as many copies as there will be defendants in the action. The copies are then forwarded to the defendants by the Board. Under the proposed rules changes, an opposer or petitioner would file its complaint with the Board and be required to concurrently serve a copy of its complaint (notice of opposition or petition for cancellation), including any exhibits, on the owner of record, or when applicable the attorney or domestic representative therefor, of the defending application or registration. The Board would then send notice to all parties to the proceeding, noting the filing of the complaint, or publication of the concurrent use application, and setting via such notice the due date for an answer, and the discovery and trial schedule.

The new disclosure rules are intended to serve as a substitute for a certain amount of traditional discovery and a more efficient means for exchange of information that otherwise would
require the parties to serve traditional discovery requests and responses thereto. The Board’s standard protective order would be applicable to all cases and absent approval of a stipulation to vary the terms of the standard protective order, approved by the Board, the parties would have to abide by it. The parties may agree to use e-mail to communicate with each other and for forwarding of service copies.

The Board’s institution order will set a schedule for the case and there will be no Federal Rule 16(b) scheduling conference/order. A party may not seek discovery through traditional devices until after it has made its disclosures. A party may also not move for summary judgment except
on claim or issue preclusion grounds until after it has made its disclosures. In inter partes proceedings before the Board, parties will generally be found to have met their initial disclosure obligations if they provide information about the following, as applicable in any particular case:

  • Origin of any mark on which the partyrelies, including adoption or creation of the
    mark and original plans for use of the mark;
  • Dates of use of any marks, registered or not, on which the party’s claims or defenses rely;
  • The extent of past or current use, if any, or plans for future use of any marks on which
    claims or defenses rely, including use by the party or by licensees;
  • Evidence of actual confusion possessed by a party in regard to the involved marks;
  • The party’s awareness of third-party use or registration of marks that are the same or very similar for goods or services the same as or closely related to the involved marks and
    goods or services;
  • The extent of use by the party, if any, in a non-trademark manner of words or designs
    asserted by that party to be non-distinctive;
  • A party’s awareness of use of involved words or designs by third parties when the party is asserting that such words or designs are non-distinctive;
  • Classes of customers for the party’s involved goods or services, including information on the technical expertise or knowledge employed by customers in making purchasing decisions;
  • Channels of trade for the party’s involved goods or services;
  • Methods of marketing and promoting the party’s involved goods or services;
  • Surveys or market research conducted by the party in regard to any involved mark on
    which it will rely;
  • Information regarding other Board proceedings, litigation, or controversies in which the party has been involved, which were related to the involved marks or, if applicable, assertedly non-distinctive matter;
  • The names of individual officials or employees of a party, and contact information therefor, who are known to have the most extensive knowledge of subjects on which disclosure is made; and
  • General descriptions of and the probable locations of non-privileged documents and
    things maintained by the party or its attorneys related to the subjects on which
    disclosure is made.

A party’s plan to use experts must be disclosed no later than 90 days prior to the close of discovery. However, if the expert is retained early and an adverse party has inquired about experts through discovery, the party may not delay revealing the expert until the deadline for disclosure of experts. Pretrial disclosure will also require disclosure of the identity of witnesses
that a party expects to present, or may present if the need arises. For each witness, general summaries or descriptions of the subjects on which the witness will testify and the documents or things to be introduced during the deposition must be disclosed. These disclosures must be
made 30 days prior to the opening of trial. Pretrial disclosure of plans to file notices of reliance is not required.

With regard to filing submissions in CD–ROM format, "CD–ROMs present technical problems for the ESTTA/TTABIS systems and have rarely been utilized by parties."

A table of contents, index of cases, description of record, statement of the issues, recitation of facts, argument and summary, whichever a party may choose to employ, all count against the limit of 25 pages for a brief in support of a motion or in response to a motion and the limit of 10 pages for a reply brief.

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Mob Rule for Patents?

According to the Peer to Patent Project, "The patent system needs our help. . . to ensure that only worthwhile inventions receive the patent monopoly. Currently, underpaid and overwhelmed examiners struggle under the backlog of applications. Under pressure to expedite review, patents for unmerited inventions are approved."

With sponsorship from IBM, and leadership by New York Law School Professor Beth Noveck (author of "A Democracy of Groups" and “Peer to Patent: Building a Community Patent Review Process” ), their Community Patent Project seeks to create a online system for peer review of patents to "enable innovation experts to advise the Patent Office on prior art as well as to assist with patentability determinations. By using social software, such as social reputation, collaborative filtering and information visualization tools, we can apply the 'wisdom of the crowd' – or, more accurately the wisdom of the experts – to complex social and scientific problems. This could make it easier to protect the inventor’s investment while safeguarding the marketplace of ideas."

Or it could simply turn into an ochlocracy for patents. Sure, the mob might be a great source for identifying prior art, especially if U.S. patent applications were published for opposition as some have suggested. And expert testimony can even sometimes aid in determining the factual underpinnings of patentability. But shouldn't these ancillary examiners at least get some legal training before they "assist with patentability determinations." And shouldn't patent applicants have the right to challenge the factual basis of any expert's contribution to the process, much less object to any use of an improper legal standard for determing which inventions are "not worthwhile" for patentability.
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Archived updates for Tuesday, January 17, 2006

New CPR Monograph on Patent Mediation

The International Institute for Conflict Prevention & Resolution recently sent me a copy of their
latest on "Patent Mediation, Better Solutions for Business." This 38-page monograph ($50 for non-members) is intended primarily for in-house counsel and corporate decision makers who want to make the best of a possible patent mediation.

The core of this monograph is Section III which lays out a five step roadmap for conducting effective patent mediations. For example, Step One: Getting to Mediation, discusses in some detail factors that should be considered when assessing whether a patent dispute is ripe for mediation including: risk of loss, issues of validity and enforceability, "bet-the-company" cases, the need for confidentiality and the need for precedent, the impacts of the discovery process and Markman rulings on the timing of mediation, choice of forum and many other factors. The remaining four sections of the monograph provide useful information on selecting a mediator, pre-mediation planning, the mediation sessions, and settlement or adjournment.

Although a bit pricey, the information is presented in well-written text that is supplemented with tables, flowcharts and checklists. And for those pesky international patent disputes, check out CPRs other monograph on Commercial Mediation in Europe.
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Limiting I/P Exposure in China

In "Into the Mouth of the Dragon: Patent Protection and Enforcement in China,"
David L. McCombs reccomends the following for limiting I/P theft when doing business in China:
  • Register Inbound Technology under Chinese technology transfer regulations.
  • Obtain Patents.
  • Set Up a Wholly-Owned Enterprise which, as a practical matter, may be preferable when it comes to avoiding access to IP and its subsequent theft.
  • Create Strong Contracts with provisions for the preservation of IP rights with controls over the use of subcontractors who ae the likely could be a route for theft of IP. Termination provisions should address what happens to assets such as trade secrets, equipment, inventory and documents upon termination of the joint venture.
  • Implement Security with extreme precautions regarding physical and digital
  • Partition Technology by separating any processes, technology, and IP that is not
    directly relevant to the tasks they need to perform.
  • Cultivate Relationships with key individuals that can be as important as the written law.

More in I/P in China here.

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Efforts to Acheive Bid Specifications Covered by Patent Not Illegal

In Fieldturf International, Inc., et al. v. Sprinturf, Inc., et al. (Fed. Cir.; January 5, 2006) the School District wanted to use a synthetic turf similar to a patented FieldTurf installation in a local park. The Request for Proposal ("RFP"), prepared by the Architect for the School District, specified: "Pro series soccer synthetic grass system manufactured by FieldTurf . . . or approved equal." When FieldTurf stated that it would enforce its patents against SportFields and the School District, the School District then rejected all of the bids, withdrew the RFP, and made further changes in the specifications in order to avoid the Field Turf patents. FieldTurf then sued SportFields for patent infringement based on its first bid, as an offer to sell under '271(a), and also charged SportFields with the torts of intentional interference with prospective economic advantage.

According to the Federal Circuit:

We conclude that the district court did not err in law, in considering the
nature of the SportFields product that was intended and understood to be the
product that would be installed, in holding that the bid was not an offer to
sell an infringing product. The School District representatives were aware that
SportFields' product differed from that of FieldTurf — indeed, FieldTurf
emphasized those differences in its communications to the School District. The
district court was not required to ignore these and other facts that showed that
SportFields intended to offer and to install its PerfecTurf product, which is
conceded not to literally infringe FieldTurf's patent claims. It is also
relevant that when FieldTurf complained to the School District that SportFields'
bid was for the FieldTurf patented product, the School District withdrew the RFP
entirely and rejected all bids, thus avoiding the accrual of damages for
infringement. The district court also interpreted the California statute to
include an "or equal" provision when the specification designated a patented
product. If this interpretation is correct (an issue we need not decide) then
there was another reason for finding noninfringement.

On the undisputed facts and considering all of the circumstances, we affirm the district court's ruling that SportFields' bid was not an infringing offer to sell the FieldTurf product.

. . . Although the district court was properly concerned with the conduct of the
competition, we must [also] conclude that the legal requirements of the commercial
torts were not met. For example, accepting the district court's premise that
FieldTurf encouraged the School District to place the FieldTurf product
specifications in the RFP, the record shows that the School District and the
Architect strongly supported this action, and wished to install the same turf
system that FieldTurf had installed in a local park. Efforts of commercial
entities to achieve specifications that favor their product are not illegal,
absent fraud or deception.

Although the district court found that FieldTurf had misled the School District with respect to "open bidding," the contract documents permitted product substitution and the School District was represented by professionals. We conclude that tortious interference by FieldTurf was not established as a matter of law, for it was not shown that FieldTurfs' conduct was "wrongful by some legal measure other than the fact of interference itself," a criterion explained in Della Penna, 902 P.2d at 751.

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Consultation on Patent Policy In Europe

On January 16, 2005, the European Commission announced that it has launched a public consultation on how future action in patent policy to create an EU-wide system of protection can best take account of stakeholders' needs. Stakeholders are invited to submit their contributions by 31 March 2006 which will form the basis of a Commission hearing to be organised in Brussels on 13 June 2006.

The consultation focuses on three major issues: the Community patent; how the current patent system in Europe could be improved; and possible areas for harmonisation. The Commission is also seeking views on what action could be taken while work on the Community patent is continuing, in particular within the framework of the existing European patent system, or by bringing national patent systems more closely in line with each other through either approximation of laws or mutual recognition of national patents. The legal framework for jurisdiction over patent disputes is an area of significant interest in this context.

According to Tobias Buck writing about the consultation document for the Financial Times on January 15 2006, "The absence of a functioning EU-wide patent regime is one of the biggest complaints of business leaders in Europe. According to a recent study commissioned by Brussels, the cost of registering patents across the EU typically varies between €37,500-€57,000 ($45,500-$69,200). By contrast, the cost of registering a US patent is about €10,000 – a factor often cited by Brussels officials as part of the explanation for the EU’s failure to improve its levels of innovation."

More information about the Community Patent proposal is available here.
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Archived updates for Monday, January 16, 2006

When to Use "Said" in Patent Claims

J. Douglas Miller at Small Business IP Protection and Managament has given his thoughts on the age-old question of just what is the "Proper Use of SAID in Patent Claims"

There are currently three different practices used in writing patent
claims. The first time an element or part is recited in a patent claim, it must
be preceded by the indefinite article “a” or “an” (although some exceptions
exist for “means” and plural recitations). For each repeated reference of an
element, one practice is to use “said” preceding the element and use “the” for
anything else. Alternatively, some practitioners precede everything with
“said” upon repetition thereof. A third, and somewhat more recent
practice, is to omit the use of “said”, and simply use “the” to precede
everything repeated.

I prefer to use "said" for only the first time that an element appears in any dependent claim, as a signal for the reader to look back to an earlier claim for the antecedent basis. Leave your comment below.
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TTAB Ex Parte Affirmance Rates for 2005

John Welch at the TTABlog has done a painstaking review of the TTAB's decisions for the past year which yielded the following approximate statistics regarding the Board's affirmance rate for ex parte refusals
  • Section 2(d) likelihood of confusion ---80% affirmed
  • Section 2(e)(1) mere descriptiveness ---86%
  • Genericness ---61%
  • Section 2(e)(4) surname --- 60%

He also uncovers the longest applied for mark at 182 words which the Board found did not function as a trademark.

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Federal Circuit Proposes En Banc Rehearing Procedure Changes

On January 10, 2006, The U.S. Court of Appeals for the Federal Circuit proposed a revision to its Internal Operating Procedure 14 on Petitions for Rehearing En Banc. Comments must be received by the close of business on January 31, 2006 with regard to the following three new sentences have proposed for additon:
During the en banc process, even after the normal time for panel action has
expired, but before a majority of the court has voted to take the case en banc,
the panel may reclaim jurisdiction over the petition for the purpose of
modifying the decision or opinion. Following such action, circulation to the
full court of the modified opinion, if precedential, would occur as usual,
within a new 8-day circulation period beginning to run again from the date of
the modification. If the panel changes the opinion or judgment, any party may
take whatever action is available to it in accordance with the provisions of
Fed. R. App. P. 35.
It's too bad that the complete set of IOPs are not already posted on the Federal Circuit's website. Nonetheless, Professor Hal Wegner has already commented that
"With cases such as LizardTech being denied en banc review because of the
difficulty of gaining seven votes, there had been comment within the patent
community about the difficulty of obtaining the votes necessary for en banc
review. With the anticipated senior status of one of the members of the court
two weeks from now, the majority is reduced to six members of the
court. Furthermore, under an amendment this past year to FRAP Rule 35(a),
if one of the judges is disqualified from voting whether to grant an en banc
rehearing, his or her vote does not count in making up a majority. Formerly, the
local court rule required seven of the twelve judges to affirmatively vote for
en banc rehearing, even if one or more of the judges was disqualified from
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Archived updates for Friday, January 13, 2006

Schedule Meetings without Outlook Calender Access

Thanks to Tom Mighell at Internet Legal Research Weekly for pointing us to the free where you can
Just create an event, list a few dates that you're considering for your
meeting/party/reunion/whatever, and send out e-mail invites to everyone who's
attending. After all the attendees choose their best dates, the meeting will be
confirmed through an e-mail sent to everyone. A nice way toavoid the back and
forth of e-mails trying to find out availability for ameeting.
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Archived updates for Thursday, January 12, 2006

EC Proposes New GI Procedures

On January 4, 2006, the European Commission announced that it has adopted two proposals to clarify and streamline rules for protected geographical indications (PGI), protected designations of origin (PDOs) and “traditional specialities guaranteed." The Commission is proposing to simplify procedures and clarify the role of Member States with a “single document” for applications containing all the necessary information for registration, information and inspection purposes and which will be published. In an apparant attempt to satisfy WTO requirements under TRIPS, "They will delete the requirement for reciprocity and equivalence from the regulations and they will allow third countries to apply for and object to GI registrations directly instead of going through their governments," notes Stephanie Bodoni, reporting for Managing Intellectual Property on January 9, 2006.

Also in the press release,

In a panel ruling issued in 2004, the WTO upheld the integrity of the EU’s
geographical indications system and rejected the majority of the claims made by
the United States and Australia. These regulations will bring the scheme into
conformity on the two areas that were criticised: firstly by formally deleting
the requirement for “reciprocity and equivalence” from the regulations and
secondly by allowing third country operators to submit applications and
objections directly rather than through their governments. The deadline for
implementing the ruling is set to expire in April 2006.

"However," reports Bodoni, "the WTO panel decision was not clear-cut, leaving both sides claiming victory when it was announced. The WTO panel agreed with the US and Australia that the EU's GI Regulation was inconsistent with TRIPs in that it restricted prior trade mark owners from attacking registered GIs."

More about the GI controversy here.
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US Copyright Royalty Board Rate Proceeding Petitions Due February 8

On January 9, 2006, the U.S. Copyright Royalty Board announced the following three new rate proceedings for which a party who wishes to participate must file its Petition to Participate, together with the $150 filing fee, no later than February 8, 2006.
  • (71 FR 1453) a proceeding to determine the reasonable rates and terms for use of certain works in connection with noncommercial broadcasting.
  • (71 FR 1454) a proceeding to determinethe reasonable rates and terms for making and distributing phonorecords.
  • (71FR 1455) a proceeding to determine the reasonable rates and terms for preexisting subscription and satellite digital audio radio services.
For more information visit the Copyright RoyaltyBoard website at
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USPTO Open Source Community Partnership

Thanks to Peter Zura at the "Two-Seventy-One Patent Blog" for getting the story behind the USPTO's new announcement of an Open Source Community Partnership for improving software patent examination. He links to a story by John Markoff in the January 10, 2006 New York Times:
Two of the initiatives would rely on recently developed Internet technologies. An open patent review program would set up a system on the patent office Web site where visitors could submit search criteria and subscribe to electronic alerts about patent applications in specific areas. The third initiative is focused on the creation of a patent quality index that would serve as a tool for patent applicants to use in writing their applications. It is based on work done by Professor R. Polk Wagner, an intellectual property expert at the University of Pennsylvania.
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Archived updates for Wednesday, January 11, 2006

The New I/P Marketplace

According to representatives from and Ocean Tomo in their presentation entitled "Patent Auctions & Marketplaces: Leveraging Value from Under-employed Technologies," here is what the new I/P marketplace may look like:

Jim Malackowski and Tim Burnstein also forecast significant new opportunities in selling, especially selling orphaned technology platforms to small companies, and large companies seeking to acquire innovation from smaller organizations:

Other emerging concepts that they identy include

  • Hybrid litigation and auction of non-exclusive licenses (license for a given unit quantity in private sale or at Live Auction)
  • Creation of VC backed new Patent Licensing and Enforcement Company ("P-LEC")
  • P-LEC spinout with structured finance funding, either tax advantage royalty securitization or corporate bond issue (both very interesting and prevents dilution but more complex)
  • P-LEC spinout into separate public company or tracking stock

Their bottom line: a more liquid and transparent patent marketplace is good for everyone, and may actually decrease litigation.

But beware of the due diligence problem. It's can be awfully tough to sort through all of those patent claims before you make your bid, much less be ceratin that the missing patent is not the one that turns your (non-P-LEC) business into an infringer.

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Three New Unfair Import Complaints

On January 10, 2005, SanDisk Corporation filed a "Section 337" unfair import complaint at the U.S. International Trade Commission. The complaint requests that an unfair import investigation be instituted involving "Certain NOR and NAND Flash Memory Devices and Products Containing Same." The proposed respondents are STMicroelectronics N.V., Geneva, Switzerland, and STMicroelectronics, Inc., Carrollton, Texas. The complaint has been designated as confidential and assigned Docket No. 337-2461 for indexing in the Commission's database.

On January 10, 2005, Solomon Technologies, Inc. also filed a "Section 337" requesting that an unfair import investigation be instituted involving "Certain Combination Motor and Transmission Systems and Devices Used Therein, and Products Containing Same." The proposed respondents are Toyota Motor Corporation, Toyota City, Aichi, Japan; Toyota Motor Manufacturing North America, Erlanger, Kentucky; and Toyota Motor Sales, U.S.A., Inc., Torrance, California. The complaint has been designated as confidential and assigned Docket No. 337-2462.

On January 11, 2005, Align Technology, Inc. filed a "Section 337" complaint requesting that an unfair import investigation be instituted involving "Certain Incremental Dental Positioning Appliances and Methods of Producing Same." The proposed respondents are Orthoclear, Inc. San Francisco, CA; Orthoclear Holdings, Inc., Tortola, British Virgin Islands, and Orthoclear Pakistan Pvt. Ltd., Lahore, Pakistan. The complaint has been designated as confidential and assigned Docket No. 337-2463.

Such complaints typically include an allegation of intellectual property infringement and a request that the infringing godds be excluded from entry into the United States. The Commission now has 30-35 days from the filing date of the complaints in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible.

Click here for more information on the importance of monitoring these ITC investigations, and click here for a free audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission." For the latest details on a particular Section 337 investigation and/or other intellectual property matter, contact me, Bill Heinze (, at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia.
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