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Archived updates for Thursday, June 28, 2007

"Near Edge of Ungual Crest" Not Indefinite

In Young v. Lumenis, Inc. (June 26, 2007), the Federal Circuit reversed an indefiniteness holding for a claim reciting "forming a first circumferential incision in the epidermis near the edge of the ungual crest of the claw." According to Circuit Judge Lourie,
That language implies that an incision is made in the epidermis somewhere close to or at the edge of the ungual crest. As used in the claim, the term "near" is not insolubly ambiguous and does not depart from the ordinary and customary meaning of the phrase "near" as meaning "close to or at" the edge of the ungual crest [15 below].
Reference to the specification shows that it is consistent with that understanding of the term. The specification makes reasonably clear that the first incision is made very close to or at the edge of the ungual crest. In the "Brief Summary of the Invention," the specification describes the invented method as including a first incision in the epidermis "at the edge of the ungual crest of the feline’s claw." ’579 patent col.1 ll.63-67. The specification further describes that the first incision "severs the most distal portion of the epidermis from the underlying fascia of the ungual crest." Id. Additionally, in the "Detailed Description of the Invention," the disclosure states that the first incision "is made near the most distal edge of the epidermis and extends circumferentially around the claw to sever the epidermis from the ungual crest." Id. col.4 ll. 39-42. Thus, based on the several descriptions in the specification, we understand the term "near the edge of the ungual crest" as recited in the claims to mean close to or at the most distal edge of the epidermis. In fact, Figure 2 shows an example of such an incision "near" the edge of the ungual crest, as illustrated by line A-A. That figure illustrates where the first incision is made in relation to the crest and phalanx, and provides a standard for measuring the meaning of the term "near."

Moreover, because the term "near" describes a location on an animal, its use, as opposed to a precise numerical measurement, is not inappropriate because the size of the appendage and the amount of skin required to be incised will vary from animal to animal based on the animal’s size. Akin to the term "approximately," a person having ordinary skill in the art would know where to make the cut; thus the use of the word "near" does not deprive one of ordinary skill from being able to ascertain where the cut should be made.

. . . Lumenis argues that the district court properly applied Amgen and determined that the term "near" is indefinite because it fails to distinguish the claims over the prior art. We do not agree that Amgen supports the district court’s decision. In Amgen, the invention was directed to homogeneous erythropoietin ("EPO"), a protein consisting of 165 amino acids that stimulates the production of red blood cells. 927 F.2d at 1203. The claim recited homogenous EPO characterized by the limitation "specific activity of at least about 160,000 IU per absorbance unit." Id. The district court determined that "bioassays provide an imprecise form of measurement with a range of error" and that the use of the term "about" 160,000 IU coupled with the range of error already inherent in the specific activity limitation, did not distinguish the invention over close prior art, which described preparations of 120,000 IU, or permitted one of ordinary skill in the art to know what specific activity values below 160,000 IU might constitute infringement. Id. at 1217. The claims as filed included the limitation "at least 120,000." After the examiner rejected the claims because the prior art included EPO having a specific activity of 128,620
IU, the claims were amended to change the "at least 120,000" language to "at least about 160,000" to avoid the cited prior art.

Because the term "about" did not give any indication as to which numerical value between the prior art specific activity value of 128,620 and 160,000 constituted infringement, the court held the term "at least about" to be indefinite. Id. at 1218. The district court further observed that there was nothing in the specification or prosecution history that provided any indication as to what range of specific activity was covered by the term "about," and no expert testified as to a definite meaning for the term. For those reasons, we affirmed the district court’s determination of invalidity, stating that when the meaning of the claims is unclear, especially when there is close prior art, the claims properly may be held to be invalid. Id.

Unlike the situation in Amgen, here the intrinsic evidence does provide guidance on the meaning of the term "near." When intrinsic evidence resolves the claim construction, a term is not "insolubly ambiguous," and thus reference to the prior art is not needed. That is the situation here. In addition, there were no office actions issued by the PTO during the original prosecution rejecting the claims over the prior art. There were also no amendments or arguments filed by the patentee. Thus, unlike in Amgen, the claims were not amended to include vague language in order to overcome close prior art.
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Archived updates for Thursday, June 21, 2007

IPO on Patent Quality Metrics

Here is "A Comprehensive Approach to Patent Quality" according to Intellectual Property Owners Association President Marc Adler. Read more of his thoughts on "Measuring Patent Quality."

Perhaps we will see something that is a bit less qualitative from the IPO's "Patent Quality Metrics Task Force."

For other information on the tradeoffs between cost and quality, check out the UTBMS I/P Billing Codes and other posts on IP metrics here and here.
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Archived updates for Wednesday, June 20, 2007

Top Ten eFiling Errors at the USPTO

According to the USPTO, the most common e-filing mistakes are:
  1. Not including all documents in the filing as would be done in paper.

  2. Not calling the Electronic Business Center when there is a question or when encountering a problem which leads to later filing dates and late fees/surcharges.

  3. Not indicating Customer Number as correspondence address in their attached documents such as the Transmittal letter, ADS, Oath/Declaration.

  4. Filing a continuation/continuation-in-part/divisional as follow-on submissions to priority application. You should file these as a new application.

  5. Changing the original font rather than embedding the font to fix a "non-embedded fonts" error message. You should:

    Use ABXPDF writer,
    Print to Image in Adobe Professional 7.0,
    Utilize the Adobe .JobOptions with Adobe Professional 8.0,
    Or contact the Electronic Business Center.

  6. Not choosing all fees that apply to the filing on the "Calculate fees" screen.

  7. Indicating the total amount of claims resulting in overcharging -- You should indicate the amount of claims in excess of 20 total claims and 3 independent claims.

  8. Not indexing Amendment parts correctly -- The cover sheet/transmittal letter should NOT be indexed using the Amendment type document descriptions (i.e. Amendment after Non-Final, Preliminary Amendment). The annotated application part should NOT be indexed using the document description "Applicant Arguments/Remarks Made in Amendment." Only the formal "clean copy" of the application part should be indexed using the application part document descriptions (i.e. specification, claims, drawings).

  9. Not indexing RCE submissions correctly -- This should be indexed under "Request for Continued Examination" instead of "Amendment Submitted/Entered with Filing of CPA/RCE."

  10. Not including Provisional cover sheet with Provisional application filing.
    An ADS or Provisional cover sheet is required for provisional application filings and should be indexed under "General Transmittal - Transmittal of New Application" instead of "Miscellaneous. Incoming letter."

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Archived updates for Tuesday, June 19, 2007

UTBMS I/P Billing Codes Finalized

After nearly two years of work, and input from well over 100 individuals at law firms, corporations, and service facilities worldwide, the final Uniform Task-Based Management System Intellectual Property billing code sets have been presented to the LEDES (Legal Electronic Data Exchange Standard) Oversignt Committee ("LOC") for formal ratification and future maintenance.

Download the finalized UTBMS Patent Billing Codes here.
Download the finalized UTBMS Trademark Billing Codes here.

More About the UTBMS IP Billing Codes:

Until the last decade, law firm billing was relatively straightforward. Firms billed their clients in greater or lesser detail, typically providing in-depth narrative descriptions of the tasks and processes underlying their hourly charges. When issuing bills and providing the underlying detail, each firm followed its own approach.

In recent years, however, clients have become more focused on requesting additional billing information from their outside law firms, or asking that billing data be presented in specific formats. In some instances companies have wanted to analyze their costs along various dimensions to provide benchmarks for the more systematic evaluation of legal costs. In others, there has been a desire to develop a database of costs on discrete legal activities. Along with these trends, the rise of electronic legal billing and data exchange has created a flood of new information.

In order to address these and other challenges, many consumers of legal services have began to move toward "task-based billing" systems where standardized codes are used to identify common tasks and activities performed by different service providers. These types of management information systems are well-known in project accounting circles where costs and revenues are allocated according work breakdown structures of deliverables and tasks that need to be performed in order to complete a project. Perhaps the most well-known of these task-based billing systems outside the legal serves profession is the Health Care Procedure Coding System established by the U.S. Health Care Financing Administration (HCFA) in 1978 for the billing of health care services under Medicare and Medicaid. By similarly requiring legal bills to be categorized according to a standard set of tasks and activities, rather than by matter and day of month, it was hoped that service providers and consumers could get a better handle on where those dollars were going.

The Uniform Task-Based Management System

This new approach led to a confusing proliferation of different task and activity descriptions, until, in 1995, a consortium of legal service providers and consumers created the Uniform Task-Based Management System ("UTBMS") with standard code sets for four areas of law: litigation, counseling, bankruptcy, and projects. Each of these four UTBMS “codes sets” includes a hierarchical list of alphanumeric codes and corresponding terms and definitions that describe the universe of legal tasks in a discrete area of legal practice or specialization. The first element in each code is a letter identifying the corresponding area of law – “L” for litigation, “C” for counseling, “B” for bankruptcy, and “P” for projects – or a general cost type - A for activity or E for expense. For example, a typical billing entry under the litigation codes set might include 0.5 hours of John Doe's time at $200/hour for $100 on L310 ("Written Discovery") doing A103 ("Draft/Revise") responses to interrogatories with expenses of $1.25 on E101 ("Copying").

According to an article in the February 2, 2004 issue of "Legal Times," a joint study by the Association of Corporate Counsel and Serengeti Law found that a mere 4.4 percent of the 266 companies that were surveyed required the use of uniform task-based codes in 2002. And, perhaps more troubling, about one-fourth of those companies admitted that they don't use the coded data at all. So, what's stopping task-based billing for legal services? The April 2004 issue of "Corporate Counsel," describes the UTBMS code sets are so unwieldy that the resulting mass of information often becomes overwhelming. According to a July 2003 article in Lawnet, law firms have also found it unrealistic to expect lawyers to code each and every time entry with two codes. "Lawyers look at the codification of legal services, and they're appalled by it," said David Briscoe, of Altman Weil. "They say, 'There's no way I'm going to take the time to learn this, and, besides, what I do does not fit into the list of codes.'" Electronic legal billing software providers have also been overwhelmed with the sheer number and variety of billing code sets.

IP Task-Based Billing Comes to Canada

A similar Canadian UTBMS project was instigated at the suggestion of the Insurance Corporation of British Columbia (ICBC). Their legal department saw the value of the UTBMS system being developed in the United States. However, U.S. billing codes were not directly applicable to the Canadian legal system due to minor differences in process and terminology. Recognizing the value of a uniform code set for the Canadian legal community, ICBC requested the assistance of The Conference Board of Canada in bringing together a broad coalition of law firms and corporate legal departments from across Canada to address this issue. Although an intellectual property code set was developed by the Canadian consortium, that code set used a variety of terminology that is unique to the Canadian legal system, and therefore difficult to implement for large, multinational intellectual property service consumers and suppliers.

The UTBMS Update Initiative in the U.S.

The UTBMS Update Initiative (at was started in the Spring of 2005 in order to address these and other issues by updating and enhancing the existing UTBMS code sets. This grass-roots initiative adopted a three-prong approach focusing on: 1) code updates, 2) internationalization and 3) intellectual property issues. Shortly after its formation, the Initiative’s intellectual property committee collected proprietary billing code sets from various consumers of intellectual property legal services began the difficult process of distilling those materials into a generally-acceptable standard with international applicability. Due to the transactional nature of most copyright-oriented projects, the UTBMS IP committee members quickly decided to focus on just patent and trademark billing codes for the time-being.

The development of the patent and trademark code sets was spearheaded by Bill Heinze of GE Energy on the patent side, Ed Courtney of Ecolab on the trademark side, and Domenic Leo of Datacert e-billing services on the data management front. Our goal was to replace the proprietary and inconsistent cost coding schemes that are being proliferated by large consumers of intellectual property services with a single, standardized regime that could simplify data entry for legal service providers and allow for improved data analysis by legal service consumers and their providers. In April 2006, we completed a first draft of the patent billing code and draft trademark billing code sets. Those Intellectual Property Task-Based Billing Codes Sets then went through an extensive public comment and revision process. Now, after nearly two years of work, and input from well over 100 individuals at law firms, corporations, and service facilities worldwide, the attached, final code sets have been presented to the LEDESTM (Legal Electronic Data Exchange Standard) Oversignt Committee (“LOC”) for ratification and future maintenance.

The UTBMS Intellectual Property Code Sets

In a nutshell, the IP billing code sets are structured similar to the American Bar Association's litigation, counseling, project, and bankruptcy code sets code sets, with each numeric task code (beginning with "TR" for trademark task codes and "PA" for patent task codes), brief identifier, and detailed description grouped into one of seven phase headings corresponding to distinct stages in the application and pre-litigation enforcement process. Both IP code sets also use the same (optional) Activity and (required) Expense codes, along with some additional expense codes that are unique to intellectual property. For example, the seven phase headings for the Patent Code set are
PA100 - Assessment, Development, and Administration
PA200 - Patent Investigation and Analysis
PA300 - Domestic Patent Preparation
PA400 - Domestic Patent Preparation
PA500 - International Patent Preparation
PA600 - International Patent Prosecution
PA700 - Other Patent-Related Tasks
where each consumer is expected to identify for its providers a "domestic" jurisdiction such that all matters falling outside of that jurisdiction will be coded as "international" phases. This arrangement allows cost center payors in different countries of a multinational consumer to separately identify how to differentiate among its domestic and foreign legal matters. For example, a German corporation with legal departments in the U.S. and Germany might choose to designate Germany as the domestic jurisdiction for all legal service providers. Alternatively, the same corporation might choose to identify the U.S. as the domestic jurisdiction for legal service providers in that are managed by the legal department of its U.S. subsidiary, while Germany is identified as the domestic jurisdiction for all other legal service providers.

A typical task code under the "PA 400 - Domestic Patent Prosecution" phase heading is

PA430 - Official Communication - Domestic

All action associated with processing an Official Communication from a Patent Office (known as an "Office Action" in the U.S. when directed toward the merits of the application) in the home country of an application for an application filed under PA300, including initial review and any calendaring ("docketing" in the U.S.) of any response deadline, report to client with any proposed response, review of applicant's
instructions and inventor's comments, preparation of amendments and/or responsive arguments, examiner interviews, and report of actions to the client. Includes activities associated with Official Communications not affecting the merits of the application, such as filing receipts, restriction/election requirements, and annuity/maintenance fee payments. Also includes "Petitions" and other requests for supervisory action that are not decided by a quasijudicial appellate tribunal within the Patent Office, such as petitions to reinstate an abandoned application in the U.S.

The following extraordinary tasks are separately listed under the PA700 - Other Patent-Related Tasks phase heading:

PA710 - Opinion Preparation

All action associated with the completing formal legal opinions on the validity, enforceability, infringement, and/or non-infringement of a patent claim. Includes opinions on infringement of a client's patent by a non-client infringer.

PA720 - Portfolio Analysis and Management

All action associated with reviewing, analyzing, documenting, and managing a portfolio of patents. Includes patent "due diligence" during transactional analysis.

PA730 - Assignments and Security Interests

All actions associated with negotiating and preparing assignment (i.e. previously
registered or filed application) or security interest, including review of file history, checking status and meeting with client. Work of outside vendors in conducting searches or otherwise assisting investigation should be an expense under E100.

PA740 - Licensing

All actions associated with negotiating and preparing license.

The several new expense codes that have been added to capture out-of-pocket expenses that are unique to the intellectual property fields are

E125 Translation - Translation fees including preparation and keyboarding
(typing) of documentation

E126 Drawings - Drawings prepared by external draftsman

E127 Patent and Trademark Records - Including patent copies, priority documents, file histories and other intellectual property records obtained through third-party vendors;

E128 Searching and Monitoring

E129 Official Fees, excluding post-issuance patent maintenance, trademark renewal
fees and late fees - Official fees not otherwise identified above which
are paid to governmental and quasigovernmental entities in connection with a
pending application, including those paid to Patent and Trademark Offices, the
World Intellectual Property, Notaries, consulates, and embassies.

E130 Post-Issuance Patent Maintenance and Trademark Renewal Fees - Official fees paid to a government agency in order to maintain an issued patent or trademark in force

E131 Late Fees - Official surcharge fees paid to a government agency in order to have a documents entered into the record pas an initial deadline, including Petition for Extension of Time and Information Disclosure Statement fees in the U.S.

It will be apparent from these examples that “reporting” letters to clients (such as for receipt of an Office Action or other official communication from a patent Office) have not been broken out separately from the tasks that are likely to be authorized by the client as a result receiving the reporting letter. Although service providers put varying degrees of effort into such initial tasks, the need for simplicity in the code sets was believed to overweigh the value of such minute breakdowns of billing information for clients. In fact, the task codes are numbered in groups of ten so as to allow clients to add additional codes for any such further breakdowns, and also allow additional codes to be added by the LEDES in the future to reflect significant changes in intellectual property procedures. In addition, each phase is also provided with an “X99” task code (where ”X” is the phase series) that service providers can use for tasks not captured in the in the existing codes for the particular phase, and/or that clients can designate for any special task information that they would like to collect.

There are significant benefits to both law firms and law departments in terms of administrative simplicity and cost reduction from standardization under these code sets. In addition, these code sets should help consumers of intellectual property legal services to analyze their costs along various dimensions and provide benchmarks for the more systematic evaluation of legal costs. For organizations that find their costs outside industry benchmarks, this information may also lead to more frank discussions about excessive service level demands and/or service level differentiators. Such objective information will hopefully allow both consumers and suppliers of intellectual property services to have clearer expectations that lead to more even more effective and efficient commercial relationships that those that exists today.
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Claimed "Control Means" Unsupported by Illustrated "Control Box" and Reference to "Known Equipment" in Specification

In Biomedino, LLC v. Waters Technologies Corporation, et al. (June 18, 2007) the Federal Circuit affirmed invalidation under § 112, second paragraph, of a claimed molecular regeneration device including "control means for automatically operating valves," where "The only references in the specification to the 'control means' are a box labeled 'Control' in Figure 6 and a statement that the regeneration process of the invention 'may be controlled automatically by known differential pressure, valving and control equipment.'"

According to Senior Judge Archer (joined by C.J.-designate Rader and J. Gajarsa) :

Essentially this case asks the following question: for purposes of § 112, ¶ 6, is sufficient corresponding structure disclosed when the specification simply recites that a claimed function can be performed by known methods or using known
equipment where prior art of record and the testimony of experts suggest that known methods and equipment exist?

. . . In Atmel it was not the fact that one skilled in the art was aware of known circuit techniques that resulted in a conclusion that sufficient structure was recited. Rather, it was the inclusion in the written description of the title of the article which itself described the structure for a "known circuit technique." Expert testimony was used to show what the title of the article would convey to one skilled in the art—in that case it was "the precise structure of the means recited in the specification."

. . . The inquiry [here] is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing a structure. Med. Instrumentation, 344 F.3d at 1212 (citing Atmel, 198 F.3d at 1382). Accordingly, a bare statement that known techniques or methods can be used does not disclose structure. To conclude otherwise would vitiate the language of the statute requiring "corresponding structure, material, or acts described in the specification."

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USCO Reduces Fees for Electronic Filing

Effective July 1, 2007, the U.S. Copyright Office will reduce the filing fee for electronic filing of a basic copyright registration to $35. However, Congress has 120 days from February 21, 2007, to review these fees and, if no legislation is enacted barring adoption of these fees, the $35 proposed fee for registration of copyright claims submitted electronically will be adopted. The current $45 fee for a paper application will be retained (read more).
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E.D. Tex. Grants Permanent Injunction for Non-Practicing Patent Holder

View the order here via Peter Zura's 271 Patent Blog.
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Online Access to European Community Trademark Files

CTM-ONLINE. is the new web tool providing access to CTM file documents online free of charge. CTM files generally contain all correspondence exchanged between the OHIM and the CTM owner and/or its representative.

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"Structural" verses "Combination" Obviousness in the U.S.

"The entire body of Supreme Court obviousness law interpreting 35 USC § 103(a) of the 1952 Patent Act has been focused upon the obviousness of a combination of old elements: There has never been a modern obviousness case focusing upon whether a unique compound, per se, is or is not obvious," writes Professor Wegner. "KSR and Pfizer v. Apotex manifest fundamental misunderstandings of chemical practice case law."

Read more excerpts from The Good Professor via The Patent Prospector
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The Background Problem with Inventive Step

In "Post-KSR Treatment of 'Problems' in the Background of the Invention," Professor Wegner explains his view on why "the creation of a 'problem' that is placed in the Background of the Invention may very well doom the invention to a conclusion of obviousness." According to the Good Professor, "What creates a special and immediate challenge for patent application draftsmanship is the KSR linkage between a 'problem' that is be solved by the patentee and the common sense of a worker skilled in the art who is motivated by the problem to seek out an 'obvious to try' solution."

As noted by the U.S. Supreme Court in KSR v. Teleflex:

“[w]hen there is a design need or market pressure to solve a problem and there
are a finite number of identified, predictable solutions, a person of ordinary
skill has good reason to pursue the known options within his or her technical
grasp. If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that instance the fact
that a combination was obvious to try might show that it was obvious under §

Thus, Wegner appears to be arguing that identification of a design need or market pressure "problem" in the specification suggests that there are a finite number of identified, predictable solutions that one would have good reason to pursue with anticipated success, thus potentially obviating of the resulting invention.

Regardless of whether his domestic thesis turns out to be correct, the worldwide situation on inventive step appears to be a bit more complex. For example, Europe still seems to use a "problem-and-solution approach" toward toward inventive step, while, in Japan, "if advantageous effects of the claimed invention over a cited invention can be clearly found in the description in the specification, etc., it is taken into consideration as facts to support to affirmatively infer the involvement of an inventive step."

Perhaps this will be one more area for international harmonization.
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Norway to Join EPO in 2008

Norway is set to become a member of the European Patent Organisation on January 1, 2008.

The European Patent Organisation is an intergovernmental organisation that was set up in October 1977 on the basis of the European Patent Convention (EPC) signed in Munich in 1973. It has two bodies, the European Patent Office and the Administrative Council, which supervises the Office's activities. The Organisation currently has 32 member states.
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