Bill to establish revolving fund for PTO supported by ABA
Senator Coburn that would establish a "revolving fund" for the PTO.
Such a fund would make diversion of fees from the PTO more difficult.
The Section of Intellectual Property Law of the American Bar Association
established policy in opposition to the fee diversion practice and
persuaded the Association to adopt that policy. The Section's efforts
resulted a letter confirming Association's support of the revolving
fund. A link to the letter the Association sent to Senator Leahy and Senator
Specter can be found at the following link:
ABA Letter in Support of Coburn Amendment
Tafas summary
1. USPTO does not have substantive rule making power.
2. USPTO's interpretations of statutes that pertain to the USPTO's delegated authority are entitled to Chevron deference. The Final Rules are procedural.
3. Rule 78 is invalid because it attempts to add an additional requirement to for a third continuation that is not in Section 120 - that the application not contain amendments, arguments, or evidence that could have been submitted earlier. The Final Rule limits continuation applications on the basis of the total number of such applications previously filed, not on the length of a given serial chain of such applications.
"We agree that the USPTO has "inherent authority to govern procedure before the PTO, and that authority allows it to set reasonable deadlines and requirements for the prosecution of applications." Id. at 1368. However, under Bogese, the USPTO cannot set requirements that conflict with § 120 unless those requirements comport with a proper application of prosecution history laches. There are no "firm guidelines" for determining when prosecution laches exists. Symbol Techs., Inc. v. Lemelson Med. Educ. & Research Found., 422 F.3d 1378, 1385 (Fed. Cir. 2005) ("Symbol IV"). However, it is limited to cases of "unreasonable and unexplained delay in prosecution." Id. at 1384-85. We need not address the precise boundaries of the USPTO's authority to promulgate rules under Bogese because Final Rule 78 is far too restrictive to fall within the scope of prosecution history laches. The rule operates on an applicant's third continuation application without regard to when it was filed, even if the delay is significantly shorter than any of the delays in our prior prosecution history laches cases."
4. Rule 114, restricting RCE's, is valid.
5. Rules 75 and 265 are valid. They address "Examination Support Document" ("ESD") requirement. They do not impose a limit on the number of claims an applicant can pursue; they require that an ESD be submitted if more than five independent or twenty-five total claims are included in certain sets of copending applications. The ESD does not shift the burden away from the PTO to prove unpatentability.
Link to Tafas opinion
Federal Circuit renders claims obvious as "predictable variations"
The combination of a cover-stand and feet on the bottom of the candle holder was obvious to try in an effort to minimize scorching, as the combination would further raise the ...<< MORE >>
Federal Circuit: Capability of performing in infringing manner is not necessarily direct infringement.
The claim in the case was to a candle holder that included a limtation that one part had to be "resting upon" another part. The Federal Circuit said that, because there was no evidence that the parts had ever been placed in that configuration, there was no evidence ...<< MORE >>
Even when "reasonable persons will disagree" over claim meaning, it is not necessarily indefinite
The claim in the case addressed a method for treating a wound, and it had 2 basic steps. The first was the application of reduced pressure to the wound, and the second was maintaining the reduced pressure until "the wound has progressed toward a selected stage of healing." The first invalidity argument was that the part of the claim that described maintaining a reduced pressure until a "selected stage of healing" had been reached was indefinite because that the specification did not explain how the "selected stage" was to be determined "for particular wounds at particular times." Therefore, the argument was made, whether a wound had progressed to the "selected stage" was "wholly subjective."
In rejecting the argument, the Federal Circuit relied on examples of "selected stages" of healing in the patent's specification and a declaration from one of the inventors explaining "explaining that a doctor of ordinary skill in the art would understand how the selected stage of healing may vary from wound to wound." The court quoted on a 2001 case for the proposition that "[i]f 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." Slip op at 17, quoting, Exxon Res. & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).
A second argument was that the claim was indefinite because of a limitation that the wound show a reduction in bacterial density of at least 50%. They argued that, under the Honeywell case (Honeywell International, Inc. v. International Trade Commission, 341 F.3d 1332, 1339-40 (Fed. Cir. 2003), the claim was indefinite because "there are several methods for measuring bacterial density, each of which may yield a drastically different result, and a person of ordinary skill in the art would not know which method to use."
The court held that Honeywell did not control because the specification disclosed a particular method of how to calculate bacterial density. Slip op. at 18.
A link to the slip opinion is below.
Kinetic Concepts, Inc. v. Blue Sky Medical Group, Inc.
A link to the Sept. 2, 2008 memorandum of the Deputy Commissioner for Patent Examination Policy (John Love) interpreting recent opinions regarding indefiniteness for the examing corps is below.
Sept 2, 2008 Memorandum of DCPEP John Love to Technology Center Directors Regarding Indefininteness Rejections
Federal Circuit upholds jury verdict of no inducement - based on intent
[The patentee] may be correct that "practicing the prior art" is not a defense to patent infringement. See Ecolab Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1377 (Fed. Cir. 2002). ...<< MORE >>
Summary Judgment of Obviousness Reversed
A link to the slip opinion is below.
SUD-CHEMIE, INC. v. MULTISORB TECHNOLOGIES, INC., CA. No. 2008-1247, Slip Op at 12 (Fed. Cir. January 30, 2009).
Federal Circuit Holds Claimed Invention Obvious Based On Single Reference
On Jan. 15, 2009, the Court of Appeals for the Federal Circuit invalidated a patent claim, reversing a district court determination that a defendant failed to show clear and convincing evidence that the claimed invention would have been obvious to a person of ordinary skill. The Federal Circuit held the claimed stent obvious in view of a single prior art reference. The holding resulted from an analysis that concluded the reference did not show a single example stent that had all the limitations of the claim, but it showed two examples which, if combined, would have every limitation:
We agree with Cordis that one of ordinary skill in the art would have been motivated to combine the embodiment in figure 3B of Wolff with the embodiment in figure 4 of Wolff to arrive at a metal stent with two coating layers. Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.
Boston Scientific Scimend, Inc. v. Cordis Corp., CA No. 2008-1073, slip op. at 15-16 (Fed. Cir. January 15, 2009).
The Court characterized the prima facie showing of obviousness as "strong" and rejected an argument that the objective indicia of non-obviousness presented at trial overcame it. Id. at 16.
Patent Pilot Program Bill Introduced
On Jan. 22, Senator Specter and Congressman Issa introduced legislation to to establish a pilot program, in some US district courts, to have certain judges hear all patent cases in those districts. The provisions require that the district have at least 10 judges, 3 of which must have volunteered for the program. The district also must have adopted a set of local patent rules.
A copy of the bill is attached.
ABA Section of Intellectual Property Comments to Obama Transition Team
http://www.abanet.org/intelprop/TeamcommentsObama0109.pdf