Colorado will have the good fortune of receiving David Kappos as the keynote speaker at an upcoming patent conference at the University of Colorado Law School [Link]. The conference is co-sponsored by Silicon Flatirons and the Colorado Bar Association IP Section. Scheduled speakers include noted IP academic Scott Kieff of GW Law School, Don Rosenberg (General Counsel of Qualcomm), and John Thorne (Deputy General Counsel at Verizon Communications), among others. Great hiking in the foothills surrounding Boulder, if you should find yourself in Colorado during the conference.
Archive for December, 2011
My father gave me a book for Christmas titled Where Good Ideas Come From — The Natural History of Innovation by Steven Johnson. The book opens with a nice quote from Shakespeare that I think some of you patent poets might like:
. . . an imagination bodies forth
The forms of things unknown, the poet’s pen
Turns them to shapes and gives to airy nothing
A local habitation and a name.
– Shakespeare, A Midsummer Night’s Dream, V.i. 14-17
The Federal Circuit decided In re Saunders last week, an appeal from the BPAI relating to charcoal briquets. The Federal Circuit issued a Rule 36 decision.
The oral argument is pretty interesting in that it discusses how the PTO treats evidence of commercial success. One interesting issue was whether the rule recognized in Ormco v. Align, 463 F.3d 1299 (Fed. Cir. 2006) should extend to proceedings in the PTO, even though it was a rule expressed in the context of patent litigation, not ex parte examination. The opinion in Ormco v. Align states:
Evidence of commercial success, or other secondary considerations, is 1312*1312 only significant if there is a nexus between the claimed invention and the commercial success. As we explained in J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563 (Fed.Cir.1997), “[w]hen a patentee can demonstrate commercial success, usually shown by significant sales in a relevant market, and that the successful product is the invention disclosed and claimed in the patent, it is presumed that the commercial success is due to the patented invention.” Id. at 1571; see also Brown & Williamson, 229 F.3d at 1130 (stating the presumption that commercial success is due to the patented invention applies “if the marketed product embodies the claimed features, and is coextensive with them.”).
You can listen to the panel discuss the issue with the Associate Solicitor for the PTO [here].
Unfortunately, the panel used Rule 36 rather than writing either a precedential or non-precedential opinion. Since KSR v. Teleflex was decided, secondary considerations have gained even more importance in the prosecution of patent applications. It would be helpful to have an opinion from the court that weighs in on whether the rule recognized in Ormco v. Align should apply to prosecution before the PTO.
You can listen to the entire oral argument [here].
You can read the court’s Rule 36 opinion [here].
You can read the BPAI opinion [here].
As an aside, do you think Judge Moore is pretty adept at reading Green Eggs and Ham: [Listen].
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The Federal Circuit heard oral argument in Beer v. U.S. last week. The appeal relates to a lawsuit brought by a group of federal judges concerning judicial pay. It was GVR’d by the Supreme Court last term. For more background, the amicus brief filed jointly by the AIPLA, IPO, and the Federal Bar Association (in the Supreme Court case last term) is available [here].
The US Courts’ home page has a good summary of how judicial pay has been affected by the unintended consequences of the Ethics Reform Act of 1989. Here is the link for that page: [Link]. A couple of interesting graphs from that page are shown below.
I’m guessing the question “Why isn’t this a frivolous appeal?” ranks pretty high on the list of things lawyers do not want to be asked by a judge during oral argument. Nevertheless, that was basically what one advocate had to address when Judge Moore inquired whether his cross-appeal for attorneys fees was frivolous: [Listen] and [Listen].
The advocate would go on to explain his rationale for bringing the cross-appeal and the court moved on to discuss other issues.
The pending appeal of the Dealertrack v. Huber case reflects just how long an appeal can take when an area of the law is unsettled. Back in October of 2009, the court granted the parties’ joint motion to stay proceedings until the Bilski case was decided by the Supreme Court. [Link] As you may recall, that decision was not issued until very late in June of 2010. The briefing of the Dealertrack case ultimately renewed in 2010 and the oral argument was held on May 5, 2011. All the other cases argued that day have long since been decided; but, the Dealertrack decision has yet to be published. One can speculate why the opinion is taking so long or is on hold; but, the delay certainly highlights how this unsettled area of the law (compare RCT v. Microsoft with CyberSource v. Retail Decisions) is still a drag on industry.
I stumbled upon a recent presentation put on by the National Archives about the patent battles between the Good Humor Corporation and the Popsicle Corporation back in the early twentieth century.
You can watch the presentation here [Link].
With the Supreme Court of the United States set to hear oral argument in Mayo v. Prometheus later this week, I thought it might be of interest to post links to oral argumets of previous section 101 cases:
Brenner v. Manson: [Listen]
Gottschalk v. Benson: [Listen]
Parker v. Flook: [Listen]
Diamond v. Chakrabarty: [Listen]
Diamond v. Diehr: [Listen]
Diamond v. Bradley: [Listen via OYEZ site]
J.E.M. Supply v. Pioneer Hi-Bred International: [Listen via OYEZ site]
Lab Corp v. Metabolite: [Listen via OYEZ site]
Bilski v. Kappos: [Listen]