You are currently browsing the ISinIP weblog archives for May, 2007.
May 30, 2007 by thomason.
Many analyses of obviousness begin with the statutory presumption of validity. A host of CAFC cases provide some treatment about whether or not the art was before, or considered by, the Examiner, and how that affects the presumption. The general view was that the presumption is strengthened when only art considered by the Examiner is asserted, and is not diminished when art not considered is asserted as the grounds for invalidity. Now, reviews of the KSR ruling suggest that it ‘weakens’ existing patents, but that later-issued patents presumptively will be more difficult to invalidate.
That provoked the question, if the file history shows an obviousness rejection based on reference A & B, which was overcome with an argument about no express motivation or suggestion to combine A & B, then what presumption of validity attaches to that patent. Seemingly, an obviousness challenge could be mounted based, a second time, on references A & B. If the examiner ‘rigidly’ accepted the fact that no TSM could be shown in the cited references, then the challenger should face no strengthened presumption as to validity over those same references.
The old rule, now in question for patents issued pre-KSR , as stated in Ultra-Tex v. Hill Bros., 204 F.3d 1360 (Fed. Cir. 2000) was “explained that when a party alleges that a claim is invalid based on the very same references that were before the examiner when the claim was allowed, that party assumes the following additional burden:
“When no prior art other than that which was considered by the PTO examiner is relied on by the attacker, he has the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job, which includes one or more examiners who are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty it is to issue only valid patents.”
There may be no “added burden” on a challenger for patents issued after an obviousness rejection related to teaching, motivation or suggestion.
The related question concerns whether KSR diminished the presumption when un-cited art is presented as grounds for obviousness. The KSR opinion suggests that the Asano patent, found to be the invalidating reference, was not cited to the Examiner. It’s that next line in the opinion that bears mention: “We need not reach the question whether the failure to disclose Asano during the prosecution of Engelgau voids the presumption of validity given to issued patents, for claim 4 is obvious despite the presumption. We nevertheless think it appropriate to note that the rationale underlying the presumption–that the PTO, in its expertise, has approved the claim–seems much diminished here.”
So, if you are keeping score, the tally is no “added burden” to overcome, and a “much diminished” presumption that a duly-issued patent is valid.
All this talk of a “presumption,” whether added or diminished, has to intersect with evidential considerations, and issues of fact and law. Presumptions allocate the burdens of going forward, or of proof, or of persuasion - all in all, issues of fact. Indeed, earlier CAFC precedent holds that: “Determining whether there is a suggestion or motivation to modify a prior art reference is one aspect of determining the scope and content of the prior art, a fact question subsidiary to the ultimate conclusion of obviousness.” Sibia Neuro., Inc. v. Cadus Pharm., Corp., 225 F.3d 1349 (Fed. Cir. 2000). What then is the standard of review for the new, non-rigid standard expressed in KSR, review of a factual determination for clear error, or a legal question reviewed de novo? No fair read of KSR suggests that a clearly erroneous standard of review was applied.
Posted in Patents - Federal Circuit, Uncategorized | Comments Off
May 24, 2007 by thomason.
Every year you get a new copy of the Federal Rules of Civil Procedure, and each one contains a “Form 16 Complaint for Infringement of Patent.” After the CivPro teachings that Justice Souter just discoursed about in Bell Atlantic v. Twombly, it might be time to bulk up Form 16.
Only antitrust dweebs have a present realization that the rule in Twombly’s case may forever change the long-standing appellate axiom that about anything that resembles civil allegations tend to meet the ‘good enough for gov’t work’ standard of review. [Now you know how this dweeb knows]. The short headnote in Twombly is that mere allegations of ‘conscious paralellism’ are insufficient to plead an antitrust “contract, combination or conspiracy.”
The longer topic is the appropriate measure of allegations that will overcome a Rule 12(b)(6) motion to dismiss for failure to state a claim. Justice Souter declaims that “no heightened pleading” rule is being stated, then he goes on instructing about what additionally needs to be pleaded. It is insufficient to plead a “possibility” without allegations adequate to suggest “plausibility.” [Maybe the form allegation should begin, “Trust me, defendants have …”].
Others, more erudite than I, can explain and expound how Twombly announces a new regime for initial pleadings. My thought was: does the case subsume Rule 11. In order to plead enough facts for a plausible claim of patent infringement, or non-infringement, a pleader necessarily will have conducted a pre-filing investigation.
To master what Twombly failed to do, a patentee would not merely plead “patent # was duly granted” and “upon information and belief, defendant has infringed said patent.” How would barebones, Form 16, allegations suggest a “plausible” claim for infringement? To quote The Honorable Justice “we do not require heightened fact pleading of specifics, but only enough facts to state a claim to relief that is plausible on its face. Because the plaintiffs here have not nudged their claims across the line from conceivable to plausible, their complaint must be dismissed.”
If a complaint has “not nudged” far enough, then does it fail a Rule 11 test; will the ‘nudge’ or the Rule 11 test expose what the pleader had hoped to have the opportunity to discovery and prove. The case may improve pleading standard, but it is likely to spawn many Rule 11 “safe-harbor” letter as new suits are filed.
Posted in Patents - Federal Circuit, IP-Antitrust, Uncategorized | Comments Off
May 21, 2007 by thomason.
The passing of a mentor, and friend, may induce some melancholy thoughts. But when only positive and pleasant memories are associated with that friend, then recollecting yields joy. With that mindset, I reflect on the passing of my first boss (in private practice), George J. Koelzer, Esq., at age 69.
Most lawyers who knew George had their own unique way to describe him, but for starters, I repeat one from a book with a chapter about George, ‘at 6-7, he looked like a linebacker gone to seed.’ Add to that, his large-featured face, black hair, a booming voice, and most of the time puffing cigar smoke right in your face. He could be brusque or charming, witty or cutting, but either way, George loved when the pot was boiling and the strategizing was at a heightened pitch.
The best lesson I got from George about trying complex cases was that it will not go according to plan. Witnesses will change, or water down, their planned testimony – or not even show up. Wise experts will be led astray on cross-exam. Plainly admissible evidence will be excluded. Judges will befriend opposing counsel, and so on. Prepare all you want to, but be prepared for what you haven’t prepared for.
While many recollected occasions with George bring on a smile, there was an annual rite. We agreed on what was the most important weekend of the year, but we disagreed on why. I knew that the first Saturday in May is the Kentucky Derby, but George knew it as the weekend of the Maritime Law Association dinner. All our lawyers would drive into Manhattan, gather for drinks at the Whitehall Club (men only then), check into rooms next door at the N.Y. Athletic Club (spy the Heisman), get on the tux, and go to the MLA dinner. [I did stop at OTB to put down my Derby bets]. Suffice it to say, those celebrations paid no heed to the clock or the sundial. George was in his glory there, among the colleagues he most enjoyed, making grand introductions, keeping our glasses filled with distilled spirits and our ears filled with unending stories and jokes; oh, and cigars for everyone!
When finally I awoke, trying to put words into sentences seemed a struggle. I hastened to the office, and there was George fully-suited in hand-tailored dark pinstripes and white starched shirt, feeling fit, and urging that we go over each and every word in a brief on some arcane point of 2nd Circuit law. He seamlessly could go from carousing with judges or associates, or clients, to serious study or explication of a legal argument. He lived the law, and its practice. It wasn’t what he did just on weekdays.
The lessons I learned from George about trial practice have always served me well. I too learned not to try to smoke or drink as much as a 6-7 linebacker, even one ‘gone to seed.’ We all miss our youth, our mentors, our formative experiences, but their aura persists, as does the fragrance from the days we received those laurels. George, please don’t argue with Saint Peter about being admitted to the hereinafter club; but if he were to, I’d think George’s argument would be compelling, and may have a dash of humor in it. R.I.P.
Posted in Uncategorized | Comments Off
May 15, 2007 by thomason.
Effective May 1, 2007, patent cases in the Northern District of Texas are governed by Local Rules on initial disclosures, added points for case management, and claim construction resolution. In many respects, these rules compare to those in the N.D. California, and other courts and other judges, such as in the S.D. Ohio.
Currency compelled taking note that the new rule on invalidity challenges requires the challenger’s initial disclosure to include preliminary contentions as to: “If a combination of items of prior art makes a claim obvious, each such combination, and the motivation to combine such items, must be identified.” With the rigid requirement now relaxed, what simple edit might there be to this local rule? Replace “motivation” with “common sense”?
Posted in Patents - Legislation, Uncategorized | Comments Off
May 14, 2007 by thomason.
Idea submission cases involve some contract law concepts that, perhaps, got one day of mention in law school. Among the most-readable version of idea submission cases are those involving successful movies and TV shows. Recently filed was a suit, alleging that Fox and Mattel stole their idea for the movie and toys “Robots” from an animation film developer, captioned Midland Prod. Corp. v. 20th Century Fox, 07CV2932 (C.D. Calif.).
It alleges that Midland “developed a feature length animated motion picture about robots titled ‘Robots of Mars.’” Representatives met with Fox, and later, with Mattel, and got a lot of positive feedback (no bank will let you deposit this, and it is not legal tender). They were in contact with Producers Chris Meledandri (Ice Age, Ice Age 2, Sister Act 2) and Laura Ziskin (Pretty Woman, Spider Man, As Good As It Gets), but no contract ever was signed. They were so encouraged, they left their complete “Presentation Package” with Fox and with Mattel, even though, no non-disclosure or other form of agreement was in place. Instead of money in hand, they accepted its motto, “In God We Trust.”
In the complaint, Midland alleged claims for breach of implied contract, breach of confidence and copyright infringement. Here’s the nutshell on implied contracts – those are still contracts, and require clear and essential terms. Implied contracts are formed by conduct, while express contracts are created by words. Midland alleges many terms, on information and belief, as if there was a contract: that their “ideas” could not be used without “express consent,” that acceptance of these “ideas and materials” was conditioned upon plaintiff being “properly compensated,” including with “participation in the profits generated.” The implied contract also allegedly was exclusive, that defendants would not “become involved in the merchandising of any project relating to an animated film about robots.” All of this fits the pleading form, but it may not suffice to prove that the parties agreed on the essential term – price. What does “properly compensated” mean, even in an express contract?
A further point of weakness in cases over movie ideas is that these usually involve some generic characterizations, here, robots. The complaint goes into detail about how the robots developed by Midland were similar, e.g., in color and personality, to those in the “Robots” movie. But, robot humanoids tend to look alike, and they share qualities with the good witch and the bad witch. One recalls prior cases about pirates -> see, post-colonial Caribbean, planks, eye-patches, etc., and another about North Jersey mafioso, Baer v. Chase, 392 F. 3d 609 (3rd Cir. 2004) (Baer is a lawyer, who prosecuted organized crime figures). At a point, these narrow-drawn characters meet up with the doctrine that “Aggregation of ideas and expression do not by themselves create novelty.” Baer.
On the copyright claim, the submitter of the ideas thinks about “substantial similarity” while the defendant might ignore that and enumerate the “substantial” dissimilarities. Midland did register copyrights on the screen play, and on “scenes collections” (presumably, storyboards and concept art). Still, it is not certain that a copyright ever was obtained on the “Presentation Package” that Midland left in defendant’s possession. Always a good idea to slap copyright notices on that slick presentation that one intends to show and share – in confidence.
Posted in Copyright, Uncategorized | Comments Off
May 9, 2007 by thomason.
My current reads are the first two cases that cite KSR v. Teleflex. Primary interest will have to be given to the ruling of the CAFC in Leapfrog v. Fisher-Price. It affirms an obviousness determination, as being consistent with the “common sense” approach set out in KSR. That “sense of those skilled in the art” comes into play where “familiar elements” are combined “according to known methods” and not unexpectedly that combination will “yield predictable results.” After reading through this part of the Leapfrog ruling, one still wonders if the test will distill down to a well-developed record, that on review, appears to reach a common sense conclusion about obviousness.
The somewhat scary passage in may have application to numerous computer-aided combinations. “Accomodating a prior art mechanical device” so that it will provide the result using “modern electronics” likely results in an obvious combination. It had seemed that the advent of business method patents and computer-driven combinations had about obsoleted the rule that a known combination does not become novel by changing the matter or elements that previously performed the same operation and provided the same result, e.g., a computer that makes change, instead of the store clerk having to do that my manual arithmetic. Here, the prior art had “an electric motor and mechanical structures rather than a processor and related electronics.” However, obviousness was suggested by the fact that the prior art mechanical device “acheives the goals described” in the later-patented, computerized combination. All that was done was “to update it using modern electronic components,” that is, to adapt “an old idea or invention [] using newer technology that is commonly available and understood in the art.” For a lot of patents, that could be a killer, and in Leapfrog the “evidence of secondary considerations was inadequate to overcome” that.
Posted in Patents - Federal Circuit, Uncategorized | 1 Comment »
May 4, 2007 by thomason.
Cutting down the TSM test is glorified as a worthy effort to eliminate ‘bad’ patents. That, however, ignores the quantification of how many patents are ‘bad.’ All together, how many patents for sandwich pockets or internet concepts need there be to provoke a seachange in the presumption of non-obviousness?
Two areas likely to be affected by the new ‘feels obvious’ standard are innovations in crowded fields of art, and software building blocks. While “unanimous”, the KSR opinion offers many vagaries and few standard elements. Thus, if your client routinely patents each advance in its product line, or if each developed embodiment of an early-stage innovation is patented, then the concern is that patents in crowded fields of art will be hard to obtain from the PTO, and expensive to enforce/defend in court. True story: an inventor, trying to acheive a much more efficient device, obtains 27 patents, each on his next-best, improved embodiment. No product was ever sold that those patents cover. But, numbers 28 & 29 were the innovation he’d been working to acheive, and those were incorporated into all devices sold by all makers. If, (and one only can presume) a company wanted to infringe 28 & 29, then they could reverberate all of the noise and pithy remarks from KSR into a loud obviousness defense. ‘Every maker knew of the need and the problem, and all wanted to acheive the same result, and 28 & 29 are not patentable over patents 1 thru 27 or other art in this “crowded” field.’ That, IMO, makes KSR a bad solution.
The same concern attaches to software building blocks. All the complainers say that this routine or programming element are known, and no combination of those should be patentable. Why are those known? Because the inventors disclosed them. If there is no option to patentalby protect newly-developed software building blocks and routines, then trade secret protection is the better option. That results in less disclosure, and IMO less innovation by all.
I could go on, but it’s time to use my trade-secret method of picking the winner of tomorrow’s Kentucky Derby.
Posted in Patents - Federal Circuit, Uncategorized | Comments Off
May 2, 2007 by thomason.
As several past posts here have noted, the CAFC decided practically no cases involving obviousness during the 5 months since the oral arguments to the Supreme Court in the KSR case. From that, one may presume that there’s a backlog of undecided obviousness cases at the CAFC clerk’s office.
Is it reasonable to predict that a form of remand order, “for review in light of” the KSR case, will be issued? The mental picture is a PC with the form order, doing a mail-merge with a list of pending appeals, connected to printer printing remand orders and envelopes, and a group of clerks stuffing and sending them. Recess?
Or, is it reasonable to think that the CAFC will take and actually issue a ruling in the remanded KSR case? IMO, the CAFC may let the district courts take a second look at the pending cases, before doing as the Supremes mandated, and going forward with “further proceedings consistent with” the KSR opinion.
Posted in Patents - Federal Circuit, Uncategorized | Comments Off