University Research In The Marketplace: Bayh-Dole Act Is A “Job Creator”

Posted on January 30, 2014 by Warren Woessner

Although some have criticized this law as distracting public colleges from their true calling of generating knowledge (unless it supports global warming or evolution ), this mapped out summary (link below) of only some of patents licensed under Bayh-Dole demonstrates how the commercialization of government-funded research has both helped fund further cutting edge research and created jobs where no one knew there was even an industry.

University Research In The Marketplace

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Stories I Missed In 2013

Posted on January 16, 2014 by Warren Woessner

Some IP Stories Do Not Have Much “It” Factor.  Just like there used to be, and I guess still are, “It Girls” in showbiz and fashion, there are “It Issues” in IP law. I know these decisions/controversies are very important to the parties involved, but I just couldn’t get enthusiastic about these stories. However, since you may wish to investigate them further, I thought I would send out a short list.

1.  The legality of Michelle Lee’s appointment as Acting Deputy Director of the PTO (or whatever her title will turn out to be). More interesting would be the story of why Terry Rea was not offered the position (if she even wanted it).

2.  What “and/or” means in a patent claim. Although the PTO usually does not object to its use, it is probably better to write something like “at least one of A or B”, or “A or B or a combination thereof”.

3.  In case you have not noticed, prosecution history estoppel can limit the scope of a design patent. ‘Nuff said.

Continue reading →

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Supreme Court Will Review Limelight and Nautilus

Posted on January 13, 2014 by Warren Woessner

Continuing its heightened interest in IP law, on Friday the Supreme Court granted petitions for cert. to review Limelight Networks, Inc. v. Akami Technologies, Inc., U.S., No 12-786 and Nautilus, Inc. v. Biosig Instruments, Inc., U.S., 13-339. The other two grants were in a (c) and TM and so of less interest to this patent attorney.

In Limelight, the Fed. Cir. held that a defendant could be found liable for inducing infringement under 271(b) even if no one party performed the acts necessary to meet the requirement that there be direct infringement of 271(a). In the biotech/pharma space, this question becomes relevant when a testing lab measures the level of a biomarker but a specialist draws the diagnostic conclusion required by the claim.

I had not commented on the Nautilus decision in the past because the Fed. Cir. “rule” holding that a claim term violated 112(2) only if it was “insolubly ambiguous” was favorable to patentees (and, indirectly, to prosecutors). This “rule” has been challenged as essentially too lenient to said ambiguous patent claims – and the Court may consider if the presumption of validity of an issued patent lowers the bar of the statutory requirement of particular and distinct patent claiming.

I don’t think that the Fed. Cir. has erred in attempting to preserve the validity of an issued claim by reading it in view of the specification, even including “inherent parameters”, but the Supreme Court seldom takes up a Fed. Cir. decision to give them praise for preserving patentees’ shrinking bundle of rights.

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Top Ten IP Stories from 2013

Posted on December 16, 2013 by Warren Woessner

I admit it, I like lists, even completely subjective ones like this one, that is tilted toward patent law and prep/pros. So in no particular order, except for number one, here we go:

 

  1. Myriad [Add your pun title here!]. No story can top a unanimous Supreme Court opinion (Thomas writing even!) holding that a discrete chemical molecule is really a data storage device made for us all by Mother Nature, and so is a “natural product”. More troubling, I fear, are Judge Lourie’s two opinions below, holding that the broadly-claimed diagnostic methods were patent-ineligible as “abstract ideas.” Combine this with Mayo and PerkinElmer v. Intema and you get caught in a perfect storm that can sink almost any claim to a diagnostic method.
  2. CLS Bank v. Alice. A big story indeed, as commentators tried, with little success, to unravel the threads in multiple opinions issued by the Fed. Cir. judges. Now the Supreme Court will try to define an abstract idea. Is C =pi(D) carved into a brick concrete enough for you?
  3. Inequitable Conduct goes into IP hospice. While we still have a duty of candor and good faith in dealing with the PTO, Rule 1.56(b) is gone. A simple failure to submit even “material” information will seldom, if ever, lead to an IC holding. In 1st Media v Electronic Arts, Sony, a defendant in the suit, petitioned for cert., playing the “rigid test” card, but the Supreme Court stood pat and denied the petition. In Network Signatures v. State Farm, Judge Newman suggested that facially false petitions would not amount to “egregious misconduct” unless they involved statutory standards of patentability, as opposed to formal PTO filings. However, the Supreme Court also denied cert.  in Apotex v. Cephalon, in which the Cephalon attorney and scientist obtained a patent on an invention made by their supplier – both the D.C. and the Fed. Cir found IC. And where are the final PTO rules? Continue reading →
Posted in Patent Eligible Subject Matter, Stem Cells/Cloning, USPTO Practice and Policy | Tagged , , , , , , , , | Leave a comment