Are Patent Rulings Impacting Court Cases?

The Wall Street Journal sure thinks so. Here is an excerpt from a WSJ article titled ‘How a Patent Ruling Is Changing Court Cases’ that drives the point home –

Last week, a federal judge in San Francisco who previously had allowed a patent-infringement lawsuit [by Friskit] to proceed against RealNetworks Inc. changed course and dismissed the case, citing the Supreme Court's April ruling in KSR v. Teleflex. The case is believed to be the first in which a trial-court judge has reversed his position and dismissed a case in the defendant's favor, citing the KSR decision.

"The Supreme Court has made it clear what it thinks," the judge said at a hearing in the case. "Patents are being issued on obvious inventions, and it tightened the reins."

The Supreme Court laid out the obviousness doctrine in 1851, saying that a patent requires more "skill and ingenuity" than that of "an ordinary mechanic acquainted with the business." Since virtually every litigated patent case includes an assertion of obviousness, and since the U.S. patent office examines patent applications for obviousness, many legal commentators have called KSR the most important patent case in decades.

"Patentees have long had the upper hand in patent litigation but the KSR case has shifted that balance of power back to defendants," said Dennis Crouch, a law professor at the University of Missouri.

This means that applicants need to be much more careful while putting in their applications if they want the proceedings to progress without any hitches. The best, and ultimately cheapest, option would be to let experienced professionals handle the application procedure from the beginning, so that none of the problems arise later on to delay or derail the process.

Surge in Patents creating More Patent Patent Office Jobs

As I reported in yesterday’s post ‘New Patent Appeals Need to be Clear and Precise’, the Board of Patent Appeals and Interferences (BPAI) is presently experiencing a large increase in the number of ex parte appeals. From 3,349 appeals in FY 2006, the Board expects the figures to cross 4000 and 5000 in FY 2007 and FY 2008 respectively.

The patent office is not only having to create new rules to help the Board handle this increase in appeals, they are also hiring more people to handle the increasing pressure. An article in Law.com quotes a patent office spokesperson to highlight this phenomenon:

A spokesman for the U.S. Patent and Trademark Office had no exact figures for medical-method patents, confirming only that "because we are seeing an increase in medical/ surgical method applications," more hires are being sought.

 

New Patent Appeals Need to be Clear and Precise

The Board of Patent Appeals and Interferences (BPAI) is presently experiencing a large increase in the number of ex parte appeals. In 2006 (Financial Year), the Board received 3,349 ex parte appeals. In 2007, the Board expects to receive more than 4,000 ex parte appeals; and in 2008, it expects to receive over 5,000 such appeals.

In order to keep the process functioning smoothly in the face of this increasing pressure, the patent office has proposed a new set of rules which have been designed to help the Board avoid new bottlenecks.

According to the patent office,

 

These rules are proposed to change procedures in such a way as to allow the Board to continue to resolve ex parte appeals in a timely manner.

The proposed rules do not propose to change any of the rules relating to inter partes reexamination appeals. Nor do the proposed rules propose to change any of the rules relating to contested cases.

These new rules might make life easier for the Board, but they also demand more precision and clarity from applicants who are submitting fresh appeals, thereby putting an extra burden on them.

The Patent-Innovation Circle of Progress

A few days ago, I had drawn your attention to an article touting a surge in medical patents in the past few years.  According to the article in Law.com, about 100 medical-process patents are now being issued every month.

I also couldn’t help noticing how a couple of views quoted in the same article explained so clearly how patents and innovations complement each other -

"My business is booming," said patent lawyer Glen Belvis of Chicago's Brinks Hofer Gilson & Lione, who credits technological advances for driving the medical-patent boom. "As a patent lawyer, I have a ton of great, innovative things that I can now protect."

Raciti (Patent Attorney) views such patents as essential to both inventors and the medical community. "What it does is it provides something for other companies to work around. The patent is out there. It's wide open. The whole world looks at it and thinks, 'How do I get around it?' That inspires more creativity and more development," Raciti said.

So innovations lead to patents, and patents lead to innovations… Interesting point.

New Patent Office Rule Changes

The patent office is working towards implementing changes in its rules for limiting continuations and number of claims examined. The final version of the changed rules will be available in the Federal Register which will be published after a few days.

Excerpt from the internal e-mail -

OMB Approves Claims and Continuation Changes

On July 9, 2007, the Office of Management and Budget concluded its review of the Continuations and Claims rule changes. The final rules will be made public when they are published in the Federal Register, which is expected to be later this summer. The rules will become effective at least 60 days after publication in the Federal Register, and no earlier than October 1, 2007.

The abstracts of the rules currently available on the Federal Regulatory Information Web site here and here reflect the abstracts of the Continuations and Claims notices of proposed rule -making that were published in January, 2006.

An internal USPTO team is currently working on details of implementing the rule changes. Examiners and managers will be given information and training on the new rules once they are published in the Federal Register. Additionally, management is currently discussing with POPA the appropriate process for negotiating any impacts the rules package may have.

These changes would permit the Office to use the patent examining resources presently absorbed by applications that contain a disproportionate number of claims to the examination of new applications. This would allow the Office to reduce the backlog of unexamined applications. It would help ease the burden on the patent office and increase the efficiency of the whole process in the face of a major increase in the number of patent applications over the past few years, led by a surge in medical technology patent applications.

Improper Double Patenting leads to Patent Invalidation

The importance of following proper rules and procedures in the filing of patents cannot be overemphasized. Even tiny mistakes can lead to patent invalidation. The Patent Prospector highlights a particular case where ‘double patenting’ finally led to invalidation of both patents.

An excerpt from the post:

Toprol-XL® is a drug used to treat heart-related malfunctions. Astra owns two patents for its active ingredient, metoprolol succinate; patents which Astra asserted against generic drug makers seeking FDA approval; patents with a peculiar pedigree. The district court found Astra's metoprolol patents invalid owing to double patenting, and inequitable conduct, owing to the peculiar pedigree.

The company has now appealed the invalidity finding of one asserted patent, not pursuing any further action on the other. Proper knowledge and/ or guidance about rules and regulations concerning patents would have saved Astra quite a bit of trouble in this regard.

NASA Medical Patents Bring Servicemen to Their Feet

A Secure Ambulation Mode (S.A.M.) physical therapy device is being used by Walter Reed Army Medical Center, Washington D.C., to help patients recover from traumatic spinal cord and brain injuries.

Technology for Today reports that S.A.M. is based on a technology developed at NASA Goddard Space Flight Center. The patents were licensed from NASA by Enduro Medical Technology (East Hartford, CT), which added a joint mechanism to the walker to enable greater ease of use. S.A.M. allows patients to stand or walk, whether they have a sense of balance or not.

Enduro donated a S.A.M. unit to Walter Reed to facilitate rehabilitation for military patients, including soldiers returning home from service in Iraq. At Walter Reed, the device is being used to help patients with a variety of traumatic injuries to the spinal cord and brain.

Patent Reform Act of 2007 to Put Brakes on Frivolous Patents

Recently, the Patent Reform Act of 2007 was approved by the U.S. House Judiciary Committee. It closely tracks a similar bill passed by the Senate Committee last week. This acquires added significance in light of the fact that numerous companies had put forward a series of complaints concerning an increase in the number of frivolous patents in recent years.

Sen. Patrick Leahy informed that infringement damages would be limited, “unless the claimant shows that the patent’s specific contribution over the prior art is the predominant basis for market demand for an infringing product or process.” The bill calls for an intervening time period during which a newly-issued patent could be put under the spotlight and be analyzed by interested parties.

For the first time, the bill gives concerned parties and public opinion a handle to overturn bad decisions, which many feel have increased dramatically in recent times. But only time will now tell how effective the new law will be in restraining frivolous patents.

Drafting Medical Device Patents Requires Grasp of Technical Vocabulary

Can getting a single letter of the alphabet wrong in an issued patent spell disaster when it comes to litigating against infringers?  Unless the mistake is seen as being a minor typographical error that can be corrected by filing a certificate of correction, the answer is a resounding yes.

Hats off to Peter Zura of The 271 Patent Blog for his post on Central Admixure Pharmacy Services v. Advanced Cardiac Solutions (06-13-07).

 In this case, Central Admixture Pharmacy Services sued Advanced Cardiac Solutions for patent infringment relating to a chemical solution used duriing heart surgery. 

A certificate of correction was sought on the patent and was issued by the patent office to replace all instances of the word "osmolarity" with the word "osmolality".

You might be thinking that all the certificate does is change the "R" in osmolaRity with a "L" so that it reads osmolaLity.  Well, yes, BUT.... 

Whether or not the certificate of correction is proper depends upon whether the change is a clerical or typographical nature or if it constitutes new matter or would require re-examination.  Although the district court found the certificate of correction proper, the CAFC disagreed and found that the result of the correction was to broaden the claims since the corrected claims using the term osmolaLity cover less concentrated solutions than the original osmolaRity.

Yikes!  Needless to say, non-technical proofreaders or computerized spell-check and grammar checking programs (gasp!) are not adequate alternatives to a careful final review of a patent application by someone familiar with the technical vocabulary of the invention.

Florida Medical and Dental Device Patenting News

As a Florida patent attorney with an interest in medical and dental device patents, I try to keep an ear to the ground on new patenting and industry developments in Florida that are relevant to my practice of intellectual property law.  The potential increase in Florida's medical patent and dental patenting activity is one such development.

In a recent post in the BioHealth Investor, Florida is touted as one of the country’s next biotech hubs. According to the article, it all began when the Scripps Research Institute accepted a proposal for $500 million in financing to establish a biotech research hub in the state on the western fringes of Palm Beach County. 

Although Scripps has focused a lot of attention on Florida's life science industry, there is much to Florida's medical and dental manufacturing industry that is unrelated to Scripps.

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Both Medical Patents and Medical Patent Infringement Lawsuits Surge

medical patent infringement lawsuitNot surprisingly, yet another article is touting the surge in medical patents in the past few years.  According to an article in Law.com, medical process patents are being issued by the United States Patent & Trademark Office at twice the rate they were in the 1980's.

 According to the article:

"Many physicians are constantly coming up with new techniques and devices. They have started to see some of their colleagues strike it big with patents, so they have tried to do the same," said Dragseth of the Minneapolis office of Fish & Richardson.

Dragseth cited the recent case of Dr. Gary Michelson, who in 2005 received a $1.35 billion settlement after suing a medical device company over his patented spinal surgical technique that speeds recovery. Medtronic v. Michelson, No. 01cv2373 (W.D. Tenn.).

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Patent Litigation at an All-time High

The latest issue of the New York Times carries an article which discusses the inherent value of patents. Other than touching on an age old debate, the article also draws attention to the rising trend of patent litigation -

Domestic litigation costs alone, meanwhile, soared to $16 billion in 1999 from $8 billion in 1997.

Things have probably become worse since then. For instance, patent litigation is up: there were 2,318 patent-related suits in 1999, and 2,830 in fiscal 2006 (though that’s down from the peak year, 2004, when 3,075 were filed). Mr. Bessen (a lecturer at Boston University’s law school and co-author of an upcoming book on the topic, “Do Patents Work?”) said awards in patent cases also seemed to be up, though he was less confident in that data.

Mr. Bessen, thinks that things are going to get a lot worse before they get better.  What’s your take on the matter?