Managing IP and Delaware IP Law Blog invite you to the US Patent Reform Forum on March 27, 2012 at the Willard InterContinental in Washington D.C.
Free for IP counsel, academics and research institutes
The forum brings together top officials, leading counsel at U.S. corporations and their private practice advisers to discuss the recently enacted Leahy-Smith America Invents Act.
Easy ways to register:
Call: +1 212 901 3828
Topics on the agenda include:
• Roundtable: AIA rulemaking overview
• An Industry Perspective: We lobbied the cause; the act was passed – where did we land?
• Key considerations: The Joinder Provision; ITC proceedings and the new rules on false
• In focus: Post Grant Review and litigation strategies under AIA
• First-to-file system: Implications of a significant change in the law
• AIA and NPEs: Impact or more of the same?
• Judge Paul Michel
• Gary Griswold, former chairman, The Coalition for 21st Century Patent Reform
• Bob Stoll, former commissioner for USPTO
• Robert Armitage, senior VP and general counsel, Eli Lilly
• Phil Johnson, chief intellectual property counsel, Johnson & Johnson
• Sherry Knowles, principle, Knowles Intellectual Property Strategies
• F. Scott Kieff, professor of law, George Washington University
• Dan McCurdy, chairman, PatentFreedom
• Brent Bellows, Knowles Intellectual Property Strategies
For more information about the agenda, please see the brochure here: http://www.managingip.com/pdfs/USPatentForum.pdf
The forum is free for IP counsel. Places are allocated on a first come, first served basis, please register in advance to secure yours.
We look forward to you joining our debate in March.
As most everyone is aware by now, new amendments to the Federal Rules of Civil Procedure became effective as of December 1, 2009 that change the way that deadlines are computed under the rules. The District Court of Delaware recently posted on its website, the following information regarding the computation time:
TIME (COMPUTATION OF TIME): Effective 12/1/2009, CM/ECF will no longer exclude intermediate weekends and holidays when calculating deadlines less than 11 days. Deadlines will be calculated in accordance with the changes to Fed.R.Civ.P.6 (i.e., 5 day deadlines will become 7 day deadlines, 10 and 15 day deadlines will become 14 day deadlines, etc.). CM/ECF will add 3 calendar days for mailing, as prescribed in the Administrative Procedures for Filing and Service by Electronic Means.
The District Court has also posted proposed amendments to the local rules for comment. These new local rules were drafted to address the December amendments to the Federal Rules of Civil Procedure and other court practices and procedures. Some proposed changes include the following:
- The addition of Rule 5.1(b) which states that when computing time periods under the federal rules, the clerk's office "shall be deemed inaccessible" any time when it is closed due to inclement weather.
- The rules that contained certain time deadlines were changed to conform to the federal rules including changes to the 10 day time period for filing an answering brief to 14 days and the 5 day period for filing a reply brief to 7 days.
- The proposal also changes Rule 7.1.3(a)(4) to limit all opening and answering briefs to 20 pages and all reply briefs to 10 pages (the current rule allows for 40 page opening and answering briefs and 20 page reply briefs).
- Rule 7.1.5(a) is also changed to limit all motions for reargument and answering briefs to 10 pages. Also added to this rule is a provision prohibiting the filing of a motion for reargument where an objection to a Report and Recommendation by a Magistrate Judge has been filed.
- Reasonable notice for a deposition pursuant to Rule 30 has been changed to "not less than 10 days."
Other proposed changes are shown in the redline of the current District of Delaware Local Rules attached below. The public has been asked to comment on the revisions by February 1, 2010.
2/19: Flashpoint Technology, Inc. v. Aiptek, Inc., Argus Camera Co., LLC, Bushnell Inc., DXG Technology USA, Inc., DXG Technology Corp., Leica Camera AG, Leica Camera, Inc., Minox GMBH, Minox USA, Inc., Oregon Scientific, Inc., Ritz Interative, Inc., Ritz Camera CEnters, Inc., Sakar International, Inc., D/B/A Digital Concepts, Tabata U.S.A., Inc., Target Corp., VistaQuest Corp., VuPoint Solutions, Inc., Walgreen Co., and Wal-Mart Stores, Inc. (patent infringement)
2/20: British Telecommunications plc v. Freescale Semiconductor Inc. (patent infringement)
2/24: Arendi Holding Ltd. v. Microsoft Corp. and Dell Inc. (patent infringement)
2/27: Millennium Pharmaceuticals Inc. v. Teva Parenteral Medicines, Inc. and Teva Pharmaceuticals USA, Inc. (patent infringement)
3/3: Achushnet Company v. Callaway Golf Company (patent infringement)
3/3: Callaway Golf Company v. Acushnet Company (patent infringement)
3/4: Masonite Corporation v. Jeld-Wen, Inc. (patent infringement)
3/4: Procter & Gamble Co. and Hoffmann-La Roche Inc. v. Apotex Inc. and Apotex Corp. (patent infringement)
3/5: Joseph Neev v. Abbott Medical Optics, Inc. and Rainforest Acquisition, Inc. (patent infringement)
3/5: Genzyme Corporation v. Lupin Ltd. and Lupin Pharmaceuticals, Inc. (patent infringement)
3/10: Xpertuniverse, Inc. v. Cisco Systems, Inc. (patent infringement)
3/12: Wyeth v. Intervet, Inc. d/b/a Intervet/Schering-Plough Animal Health and Boehringer Ingelheim Vetmedica, Inc. (patent infringement)
3/12: Netlist, Inc. v. MetaRAM, Inc. (patent infringement)
3/13: Stiefel Laboratories, Inc. and Stiefel Research Australia Pty Ltd. v. Cobrek Pharmaceuticals, Inc. and Perrigo Company (patent infringement)
3/13: Abbott Laboratories v. Matrix Laboratories, Inc., Matrix Laboratories Ltd. and Mylan, Inc. (patent infringement)
On March 17, 2008, the United States Supreme Court denied PharmaStem's writ of certiorari in the case of PharmaStem Therapeutics, Inc. v. Viacell, Inc., et al. This case involved various cord blood storage patents and was originally filed in the District of Delaware. A jury originally reached a verdict for PharmaStem and against Viacell Inc., Cyro-Cell Inc., Corcell Inc. and CBR Systems Inc. in an amount of $7,124,333.92; and entered judgment on Viacell's antitrust counterclaim in favor of PharmaStem and against Viacell. Judge Sleet later overturned the infringement verdict (see a copy of the opinion here). The Federal Circuit opinion affirmed the District Court's finding of non-infringement but reversed the District Court on the issue of obviousness, finding the patents invalid and entered judgment for the defendants. (See Federal Circuit opinion here.)
Our fellow blogger at 271patent.blogspot recently had an interesting post discussing the statistics on reexamination in 2007 as set forth in a USPTO Report.
The latest statistics on Ex Parte Reexamination (through December 2007) have been released by the PTO. As expected, the number of reexamination requests continue to climb:
2002 - 272 filings
2003 - 392 filings
2004 - 441 filings
2005 - 524 filings
2006 - 511 filings
2007 - 643 filings
2008 - 165 filings
The success rate for requestors has not changed, and continues to favor requestors. Overall, all claims are confirmed in 26% of reexams, claims are changed in 64% of reexams, and 10% of reexams result in all claims being cancelled.
Average pendency of an ex partereexamination is 2 years, and median pendency is just over a year-and-a-half (18.6 months).
For full post see here.
CLE Entitled "Federal Practice in the District of Delaware: Openings, Closings and Case Themes" to be held March 18th
The Delaware Chapter of the Federal Bar Association, in conjunction with the District Court of Delaware, will be presenting the first in a series of trial advocacy CLE programs entitled "Federal Practice in the District of Delaware: Openings, Closings and Case Themes" on March 18, 2008 at 1:00 p.m. Registration is currently limited to members of the FBA, however, registration will open up to non-members on Monday, March 10th for anyone else who would like to attend. Space is limited.
A quick perusal of our blog for the month of February might cause one to think that the three of us left for a month long ski trip in the Rockies. Rest assured, we were here in Delaware following the few district court opinions that issued. We are speculating that small number of opinions may be due to the case reassignments and readjusting of dockets based on the order issued by the Court in late January regarding the vacant judicial position. If that's the case, things are working their way out as quite a few opinions have issued in the last week or so. Postings to come in the near future…
Rexam moved for partial summary judgment of invalidity and noninfringement. The Court granted both motions in part. As to noninfringement, the Court held that Rexam did not infringe the claim at issue under the doctrine of equivalants, granting Rexam's noninfringement summary judgment motion. Other noninfringement arguments were denied as moot. As to invalidity, although Rexam asserted several bases for invalidity (including § 102, § 103, lack of adequate written description, and indefiniteness), the Court granted summary judgment only on inadequate written description grounds, mooting the other invalidity bases.
Most of the opinion dealt with the inadequate written description issue, and I will spend the remainder of this post on that issue. Rexam argued that the claim at issue failed to comply with § 112, para. 1 because it did not include the "annular reinforcing bead" limitation contained in the patent's other asserted claims. Section 112, para. 1 requires the specification to "describe the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application." Lizardtech v. Regents of Univ. of Cal., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Based on intrinsic evidence, inventor testimony, and expert testimony, the Court found that "[n]owhere is there an indication that the inventors possessed a can end having the other elements of claim 34 of the '875 patent [claim at issue] without also having an annular reinforcing bead." Op. at 13. Thus, the Court held that the specification did not support the broader claim without the "annular reinforcing bead" limitation, and the claim was therefore invalid for failure to comply with the written description requirement.
Let's pause for a moment and consider the analytical framework of this decision. I submit that this decision is correct under Federal Circuit precedent, but this issue – claims broader than the specification – fits more neatly under either the noninfringement or claim scope inquiries. Under the Gentry Gallery decision and its progeny, the Federal Circuit usually (depending on the panel) holds that a feature described in a patent as "essential" or "critical" to the invention must be present in that patent's claims. If such a feature is not present, the claim is invalid for lack of an adequate written description. That is, a claim is invalid if the inventor did not possess the claimed invention, which must contain the essential element, at the time of the application. The Court here, however, also correctly points out that an explicit statement of limitation is not required for the specification to limit the claims. See Op. at fn 46. (Patent prosecutors, of course, almost never describe a feature as the "invention" or "essential to the invention" for just this reason, as well as other reasons related to claim interpretation.) In this case, the patent specification did not describe the annular bead limitation as "essential" or "critical" to the invention; the specification merely failed to mention an embodiment that did not contain the annular bead. In fact, even the abstract of the patent at issue referenced the annular bead limitation. Op. at 6.
Under these circumstances, it seems fair to limit the patentee to embodiments containing the annular bead. After all, even the patent abstract contains the annular bead limitation. It seems strange to me, though, to analyze this issue as one of invalidity for lack of a written description. Before Gentry Gallery, Lizardtech (Op at fn 20), Enzo, and other similar cases, no one would have argued that this issue, claims drafted more broadly than the preferred embodiments, was an inadequate written description problem. You might have argued that the claim scope should be narrowed so as not to include the broader interpretation (claim scope) or that the reverse doctrine of equivalents applied such that the accused product would not infringe (noninfringement). Now, however, after Gentry Gallery and cases like it, we find ourselves in a situation where the Court is forced to determine what the inventor thought of as "essential" or "critical" features to his/her invention at the time of filing, and then strike any claims that do not include these features. It seems to me that this problem would be better dealt with either during the claim construction phase (Limit the scope of the claims based on the specification, being careful not import a limitation from the specification into the claims. This would allow the claims to be interpreted so as to preserve their validity – a canon of claim construction) or during the infringement determination (The reverse doctrine of equivalents, if it still exists, would prevent infringement where the claims are broader than the specification).
What do you think about accused infringers using the written description requirement as a sword in this manner? Should the Federal Circuit overrule Gentry Gallery? Or resurrect the reverse doctrine of equivalents? Please post your comments.