With the passage and signing into law of the America Invents Act on September 16th of 2011, many business method patents will have, in one year, the possibility to be invalidated through an administrative process. According to the new law, covered business method patents include “data processing or other operations used in the practice, administration, or management of a financial product or service.” However, ATM patents are exempt. Read the remainder of this entry »
IP and Business Archive
Business Method Patents in Crosshairs
By Robert H. Bejcek II | Filed in IP and Business, IP Litigation, Patent, Patent Litigation, Patentable Subject MatterInterference Proceeding Results in Invalidation of Issued Patent
By Robert H. Bejcek II | Filed in IP and Business, IP Litigation, Patent, Patent Litigation, Patent ProsecutionOccasionally during patent prosecution, another application or recently issued patent directed to identical subject matter prevents issuance of the new patent. When this occurs, priority between the two needs to be determined through an interference proceeding. In the nonprecidental case of Omura v. Shafer, an interference proceeding was declared between Shafer’s application, the Junior Party, and Omura’s patent, the Senior Party. The application and patent at issue involved “catadioptric projection objectives for imaging a pattern arranged in an object surface onto an image surface.” This technology generally refers to lenses in cameras or telescopes. After the interference was defined by the Board of Patent Appeals and Interferences (“Board”), Shafer moved for judgment against Omura asserting that certain claims in the patent lacked adequate written description. Additionally, this motion stated that if a lack of adequate written description were found, it would raise a threshold issue which would deprive Omura of standing in the interference.
In response, Read the remainder of this entry »
Threat of Alleged Inequitable Conduct in Patent Litigation Likely Lessened
By Robert H. Bejcek II | Filed in Fraud on the Patent Office, Inequitable Conduct, IP and Business, IP Litigation, Patent, Patent LitigationIn what in all likelihood will drastically change not only patent litigation but also patent prosecution, the Federal Circuit in Therasense, Inc. v. Becton, Dickinson and Co. restated the standard for patent inequitable conduct. This retooling of inequitable conduct will likely reign in the use of the doctrine in patent litigation as a standard trial strategy even when no actual inequitable conduct occurred. The patent in question centered on “disposable blood glucose test strips.” According to the patent, the test strips, which test whole blood, have an electrochemical sensor “without a membrane over the electrode.”
During prosecution of the application, the applicant, originally Therasense, Inc. but now Abbott Diabetes Care, Inc. (“Abbott”), in order to illuminate the state of the prior art, supplied upon request an affidavit to the U.S. Examiner stating that Read the remainder of this entry »
Update: The Hangover Part II – Tyson’s Tattoo
By Robert H. Bejcek II | Filed in Copyright, IP and Business, IP Litigation, Trademark
A trial date of February 21, 2012 has been set for the dispute between tattoo artist S. Victor Whitmill and Warner Bros concerning the use of a tattoo, created by Whitmill, in the movie The Hangover Part II. You’ll recall that the Courts refused to grant Whitmill a preliminary injunction to prevent the release of the movie. However, since then Warner Bros has gone on record in a brief to the Court stating that if the dispute is unable to be resolved before the DVD release date, which is scheduled for sometime in December 2011, the movie will be digitally altered to remove the allegedly infringing tattoo. If the use of the tattoo in the movie is found to infringe Whitmill’s copyright, this move will save Warner Bros from additional liability as well as deny Whitmill the chance for additional monies in the way of a larger award. Instead, Whitmill will have to rely solely on the use of the tattoo in theatric showings as well as on promotional marketing to determine damages. Since a private mediation session has already been scheduled for June 16, it’s likely that this case will be settled (confidentially) long before then.
Identifying Federal Trademark Goods and Services: A Cautionary Tale
By Robert H. Bejcek II | Filed in Identification of Goods and Services, IP and Business, IP Litigation, Trademark
Formulating an accurate identification of goods and services is a critical element of preparing a federal trademark application. Failure to do so, or failure to accurately restate the goods and services in Statements of Use, Declarations of Continued Use, and/or renewals can result in your registration being cancelled for fraud on the trademark Office. In 2003 the Trademark Trial and Appeals Board (TTAB) in Medinol v. Neuro Vasx, Inc. established a very low bar for finding fraud.[i] Later in 2009 the Federal Circuit in In re Bose Corp. raised the bar back to a more reasonable level, but the danger of cancellation remains.[ii] Read the remainder of this entry »
U.S. Supreme Court Issues Bilski Decision
By Robert H. Bejcek II | Filed in IP and Business, IP Litigation, Patent, Patentable Subject Matter, SCOTUSThe long awaited U.S. Supreme Court decision on Bilski v. Kappos was issued on Monday, June 28th, 2010.[1] This case was closely followed and the decision eagerly anticipated because it had the potential to limit patent-eligible subject matter regarding processes, which could negatively impact numerous industries. Bilski was seeking to patent a process for hedging risk in trading on the energy commodities market.[2] After a rejection by both the patent examiner and the Board of Patent Appeals and Inferences based on finding the process merely an abstract idea, the Court of Appeals for the Federal Circuit held that since the process was neither coupled with a machine nor transformed an article into another state or thing (i.e. it failed the machine-or-transformation test) the process was not patent-eligible subject matter. Further, the Federal Circuit took the bold step of holding that the machine-or-transformation test is the sole test to determine whether a process is patent-eligible.[3]
With regard to the machine-or-transformation test, the Supreme Court reiterated the standard practice in statutory construction that unless otherwise specifically defined, words must be accorded their “ordinary, contemporary, common meaning.”[4] The Court stated that it was unaware of any “ordinary, contemporary, common meaning” of the word “process” to support tying its meaning to the machine-or-transformation test.[5] Therefore, they rejected the machine-or-transformation test as the sole test for determining the patent-eligibility of a process.[6] However, the Court did state that the machine-or-transformation test can be a useful tool in determining process patent-eligibility.[7]
IP Audits; Maximizing Your Company’s Value and Competitiveness
By Dominic A. Frisina JD, MA | Filed in IP and BusinessEvery business, including yours, has intellectual property (IP) whether it is simply your business name, customer lists, or an extensive patent portfolio. However, some owners of small and medium size businesses take a hands-off approach to their intellectual property until it is too late. For instance, one common mistake is to wait until being in the midst of obtaining venture capital or negotiating the sale of a business to determine what IP the business owns, whether ownership is verifiable, and whether the IP is appropriately protected. These are all questions that investors will ask in the course of performing due diligence, and they will require adequate answers before committing to your business. If due diligence reveals problems then it is unlikely that you will get your asking price, and entirely possible that the deal will not close. The savvy entrepreneur has the answers before being asked.
The ITC; An Alternative to Traditional Litigation
By Dominic A. Frisina JD, MA | Filed in International IP, IP and Business, IP Litigation, Patent, Patent LitigationIntellectual property litigation is a notoriously lengthly and costly process. It can take years for an infringement case to work its way through the court system, and litigation costs can easily run in the millions. In some situations, proceedings before the United States International Trade Commission (ITC) can be a valuable tool in resolving international trade disputes. The ITC is known for rendering decisions in months rather than years, potentially saving the injured party a fortune in legal costs.
