Patent Law Insights

What To Do When Patent Is Potentially Invalid?

Rajiv Sarathy — Wed, 03 Mar 2010 18:23:55 -0800

Sometimes, one becomes aware of a patent that may be invalid. As an example, there is presently an online uproar about U.S. Patent No. 7,028,023, which is directed to a type of linked list. Linked lists are data structures that computer programmers commonly employ to store information that needs to be accessed sequentially.

Claim 1 of this patent recites:

1. A computerized list that may be traversed in at least two sequences comprising:

a plurality of items that are contained in said computerized list; and

a primary pointer and an auxiliary pointer for each of said items of said computerized list such that each of said items has an associated primary pointer and an associated auxiliary pointer, said primary pointer functioning as a primary linked list to direct a computer program to a first following item and defining a first sequence to traverse said computerized list, said auxiliary pointer functioning as an auxiliary linked list to direct said computer program to a second following item and defining a second sequence to traverse said computerized list.

Some people in the online community believe that this patent could be invalid in view of various prior art, including "skip lists." (As a coincidence - one of my assignments during my undergraduate education at the University of Toronto was to implement skip lists -- before an article explaining the data structure first published in 1990 -- as a favor to the author.)

Assuming that these people are correct and the patent is invalid, what should you do?

If the patent has not been asserted against you, then you may choose to implement the claimed technology assuming that you can invalidate the patent later.
If the patent is (e.g., later) asserted, you may
- request the U.S. Patent & Trademark Office to reexamine the patent based on the prior art;
- use the prior art to invalidate the patent during trial; or
- notify the patent owner that you have prior art that could invalidate their patent.

Each approach has advantages and disadvantages. As examples, the reexamination may invalidate the claims, but may result in narrower claims that are valid and that you may still infringe; the court may be convinced by the patent owner that the prior art does not invalidate the claims; or by identifying the prior art, you may give the patent owner a head start in claim construction arguments to use during trial.

As is usual, which of the many options you choose will depend on the facts of the case.

Precision in Patent Assignments

Rajiv Sarathy — Sat, 26 Dec 2009 07:46:33 -0800

During friendly mergers of corporate entities, legal departments and attorneys can sometimes let their guards down when conducting diligence or drafting language for agreements. For example, they may fail to precisely draft patent assignments. Doing so can have undesirable results many years later.

That may be what happened in Tyco Healthcare Group L.P. v. Ethicon Endo-Surgery, Inc. Four years into the patent infringement case, the defendant (Ethicon) filed a motion to dismiss the case because, according to Ethicon, the plaintiff (Tyco Healthcare) did not own the asserted patents.

Tyco Healthcare (now Covidian) had acquired various patents many years earlier. An agreement executed during the acquisition assigned all assets and patents except "patents and patent applications relating to any pending litigation" to Tyco Healthcare. The assignor also entered into a settlement with Ethicon on the same day to settle a patent dispute. Neither the assignment nor the settlement agreement identified the patents that each contemplated.

The court agreed with Ethicon and dismissed the case without prejudice because it could not tell from the documents whether the patents now asserted related to the settlement with Ethicon and so were unintentionally left off the assignment to Tyco Healthcare.

Even when transactions are friendly, attorneys should draft patent assignments with precision. One way to be precise is to specify by number which patents and patent applications are being assigned and/or which are not. Moreover, the assignments should be recorded with the United States Patent and Trademark Office as quickly as possible so that the world can easily determine to whom a patent is assigned.

Santa Claus Detector Patented

Rajiv Sarathy — Thu, 24 Dec 2009 13:10:02 -0800

I've always wanted one of these....

Happy Holidays!

India Liberalizes Returns on Technological Investments

Rajiv Sarathy — Sat, 19 Dec 2009 06:58:58 -0800

There are several ways to increase the value of a patent portfolio. One is to ensure that patented claims cover the evolutionary path of the relevant technology. A second is to be sure to file patent applications (after receiving foreign filing licenses) in jurisdictions where the technology could have competitors or markets.

One market that is seen as being increasingly important is India. A billion people live there and an increasing number of them are entering the middle class. The inevitable off-shoring trend, though painful to many in the U.S. and Europe, has been a boon to people there. They are demanding products and services they could not previously afford and, because of the popularity of American media, their demand for foreign brands is seemingly insatiable.

Although foreign companies have seen India as a source of cheap labor and a potential future market for several years, they have limited their direct investments because of India's rules that restricted royalty payments without prior government approval and lax enforcement of intellectual property rights. The government of India on Wednesday announced a liberalization of the royalty payment rules.

With this announcement along with improved enforceability of intellectual property, India is setting itself up for a bright future on the world stage.

Means plus function claims

Rajiv Sarathy — Thu, 17 Dec 2009 18:32:07 -0800

Citing a Federal Circuit decision in Intellectual Science and Technology v. Sony Electronics earlier this week, Dennis Crouch (Patently-O) first says that there is a "a long line of cases warning against the use of means-plus-function claim language," but then notes that "[t]here is nothing 'wrong' with writing means-plus-function claim language -- especially to accompany a well drafted specification."

I think the second position is probably better than the first. While means+function claims can be narrowly construed during litigation, they can nevertheless be valuable during licensing and assertion.

However, from a patent prosecution perspective, they can be difficult to appeal to the Board of Patent Appeals and Interferences because of the additional requirements the appeals rules impose on such claims. As a result, some patent practitioners prefer to avoid such claims, while others add them to broaden out the claims in applications.

The case demonstrates, however, that asserting a means+function claim requires a clear explanation of infringement on the record.

Foreign Filing Licenses When Inventors Are Abroad

Rajiv Sarathy — Wed, 16 Dec 2009 21:25:16 -0800

I've previously written about reducing risks when preparing patent applications abroad. What happens when inventors are located abroad? Such occurrences are happening increasingly frequently as research and development (R&D) transcends national boundaries. Many multinational corporations (or even just U.S. corporations with overseas R&D facilities) have teams that span two or more countries. When an invention was invented by inventors in multiple countries, employers need to be even more cautious about where and when to file patent applications.

In most cases, the law in each country needs to be considered. For example, India can impose stiff penalties (including fines and jail time) if a patent application is first filed in any country other than India when even one of the inventors was an Indian resident when the invention was made. It matters not if the other five inventors are American. The Indian law specifically says "resident." A U.S. citizen who is on temporary assignment to India and has lived and worked there for more than 6 months could be a resident. Unlike similar laws in some other countries, the law does not specify the content of patent applications that is subject to this restriction. However, my experience is that like other countries, India is concerned about the export of military and other sensitive technology. An alternative to filing a patent application in India (and waiting six weeks before filing the application in other countries) would be to request a foreign filing license, which is typically granted in a month or less.

Many other countries have requirements that vary slightly, including China, France, Russia, the UK, and others. It is generally best to seek the advice of patent attorneys in each of those countries (or an attorney experienced in both jurisdictions) before blindly filing an application in the U.S. or elsewhere when inventors are resident in different countries.

Triggering Declaratory Judgment Actions

Rajiv Sarathy — Sat, 05 Dec 2009 11:21:54 -0800

Whenever a patent holder sends a communication to a potential defendant before filing an infringement action, the patent holder risks a declaratory judgment (DJ) action. A common question is what language must be in the communication? Must the communication threaten an infringement lawsuit? The Federal Circuit's decision yesterday in Hewlett-Packard v. Acceleron says no and provides an example of a sequence of communications between the parties.

Accleron wrote to Hewlett-Packard (HP):

I am writing to call your attention to the referenced patent. . . . This patent was recently acquired by Acceleron, and relates to Blade Servers.

We would like an opportunity to discuss this patent with you. In order to provide a productive atmosphere in which we can do so, we ask that you agree that all information exchanged between the parties will not be used for any litigation purposes whatsoever, including but not limited to any claim that Acceleron has asserted any rights against any of your ongoing or planned activities, or otherwise created any actual case or controversy regarding the enclosed patent.

Should you wish to engage in discussions regarding this patent with us, please return an executed copy of this letter to me in the enclosed stamped, self-addressed envelope. When we receive your acknowledgement, we will send you a package of information relating to this patent. I will look for your response by September 28, 2007, and if I do not hear from you by that time, I will assume you have no interest in discussing this patent.

A couple of weeks later, HP replied:

I have been evaluating the patent you sent and am interested to learn any further information you have so that I am able to conduct a complete and accurate assessment. HP shares your interest in creating a productive atmosphere for us to discuss the ’021 patent. Accordingly, in response to your request that HP not file a declaratory judgment action, HP would be willing to agree not to file such an action for a period of 120 days if Acceleron similarly will agree not to file an action against HP during the same 120 day period. If such a mutual standstill agreement is acceptable, please let me know and I will send you an agreement to that effect directly.

A few days later, Acceleron wrote back:

I do not believe that HP has any basis for filing a declaratory judgment action, and I think that my letter provides both parties appropriate protections to create a productive atmosphere in which to discuss the ’021 patent.

So, if you are interested in discussing this patent with us, please send me a signed copy of my previous letter to you by no later than October 19, 2007. If I do not receive [one] by then, I will understand that you are not interested in discussing this patent, and you do not have anything to say about the merits of this patent, or its relevance to your Blade Server products.

HP responded by filing a declaratory judgment action. The district court found that the litigation was "too speculative" to support a declaratory judgment. HP appealed to the Federal Circuit.

According to the Federal Circuit, "a communication from a patent owner to another party, merely identifying its patent and the other party's product line, without more, cannot establish adverse legal interests between the parties, let alone the existence of a 'definite and concrete' dispute" sufficient to support DJ jurisdiction. However, a "strategem of correspondence that avoids the magic words such as 'litigation' or 'infringement'" cannot avoid a DJ action.

The Federal Circuit found these facts persuasive:

Acceleron identified its patent and indicated that the patent is "relevant" to HP's product
Acceleron imposed deadlines for responding to its letters
Acceleron failed to propose a confidentiality agreement
Acceleron failed to accept HP's proposed standstill agreement

The Federal Circuit stated that "conduct that can be reasonably inferred as demonstrating intent to enforce a patent can create declaratory judgment jurisdiction." Moreover, the Federal Circuit seems to have considered Acceleron's status as "solely a licensing entity" that "receives no [other] benefits from its patents."

The Federal Circuit reversed and remanded the action.

[Edit: More analysis at Patently O. 12/7/2009.]

Obvious As A Matter Of Common Sense

Rajiv Sarathy — Thu, 03 Dec 2009 05:23:08 -0800

To be patentable, an invention must meet various legal requirements. One such requirement is that it must not be obvious. The law relating to whether an invention is obvious can sometimes be confusing and difficult to apply -- especially in the wake of the KSR v. Teleflex U.S. Supreme Court case.

The Federal Circuit Court of Appeals delivered a precedential decision yesterday in Perfect Web Techs. v. InfoUSA explaining that an invention can be obvious as a matter of common sense.

Claim 1 of U.S. Patent No. 6,631,400 recited:

1. A method for managing bulk e-mail distribution comprising the steps:

(A) matching a target recipient profile with a group of target recipients;

(B) transmitting a set of bulk e-mails to said target recipients in said matched group;

(C) calculating a quantity of e-mails in said set of bulk e-mails which have been successfully received by said target recipients; and,

(D) if said calculated quantity does not exceed a prescribed minimum quantity of successfully received e-mails, repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity.

On appeal, the parties agreed that steps (A) through (C) were known in the prior art. According to the Federal Circuit's decision, step (D) would have been common sense for one skilled in the art of "e-mail marketing" and so the claim is invalid as being obvious.

A district court can find by summary judgment that an invention is obvious as a matter of common sense, but "must articulate its reasoning with sufficient clarity for review. "

USPTO Patent Ombudsman Program

Rajiv Sarathy — Wed, 02 Dec 2009 06:48:08 -0800

In late October, the United States Patent and Trademark Office (USPTO) announced a pilot patent ombudsman program and requested comments. According to the USPTO's notice, the ombudsman's role will be to assist "with application-specific issues including prosecution advancement concerns."

The American Bar Association (ABA) provided its comments last week. In its comments, the ABA outlined the key requirements for an effective ombudsman. These include:

independence from USPTO interference;
impartiality as between the applicant and the USPTO; and
ability to keep applicants' communications confidential.

An ombudsman is generally considered to be a trusted intermediary. It will be interesting to see whether the USPTO's implementation of the program will lead applicants to trust USPTO ombudsmen.

Turkey-related patents

Rajiv Sarathy — Thu, 26 Nov 2009 00:00:01 -0800

In the United States, people celebrate Thanksgiving on the fourth Thursday of every November. According to Wikipedia, the holiday marks a celebration to give thanks to God and to the Native Americans who taught the pilgrims how to harvest food to survive winters.

In modern times, Thanksgiving is often marked by shopping before the break of dawn and eating nothing but turkey for four consecutive days. Most of us have long forgotten how to harvest in any way except by purchasing prepackaged foods. Although every grocer and butcher is stocked with a seemingly endless supply of turkeys, whether ready-to-cook or pre-cooked, some people still prefer to shoot their own. If you are one of them, you may be interested in the many patents that are directed to turkey calls. There is even a design patent for a gun-mounted turkey call so that you won't have to fumble with your hands while on the hunt.

Happy thanksgiving!

New Procedures for Requests for Continued Examination

Rajiv Sarathy — Sun, 22 Nov 2009 12:30:22 -0800

Upon receiving a "Final Rejection" from a patent examiner, patent applicants have several options. One option is to file a Request for Continued Examination (RCE). The United States Patent and Trademark Office (USPTO) changed how it handles RCEs as of last Monday. It published the following document (available at the USPTO web site) that provides patent attorneys and agents some useful insight into how the new procedures are implemented. (Warning: it is dry reading if you are not a patent attorney or agent). I've quoted the document in its entirety below.

Changing the Patent Examiner Count System: New Rules for Docketing Requests for Continued Examination (RCEs)

The United States Patent and Trademark Office (USPTO) has had the same examiner production (or count) system for over thirty years. The USPTO recently worked with the leadership of the Patent Office Professional Association (POPA), the union that represents patent examiners, to develop a new examiner production system.

One of the purposes of the new examiner production system is to reduce the instances in which it is necessary for an applicant to file a request for continued examination (RCE) to complete prosecution of his or her application. Although the USPTO recognizes that RCEs are necessary in some cases, the new count system provides incentives to examiners to conduct early interviews with applicants in the hope that RCE filings will become less necessary in many cases. The USPTO’s current examiner production system provides equal credit for first actions on the merits (FAOMs) in the application and for each first action after the filing of an RCE. The new examiner production system provides a greater amount of credit for the FAOM in the application but provides comparatively less credit for the first action after the filing of the first RCE, and less credit for the first action after the filing of any subsequent RCE. The new examiner production system also provides time-credit for initiating substantive interviews with applicant and/or applicant’s representative.

RCEs are currently placed on the examiner’s Regular Amended docket, which means that examiners have two months from the date the RCE is forwarded to them in order to act on the application. Due to concerns of POPA and USPTO Management regarding examiners having sufficient flexibility to handle such applications, RCEs will no longer be placed on the examiner’s Regular Amended docket. Instead, under the new examiner production system, RCEs will be placed on the examiner’s “Special New” application docket. Examiners must act on the application having the oldest effective filing date on their Special New docket at least every other pay period. Additionally, examiners should take-up applications on their Special New docket that they believe are in condition for allowance and give action to these applications without making them await their turn (MPEP 708.01). When applicant believes that an application on an examiner’s Special New docket is in condition for allowance, applicant can request an interview to explain to the examiner that the application is in condition for allowance, and request that the application be taken up for examination out of turn. Examiners will be encouraged to fairly consider these requests.

Applicants who file an RCE where the application is clearly in condition for allowance should not experience a change in the time it takes the USPTO to issue a Notice of Allowance responsive to the RCE. Conversely, when an application with an RCE is not clearly in condition for allowance, such as when the RCE submission includes a large number of references or extensive claim amendments adding limitations not previously considered by the examiner, the time between the filing of the RCE and when an examiner acts on it will be influenced by the number of cases on that examiner’s Special New Docket. Therefore, while some applicants will see no change, or possibly a reduction, in the time it takes for the USPTO to issue an Office action in response to an RCE, others may see an increase in this time depending on the number of cases on an examiner’s Special New docket.

Applicants are reminded that it is not always necessary to file an RCE to obtain consideration of an information disclosure statement after allowance of an application. An information disclosure statement in compliance with 37 CFR 1.98 filed on or before payment of the issue fee will be considered if it is accompanied by: (1) the statement set forth in 37 CFR 1.97(e), and (2) the fee set forth in 37 CFR 1.17(p). See 37 CFR 1.97(d).

The USPTO also has a number of other initiatives, such as training on both compact prosecution and effective interview practice, directed at encouraging a prompt indication of allowable subject matter or reaching of issues in an application. These initiatives dovetail with the new examiner production system by encouraging the indication of allowable subject matter or reaching of issues earlier during prosecution. Despite the placement of RCEs on the examiner’s Special New docket, the USPTO believes these initiatives and the new examiner production system will work together to reduce the overall pendency of applications and the instances in which an RCE is necessary to complete prosecution of an application. Additionally, applicants seeking early allowance of an application can help eliminate the need for the filing of an RCE by addressing all issues in the application early in the prosecution. If an RCE is needed, as is the case with some applications, cooperative efforts between the examiner and the applicant will go a long way toward obtaining early action of the RCE. Of course, for those applicants who do not desire fast action of their applications, the placement of RCEs on the examiner’s Special New docket will afford them the flexibility to better control the rate at which their cases are handled by the USPTO.

The shifting of production credit towards the FAOM and time-credit for initiating substantive interviews, in combination with the other initiatives, should serve to diminish any incentive for prolonging examination or “churning” applications. These initiatives, coupled with the flexibilities already provided by the USPTO, should permit applicants to prosecute their applications at varying rates based on their business needs. However, the USPTO will monitor the effects of RCE handling under the new production system, and in combination with the other USPTO initiatives, and will reevaluate the program and make any changes needed to ensure it best balances the needs of applicants and operation of the Office.

Broad Patents Can Be Both Lucrative and Expensive

Rajiv Sarathy — Sat, 21 Nov 2009 11:19:35 -0800

Patent attorneys often attempt to get the broadest possible coverage for a client's invention because that can usually make the patent quite lucrative. Patenting broad claims can be expensive during the patent procurement process because patent examiners are reluctant to let broad claims issue and so there may be multiple back-and-forth communications between the patent examiners and patent attorneys. However, patents with overbroad claims can be expensive to keep enforceable, e.g., when a third party requests the U.S. Patent & Trademark Office (USPTO) to reexamine an issued patent in view of prior art.

For example, the Electronic Frontier Foundation (EFF) has apparently requested the USPTO to reexamine U.S. Patent No. 7,568,213. According to the EFF, this patent is purportedly directed to "podcasting." When a patent is under reexamination, the patent holder must expend resources (e.g., patent attorney fees) to work with the USPTO to define the appropriate scope of the patent's claims in view of the newly identified asserted prior art.

During prosecution, patent attorneys, inventors, and anyone involved in a patent application have a duty to cite all pertinent prior art they are aware of. However, it is nearly impossible in most fields of human endeavor for the patent attorney, patent examiner, or even the inventor to be aware of all pertinent prior art. Thus, it is quite easy for overbroad patent claims to issue. Sometimes, the best prior art is not even found until the patent is asserted in an infringement lawsuit because the alleged infringer is motivated to prove that it is not infringing a valid patent.

Thus, smart patent attorneys attempt to patent claims of varying scope -- from broadly encompassing the subject matter of the invention without crossing into the known prior art down to narrowly encompassing a specific implementation that is reflective of the client's commercializable product.

Disruptive Advertising In Our Future?

Rajiv Sarathy — Sun, 15 Nov 2009 17:05:01 -0800

Apple Computer has filed a patent application directed to disruptive advertising in an operating system that a New York Times article published today refers to as a gimmick.

The first claim in the published patent application, which names Steve Jobs as the first inventor, recites:

1. A computer-implemented method for operating a device, the method comprising:

disabling a function of an operating system in a device;

presenting an advertisement in the device while the function is disabled; and

enabling the function in response to the advertisement ending.

While most of us probably cringe at the thought of having to view advertisements every time we request an operating system to perform a function (e.g., view an ad about the latest printer before being able to print a document using an outdated printer or select another song on our handheld music player), some people could benefit from adoption of the technology. For example, many people in emerging markets cannot afford an Apple computer (or any other computer, for that matter) or an iPod. They may not mind being forced to acknowledge that they have viewed or heard advertisements in exchange for a free or cheap device.

Although its author may not realize it, the New York Times article provides some great examples of advertising-related prior art that Apple may face in obviousness rejections by the U.S. Patent and Trademark Office (USPTO). Other prior art that the USPTO may apply include Microsoft's technology in the Vista operating system that prevents something from happening without the user's approval. For example, when one application launches another application, Vista can prevent that operation unless the user first permits it.

Although the concept of advertising-based subsidies is not new and there is lots of prior art in this space, a clever patent attorney may still be able to obtain a patent for Apple, though with narrower patent claims than the broad claims presently published. This patent application has not yet been examined by a patent examiner.

Kappos Blogs

Rajiv Sarathy — Sun, 15 Nov 2009 16:30:12 -0800

USPTO Director David Kappos started a blog this past week: http://www.uspto.gov/blog/director/entry/director_s_forum_david_kappos. In his first blog posting, he explains his reasons for preferring a first-to-file patent system:

The truth is that only .01 percent of all patent applications could be affected by a change to first inventor to file. The interference system is already biased in favor of the first inventor to file and 70 percent of the extremely small number of cases that get into the interference process are decided in favor of the first inventor to file.

Bilski Oral Arguments

Rajiv Sarathy — Sun, 08 Nov 2009 15:30:54 -0800

The Supreme Court will hear oral arguments tomorrow (Monday) in the Bilski case. Many amicus briefs have been filed in the case, including briefs from Accenture, AIPLA, Borland Software, the Free Software Foundation, Intellectual Property Owners Association, IBM, Microsoft, and Red Hat.

Although the Bilski case is mostly about business methods (e.g., risk hedging), many have turned the case into a question of whether software is patentable. I have my doubts that there are sufficient facts on the record in the Bilski case for the Supreme Court to opine on that particular issue (even the Federal Circuit deferred the issue as footnoted in their Bilski decision), but I have been surprised before.

Patent Publication Versus Patent

Rajiv Sarathy — Thu, 29 Oct 2009 21:25:21 -0800

This blog entry is directed at people who are not patent practitioners.

People who are not versed in patent law are often confused by terms that patent attorneys and the U.S. Patent and Trademark Office (USPTO) use, and the media is no exception. For example, a recent CNet article exclaims, "Apple patents headset MP3 player" and points to U.S. Patent Publication No. 20090268921. However Apple merely has a "patent pending."

In terms of assertable property rights, a patent publication is far from a patent. A patent publication is merely a publication of a patent application that the USPTO generally publishes 18 months after the earliest "priority date" or filing date of a patent application. It cannot be asserted against an alleged infringer. (For the sake of simplicity and to prevent further confusion, I will not discuss "provisional rights" which begin on the patent publication date, but cannot be asserted until the USPTO grants a patent.)

The USPTO grants an assertable patent only after the applicant successfully "prosecutes" the patent application, which requires a USPTO patent examiner to do a prior art search and examine the applicant's patent claims. This prosecution process may involve several communications between the patent examiner and the inventors or their representative, e.g., to narrow the scope of the claims. In complete contrast, a patent application often publishes as a patent application before it has been examined, as was the case in this Apple application.

Thus, while Apple may have filed a patent application directed to a headset MP3 player, Apple has not yet patented it.

Kappos Taps Pappas

Rajiv Sarathy — Mon, 19 Oct 2009 15:10:32 -0800

Tech Daily Dose (National Journal) reports that Peter Pappas, previously of the Clinton administration, will head the USPTO's communications and public outreach activities. I guess that makes sense because, according to the article,

Pappas was associate chief of the FCC's international bureau, developing international telecommunications policy on a broad range of issues, including satellite regulation and licensing, international spectrum management, and third generation wireless standards and licensing, according to a bio. He also served as the State Department's director of communications for economic affairs and at one point was assistant White House counsel.

Rules Recycled

Rajiv Sarathy — Wed, 14 Oct 2009 16:39:33 -0800

As we reported last week, the USPTO has rescinded its controversial rules limiting continuation applications. The USPTO published its "new" rules today, which are pretty much a carbon copy of the rules that were in effect on July 1, 2007.

USPTO Rescinds Rules

Rajiv Sarathy — Fri, 09 Oct 2009 11:21:31 -0800

The USPTO yesterday rescinded its controversial rules that the Federal Circuit ruled on earlier this year. The USPTO's announcement also indicates that it will file a motion in the pending appeal to dismiss and vacate the district court's rulings. That's great news for most patent applicants and a promising, significant step for Kappos.

Inoculating Against Patent Value Depreciation

Rajiv Sarathy — Thu, 20 Aug 2009 10:51:45 -0800

In an en banc ruling yesterday in Cardiac Pacemaker v. St. Jude, the Federal Circuit decided that method claims do not have extraterritorial reach under 35 USC 271(f). In earlier cases, courts have ruled that some claim types (e.g., system claims reciting one or more components) have some extraterritorial reach, such as when patented components are separately exported and combined abroad to produce the infringing system or device.

When a patent applicant files a patent application, the minimum government fees cover three independent claims and twenty total claims. Patent attorneys sometimes recommend paying "excess claims fees" to file additional claims. Some clients, however, prefer not to pay the excess claims fees and decide to limit their claim coverage. Cardiac Pacemaker serves as another example that having different claim types can be useful.

The law evolves and it can be difficult to predict which claim types will be valuable (or lose value) in the future. Good patent attorneys draft multiple claim types to inoculate their clients' assets against future depreciation.