“New” Test Design Patent Infringement — Egyptian Goddess
September 22, 2008 on 12:58 pm | In Lawsuits | No CommentsBefore today, to find infringement of a design patent, two tests need to be satisfied: 1) the “point-of-novelty” test and 2) the “substantial identity” test. Sun Hill Indus. v. Easter Unlimited, Inc., 48 F.3d 1193, 1197, 33 U.S.P.Q.2d 1925, 1928 (C.A.F.C. 1995); Brainard v. Custom Chrome, Inc., 872 F.Supp. 39 (W.D.N.Y. 1994).
Today, in Egyptian Goddess, Inc. v. Swisa, Inc., __ F.3d __ (Fed. Cir. 2008)(en banc)(Bryson, J.), the Federal Circuit reworked the test for design patent infringement, holding that:
On the basis of the foregoing analysis, we hold that the “point of novelty” test should no longer be used in the analysis of a claim of design patent infringement. Because we reject the “point of novelty” test, we also do not adopt the “non-trivial advance” test, which is a refinement of the “point of novelty” test. Instead, in accordance with Gorham and subsequent decisions, we hold that the “ordinary observer” test should be the sole test for determining whether a design patent has been infringed. Under that test, as this court has sometimes described it, infringement will not be found unless the accused article “embod[ies] the patented design or any colorable imitation thereof.” Goodyear Tire & Rubber Co., 162 F.3d at 1116-17; see also Arminiak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1319 (Fed. Cir. 2007).
Referring to:
- Gorham Co. v. White, 81 U.S. 511, 14 Wall. 511 (1871)
- Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., 162 F.3d 1113 (Fed. Cir. 1998)
- Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007)
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Case law should be free — let’s free SCOTUS patent cases
August 20, 2008 on 11:25 pm | In Lawsuits | 1 CommentI am a big fan of public.resource.org’s quest of making government data more accessible.
One of their projects is freeing caselaw…providing “open” copies of caselaw decisions. They have already compiled US, F1, F2 and F3 decisions into free copies. See: http://bulk.resource.org/courts.gov/c/.
Doing my part, I recently compiled a list of (most) of the U.S. Supreme Court patent law decisions. With that list in hand, I looked up the corresponding bulk.resource.org links, creating a page with links to copies of all of the cases. Take a look at my handy work: http://inventblog.com/copies-of-supreme-court-patent-cases. Let me know what you think.
Maybe I’ll have to start working on the Fed.Cir. cases next. 
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First Post Medimmune DJ Dismissal
August 8, 2008 on 8:24 am | In Lawsuits | Comments OffPHOSITA blog with a copy of the order in what appears to be the First Post Medimmune DJ Dismissal.
See also: Patent Baristas - Supreme Court High-Fives MedImmune, Wikipedia - MedImmune, Inc. v. Genentech, Inc.
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Invention Promotion Company settles with FTC for $10.7 million
July 14, 2008 on 6:44 pm | In Independent Inventors, Lawsuits | 2 CommentsApparently, the FTC has settled its case with Davison & Associates for $10.7 million in cash, real estate and investment assets, less than half of the $26 million dollar judgment awarded in 2006. See: Pittsburgh Tribune-Review - “O’Hara invention promoter, FTC settle case for $10.7 million.“
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“Doah” of the week
June 18, 2008 on 9:29 pm | In Lawsuits | Comments OffTechdirt: Expensive Patent Attorneys Know How To Cut & Paste, But Not Search & Replace
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Updated links to USPTO & FTC publications on invention promotion companies
December 26, 2007 on 11:27 am | In Independent Inventors, Lawsuits, Legislation/Regulation, Patent Searching, USPTO | Comments OffContact the USPTO Before You Get Burned (PDF) [Original] [Local copy]
FTC Consumer Alert: Spotting Sweet-Sounding Promises of Fraudulent Invention Promotion Firms (PDF) [Original] [Local Copy]
FTC Facts for Consumers: Invention Promotion Firms (PDF) [Original] [Local Copy]
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CAFC Affirms Discipline of Patent Attorney Working for Invention Promoter
June 21, 2007 on 10:36 pm | In Caselaw, Independent Inventors, Lawsuits, USPTO | Comments OffThe CAFC released an opinion today affirming the discipline of an invention promotion company’s patent attorney (Bender v. Dudas, __ F.3d __ (Fed. Cir. June 21, 2007)(Linn, J.)). A very interesting read.
For those wanting the quick summary:
S. Michael Bender (“Bender”) appeals from a final decision by the United States District Court for the District of Columbia that granted summary judgment upholding a disciplinary action taken by the director of the United States Patent and Trademark Office (the “PTO” or “agency”) to exclude Bender from practicing before the PTO. Bender v. Dudas, No. 04-CV-1301 (D.D.C. Jan. 13, 2006) (“SJ Order”). Because the PTO’s findings were supported by substantial evidence, and because the disciplinary action was not arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law, we affirm.
The background of this case reads like a novel but represents the true story of hopes dashed, fees wasted, and dreams lost by hundreds of individual inventors caught up in the world of self-interested promoters who promise the world and deliver very little.
In seeking to protect the public from unscrupulous invention promoters, the PTO has aggressively sought to monitor and enforce its disciplinary rules against those registered practitioners who act in concert and participation with these promoters in the prosecution of patent applications before the PTO. This case is about one such practitioner who became complicit in the activities of an invention promoter involving over 1,000 unsuspecting inventors. These unsuspecting inventors first sought help from American Inventors Corporation (“AIC”), an invention promoter…
[Working for AIC, patent attorney Leon] Gilden employed draftsmen to add decorative ornamentation or surface indicia to the drawings of the inventions even though such embellishment was not invented by the named inventor…The alleged purpose of this scheme was to make it easier to obtain a patent and to avoid a refund of the inventors’ fee under AIC’s money-back guarantee. Gilden’s alleged involvement in the embellishment scheme prompted the PTO to initiate disciplinary action against him in the early 1990s…Ultimately, Gilden entered into a settlement agreement with the PTO and received a five-month suspension.
In 1993, AIC contracted with Bender, a registered patent attorney, to continue the prosecution of over 1,000 design applications that had formerly been handled by Gilden (the “Gilden applications”). The contract provided Bender with up to $15,000 bi-weekly as compensation for both attorney’s fees and prosecution costs.
Eventually, Bender himself was charged with “violations of PTO rules governing attorney conduct.”
…the administrative law judge found that Bender had violated numerous PTO rules on attorney conduct [neglected an entrusted legal matter in violation of 37 C.F.R. §10.77(c); accepted employment where professional judgment may be affected in violation of 37 C.F.R. § 10.62(a) and accepted compensation from a person other than a client without a full disclosure to the client in violation of 37 C.F.R. § 10.68(a)(1); and engaged in conduct that was prejudicial to the administration of justice in violation of 37 C.F.R. § 10.23(b)(5)] and that exclusion from practice was warranted.
The CAFC, backing the USPTO decision on discipline, concluded by noting that:
Although Bender may have only had the best intentions in mind in assuming prosecution of the Gilden applications, the best of intentions cannot absolve Bender’s complicity with AIC in a scheme fraught with deception and adversely affecting a large number of unsuspecting inventors. As an experienced patent practitioner, Bender had to have appreciated that the wholesale practice of filing design applications with unauthorized design embellishments in hundreds of applications was not in the inventors’ interests but instead was driven by AIC’s money-back guarantee. He should have known that the kind of letter he sent to his newly acquired clients fell far short of the explanation needed to address the distressed circumstances in which his clients were placed by his new employer, AIC. His letter, even though well written and perhaps sufficient as an engagement letter of a client in the first instance, only perpetuated the harm done to the Gilden applicants by treating what had previously transpired as nothing out of the ordinary when the circumstances of this entire matter—and Bender’s conflicting interests in particular—were quite extraordinary. Bender’s failure to appreciate that fact supports the PTO’s determination that any sanction less than exclusion would not provide the necessary deterrent effect. Because we cannot conclude that the sanction of exclusion is arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law, we have no reason to disturb the PTO’s sanction of exclusion from practice.
A pdf of the case can be found here: Bender v. Dudas.
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Article: Patent Misuse Remedies
May 23, 2007 on 2:45 pm | In Articles, Lawsuits | Comments OffVia a reader:
This week on the Northwestern University Law Review Colloquy, Professor David McGowan presents an update to patent misuse remedies…Prof. McGowan argues that the reasoning of the Supreme Court’s opinion in Illinois Tool Works, Inc. v. Independent Ink, Inc. undercuts the reasoning behind the default remedy for patent misuse, which is that the patent in question may not be enforced against any party, not merely against the victim of the alleged misuse, until the misuse ceases and its effects are dissipated.
Because the remedy is not tailored to any probable harm from misuse, courts should take advantage of the Tool Works reasoning to pare back misuse remedies.
The essay can be found here:Â http://colloquy.law.northweste
rn.edu/main/2007/05/what_tool _works.html
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More on KSR
May 1, 2007 on 10:08 am | In Caselaw, Lawsuits | Comments OffBuchanan’s thorough review of KSR v. TeleFlex is up over at FedCir.us. Definitely worth reading.
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Antacids & Graham Crackers — The Supreme Court Decides KSR and the Future of Obviousness
April 30, 2007 on 12:38 pm | In Caselaw, Independent Inventors, Lawsuits, USPTO | 2 CommentsWell..it’s here. Earlier this morning the Supreme Court released its opinion in the case of KSR International Co. v. Teleflex Inc. et al. (550 U. S. ___, April 30, 2007).
While others will likely do more detailed analysis (click here to easily review what others are saying), here are my quick thoughts:
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the Supreme Court “set out a framework for applying the statutory language of §103.” In Graham, the relevant factors were (1) the scope and content of prior art, (2) the differences between the prior art and the claims at issue, and (3) the level of ordinary skill in the pertinent art.
Recognizing that the Graham decision needed a little interpretation as its teachings were applied to later cases, the Court of Appeals for the Federal Circuit interpreted Graham over time, formulating what is known as the “teaching, suggestion, or motivation” test (TSM). It is this TSM test that practitioners and patentees have been relying on for years.
In the case on appeal (KSR), the Supreme Court overruled the Federal Circuit’s non-obviousness finding*, noting that while “[t]here is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis,” but “..when a court transforms the general principle into a rigid rule that limits the obviousness inquiry…it errs.”
[*note:Â see the Mr. Ebert's comment below for clarification.]
Specifically, the Court didn’t like:
1. How the CAFC held “that courts and patent examiners should look only to the problem the patentee was trying to solve.” The Court pointed out that “[t]he question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art.”
2. That the CAFC assumed “that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem.” The Court pointed out that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”
3. That the CAFC erroneously concluded “that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘obvious to try.’”
4. How the CAFC “drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight basis.”
Practitioners/patentees who have relied on arguments like these as the heart of their non-obviousness showing are likely to be severely impacted. At least the Court reinforced the fact that obviousness analysis needs to be explicit, reminding us that “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning within some rational underpinnings to support the legal conclusion of obviousness.” (quoting In re Kahn, 441 F. 3d. 977, 988 (CA Fed. 2006)).
Again, this is just my quick summary. More detailed analysis and other thoughts can be found here.
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