Green-Arrow IP Helping Entrepreneurs Manage IP

New research surfacing today highlights the size of the task facing the vendors eager to become the 'third ecosystem' in mobility. Apps have become fundamental to how consumers use, personalize and engage with their mobile devices and connected services. While the iOS and Android duopoly is firmly in place when it comes to App availability at their respective App Stores, Microsoft and BlackBerry are feverishly battling it out to gain that third spot in the App Store market.

Anybody who has any involvement with Intellectual Property (“IP”) knows full well that protecting IP means a multi-step process. Obviously, step one is the conception of the invention, idea, trademark, trade name, or other innovation where protection might be necessary. Step two is the decision about what to do with the “new” idea, etc. in terms of the need to try for exclusivity on it –or not. Many “new” things do not need IP protection – and other “new” things may not qualify for it. If the “new” idea fits into the area where protection is desirable and it qualifies, then the next step is to seek legal protection. Of course, such protection will have a cost – whether or not the protection is sought by the inventor/conceptualizer himself/herself or itself (in the case of an organization) or assistance of counsel is required. Related posts:

1. The Cheesesteak Apostrophe: Restaurant Sues USPTO to Trademark “Philadelphia’s Cheesesteak”A well-known sandwich and a little punctuation mark are at the heart of a lawsuit between a Philadelphia restaurant and the United States Patent and Trademark Office. Campo’s Deli in Philadelphia, is suing the director of the Patent and Trademark Office, David Kappos, in response the USPTO’s rejection of their application, which sought to trademark the name “Philadelphia’s Cheesesteak.” The problem? There are already registrations for nearly identical marks --- just without the apostrophe. ...
2. Request for Comments: PTO Trademark Litigation Tactics StudyThe stories of abusive cease and desist orders are legendary. In fact such letters are indeed typically referred to as being "a dime-a-dozen." Trademark owners and their representatives have long been believed to grossly overstate the rights a trademark conveys when they send letters to unsuspecting and often legally unsophisticated individuals who are immediately petrified and will do nearly anything to resolve the matter. These individuals and small businesses are frequently coerced to give up legal rights they have without justification, which alters their business plans without justifiable reason. ...
3. Machine Gun Maker Sues Alphonse Capone Over TrademarksCapone, an Illinois corporation, did not have authorization to use the Tommy Gun trademarks on alcoholic beverages that carry a reproduction of the Tommy Gun marks. Additionally, Saeilo claims that Capone's infringement not only violates federal trademark law, but also Illinois state law and common law....

Related posts brought to you by Yet Another Related Posts Plugin.

By Dennis Crouch

If it exists, the patent heat in Congress right now is focused on "curbing abusive patent litigation." A variety of bills have been introduced, including the SHIELD Act that would introduce a one-way fee shifting system that would require losing plaintiffs to pay the attorney fees of successful defendants. H.R. 845. The Bill also requires that the patentee plaintiff (or DJ Defendant) post a bond early in the lawsuit to ensure that the fees will be paid. Under its current structure, the bill is limited to cases where (1) the party asserting the patent is not the original inventor or original assignee; (2) the party asserting the patent is not exploiting the patent "through production or sale of an item covered by the patent" and (3) the party asserting the patent is not a University or the US Government. If the patentee meets any one of those prongs then they escape the fee shifting. At the conclusion of the case if the patentee loses then the court must award the prevailing party "full costs … including reasonable attorney's fees."

Senator Cornyn this week introduced another bill – the Patent Abuse Reduction Act of 2013 (S.1013). According to Cornyn's press release, the bill "would require plaintiffs to disclose the substance of their claim and reveal their identities when they file their lawsuit; allow defendants to hale into court interested parties; bring fairness to the discovery process; and shift responsibility for the cost of litigation to the losing party."

Transparency In Enforcement: S.1013 proposes that the initial complaint must also "the identity of any person with a direct financial interest in the outcome of the action, including a right to receive proceeds, or any fixed or variable portion thereof; and a description of any agreement or other legal basis for [the] financial interest."

Presumption of Attorney Fees: As with the SHIELD Act, S.1013 would more readily shift attorney fees. This time, however, the fees would be balanced and awarded to the prevailing parties regardless of whether that be a plaintiff or defendant. However, no attorney fees would be awarded when the non-prevailing party's "position and conduct … were objectively reasonable and substantially justified" or where the exceptional circumstances make the award unjust. If the patent plaintiff cannot pay the attorney fees, the bill would allow for those fees to be paid by others with an interest in the litigation. Defendants would also be permitted to join interested parties into the litigation.

Heightened Pleading Requirements: S.1013 proposes that a complaint must draw a link between particular asserted patent claims and any accused products if such a link "is known." In addition, the bill would require a complaint to include "detailed specificity" as to "how the terms in each asserted claim[s] … correspond to the functionality of the accused instrumentality." The Bill would also require the Supreme Court to review model complaint Form 18 to ensure that it conforms with the law.

Discovery After Claim Construction: S.1013 proposes to limit discovery until after claim construction has been complete.

Additional Major Limits on Discovery: Perhaps the most dramatic changes proposed in the bill would be statutory limits on discovery and a cost-shifting regime.

It will be interesting to see how these develop moving forward.

Last week we learned about Apple inventing an all-new touch sensor panel that would support larger displays like those found on a MacBook Air or Pro. Today, the US Patent & Trademark Office published a patent application from Apple that reveals yet another major touch related invention relating to an all-new touch pad electrode design which is to reduce the effects of noise and thermal drift and to provide users with more precision in their interaction with a touch display. Another invention covered in our report covers an amorphous diamond-like carbon coating for increasing the thermal conductivity of the structural frames of any Apple mobile device that is battery-powered. We close out our report by covering a new camera patent and providing you with a list of continuation, provisional and divisional patents that were published today that may interest some.

Yesterday we reported that Apple had found proof of patent infringement deep inside Samsung's source code, and today we find out that little trickster Samsung is now opening a new company in Washington called Intellectual Keystone Technology (IKIT). The new company is being set up ....

Some of the major mobile device players in the market have been seeking replacements for indium tin oxide (ITO) used in today's touch panels in the hopes of resolving technological issues and related costs. Hon Hai's Foxconn subsidiary who makes most of Apple's devices including the iPhone and iPad has recently acquired new carbon nanotube (CNT) technology from ...

On May 23, 2013, the US Patent & Trademark Office published a patent application from Apple that reveals an all-new intelligent audio system that is coming to future iDevices that will be based on a device's orientation rather than depending on its fixed speakers. Depending on the way the user is holding their iDevice and which content they're enjoying, Apple's new audio processing router will ensure that the very best audio output configuration is chosen using its intelligent audio mapping system.

Johnson & Johnson is a very respected brand in the consumer medical devices and pharmaceutical goods industries. Well known for its highly recognizable personal care products, including Band-Aids, Neutrogena and Tylenol, Johnson & Johnson is also a major player in other healthcare fields. Many patent applications published by the USPTO pertain to Johnson & Johnson’s extensive lineup of medical cosmetic products. One application would protect a dermabrasion kit with a detachable head for sensitive skin, and another was filed to protect a system of manufacturing bacteria-resistant contact lenses. Two other recent patent applications that we feature here are for punctal plugs and eye misting devices that can deliver medication directly to the body through the incredibly permeable membranes within the eye. Related posts:

1. Apple Protects Fiber Optic Cable Connection that Self-CleansElectronic device developer and manufacturer Apple Inc. has recorded another big week with the U.S. Patent & Trademark Office. On Tuesday, the California corporation was issued 36 patents, and the USPTO published another 32 patent applications on Thursday. Many of these prospective patents focus on better responses to user interactions, including new methods of music library visualizations and smarter microphone response to ambient sound. One of the patents issued to Apple protects a fiber optic cable connection that is self-cleaning. ...
2. Microsoft Patents Identifying Different Users on TouchscreenAs always, many patent applications show Microsoft’s focus on improving their software for business applications. Different Microsoft patent applications this week provide for systems of sharing meeting notes within office software, mapping identities to keep important business documents secure as well as using serious games to identify talent within an organization. Other USPTO documents of note show that the computer developer is also trying to reach beyond this market. Another patent application would protect a system of creating digital memorabilia for events. Also, one patent awarded to Microsoft protects a system of identifying different users on a touchscreen....
3. Samsung Awarded System of Location Tracking Designed for ParentsPatent applications published recently by the U.S. Patent & Trademark Office show Samsung’s goals of developing stronger systems of software protection and user interfaces for gesture-based gaming systems. Another patent application assigned to Samsung Electronics could protect an important advance in cancer treatments. One of the recent patents awarded to Samsung from the USPTO protects a more efficient system of location tracking designed for parents....

Related posts brought to you by Yet Another Related Posts Plugin.

On May 23, 2013, the US Patent & Trademark Office published a patent application from Apple that reveals Apple's next generation of "Airplay" that will be able to operation in a two-way manner that is also interactive. Apple also hints that the separate devices of an Apple TV and a Television could be combined into a single device, an Internet-enabled television.

Apple informed the court last week that it intended to amend its infringement contentions in the second California patent litigation with Samsung to target the latest Galaxy S4. Yesterday, Apple followed through on their intentions and filed its motion against Samsung Electronics (Korea), Samsung Electronics (America) and Samsung Telecommunications America with the court in San Jose California. Apple's motion lists a series of specific patents allegedly infringed by Samsung's S4 as well as ...

In CivPro II (a 2-hour course), we covered civil procedure issues related to class actions, discovery, summary judgment, JML, new trial, appellate jurisdiction, and preclusion. Here is the two-hour exam. – Dennis

=====

Dent sued Baker in the United States District Court for the Eastern District of Missouri alleging patent infringement. After receiving the complaint, Baker had his production manager (Morgan) review the product sales history. Morgan delivered an internal memorandum to Baker indicating that Baker sold 10,000 allegedly infringing sunglasses in the past year for a total revenue of $85,000. The report was marked "Confidential."

a) What information regarding the sales must Baker include in his initial disclosures under Rule 26(a)? (5 points)

b) Under what circumstances would a Court Order Baker to turn over the report to Dent? (10 points)

c) Assuming that the court has issued what Baker believes is an erroneous order forcing Baker to turn-over the report to Dent. Can Baker appeal that order? (5 points)

= = = =

After trial, a jury returns a verdict for Dent and against Baker (finding infringement). Dent then sues Campbell in the same court also alleging patent infringement.

d) Can Dent assert either claim preclusion or issue preclusion in the case against Campbell? (10 points)

= = = =

In the patent case against Campbell, patent infringement must be proven by a preponderance of the evidence. During discovery, Dent's expert provides testimony that Campbell's products infringe the patent while Campbell does not provide any competing evidence of non-infringement. Dent then moves for summary judgment of infringement. In response, Campbell only argues that a jury will find the expert testimony untrustworthy.

e)     Should the court order summary judgment? (15 points)

= = = =

The United States later brings a criminal prosecution against Baker for criminal counterfeit in United States District Court for the Western District of Missouri.

f) Can the US Government assert either claim preclusion or issue preclusion in the case against Baker? (5 points)

= = = =

Assume that Dent lost the lawsuit against Campbell based on a jury finding that Dent's patent was invalid. Thus, there is one case where the patent was enforced (against Baker) and another where the patent was found invalid (against Campbell). Dent then sued Haseltine in Federal Court in the Eastern District of Texas again alleging infringement of the patent.

g)     Can Haseltine rely on either claim preclusion or issue preclusion in the case against Dent? (10 points)

h)     How can we know if the court was correct to send the question of validity to a jury rather than have that question be decided by the judge? (5 points)

= = = =

The patent right is later fully and finally revoked by the US Patent Office. This means that the knock-off versions are actually legal to manufacture and sell in the US. In reaction, Vincent then files a class action lawsuit on behalf of all sellers of knock-off versions of Dent's sunglasses. The complaint alleges unfair competition based upon Dent's assertion of invalid patent rights and demands that the court force Dent to stop all enforcement activity and compensate businesses who suffered under the enforcement strategy. Vincent's information shows that there are more than 1,000 companies that stopped selling knockoffs because of Vincent's enforcement activities even though Baker, Campbell, and Haseltine were the only entities actually sued.

i)     What are the two most likely sections of Rule 23 that would be used to deny class certification in this case? (15 points)

Jeffery Lewis, who is the President of the American Intellectual Property Law Association (AIPLA), sent a letter to Sylvia Matthews Burwell, who is the Director of the Office of Management and Budget (OMB). In this letter Lewis, speaking on behalf of the AIPLA and its 15,000 members, challenged the legal interpretation of the budget cuts the Obama Administration says are required of the USPTO thanks to sequestration. Related posts:

1. Jeffrey I.D. Lewis Installed as AIPLA President for 2012-2013 Term“I am honored to have been elected President of an outstanding organization that plays a pivotal role in the global IP landscape,” Mr. Lewis said. “The coming year promises to be one of continuing change as the evolving global economy and ongoing advances in technology raise new challenges for the IP industry. I am excited to have the opportunity to work with AIPLA and its membership to address these issues and help to ensure that our intellectual property system remains strong and serves the best interests of its participants.”...
2. “Substantial Budgetary Uncertainty” for the USPTOLate this afternoon Teresa Rea, the Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office, sent an e-mail to all those who work for the USPTO. The e-mail was simply titled: "A Message from Teresa Stanek Rea." The message was simple, the USPTO is facing "substantial budgetary uncertainty," which is due to sequestration. In addition to the aforementioned e-mail from Acting Director Rea, another e-mail was recently sent to union members from Robert Budens, President of POPA, the examiner's union. Budens hypothesizes that there is an unofficial "gag order" placed...
3. AIPLA Expresses Deep Concern Over USPTO Funding in CRH.R. 1473, the Full-Year Continuing Appropriations Act, 2011, is the legislation reflecting the compromise on the Continuing Resolution to fund the government for fiscal 2011. The letters point out that the provisions of the bill related to the USPTO appropriate $100 million less than the projected user fee revenues to be collected, essentially diverting that money to other government programs....

Related posts brought to you by Yet Another Related Posts Plugin.

Today at IPWatchdog, we’re going back to take a closer look at U.S. Patent & Trademark Office patents and patent applications assigned to Qualcomm Incorporated. One area in particular that receives a lot of focus from Qualcomm’s research and development functions is efficiency improvements to wireless network connections. Patent applications filed by Qualcomm and published recently by the USPTO seek to protect new systems of digital file sharing and power management during sleep mode, both of which conserve device battery resources. A patent awarded to Qualcomm this month protects a system of maintaining a data session for applications even if a network connection is lost momentarily. Qualcomm’s other patent applications showcase a focus on improving device systems internally through better components or communication protocols. One such patent application describes a method of improving ultrasound reception for the use of a digital stylus. The last patent application covered by IPWatchdog in this column describes a system of controlling interference on wireless networks. Related posts:

1. RIM Seeks Patent to Address Cyber-Bullying on Social NetworksOf note, recently the U.S. Patent & Trademark Office published multiple patent applications filed by Research In Motion that pertain to smarter, more efficient forms of electronic communication for both cell phones and computers. Another patent application offers some promise for slowing the progress of cyber-bullying on social networks. Yet another patent application takes uses a touchscreen to store fingerprint information to determine ownership for images captured by the device. Still another application of potential interest is one that seeks protection for a system making it easier for mobile content providers to sell digital content, particularly periodicals....
2. Qualcomm Patents: Diverse Computer, Mobile Device InnovationToday, we’ll take a close look at some of the more intriguing, recent Qualcomm patent applications recently published by the USPTO, many of which show the technology developer focusing on improving mobile network connections. Patent applications released within the last month describe systems of improving mobile device Internet connectivity to peripheral devices, like printers, or while indoors for pedestrian traffic analysis. More efficient means of social network messaging is the subject of another application. A fourth application included here is filed to protect a gesture-based system of interacting with computer projectors. One patent received recently by Qualcomm, and covered below,...
3. Apple Seeks Patent for Parental Controls on Pre-Paid Debit CardsApple Inc. is always applying for protections on different device designs and computer systems. As happens every once in a while, three of these 18 published patents are part of a single series; these patents pertain to linking user accounts for mobile app software to obtain upgrades. Other patent applications seek protections on applications that provide parental oversight of a child’s pre-paid debit account or aid zoom functions on picture viewing applications. ...

Related posts brought to you by Yet Another Related Posts Plugin.

In a one-page memorandum to the Patent Examining Corps dated May 13, 2013, Deputy Commissioner for Patent Examination Policy Drew Hirshfeld had a simple message to respond to the Federal Circuit's en banc non-decision in CLS Bank v. Alice Corp. The message was this: "there is no change in examination procedure for evaluating subject matter eligibility." Related posts:

1. 5 CAFC Judges Say Computers Patentable, Not SoftwarePerpetuating the myth that the computer is where the magic lies does nothing other than ignore reality. Software is what makes everything happen. or crying out loud, software drives a multitude of machines! Maybe the auto mechanic for Judges Judges Lourie, Dyk, Prost, Reyna and Wallach should remove the software from their cars. Perhaps as they are stranded and forced to walk to work they might have time to contemplate the world they seem to want to force upon the rest of us; a world hat clings to mechanical machines completely non-reliant on software. That will be great for the...
2. Federal Circuit Nightmare in CLS Bank v. Alice Corp.The only thing we know is this — the Federal Circuit issued an extraordinarily brief per curiam decision, which stated: "Upon consideration en banc, a majority of the court affirms the district court’s holding that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. § 101. An equally divided court affirms the district court’s holding that the asserted system claims are not directed to eligible subject matter under that statute." Thus, the asserted claims are not patent eligible....
3. What Happened to Judge Lourie in CLS Bank v. Alice Corp?The first thing that any student of the Federal Circuit likely notices when reading CLS Bank is that Judge Lourie not only joined the dominant concurrence, but he also wrote the opinion. The same Judge Lourie who wrote the first opinion in Mayo, after which the Supreme Court asked the Federal Circuit to reconsider, and who then wrote the second opinion in Mayo. The same Judge Lourie who wrote the first opinion in Myriad, after which the Supreme Court asked the Federal Circuit to reconsider, and who then wrote the second opinion in Myriad[12]. All of those opinions interpret §101...

Related posts brought to you by Yet Another Related Posts Plugin.

By Jason Rantanen

Motiva, LLC v. International Trade Commission and Nintendo Co., Ltd. (Fed. Cir. 2013) Download 12-1252.Opinion.5-9-2013.1
Panel: Newman, Prost (author), O'Malley

In order to bring a section 337 action in the International Trade Commission to prevent the importation of a product that infringes a patent, the plaintiff must establish that a domestic industry exists or is in the process of being established for the articles protected by the patent. Earlier this year, a Federal Circuit panel consisting of Judges Bryson and Mayer held that:

section 337 makes relief available to a party that has a substantial investment in exploitation of a patent through either engineering, resale and development, or licensing.  It is not necessary that the party manufacture the product that is protected by the patent, and it is not necessary that any other domestic party manufacture the protected article. As long as the patent covers the article that is the subject of the exclusion proceeding, and as long as the party seeking relief can show that it has a sufficiently substantial investment in the exploitation of the intellectual property to satisfy the domestic industry requirement of the statute, that party is entitled to seek relief under section 337.

InterDigital v. USITC and Nokia, 707 F.3d 1295, 1303-4 (Fed. Cir. 2013) (emphasis added). You can read more about Interdigital here. Based on this holding, the InterDigital majority sided with the ITC plaintiff. Writing in dissent, Judge Newman viewed the domestic industry requirement as necessitating domestic manufacture.

In Motiva v. ITC and Nintendo, a panel consisting of Judges Newman, Prost and O'Malley have limited InterDigital to some extent. In Motiva, the panel concluded that the domestic industry requirement is not satisfied by a plaintiff whose only activities at the time of filing its complaint consisted of its litigation against the ITC defendant when those activities were "not an investment in commercializing Motiva's patented technologies that would develop a licensing program to encourage adoption and development of articles that incorporated Motiva's patented technology." Slip Op. at 10.

Motiva’s investment in the litigation against Nintendo could indeed satisfy the economic prong of the domestic industry requirement if it was substantial and directed toward a licensing program that would encourage adoption and development of articles that incorporated Motiva’s patented technology. See InterDigital Commc’ns, LLC v. Int’l Trade Comm’n, 707 F.3d 1295, 1299 (Fed. Cir. 2013) (clarifying that efforts directed toward licensing a patent can satisfy the domestic industry requirement where they would result in the production of “goods practicing the patents”)….

However, the ALJ found that Motiva’s litigation against Nintendo was not directed at developing such a licensing program. Relying on extensive documentary evidence and witness testimony, the ALJ concluded that the presence of the Wii in the market had no impact on Motiva’s commercialization efforts or ability to encourage partners to invest in and adopt its patented technology. And Motiva was never close to launching a product incorporating the patented technology—nor did any partners show any interest in doing so, for years before or any time after the launch of the Wii. Motiva’s only remaining prototype was a product far from completion, and a multitude of development and testing steps remained prior to finalizing a product for production. Moreover, the evidence demonstrated that Motiva’s litigation was targeted at financial gains, not at encouraging adoption of Motiva’s patented technology. The inventors looked forward to financial gains through Motiva’s litigation, not hopes of stimulating investment or partnerships with manufacturers.

Slip Op. at 10 (emphasis added).

Timing of the domestic industry analysis: The Federal Circuit also held that the date of the filing of Motiva's ITC complaint is the "relevant date at which to determine if the domestic industry requirement of Section 337 was satisfied." Slip Op. at 11. Thus, irrespective of Motiva's earlier attempts to develop a domestic industry for its technology before 2007, there was "no evidence in the record relating that development activity to Motiva’s efforts to establish a domestic industry at the time Motiva chose to file its complaint three years later." Id.

Critics argue that pharmaceutical patents are a barrier to wide-reaching access to medicines, especially for vulnerable populations in the developing world. They cast their argument in the phrase, “Patents Kill” and advocate against intellectual property (IP) protection for medical innovation and the trade agreements that incorporate them... Not surprisingly, barriers to access are more prevalent in less developed nations and access to medicine is a function of the level of economic development. Not surprisingly, higher-income nations benefit from greater access to medicines. Related posts:

1. Economics of Access to Medicines: The Challenges of Pharmaceutical Patents, Innovation and Access for Global HealthWhile it is easy to point to patents and blame the industry and international trade agreements for barriers to access to medicines in developing nations, the reality of the situation is more nuanced and not nearly so straightforward.  In the debate over barriers to access, the focus must be broadened to include other important factors such as poverty, taxes and tariffs, corruption and pharmaceutical counterfeiting.  Each of these elements inhibits access to medicines, through financial challenges, higher prices, shortages, and spurious products.  For the most vulnerable populations it is essential to address all of the key barriers to access, and...
2. World Intellectual Property Indicators 2012: Design Patent HighlightsThe World Intellectual Property Organization (WIPO) publishes a yearly report of the worldwide intellectual property filings. World Intellectual Property Indicators 2012 estimates draw from approximately 133 Patent offices, and include direct national and regional applications and those received through the Hague system of international registration. ...
3. John McCain on Technology & IPJohn McCain has a broad and cohesive vision for the future of American innovation. His policies will provide broad pools of capital, low taxes and incentives for research in America, a commitment to a skilled and educated workforce, and a dedication to opening markets around the globe. He’s committed to streamlining burdensome regulations and effectively [...]...

Related posts brought to you by Yet Another Related Posts Plugin.

A new and interesting e-book trend has emerged showing that e-books are still not the preferred choice for books in Canada. While the Canadian market for ebooks remains steady, the reality is that they've already plateaued. The stats show that paperback books comprised 58% of all purchases in 2012. Hardcover made up 24% and ebooks came in at a miserable15%. And within that dismal figure, Apple's iPad ...

By Shubha Ghosh

Without any surprise, even to those who wrote amici in support of the farmer in Bowman v. Monsanto, the Supreme Court ruled in favor of Monsanto last week. During oral arguments in February, the Court made it clear that it would find against Bowman because he had made an unauthorized copy of Monsanto's patented seed. Since oral argument, the focus has been on how the Court would rule in favor of Monsanto. The final ruling, while narrow in its language, is a potentially confusing one. In this post, I write about the implications of Bowman for the future.

Towards the end of her opinion for a unanimous court, Justice Kagan states that the ruling applies only to the facts at hand. The Court leaves open how the exhaustion doctrine applies to other self-replicating technologies. As a co-author of an amicus for the American Antitrust Institute on behalf of Bowman, I was relieved to read Justice Kagan's rejection of the broad exception to the exhaustion doctrine for self-replicating technologies adopted by the Federal Circuit. Such a broad holding would mean that first sale and other applications of exhaustion would have no place in biotechnology or digital technologies. Contrary to the Federal Circuit, and citing treatment of software under copyright, the Court acknowledges that patent rights may not extend to necessary, but incidental copying, or to situations where copying occurs outside the control of the purchaser. Similar limitations may exist for making under patent law in the exhaustion doctrine.

What is more troubling, and somewhat confusing, is the Court's treatment of making under the patent act. Bowman's act of infringement was simply the act of planting the seed for another generation. This broad construal of infringement expands the scope of patent infringement to include the sort of incidental infringement that the Court acknowledges as possibly protected by exhaustion. During oral argument, the Court asked Monsanto's counsel about inadvertent infringement, but there was no engagement. Whether inadvertent or not, it appears from the Court's decision is that planting by itself is infringement. That conclusion is inconsistent with precedent and with previous cases.

The Court cites its 1962 decision, Wilbur-Ellis Co. v. Kuther, for the proposition that a purchaser cannot make another version of the patented item under the exhaustion doctrine. However, the Court did not mention that Kuther involved a situation in which the purchaser was not found liable for patent infringement. Specifically, the purchaser retrofitted a patented sardine-canning machine so that it could handle larger sizes of cans. Although the patent owner claimed this retrofitting to be an unauthorized reconstruction of the patented machine, the Court held that in adjusting and putting together the unpatented parts the purchaser was engaging in authorized repair.

Bowman argued that by planting the seed, he was harnessing the unpatented reproductive capacity of the seed. The Court dismissed this argument as the "blame the bean defense." Admittedly, the argument might mean a broad exhaustion doctrine for self-replicating technologies, a conclusion that is equally troubling as the Federal Circuit's broad exemption from exhaustion for such technologies. But the Court dismissed this argument too quickly. By concluding that planting is by its very nature reconstruction, the Court ignores the unpatented natural processes that are embodied in the act of planting. The use of the unpatented natural processes is discounted completely. In ruling against Bowman, the Court relied on a precedent that in some of its elements favored the purchaser.

The Court also relied on its 1882 decision, Cotton-Tie Company v. Simmons. In this case, the patentee distributed its patented tie for bundles for free with the cotton bales it sold under the express licensing term that the ties be used only once. The defendant collected the used ties and reconstructed them. The Court held that the defendant infringed the patent. The facts of Bowman are similar to that of Simmons. Both bought used versions of the patented product and reused them. But there are key differences. The Court's finding of infringement in Simmons rested on a clear application of the claims of the patent which covered precisely the reconstruction of the patented ties. In Bowman, however, the Court relies on a dictionary definition of the work make to conclude that since the patented gene was part of the next generation of seeds grown by Bowman, the farmer had made the patented invention. The Court does not consult the language of the claims. Instead the Court concludes that planting is making and, under the Patent Act, any making is an infringement.

But the Bowman Court seems to be confused on when exactly making is infringement. In footnote 3, the Court considers the hypothetical of a farmer buying the patented seeds from Monsanto without an express licensing term that allowed the farmer to plant the seeds. The Court says that in such a scenario, the farmer would have an implied license to plant the seed once. But if planting is infringement, from where does this implied license arise? The Court seems to be saying that the implied license is inherent to the transaction. Why else would a sane farmer buy the seed from Monsanto except to plant?, the Court implicitly asks. The Court, of course, gives an answer to this question when it acknowledges that there are uses of the seed that would be protected from infringement under patent exhaustion: as feed for livestock or even for personal consumption. The Court's hypothetical raises the question of when the license to plant is implied and when it is not. This confusion raises the question of the legal basis for determining when a planting of a seed is a making of the patented gene.

The Court's legal basis ultimately rests in policy. It states that its concern is with the unlimited reproduction of the patented gene which would prevent Monsanto from developing a meaningful business model for the distribution of its seed after the first sale. But exhaustion does not remove all remedies for patent owners. Breach of contractual restrictions can give rise to contract remedies, ones that may be less draconian than a patent injunction or treble damages. During oral arguments, the Court characterized this argument as having contract substitute for patent. That is a mischaracterization. Contract remedies can supplement patent remedies, particularly in cases of exhaustion. Contract remedies do not eviscerate a patent, and they do not serve as a poor substitute for a patent. Instead, contract remedies in the case of exhaustion serve to balance the rights of patent owners with those of consumers, business people, and inventors that make use of patented articles. The Court affirmed this notion in footnote 7 of its 2008 Quanta decision, which remains good law after Bowman.

What is the most revealing about the Court's opinion is its frequent reference to the "patent monopoly." When I first read that phrase, which appears four times in a ten page opinion, I kept thinking of the bad old days of Justice Douglas, who viewed patents as inherently anti-competitive. The Court in Bowman, however, uses the term of patent monopoly to refer to the patentee's exclusive rights in the specific patented article that is sold. According to the Court, the monopoly in that particular article is broad and is compromised if unauthorized making is allowed. The Court sees that threat in Bowman. Unfortunately, in reaching its decision the Court based its decision almost exclusively on the interests of the patent monopolist without thorough consideration of its own precedent, the analysis of the underlying unpatented natural processes, and the relationship among planting, making, and implied license. With the patent at issue about to expire, perhaps the impact of the decision is minimal. However, with the next generation of Round Up Ready and genetically modified seed currently under review in the USPTO, the impact of the decision will undoubtedly be felt by the next generation of inventions and users.

Shubha Ghosh is The Vilas Research Fellow & Professor of Law at the University of Wisconsin Law School.

Last week the United States Patent and Trademark Office (USPTO) announced in the Federal Register that it would modified the After Final Consideration Pilot Program (AFCP) to create the After Final Consideration Pilot Program 2.0 (AFCP 2.0). The goal of AFCP 2.0 is much the same as it was when the USPTO initially introduced the precursor AFCP. According to the USPTO, the goal of AFCP 2.0 is to reduce pendency by reducing the number of RCEs and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application. There are, however, three differences between old and new AFCP. Related posts:

1. New PTO Initiative Gives More Opportunities to Amend After FinalAll and all this seems like a positive development. If you do provide a claim set that defines the invention from broad to narrow it seems extremely likely that at least some claims could be obtained in a case given that amendments can now be filed if they place the application in condition for allowance by adding one or more new limitations that require only a limited amount of further consideration or search. Assuming that the Patent Examiners do search the disclosure, like they are supposed to, and not just the initial claim set, allowable matter should be present and...
2. USPTO Extends After Final Pilot; USPTO Adds Advancement of Examination Option to Law School Clinic ProgramIf you have not tried to use the After Final Pilot you should really give it a try. At our firm we have found examiners quite willing to work with us After Final under the Pilot Program and have had successful results. While not appropriate to do everything you really may want to do After Final, many times you can make at least some substantive changes that would have normally required the filing of an RCE or Continuation. I personally think the Pilot has already proven to be a success and hope that the USPTO will continue to extend the...
3. USPTO Introduces Quick Path IDS Submission Pilot ProgramIn the QPIDS pilot, IDS submissions will be considered by the examiner before determining whether prosecution should be reopened. Prosecution will only be reopened where the examiner determines that reopening prosecution is necessary to address an item of information in the IDS. When the items of information in the IDS do not require prosecution to be reopened, the application will return to issue, thereby eliminating the delays and costs associated with RCE practice....

Related posts brought to you by Yet Another Related Posts Plugin.

The US Senate investigation, results of which were disclosed Monday, found that Apple employs a group of affiliate companies outside the United States to avoid paying taxes. The subcommittee’s chairman, Sen. Carl Levin, D-Mich., and other panel members could hold up Apple as an example of a powerful company using its privileged position to avoid taxes while ordinary Americans must pay them.