Patent Related Issues

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Patent RelatedIssues

• Southeast Region Technology Transfer Directors
  Meeting
• July 21, 2006
• Dave Risley
• Thomas, Kayden, Horstemeyer Risley, LLP

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Todays Topics

• Public Disclosures
• Avoiding the Printed Publication Bar
• Patent Law Update
• eBay v. MercExchange
• Proposed PTO Rule Changes

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Printed Publication Bar

• A person is entitled to a patent unless
• the invention was described in a printed
  publication . . . more than one year prior to the
  date of application

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What Constitutes a Printed Publication?

• Case-by-case determination on the facts
• Focus is on the public nature of disclosure
• Key Public Accessibility
• Actual printing appears secondary
• Rule originates from 1836

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Accessibility Factors

• Cataloging/indexing of documents
• Length of time information available
• Level of detail
• Complexity of disclosure
• Expertise of the audience
• Protective measures
• Ease of dissemination

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Bar or No Bar? Hypo 1

• Facts Professor delivers an oral presentation
  describing all aspects of his invention at a
  conference. No slides are shown, no posters are
  presented, and no papers are disseminated.
• Holding No bar. An entirely oral presentation is
  without question not a printed publication.
  In re Klopfenstein, 380 F.3d 1345 (Fed. Cir.
  2004).

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Bar or No Bar? Hypo 2

• Facts Graduate student submits dissertation,
  which is cataloged in the university library.
  There is no evidence that the dissertation was
  checked out.
• Holding Bar. That the dissertation was
  accessible to the public is enough. In re Hall,
  380 F.2d 1345 (Fed. Cir. 1986).

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Bar or No Bar? Hypo 3

• Facts Students thesis was filed in the
  university library, but was not cataloged.
• Holding No bar. The lack of cataloging meant
  that the thesis was not really accessible. In re
  Cronyn, 890 F.2d 1158 (Fed. Cir. 1989) see also
  In re Bayer, 568 F.2d 1357 (CCPA 1978).

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Bar or No Bar? Hypo 4

• Facts Oral presentation delivered to a large
  audience of scientists. Copies of an on-point
  paper were distributed to six persons in
  attendance who requested it.
• Holding Bar. The papers were freely distributed
  without any restrictions to the requesting
  persons. MIT v. AB Fortia, 774 F.2d 1104 (Fed.
  Cir. 1985).

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Bar or No Bar? Hypo 5

• Facts Oral presentation with slide show
  delivered to a large audience of scientists. The
  slides were printed and pasted onto poster
  boards, which were displayed continuously for two
  and a half days.
• Holding Bar. The information was clearly
  disseminated without restriction. In re
  Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004).

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Recommendations Papers

• File paper as a provisional beforehand!
• Avoid disclosing the details of the invention
• Take steps to limit the number of recipients
• Require a confidentiality agreement
• Orally express expectation of confidentiality
• Prevent cataloging/indexing of the paper

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Recommendations Presentations

• File presentation as a provisional before!
• Avoid disclosing the details of the invention
• Avoid distribution hard copy handouts
• Avoid use of slide shows
• -or- Show slides only briefly
• Do not leave materials out for public display
• Take precautions to limit info dissemination
• Explicitly express expectation of confidentiality

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eBay Underlying Facts

• MercExchange holds a business method patent for
  an electronic market
• MercExchange offered eBay a license
• No deal was reached
• MercExchange sued eBay for patent infringement

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eBay Trial Court

• Jury found infringement
• MercExchange requested a permanent injunction
• Court denies injunction request after applying
  the traditional four-factor test . . .

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eBay Trial Court (cont)

• Four-Factor Test - Plaintiff must show
• it has suffered irreparable injury,
• monetary damages are inadequate,
• equitable remedy is warranted, and
• injunction would not be against public interest

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eBay Trial Court (cont)

• Influencing denial of injunction
• MercExchanges failure to practice the patent and
  to commercially exploit
• MercExchanges intent to license
• Court concludes no irreparable injury and
  money damages are adequate

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eBay Appellate Court

• Appellate Court reverses
• General rule is that injunctions are awarded to
  a victorious plaintiff in patent cases
• Injunctions should only be denied in unusual
  cases

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eBay Supreme Court

• Decision Both lower courts are wrong
• Holding The four-factor test is to be applied,
  and there are no categorical rules
• Not practicing patent not dispositive
• Injunction not automatic in patent cases
• Result Case sent back to Trial Court

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eBay Significance

• Non-practicing patent owner may still be able to
  obtain an injunction
• Supreme Court specifically referenced university
  researchers as an example
• But, the door has been opened to denial of
  injunctions
• Concurring opinion notes that times/plaintiffs
  are changing

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PTO Proposed Changes

• Proposed are
• Limitations on Continuing Applications
• Accelerated Examination
• Additional Requirements for Information
  Disclosure Statements (IDSs)

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Continuing Applications

• Proposal No more that one continuing application
  (RCE, continuation, CIP) permitted without stated
  justification
• Justification Showing as to why the amendment,
  argument, or evidence could not have been
  presented earlier

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Accelerated Examination

• Proposal On petition, the PTO will attempt to
  reach a final determination on patentability
  within twelve (12) months of filing
• Requirements Many requirements apply, including
• Applicant must conduct a search and explain the
  relevance of the discovered references
• All claims will stand/fall together on appeal

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Info. Disclosure Statements

• Proposal - Applicant must
• Explain relevance of all English-language
  documents over 25 pages in length
• Explain relevance of all non-English-language
  documents
• Explain relevance of each document if more than
  20 documents are submitted
• Explain relevance of each document submitted
  after issuance of 1st Office action

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• Thank You!
• Dave Risley
• david.risley_at_tkhr.com