Patent Law Practice Center

Europe’s Approach To Patentability Of Business Methods

This post comes courtesy of our friends at DLA Piper, George Godar (Partner in DLA Piper UK’s London office in the Technology, Media and Commercial group) and David Alberti (Partner in DLA Piper’s Silicon Valley office. He  focuses on patent litigation, prosecution and counseling). 

The issues raised in the recent United States Supreme Court Bilski decision are not exclusive to the US. Europe has been considering these issues for years and has still not reached a conclusion accepted by all signatory countries to the European Patent Convention. 

Under the EPC, rules and methods for performing mental acts and doing business, or a program for a computer, are excluded from patent protection if the claims of the patent relate to that thing as such. The European Patent Office (EPO), and national courts, have wrestled with these exclusions. The solutions they have reached may be pragmatic but are not always mutually consistent.   Read the rest of this entry »

Reexamination Requests by Whirlpool against Two LG Refrigerator Patents among those Filed the Week of November 1st

Here is the latest  installment of Reexamination Requests from our friends at Reexamination Alert….

The most commercially significant requests filed last week are likely the ones filed by Whirlpool against two LG refrigerator patents (Inter partes Nos. (4) & (5) below).  LG sued Whirlpool for infringement of those patents a little more than a year ago.  In early 2008, Whirlpool filed an ITC complaint against LG for several patents covering refrigerators (Inv. No. 337-TA-632), and in February of this year, the Commission issued its final determination finding no violation of Section 337.

Also of interest is a request filed by DexCom against an analyte sensor patent owned by TheraSense (Ex parte No. (9)).

The following inter partes requests were filed: Read the rest of this entry »

En Banc Oral Argument In Two Important Patent Cases: Therasense Inequitable Conduct Standard and TiVo Contempt for Attempted Design Around

The following alert was written by our friends at Foley & Lardner.

On November 9, 2010, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, heard oral argument in two important patent cases. The first, Therasense, Inc. v. Becton, Dickinson & Co., No. 08-1511 et al., concerns whether the current materiality-intent balancing framework for determining inequitable conduct should be modified and, if so, how. The second case, TiVo, Inc. v. EchoStar Corp., No. 09-1374, concerns the circumstances under which a district court, following a finding of infringement at trial, might then use a contempt proceeding, instead of a new trial, to determine whether a newly accused device infringes.

Therasense, Inc. v. Becton, Dickinson & Co., No. 08-1511 et al. — Inequitable Conduct

Under the current standard, patent unenforceability based on inequitable conduct — whether a patent applicant somehow breached his duty of candor and good faith to the USPTO during prosecution — is frequently asserted by accused patent infringers as a defense to infringement. The Federal Circuit has previously expressed concerns that inequitable conduct is invoked too often. In Therasense, the court could make it more difficult to assert the defense in future cases. Read the rest of this entry »

He Who Pays the Piper Calls the Tune. Or Does He? The Supreme Court to Decide Who Owns Patent Rights to Inventions Produced in Federally Funded Projects?

The following alert was written by our friends at Kilpatrick Stockton, Charles W. Calkins and Wendy A. Choi.

The Supreme Court granted certiorari on November 1, 2010, in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. (09-1159), involving the ownership of inventions made with federal funding under the 1980 Bayh-Dole Act. The issue is whether a federal contractor university’s statutory right under the Bayh-Dole Act in inventions arising from federally funded research can be terminated (or superceded)unilaterally by an individual inventor through a separate agreement purporting to assign the inventor’s rights in a future invention to a third party.

The three patents in this case involve methods for using PCR techniques to measure HIV concentration in blood plasma to determine the effectiveness of AIDS treatment. Stanford scientists invented the methods while subject to a contractual duty to assign any inventions to Stanford. After agreeing to assign rights, but prior to making the invention, one of the inventors, Dr. Mark Holodniy, who was working on a collaboration between the university and Cetus, assigned his rights in his future inventions to Cetus, whose PCR business was later acquired by Roche. Dr. Holodniy promised to assignrights to Stanford but had actually assigned his rights to Cetus. Stanford filed for a patent and then demanded a royalty from Roche for the sale of its HIV test. The Federal Circuit has held that Roche could not be liable for infringement because it held ownership rights based on Dr. Holodniy’s purported assignment, which was contrary to his promise to Stanford. Read the rest of this entry »

Bilski’s Impact On Software Patents

This post comes courtesy of our friends at DLA Piper, J.D. Harriman (Partner in DLA Piper’s Los Angeles office) and Robert Buergi (Senior Associate in DLA Piper’s Silicon Valley office).

Bilski is a favorable decision for software patents—it broadened patentable processes beyond those that meet the machine or transformation test, and expressly recognized that even some business methods are patentable.  Overall, Bilski will allow properly drafted software method claims to enjoy patentability for years to come.

In the majority opinion, the Court discussed the country’s shift from the Industrial Age to the Information Age, the former being characterized by traditional machines and the latter being characterized by, for example, computer programs.  Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010).  Determining patentability of processes using solely the machine or transformation test “would create uncertainty as to the patentability of software.” Id. Read the rest of this entry »