Patent Law Practice Center

Patent Trolls Cost Society $500 Billion Dollars, But What Does it Mean to You?

R. David Donoghue, Partner at Holland & Knight and Practice Center Contributor, passed along this post he wrote for his Retail Patent Litigation blog that discusses the outrageous cost of patent troll litigation and what it means for retailers.

Three Boston University professors – James Bessen, Jennifer Ford and Michael Meurer — are writing a provocative law review article using empirical data to quantify the cost of patent trolls. The cost of patent trolls is clear to every retailer that I speak with, but the results of the article are still shocking:

[Patent trolls] are associated with half a trillion dollars of lost wealth to defendants from 1990 through 2010.

Id. At 2.   $500,000,000,000 in lost wealth over twenty years, but it is actually worse than it sounds.  The losses are growing; an average of $80 Billion was lost per year over the last four years.  Almost two-thirds of the $500 Billion were lost in the last four years.  Some will no doubt argue that the study overstates the problem, but the authors make a compelling case that it is a levelheaded assessment of the cost of patent troll litigation.  They focus the study upon the impact of troll litigation upon a public company’s share price and find that, controlling for market fluctuations and other anomalies, stock prices take a significant and lasting hit when a troll suit is filed against a company. (more…)

Patent Drafting: Defining Computer Implemented Processes

The following post was written by Gene Quinn , of IPWatchdog and Practice Center Contributor.

The United States Patent and Trademark Office is radically updating the Patent Bar Examination starting in April 2011.  Since I teach the PLI Patent Bar Review Course that has required John White and I to revise our materials.  One of the new things tested will be the recently released 112 Guidelines, which are full of great information and explanation, particularly relating to computer implemented processes; what many would call software.  Being the “software guy” one of my responsibilities has been to work on the 112 Guidelines and the Bilski Guidelines for the PLI course.  So I thought I would take this opportunity to write, once again, about how to disclose computer implemented inventions to satisfy the disclosure requirements, which are embodied specifically in 35 U.S.C. § 112.

The statutory requirements for computer-implemented inventions are the same as for all inventions.  That means that in order to be patentable the invention must meet the patent eligibility test in 35 U.S.C. § 101, the invention must be new (§ 102), it must be non-obvious (§ 103) and it must be adequately described (§ 112).  Since the United States Supreme Court announced its decision in Bilski v. Kappos, the United States Patent and Trademark Office has continually urged patent examiners to get beyond the § 101 inquiry except in extreme cases.  Prior to the Supreme Court’s Bilski decision many examiners would simply see a computer-implemented method and issue a blanket and rather non-specific rejection asserting that the invention was not patent eligible subject matter under § 101.  The USPTO focus on getting past § 101 and to the meat of the invention means that such rejections are no longer the norm.  It also means that the Patent Office is pushing the real question about whether an patentable invention is presented into the adequate description space pursuant to § 112.  Thus, a thorough and complete description is absolutely essential when your invention relates to a computer-implemented method, whether it is software, an Internet processes or a business method. (more…)

PLI’s Patent Law Institute Coming To A Location Near You!

PLI’s 5th Annual Patent Law Institute is on February 17-18 in New York (and via web) and on March 21-22 in San Francisco.  If you’re not joining us live in NYC or on the web, you can come here on Thursday February 17th at 9:15am to see a live stream of  former USPTO Deputy Director Sharon Barner’s keynote address to kick off the Insitute.

The Institute will cover the practice impact of recent developments on all three sub-groups in the patent law community: patent prosecutors, patent litigators, and strategic &transactional lawyers. The two-day schedule includes six one-hour plenary sessions of broad interest to patent lawyers and a separate breakout track for prosecution, litigationandstrategic & transactional practices. Each track features six one-hour breakout sessions focused on each of the three patent practice sub-groups.

Plenary sessions include:

• USPTO Keynote Address by USPTO Deputy Director Sharon R. Barner
• Understand the practice impact of recent Supreme Court and Federal Circuit decisions
• Learn the latest on the lower court’s reactions to the Supreme Court’s Bilski decision from a panel of experts
• Master the changes at the USPTO and how to manage client expectations
• Corporate counsel divulge the patent issues that keep them awake at night
• A distinguished panel of federal judges share their perspective on critical patent litigation issues
• Earn one hour of ethics credit

Federal Circuit Reaffirms Patent Eligibility of Personalized Medicine and Diagnostic Method Claims

Today’s guest post was written by our friends at Foley Lardner, Courtenay C. Brinckerhoff and Antoinette F. Konski.

Last Friday, in Prometheus Laboratories, Inc. v. Mayo Collaborative Services, No. 2008-1403 (Fed. Cir. 2010), the Federal Circuit affirmed that personalized medicine and medical diagnostic claims are not per se unpatentable for claiming natural phenomena. The Court’s opinion provides guidance on the post-Bilski application of patent-eligibility requirements to claims that define the relationship between a treatment or drug regimen to the presence or absence of a patient-specific clinical marker (in this case, a metabolite of the administered drug).

The patent-eligibility of such claims has been in question since the Supreme Court’s dismissal of the grant of certiorari in Laboratory Corp. of American Holdings v. Metabolite Labs., Inc., 548 U.S. 124 (2006). Supreme Court Justice Breyer dissented from the dismissal and wrote a non-binding opinion that “detecting” and “correlating” claims were not patent-eligible. More recently, the Supreme Court decision to vacate and remand the Federal Circuit’s 2009 Prometheus decision in view of its decision in Bilski v. Kappos, 130 S.Ct. 3218 (2010), fueled speculation that the patent-eligibility of such methods might not survive scrutiny under Bilski. (more…)

Bilski’s Impact On Life Science Patents

Today’s guest post was written by our friends at DLA Piper, Richard Mulloy (Partner in the Patent Litigation practic)  and Lisa Haile (Patent Prosecution partner and the co-chair of DLA Piper’s Global Life Sciences sector).

Two significant developments arose out of Bilski regarding life science patent claims.  First, the Supreme Court’s endorsement of the machine-or-transformation test as one tool to analyze claims under 35 U.S.C. §101 provides some guidance to patent applicants and litigants. Second, the Court’s suggestion that the Federal Circuit develop “other limiting criteria” to analyze claims under §101 provides additional flexibility to develop tests more applicable to the life sciences, where the machine-or-transformation test is not particularly appropriate.

The Federal Circuit will have an opportunity to provide additional guidance in two pending cases: Prometheus Laboratories, Inc. v. Mayo Collaborative Services, No. 2008-1403, and Classen Immunotherapies, Inc. v. Biogen IDEC, Nos. 2006-1634 and 2006-1649.  The Prometheus and Classen cases were both remanded to the Federal Circuit for additional consideration in light of Bilski.   (more…)