BPAI Raises Stakes for In Re Bilksi and the Future of Software Patents

An excellent article by John Duffy, professor of law at George Washington University Law School, explains that two recent decisions from the USPTO's Board of Patent Appeals and Interferences (BPAI), Ex parte Langemyr (May 28, 2008) and Ex parte Wasynczuk (June 2, 2008) substantially raise the stakes for all interested parties in the Federal Circuit's en banc review of In re Bilski, a decision set to review the scope of patentable subject matter under 35 USC section 101.

I think this article, and others like it will lead the Federal Circuit to come to the right conclusion in the Bilski case, and that is patentable subject matter under 101 should not be restricted. Instead, the better way to curtail software patents lacking in any creativity or innovation is to reject them as obvious under 35 USC section 103. Prior art searching capabilities for software have improved and will continue to improve. Moreover, mandatory second reviews, peer review systems, and the like are proving effective at making sure that only the most innovative software patents are allowed to issue.

The effects of curtailing patentable subject matter to exclude software innovation and require physical transformations or a ties to a "particular computer" will be extremely damaging to existing businesses and the long-term impact in software innovation will be palpably negative: there will be little incentive to build a business around software innovation if the Federal Circuit curtails the scope of patentable subject matter under section 101.

Claims Construction Order in Wide, Short Ski Case against K2

Judge Lasnik recently construed claims for US Patent No. 5,603,522 for a "Wide, Short Ski." The case is one for infringement brought by inventor Paul Nelson against K2 Corporation. The parties disputed six claim terms from independent claim 1. Not surprisingly, the patent here uses words of approximation, like "about" and "approximately" to describe some numerical measurement ranges. Using the prosecution history as support, Judge Lasnik ruled that these words will be constituted to provide a +/- 3% range from the claimed measurements. This will set the boundary for a determination of literal infringement.

One interesting snippet from this Order is that Judge Lasnik all but ignored evidence from a patent attorney as to what these words ought to mean, saying "Absent evidence that [the patent attorney] is one skilled in the art of designing and/or manufacturing skis, his opinion regarding the proper interpretation of the claim terms is not useful to the Court." (citing Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1361 (Fed. Cir. 2005) (quoting Phillips, 415 F.3d at 1318).


NelsonvK2claimsconstruction.pdf

Federal Circuit Vacates Exceptional Case Finding and Over $6 million Dollar Award of Attorneys Fees

Catching up on my reading, I notice that in May, the Federal Circuit affirmed in-part, remanded, and vacated in-part a judgment entered following a two-week bench trial here in Seattle between TALtech Limited and Esquel Apparel, Inc. involving US Patent No. 5,568,779, a patent covering a seam for "wash-and-wear" dress shirts that solved the problem of puckering when laundered (WDWa Case No. 04-cv-974).

Judge Zilly entered findings of fact and conclusions of law in March 2007 invalidating the '779 patent on a rarely successful best mode argument (use of a preferred adhesive was apparently not disclosed), and he also found the patent unenforceable due to inequitable conduct for failure to disclose a prior art raincoat seam that had "inspired" the invention. The patent was also found not to be infringed by Defendants. (How is that for a complete defense victory? Makes one wonder why plaintiffs did not demand a Jury, especially after some of the pre-trial rulings in the case, providing a rather narrow claim interpretation and failing to find literal infringement as a result, which should have indicated which way the wind was blowing. But, I know hindsight is 20/20.)

Over $6 million dollars in attorneys fees were awarded to the Defendant under 35 U.S.C. 285 because the case was deemed "exceptional" as a result of the inequitable conduct and misconduct of Plaintiffs during litigation.

The Federal Circuit affirmed findings of invalidity and non-infringement, but vacated the finding of inequitable conduct, and the over $6 million dollar award of attorneys fees because it was based "at least in part" upon a finding of inequitable conduct. The case was remanded so the Court could consider whether the undisclosed prior art was cumulative of other art before the examiner.

I would expect some supplemental briefing on the "cumulative" issue. The Federal Circuit definitely left the door open for a finding that the undisclosed prior art was not cumulative, and given the highly factual nature of this finding, it may prove difficult to overturn on appeal. Further, exceptional case findings could be revised, finding independent basis in litigation misconduct, although this would probably receive very close scrutiny by the Federal Circuit.

Seattle Patent Litigation Update (May-June 2008)

So my trial is now over. My posts will pick up and be more frequent. I'm happy to report a victory for one local inventor over Sears Roebuck and their advertising firm, Young & Rubicam. Jury returned a verdict for $1.7 million on Wednesday afternoon. It's a copyright case, so I won't go into detail here. If you are interested, here is a link to today's story in the Seattle Times.

May and June saw some interesting new patent filings in Washington. Here is a list:

June 10, 2008
Nintendo of America Inc v. Nyko Technologies Inc	WA Western	Lasnik	Patent	Federal Question
Plaintiff: Nintendo of America Inc; Defendant: Nyko Technologies Inc
May 28, 2008
Microscan Systems Inc v. Cognex Corporation	WA Western	Martinez	Patent	Federal Question
Plaintiff: Microscan Systems Inc; Defendant: Cognex Corporation
May 22, 2008
Brower v. Lowe's Companies Inc et al	WA Western	Robart	Patent	Patent Infringement
Plaintiff: Jerry E Brower, Jerry E Brower Defendant: Lowe's Companies Inc, Lowe's HIW Inc, Homax Products Inc
May 20, 2008
Westfield Outdoor Inc v. GCI Outdoor Inc	WA Western	Jones	Patent	Declaratory Judgement
Plaintiff: Westfield Outdoor Inc, Westfield Outdoor Inc, Westfield Outdoor Inc Defendant: GCI Outdoor Inc

The most interesting of these cases to me is Nintendo's action over Nyko Technologies to enforce rights in the NUNCHUCK controller for the Wii. Now that is what I like to see: a major technology player from the PNW showing confidence in our local district court to sort out complicated IP matters. This case is also interesting because it seeks to enforce design patent rights in the shape of the controllers amid great uncertainty in the law concerning design patent rights. The Federal Circuit has yet to issue a decision in the en banc review of Egyptian Goddess v. Swisa. Here is a link to post about amicus briefs offered in connection with that case, one of which I co-authored earlier this year on behalf of the Federal Circuit Bar Assocaition.