Dozens of Letters Opposing Patent Reform Sent to Senators

A slew of brand-new letters opposing patent reform were sent to members of the U.S. Senate during the past week, and the Innovation Alliance has posted them in their resource center. Is anyone aware of other letters like these?

Here is what the group has posted so far:

Letter to Senators Lamar Alexander and Bob Corker from 14 Tennessee manufacturers opposing patent reform

Letter to Senator John Cornyn from 54 Texas employers and patent holders opposing patent reform

Letter to Senators Arlen Specter and Robert P. Casey from 29 Pennsylvania manufacturers opposing patent reform

Letter to Senators Mitch McConnell and Jim Bunning from 51 Kentucky companies and universities opposing patent reform

Letter to Senators Harry Reid and John Ensign from 19 Nevada companies opposed to patent reform

Letter to Senator Kay Bailey Hutchison from 54 Texas employers and patent holders opposing patent reform

Letter to Senators John McCain and Jon Kyl from 28 Arizona employers opposing patent reform

Letter to Senator Wayne Allard from 33 Colorado companies opposing patent reform

Letter to Senators Saxby Chambliss and Johnny Isakson from 10 Georgia employers opposing patent reform

Microsoft Settles Mouse Patent Case

Two related patent cases brought by Plaintiff F and G Research Inc. against Microsoft were consolidated by Judge Martinez, and then re-assigned to Judge Jones. The cases involved U.S. Patent No. 5,313,229 for a "Mouse and Method for Concurrent Cursor and Scrolling Position." In an order dismissing the cases with prejudice, Judge Jones indicated that the parties have reached a settlement. So far, details of the settlement remain confidential.

Judge Jones Scheduling Order for Patent Cases

Here is a recent scheduling order issued by our newest judge, Judge Jones, who seems to have been assigned quite a few patent cases by his fellow jurists. In addition to this case, Judge Jones is currently presiding over the Canon USA inc et al. v. Screentone Systems Corporation (o7-1544), a case involving almost every major printer manufacturer, concerning methods and systems of half-toning in computer printers, US Pat. 5,166,809, with related cases pending in Eastern Texas, the District of Delaware, and motions for consolidation and transfer before the Panel for Multi District Litigation (MDL No. 1926, In re Halftone Color Separations).
Judge%20Jones%20Scheduling%20Order.pdf

The Art of Networking, A Seattle Patent Litigator's Perspective from the 2008 AIPLA Mid-Winter Institute in Phoenix, Arizona

I left a brutally cold Seattle early Wednesday morning for Phoenix, looking for three specific things at this year's AIPLA Mid-Winter Institute: (1) some sunshine; (2) timely, relevant, and expert information on IP; and (3) a bounty of networking opportunities. So far, my quest for sunshine continues. It poured rain for about 15 minutes today, and the temperature hovered around 50 degrees all day today and yesteday, while the sun remains obscured by some high clouds as I write this post. As for timely, expert, and relevant information on IP, I think I may have learned more by scanning my RSS reader for the latest IP news. One thing that has not disappointed is the networking opportunity here at AIPLA. What a great organization for building relationships and staying in contact with clients and fellow lawyers from around the country. AIPLA is great at putting faces to names I've heard (or read) about and at providing an opportunity to discuss (and sometimes debate/argue) key issues affecting the practice of IP law in the US and abroad. One topic that has been on my mind and provided much fodder for networking discussions is the current case on review en banc before the CAFC, Egyptian Goddess v. Swisa, Inc. As many if you already know, this is a case that may completely overhaul the law of design patent infringement. I've been working diligently with a colleague, Kevin Kramer, at Pillsbury Winthrop in Washington DC, to suggest arguments and positions to take in a possible amicus brief on behalf of the Federal Circuit Bar Association. (Both Kevin and I sit on the amicus committee for the FCBA). For some of the questions up for en banc review in the CAFC's order, there appears to be consensus among many in the IP community, while on others (like whether to do away with the "point of novelty test" for design patent infringement) disagreements abound. In any event, I can't think of a better place to be at the moment than right here at AIPLA, where I can ask questions of those lawyers working in the "trenches" of patent law, who can share real-life, practical concerns with the case and the potential implications of a shift in the law for design patent infringement.

This year's AIPLA Mid-Winter Institute is at the Arizona Biltmore hotel, a hotel whose design was inspired by the great architect Frank Lloyd Wright. I will be golfing on Saturday at one of the hotel's two golf courses. AIPLA is having a tournament in the afternoon, just before I return to Seattle.

Last night, I ran into one of the most well known and respected patent lawyers in the country, Don Martens. Don will be playing golf with us on Saturday along with another member of patent law royalty, Douglas Henderson, whom I had the pleasure of meeting last night for the first time. I've had each verify their handicaps, so there will be no "sand-bagging" at Saturday's tournament.

Judge Pechman Denies Request for Relief from Scheduling Order

Based on my site data, a lot of you are looking for information on how certain judges in the Western District may handle scheduling in a patent case. I've posted here and here on patent scheduling orders used by Judges Zilly and Robart. Here is a post from a case currently pending before Judge Pechman, WizKids Inc. v. Wizards of the Coast (07-809). This case involves US pat. no. 7,201,374 for a "Method and Article of manufacturer for Collectible Game." The patent is owned by Wizards of the Coast, who was sued by Wizkids in a declaratory judgment action alleging non-infringement and invalidity of the '374 patent. Judge Pechman issued a scheduling order setting forth deadlines for (among others) claim construction briefing, preliminary contentions concerning claim construction, and a Markman hearing (attached below, PDF). Declaratory Judgment Plaintiff Wizkids asked for relief from this order, contending that the court did not need to engage in complicated claims construction to hear its motion for summary judgment on the issue of invalidity. Judge Pechman disagreed. From the order denying leave to file an early summary judgment motion:

"Plaintiff claims support or this departure from the case schedule from a recent Supreme Court case which held '[w]here, as here the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate.' KSR Int’l v.Teleflex Inc., ___ U.S. ___, 127 S.Ct. 1727, 1745-46 (2007). Plaintiff wishes to file a motion seeking summary judgment on grounds of obviousness based on prior art. Plaintiff’s argument (and its reliance on KSR) is valid only if the scope of the patent claims and the level of ordinary skill of the art are not in dispute. Plaintiff argues that they are not, but the argument and the evidence are not persuasive. . . . It is apparent from the parties’ pleadings that claim construction will assist in the determination of obviousness. Both the correspondence which they exchanged prior to initiation of the lawsuit and the arguments regarding construction of claim terms in their briefs are evidence that the scope of the claims here is still in dispute. Furthermore, the discovery process has just begun and no depositions (including those of Plaintiff’s game experts who are testifying as to the 'ordinary level of skill' required in this matter) have been taken."
WizKidsOrderLeavetofileearlySJ.pdf
wizkidspechmanschedulingorder.pdf
WizCoastsClaimsContentions.pdf

Professor Karl Manheim of Loyola Law School Speaks to Seattle Patent Lawyers About Patent Reform Legislation

Professor Karl M. Manheim from the Loyola University Law School (LA) spoke to Seattle area patent lawyers today about pending patent reform legislation pending in both houses of Congress. Professor Manheim's talk was given at the monthly meeting of the Washington State Patent Lawyer's Association (WSPLA). Professor Manheim is the Loyola director of the Program for Law & Technology at the California Institute of Technology and Loyola Law School. The talk was very informative, covering all areas of both bills, HR 1908 and S 1145. Topics discussed included the hotly debated "first-to-file" provisions of the proposed legislation, which Professor Manheim was quick to describe as the "first inventor to file," placing emphasis on the legislation's continued requirement for filings in the name of the inventor. What was interesting to me is the fact that the original version of HR 1908 included a provision where companies could file in their own name under a representation that the inventor was under an obligation to assign. This provision was removed from HR 1908 after obvious protests from independent inventors, but according to Professor Manheim, it remains in the the Senate bill, S 1145. In fact, there appear to be many significant differences between the Senate and House versions of this legislation. Professor Manheim directed us to a chart prepared by attorneys from Foley Hoag LLP attempting to set forth, on a provision by provision basis, the differences between Senate and House patent reform legislation pending in both houses of Congress. Professor Manheim's comment on this chart was that it seemed "generally accurate," at least insofar as the legislation existed in September 2007. So far, there is no complete version of the Senate bill available and because the Senate did not establish a subcommittee on IP, discussions are being conducted within the broader Senate Judiciary Committee. Here is a link to the complete ("engrossed") version of the HR 1908 as of September 2007.

Supreme Court Hears Oral Arguments in LG v. Quanta

On Wednesday, the Supreme Court heard oral arguments in the LG v. Quanta case, a case dealing with the doctrine of patent exhaustion. This is an incredibly important decision because it may transform how patent licenses are drafted and negotiated. Many believe that the Supremes will rule in favor of Quanta, overturning the Federal Circuit's decision, holding that patent rights covering methods or system claims are exhausted when the thing used to carry out that system or method is sold. Here is a link to the oral argument transcripts. Patent Troll Tracker had this to say about the arguments:

"It's very hard to read Supreme Court tea leaves. In this case, though, I think that Justices Roberts, Stevens, and especially Breyer honed in on exactly the problem with the Federal Circuit's opinion in LG. Justices Alito and Thomas were completely quiet. Justices Scalia, Kennedy, Ginsburg and Souter asked questions, but without really revealing which way they were leaning, although Justice Scalia did seem to discount that LG/Intel's notice meant anything, and Justice Ginsburg picked up on the fact that LG could have expressly conditioned its license requiring Intel to sell products only to licensed companies. So, on balance, I'd say the Court appears to be leaning towards overturning the Federal Circuit, but perhaps only slightly, and I certainly won't be surprised if it's a 5-4 or 6-3 decision the other way. And who knows what the scope of the opinion will be? Should be interesting."

Judge Jones Denies Motion for Staged Discovery

By itself, this recent order from Judge Jones denying staged discovery in a patent case seems pretty insignificant. And it probably is. The only reason I'm posting it is because it is one of his first orders in a patent case (if not the first order) so it has some significance in that regard. Further, it provides information for those practicing in his court and considering staged discovery. In this case, Defendant Eveready Industrial Services Corp. sought to stay all discovery in the case except that which related to an alleged assignment. Judge Jones denied the request.

From Judge Jones' order:

"Eveready seeks to postpone discovery on all issues save one: whether Eveready is the assignee of rights under the joint technology agreement. Eveready asserts that resolving this issue may dispose of the case. Unfortunately, Eveready does not explain why. Plaintiffs’ amended complaint contains six causes of action, and Eveready fails to explain how deciding whether it is the assignee of the joint technology agreement will resolve each cause of action. In opposition, Plaintiffs explain that the resolution of the assignment question will not resolve many of its claims."
EvereadyOrderStagedDiscovery.pdf

Wacom Loses Request for Reconsideration of Claims Construction Order

I posted here about the claims construction order issued by Judge Bryan in the Wacom v. Hanvon litigation. This case involves several patents covering electronic pen and tablet technology. Wacom had moved for reconsideration of the Judge Bryan's claims construction order arguing manifest and "pervasive" errors of law. In essence, Wacom asserted that the order erroneously "put the patent invalidity cart before the claim construction horse" by construing the claims to "preserve their validity." Judge Bryan denied the motion.

From Judge Bryan's Order:

"Plaintiffs argue that the Court made manifest and pervasive errors of law by requiring Plaintiffs to prove that their proposed constructions for multiple means-plus-function claims were valid. Dkt. 113 at 4-5. Plaintiffs assert “that the ‘doctrine of construing claims to preserve their validity . . . has no applicability’ except where the claim is ambiguous even after applying all of the tools of claim construction.” Dkt. 113 at 4 citing Phillips v. AWH Corp., 415 F.3d 1303, 1327-8 (Fed. Cir. 2005). However, “[t]he applicability of the doctrine [of construing claims to preserve their validity] in a particular case therefore depends on the strength of the inference that the [Patent and Trademark Office (“PTO”)] would have recognized that one claim interpretation would render the claim invalid, and that the PTO would not have issued the patent assuming that to be the proper construction of the term.” Id. at 1328. For the ‘553 Patent, Plaintiffs’ proposed means-plus-function constructions were so limited, vague, and
unsupported by the weight of intrinsic and extrinsic evidence in the record that a brief discussion of invalidity was required. Moreover, Plaintiffs were consistent in advancing the same limited arguments and unsupported constructions for the means-plus-functions limitations in the remainder of the asserted patents."


WacomOrderDenyingReconsideration.pdf

Dispute Over Privilege Log Resolved By Joint CR 37(a)(2)(B) Submission

Recently, I posted about this case brought by Wacom Technology Corporation against Hanvon Corporation in a dispute involving electronic pen and tablet technology. Judge Bryan recently resolved a discovery dispute between the parties over the sufficiency of Wacom's privilege log. The decision is interesting for at least two reasons. First, it is an excellent example of how parties can resolve their discovery disputes amicably and without resort to expensive motions practice. In 2002, this district enacted revisions to Local Rule 37, including the addition of language to Rule 37(a)(2)(B) permitting a joint submission from the parties and expedited handling of the dispute. The text of that rule can be found by following this link. In this case, Wacom and Hanvon made their joint submission, and the next day, they had a decision from Judge Bryan. The whole process takes about week. The second reason this order is interesting is because it provides some background for those practicing in Judge Bryan's court as to how he may resolve a similar dispute in the future. I'm often frustrated at the lack of available case law covering discovery matters, especially cases from particular courts and particular Judges.
WacomOrderonRule37Submission.pdf

Scheduling Orders in Patent Cases (WD of Wash.)

Yesterday, a reader asked me whether Judge Zilly has a standing order for patent cases similar to that of Judge Robart. The answer is no, but his scheduling orders in patent cases can be more detailed than other cases and establish deadlines for Markman hearings and briefing on claims construction. Below is a link to a recent scheduling order from a patent case currently pending in Judge Zilly's court.
ZillyMinuteOrderPatentCase.pdf

2007 Patent Litigation Statistics for Washington State

Because Blogger dates my posts when they are started (as opposed to when they are finished), the purpose of this post is to provide a link to my completed report on patent litigation statistics in Washington State. I finished the report today. Enjoy.

Wacom Cries Foul Over Recent Claim Construction Order

Japanese manufacturer of pen and tablet components, Wacom Technology Corporation, alleged Patent Infringement, Violation of 35 U.S.C. § 292, and Unfair Competition, by Defendant Hanvon Corporation . There are six U.S. Patents involved in this case: RE34,187; 4,878,553 (as reexamined), 4,999,461, 5,134,689, RE35,329, and 5,691,513. All patents relate to pen and tablet products and related components. In a claims construction order issued by Judge Bryan on December 21, 2007, 46 separate claim terms were constructed. Judge Bryan's order provides some important insights and practice tips for those litigating patent cases in his court. From the order: "While the majority of the technology involved in this case is governed by Faraday’s Law of Induction (footnote omitted), the claim constructions should be governed by Ockham’s Razor (footnote omitted), which states that one should not increase, beyond what is necessary, the complexity required to explain anything. In other words, the public notice function of patent law is best served if these patents stand on their own two feet without the supporting crutch of complicated judicial constructions."

Judge Bryan's 34-page claims construction order and his 17-page claims construction chart are attached below. Wacom asked for reconsideration in a motion filed on New Year's Eve, 2007. Wacom's primary argument for reconsideration rests on an alleged "manifest and pervasive error of law" tainting the construction of 15 claim terms. According to Wacom's motion, the order mistakenly "conflates claim construction with patent validity—two entirely different exercises in patent law." In essence, Wacom argues that Federal Circuit law prohibits courts from re-writing claim terms under the guise of "preserving validity" and that this improperly places the burden on the patent holder to prove validity at the claims construction phase. The motion for reconsideration is also attached below.

WacomClaimsConstruction.pdf
WacomClaimsConstOrderChart.pdf
WacomMotionforReconsideration.pdf