Tag Archives: Pittsburgh Patent Attorneys

Western District of Pennsylvania Adds Two New Designated Patent Judges

Posted on June 8, 2012 by | Comments Off on Western District of Pennsylvania Adds Two New Designated Patent Judges

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

As reported earlier, the United States District Court for the Western District of Pennsylvania was chosen to be one of 14 District Courts nationwide to participate in a 10-year Patent Pilot Program to study the effects of providing specialized patent judges on patent litigation. On October 12, 2011, the Court issued an order setting forth the procedures it will use in implementing this program. Among other things, the Court identified four judges who are designated as the official Designated Patent Judges for the Court:

Under the Court’s guidelines, patent cases are still randomly assigned to all Judges in the District, regardless of whether they are Designated Patent Judges. However, a non-Designated Patent Judge has the option of declining the case. If he or she does so, the case will be randomly reassigned to one of the Designated Patent Judges.

Since the Court’s implementing order, it has added two new Designated Patent Judges:

The Court has created a special Patent Pilot Program page on its website, which has a variety of information about the program, including the Court’s Local Patent Rules.

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Federal Circuit Hears Oral Arguments on Constitutionality of Patent False Marking Statute

Posted on July 8, 2011 by | Comments Off on Federal Circuit Hears Oral Arguments on Constitutionality of Patent False Marking Statute

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

Yesterday, the Federal Circuit heard oral arguments in FLFMC, LLC v. Wham-O, Inc. (No. 2011-1067) to decide whether the patent false marking statute (35 U.S.C. § 292) is constitutional under the “Appointments” and “Take Care” clauses of the United States Constitution (Article II, Sections 2 and 3). The panel is comprised of Judges Linn, Dyk, and Prost, and attorneys representing FLFMC, Wham-O, the US government, and the Chamber of Commerce of the United States of America argued before the Court. An audio recording of the argument can be heard here.

The district court below (from the Western District of Pennsylvania) dismissed FLFMC’s lawsuit, finding that it lacked standing to bring the action, and FLFMC appealed to the Federal Circuit.

It is difficult to predict how the Court will rule from the argument yesterday, but we can get an idea of some of the key issues that the Court is wrestling with. The argument chiefly focused on two key issues—(1) is there a sufficient government notice requirement in the statute and (2) does the government have sufficient control over the litigation to satisfy its constitutional obligations?

Does § 292 Require Notice to the Government?

As to the first issue, counsel for FLFMC noted that there is a provision for giving the USPTO notice of any lawsuit involving a patent (35 U.S.C. § 290) and many plaintiffs are giving the government notice as a matter of routine practice. Counsel for Wham-O countered that many plaintiffs are not giving notice under § 290 or otherwise and that § 290 only requires notice within 30 days of filing suit, by which time many cases have been settled and dismissed. In either case, the government is not getting adequate notice to fulfill its constitutional obligations. The government conceded that the notice under § 290 does not specifically indicate that the lawsuit involves allegations of false marking, so the government would have to specifically investigate every patent case filed to determine whether it involved false marking, as opposed to infringement, for example.

The Court clearly was concerned about the apparent lack of notice, and the panel questioned whether it could create a notice requirement to preserve the constitutionality.

Does the Government Have Sufficient Control of the Litigation?

The other key issue was the government’s ability to intervene and control the litigation. On its face, the statute is silent about government control and intervention. Counsel for FLFMC argued that the Federal Rules of Civil Procedure give the government the right to intervene because it has a stake in the outcome of the lawsuit, and that the Court can look to these Rules in determining the constitutionality. The Court seemed to accept this argument. Counsel for Wham-O countered that while the government may be able to intervene, it has no ability to control the litigation. It cannot force a dismissal of the lawsuit or reject a settlement. It can only ask the Court for assistance, which puts the government in no better a position that any other amicus or intervenor. There was also some dispute over whether civil litigants should be precluded from bringing suit if the government has already filed a criminal action.

What’s Next?

Given the tenor of the argument, it seems safe to say that the Court has some concerns about the constitutionality of the false marking statute. Whether those concerns rise to the level of invalidating the statute is another question. What will be interesting is how the decision in this case will affect the legislation pending in Congress that rewrites the false marking statute (HR 1249, § 16 and S 23, § 2(k)). Should the Court hold that the current false marking statute is unconstitutional, it may require Congress to revisit the amendments to that statute.

Additional Materials

  • The parties’ Federal Circuit briefs can be found here.
  • The District Court order finding no standing can be found here.

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Will Patent False Marking Litigation Flame Out?

Posted on July 1, 2011 by | Comments Off on Will Patent False Marking Litigation Flame Out?

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

With the House and Senate passing versions of the America Invents Act that will reform the patent laws as we know them, I thought it would be interesting to look back at how patent false marking litigation burst onto the scene in 2010 and how it appears to be flaming out now in 2011. In the last two years, the patent world has been abuzz with claims of false marking brought by individuals against some of the largest companies in America. There were fears that this litigation would result in monstrous penalties where there was little “wrongful” action. As typically happens, these fears appear to have been overblown. While certainly a headache for those companies that were sued and for those companies that have gone to great lengths to verify compliance with the statute, the result seems to be more of a short-term inconvenience.

History of False Marking Law

False patent marking has been around for a long time, first appearing in the Patent Act of 1842, which prohibited the false marking of products with the intent to deceive the public with a fine of not less than $100. Later, in 1952, Congress changed the statute to impose a penalty of not more than $500 per offense:

(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word “patent” or any word or number importing that the same is patented for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article, the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public– Shall be fined not more than $500 for every such offense.

35 U.S.C. § 292(a). Prior to 2009, courts interpreting these statutes held that the penalty should not be imposed for each article falsely marked, but rather should be imposed for the decision to falsely mark a product line. See, e.g., London v. Everett H. Dunbar Corp., 179 F. 506 (1st Cir. 1910). As a result, there was little incentive for a litigant to bring a false marking claim and few cases were filed.

Pequignot v. Solo Cup and Forest Group v. Bon Tool

In 2007, things began to change. Matthew Pequignot, a patent attorney, filed suit against Solo Cup for falsely marking its plastic cup lids with expired patent numbers. Pequignot argued that the prior holdings were incorrect and that penalties should be imposed per article. Because there were potentially over 21 billion cups that were falsely marked, Solo Cup theoretically faced more than $10 trillion in potential penalties under Pequignot’s interpretation.

As the case was winding its way through the courts, the Federal Circuit heard an appeal in an unrelated case Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009) that would ultimately spark a huge new cottage industry. Forest Group had a patent covering stilts commonly used in construction and sued Bon Tool for infringement of its patent. Bon Tool counterclaimed, alleging that Forest Group falsely marked its stilts. The court found that (1) Bon Tool did not infringe; (2) Forest Group had falsely marked some of its stilts and fined it $500 for a single offense of false marking; and (3) the case was not exceptional, so the court did not award attorney fees. Bon Tool appealed the last two findings, and the Federal Circuit determined that the fine under the false marking statute applies to each article falsely marked, not the decision to mark as the district court had held. (The Federal Circuit affirmed the decision not to award attorney fees). On remand, the district court imposed a fine of $180 for each of the 38 stilts that were falsely marked. Thus, the case that lit the false marking industry on fire and resulted in thousands of subsequent lawsuits was ultimately over a $6,840 fine.

Forest Group Launches a Thousand Suits

From 2007 to 2009, only 47 false marking cases had been filed in federal courts, but after the December 28, 2009 decision in Forest Group, patent attorneys and litigants stormed court houses across the country, filing almost 1,500 cases in the next year and a half. Given the potential $500 per article fine, companies that mass produced products were understandably concerned about facing potentially huge liability for wrongly marking their products.

Because false marking is a qui tam action and the statute appeared to authorize anyone to file suit, there was no need for patent attorneys to find clients who had been actually injured by the alleged false marking. Instead, patent attorneys were filing suit on their own or creating their own corporations to file suit against alleged false markers. The lawsuits tended to focus on products that had expired patent numbers, rather than products that were marked with inappropriate, but still valid, patent numbers. The reason was obvious—there was no need to go through the costly exercise of proving that the patent did not cover the product when the patent had expired. One could immediately jump to the question of whether the product was falsely marked with the intent to deceive the public.

Two later decisions by the Federal Circuit only intensified the flames sparked by the Forest Group decision. In Pequignot v. Solo Cup Co., 608 F.3d 1356 (Fed. Cir. 2010), the Court confirmed that marking a product with an expired patent number fell within the scope of the false marking statute (although it affirmed the judgment against Pequignot because he could not prove that Solo Cup acted with an intent to deceive). And, in Stauffer v. Brooks Brothers, Inc., 619 F.3d 1321 (Fed. Cir. 2010), the Court confirmed that anyone had standing to bring suit under the false marking statute, even if they did not suffer any direct personal injury.

The Federal Circuit appeared to be showing no inclination to beat back this fire. All indications were that a new form of patent “trolling” litigation was here to stay.

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Patent Drafting Checklist

Posted on June 27, 2011 by | Comments Off on Patent Drafting Checklist

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

When drafting a patent, there are a number of factors that a patent attorney needs to consider. I saw this post on the PresumptionofValidity blog that nicely summarizes some of them in a checklist form. With a little bit of planning before you file the application, you can avoid a number of costly and sometimes fatal mistakes. It’s well worth the read (as are a number of other articles on the blog).

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Supreme Court to Consider Patentability of Natural Phenomena—Grants Cert in Mayo Collaborative Services v. Prometheus Laboratories

Posted on June 21, 2011 by | 1 comment

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

Yesterday, the Supreme Court granted cert in Mayo Collaborative Services v. Prometheus Laboratories, Inc. (No. 10-1150) to address whether a patentee can monopolize basic, natural biological relationships. This case could have far-reaching effects for those patenting medical procedures and biological processes. In particular, the Court appears to be confronting the issue of what are the bounds of patentable subject matter with natural phenomena and processes. The specific question presented is:

Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry.

The Court previously began to consider this issue in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., 548 U.S. 124 (2006), but dismissed the case for technical reasons. Three dissenting Justices (Breyer, Stevens, and Souter) and would have decided the case and held that such claims are not patentable subject matter because they cover a law of nature and a basic scientific relationship. The full Court will now consider this issue.

The Patent at Issue

At issue in Mayo Collaborative is Prometheus’s patent claim involving the treatment of autoimmune disorders by administering a drug and determining whether the dosage was appropriate based on an observed metabolite level in the patient. Once administered, the body automatically converts the drug into a metabolite, the amount of which determines whether the dosage was appropriate. Specifically, the claim reads:

1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

The Case Below

Defendant (Mayo) argued that this claim was invalid because it was not patentable subject matter–all it amounts to is administering a drug and observing a reaction. Prometheus did not try to patent the reaction, which is a naturally-occurring one. Mayo also argued that the claim was unpatentable as a matter of public policy because of its broad scope and the effect it would have on public health and research. In particular, Mayo argued that any doctor that administered a drug and saw the results may infringe the patent, even if the doctor never took any action based on the results.

The patent was held invalid in the District Court, but the Federal Circuit reversed, finding that the claims satisfied the “machine-or-transformation” test under 35 U.S.C. § 101. On its first appeal, the Supreme Court remanded so that the Federal Circuit could consider the then-recent decision in Bilski v. Kappos, 130 S. Ct. 343 (2010). On remand, the Federal Circuit again reversed the District Court, finding that the patent claims were not invalid. Mayo again petitioned the Supreme Court for cert, which was granted yesterday.

What This Case Means

This case should clarify the scope of patents, especially as they relate to biological and natural processes. In Bilski, the Court rejected the Federal Circuit’s prior “machine-or-transformation” test as being too rigid. It will be interesting to see if and how they revise or clarify that standard. In addition, the Court will likely have to address whether an idea that is not abstract can nonetheless be so broad as to be unpatentable on that basis (as opposed to being anticipated or obvious).

If the LabCorp decision is any guide, the Court (or at least Justice Breyer) will be particularly hostile to claims that appear to cover laws of nature, natural phenomena, and abstract ideas. In that case, which also involved a patent claim for correlating test results with a physical condition, Justice Breyer found the claim invalid because it simply patented a natural phenomenon, albeit in the cloak of the abstract patent language of a process. In addition, Justice Breyer was concerned about the chilling effect of patents like these on doctors and their patients.

Regardless of what the Court determines, this case should be particularly important for those in the biological and pharmaceutical markets and could have a large impact on what kinds of inventions and processes can be patented.

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W.D. Pennsylvania District Court Selected to Participate in Patent Pilot Program

Posted on June 13, 2011 by | 1 comment

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

wd-pa-courthouseOn June 8, 2011, Chief Judge Gary L. Lancaster announced that the Administrative Office of the U.S. Courts selected the U.S. District Court for the Western District of Pennsylvania to be one of 14 Districts Courts to participate in a 10-year Patent Pilot Program. As part of this program, the Courts will funnel the majority of patent cases to designated patent judges in each district with the intention of providing litigants with Judges that have special training and interest in hearing these cases. As the U.S. Court press release stated:

“In the pilot program, patent cases filed in participating district courts are initially randomly assigned to all district judges, regardless of whether they have been designated to hear such cases.  A judge who is randomly assigned a patent case and is not among the designated judges may decline to accept the case. That case is then randomly assigned to one of the district judges designated to hear patent cases.”

The Administrative Office selected Courts with an established history and interest in patent litigation and those with local patent rules already in place (the Western District of Pennsylvania implemented its local patent rules back on April 1, 2005). The fourteen District Courts selected by the Director of the Administrative Office of the United States Courts were:

  • Eastern District of New York
  • Southern District of New York
  • Western District of Pennsylvania
  • District of New Jersey
  • District of Maryland
  • Northern District of Illinois
  • Southern District of Florida
  • District of Nevada
  • Eastern District of Texas
  • Northern District of Texas
  • Western District of Tennessee
  • Central District of California
  • Northern District of California
  • Southern District of California

The Western District of Pennsylvania’s participation in this pilot program, along with its local patent rules already in place, reinforces that Pittsburgh is an attractive venue for litigants wishing to resolve patent disputes.

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The Cost of IP Justice – Can Small Businesses Afford it?

Posted on May 14, 2011 by | Comments Off on The Cost of IP Justice – Can Small Businesses Afford it?

Posted By: Henry M. Sneath, principal shareholder and IP Group Chair at Pittsburgh Litigation and Patent Prosecution boutique Picadio, Sneath Miller & Norton, P.C. (hsneath@psmn.com or 412-288-4013)

The Patent Reform Act of 2011 portends yet another problem for small business folks trying to develop technology, and more importantly trying to enforce it. We have written about the pending legislation in prior posts. If it passes the US Congress, and if the “first to file” patent rule is therefore adopted by the USPTO as the law, patents will go to those with superior resources, in-house legal departments and the wherewithal to file patents on a moment’s notice. Gone will be the rule that “invention” is the starting point. It will be the result of a race to the PTO.

This is only part of the current IP problem for small businesses however, and the bigger problem is litigation cost. Small businesses simply cannot afford to bring or defend intellectual property lawsuits. If they are the plaintiff, it is likely that they have been given advice by counsel on the anticipated expense of patent or trademark enforcement litigation. Legal fee costs, expert witness costs, deposition costs, demonstrative evidence for trial costs and lost opportunity time for employees can add up quickly and it is important for the client and counsel to set a budget and to discuss each phase of the litigation with a projection of costs. Sadly this cost discussion is often ignored and we have received calls from potential clients who have exhausted their litigation budgets and who are nowhere near a settlement or trial. Frustrated they seek new counsel, but often new counsel is hampered by the inability to properly fund the ongoing litigation.

More difficult perhaps is the plight of the small business (or individual) defendant in an IP suit. These litigants are often ill-prepared for the costs and rigor of defending litigation in Federal Court. Having never been sued before, but having read about the high cost of lawsuits, they frequently seek legal counsel with the plea: “Can we end this quickly as I can’t afford to be in a lawsuit?” When Plaintiff is seeking to shut down production and sale of the new defendant’s chief product line, the answer to this question may not be easy. I tell them sure – we can end it early – all you need to do is stop making  the product that is your main source of revenue, agree never to make it again, pay the plaintiff money for their alleged damages and pay all of their legal fees. These legal fees are generally not insignificant and may have been generated by one or more large law firms at enormous billing rates.

The client, who may even have solid defenses, is then faced with a difficult choice between: 1) Ignore the defenses and cave in quickly with all of the resultant cost and loss of income; 2) Engage in some litigation to try to establish some leverage for a favorable settlement or 3) Take the chance that expensive litigation will, over time, allow a favorable result and perhaps even an award of attorney’s fees to repay the defendant for the litigation cost. It is option 2 which poses the problem of delicate balancing by lawyer and client. How much litigation and cost is enough to create favorable settlement leverage? The client needs to balance the revenue/profit of the allegedly offending product or mark, against the phased cost of litigation.  We can project that phase one (investigation, pleadings, Federal Rule initial disclosures, status conference before the court etc) might cost “x” dollars. The client can decide whether that cost is appropriate against the revenue stream attributable to the product or mark, and determine when to make the settlement move. There is never, of course, any guarantee that the settlement option will work and therein lies the balancing act problem. The client may get stuck in long litigation and need to simply fight its way out. Good communication between lawyer and client is critical to making these decisions.

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PIT = Sil Valley East?

Posted on February 11, 2011 by | Comments Off on PIT = Sil Valley East?

Posted by Henry M. Sneath, a principal, shareholder and IP Group Chair at Picadio Sneath Miller & Norton, P.C. in Pittsburgh, Pennsylvania

A new report paints Pittsburgh in glowing colors for the availability of high-tech jobs. The Pittsburgh Business Times  (Citing a Dice.com study) reports that Pittsburgh saw an increase of 45% in technology jobs over the past year, and that many tech jobs are still to be filled. The top three areas for tech jobs remain Washington DC, New York/New Jersey and Silicon Valley. Seattle, Detroit and Pittsburgh saw some very high growth in 2010 and are moving up on the ladder of total tech jobs. You’ve gotta give the ‘burgh credit for leveling the rusted steel mills, building high-tech centers and incubators on the vacated slabs, and making the most from the tech transfer operations at Pitt, CMU and Duquesne Universities. The Times suggests that the job board at the Pittsburgh Technology Council is brimming with tech jobs. I had business visitors in from out of town today and as usual, the remarks were aimed at how wonderful this city looks.  This tech growth is a big factor in the feel of the city. As my teenage son says, “it’s all good.”*

*OK – I confess – like most of what a teenagers says, that probably isn’t all true. However, a lot in the Pittsburgh tech community is “all good”.

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AIPLA Commentary on Patent Reform Act

Posted on February 6, 2011 by | Comments Off on AIPLA Commentary on Patent Reform Act

Posted By PSMN:  Here is the take on this weeks Senate Judiciary Committee Action on the Patent Reform Act as reported by AIPLA DIRECT®:

Legislation/Patent Reform
Senate Judiciary Approves Patent Reform Bill 15-0

 The Senate Judiciary Committee on February 3, 2011, approved 15-0 the “Manager’s Amendment” to S. 23, patent reform legislation that would, among other things, implement a first-inventor-to-file system, revise provisions on damages awards, create a new post-grant review system, and grant the PTO fee setting authority.

At the Judiciary Committee markup session, several amendments to the bill were approved (1) to delete provisions that would have addressed willful infringement; (2) to delete provisions that would have repealed the requirement that Federal Circuit judges reside within 50 miles of the District of Columbia; and (3) to add a provision addressed to Holmes Group v. Vornado Air Circulation Sys., 535 U.S. 826 (2002), defining the Federal Circuit’s exclusive appellate jurisdiction as including compulsory counterclaims arising under the patent or plant variety protection laws.

AIPLA President David Hill said “the Senate Committee’s action is very encouraging, and Senator Leahy’s comments about his cooperation with the leadership in the House have us hopeful that patent reform may soon become a reality.” Referring to next week’s planned hearing in the House on reform legislation, AIPLA Executive Director Q. Todd Dickinson said “We are pleased that both houses are taking up patent reform so soon after convening, which we hope is a positive sign about eventual passage.”

Yet to be resolved are two important proposals: (1) provisions to give the PTO funding that protects against diversion of its fee revenue; and (2) a proposal to create a special reexamination procedure to reconsider the business method patents under Sections 101 and 112 of the Patent Act.

Some other changes have been made to the legislation to refine and clarify language or to make changes that conform to other provisions. For example:

  • Amendments to Section 292(b)  in S. 515 would have eliminated qui tam actions for false marking, allowing only actions for those suffering competitive injury; S. 23 would now also amend Section 292(a) to expressly state that only the United States may bring a penalty action under that provision;
  • Section 32 on the statute of limitations for PTO actions against attorneys for misconduct no longer runs from discover, whenever that occurred; now the provision states that proceedings must begin either within 10 years of the misconduct or 1 year after the misconduct is discovered, whichever is earlier; and
  • Language in Section 282 on the presumption of validity which cross referenced Section 103(b) is deleted because Section 103(b), addressing patented processes to make biological products, would be repealed based on case law development and non-use of this provision.

To read the Manager’s Amendment approved by the Senate Judiciary Committee, click here.

Thanks to AIPLA DIRECT® for this report and update.

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