A Call to Arms Over the New Claims and Continuations Rules?
Notable practitioner Gene Quinn (of IPWatchdog and PLI Blog fame) issued a press release today in an attempt to marshal support for the GlaxoSmithKline (GSK) challenge to the U.S. Patent Office claims and continuations rules. See a previous AT! post about the GSK complaint here. Mr. Quinn is firmly convinced that “the new patent rules will substantially change patent law and practice and negatively affect all companies and individuals who use the U.S. patent system.”
For those who want to analyze this matter further, there is also a great running post at the IPWatchdog that is chronicling the proceedings in the GSK case.
Your comments about this recent call to arms are welecomed!
GlaxoSmithKline Files Complaint Against USPTO Over New Rules.
A suit was filed against the USPTO on October 9, 2007 in U.S. District Court (E.D. Va.), seeking a preliminary and permanent injunction on the new claims and continuations rules scheduled to become effective on November 1st.
A copy of the complaint may be downloaded here.
Hat tip to Gene Quinn at the the PLI Blog. Commentary also at the Patent Prospector.
U.S. Supreme Court to Hear Patent Exhaustion Case.
The U.S. Supreme Court has recently granted certiorari for a patent case, namely Quanta Computer v. LG Electronics (06-937). The question presented by petitioner Quanta is:
Whether the Federal Circuit erred by holding, in conflict with decisions of this Court and other courts of appeals, that respondent’s patent rights were not exhausted by its license agreement with Intel Corporation, and Intel’s subsequent sale of products under the license to petitioners.
The doctrine of patent exhaustion, also known as the first sale doctrine, typically states that an unrestricted sale of a patented item exhausts the patentee’s right to control the purchaser’s use of the item thereafter. The CAFC had found that the license agreement at issue ”expressly disclaim[ed] granting a license allowing computer system manufacturers to combine Intel’s licensed parts with other non-Intel components.” Thus, although Intel was free to sell its microprocessors and chipsets, those sales were conditional. Intel’s customers were expressly prohibited from infringing LGE’s combination patents. Accordingly, the CAFC held that LGE’s rights in asserting its system claims were not exhausted, because the exhaustion doctrine does not apply to expressly conditional sales or licenses.
Links related to the Quanta Computer v. LG Electronics case may be found here: the July 2006 Federal Circuit opinion, the Supreme Court docket, Quanta’s petition, LG’s brief in opposition, and Quanta’s reply (petition, brief, and reply via SCOTUS Blog).
Obviously Waiting for the KSR v. Teleflex Opinion.
Well, the Supreme Court has apparently heard all of its cases for the October 2006 term, and we are anxiously awaiting for the other shoe to drop on the KSR v. Teleflex opinion (the first shoe being oral arguments, previously reviewed by the AT! here: KSR v. Teleflex: Notable Quotes from the Oral Arguments, and generally indicating that changes to the obviousness standard is likely).
Per U.S. Supreme Court procedures, during the months of May and June, the Court meets at 10 a.m. every Monday to release opinions. During the last week of the term (before recess in late June/early July . . . lasting until the next term starting the first Monday of October), additional days may be designated as “opinion days.”
Accordingly, we could conceivably have a decision tomorrow (Monday, April 30th), and almost certainly within the next month or two.
Microsoft v. AT&T: Notable Quotes from the Oral Arguments.
Per usual, we will preface our thoughts with the following disclaimer: “It is generally a futile effort to predict how the Supreme Court will rule on any given issue.” That being said, we think it was clear the Justices were concerned about the effects on the reach of U.S. patent law if AT&T were to prevail. The technology at issue also appeared to perplex the Justices at times, as much of the arguments appeared to focus on the Justices’ attempt to wrap their minds around the technical aspects of the AT&T patent. Interestingly, although the questions presented have been narrowly framed to determine the appropriate meaning of the terms ”component” and “supplied from the United States” within Section 271(f)(1), the issue of whether software itself is patentable appeared to be at the forefront of the Justices’ thoughts.
Below are some quotes that we found of particular interest:
Transcript at page 9.
JUSTICE KENNEDY: But I still would like to know your position. The golden disk is or is not a component?
MR. OLSON (ON BEHALF OF PETITIONER): It is not a component –
Transcript at page 12.
JUSTICE KENNEDY: That seems odd. I mean, Microsoft doesn’t say please buy our disk because it’s the prettiest disk in the business.
MR. OLSON: Justice Kennedy -
JUSTICE KENNEDY: It says buy our program because the program means something.
Transcript at page 21.
MR. JOSEFFER (ON BEHALF OF THE UNITED STATES AS AMICUS CURIAE SUPPORTING THE PETITIONER): The United States view — I’m not sure exactly how much we disagree on this — but the United States view is that, for example, a blank disk is not a component of this invention because you don’t need a blank disk to practice this invention. The — the actual component is the physical substantiation, the physical copy of the software that’s inserted into a computer and if you get a disk -
JUSTICE SOUTER: In other words, the disk plus the — plus the coded instructions.
Transcript at page 22.
JUSTICE BREYER: I take it that we are operating under the assumption that software is patentable? We have never held that in this Court, have we?
Transcript at page 34.
JUSTICE SOUTER: Why doesn’t that get you right back to the point that Justice Breyer was making? [MR. WAXMAN is] saying, I think, in essence if you send a blueprint — this is like a blueprint. It tells, it tells a machine which may be in Europe how to put the object code on other disks or on hard drives. The machine in Europe is following instructions just the way an artisan would follow a blueprint.
Transcript at page 39.
JUSTICE SOUTER: It is an object that has coded onto it, transferred to it in a readable way, those commands. But it’s an object, isn’t it?
MR. WAXMAN (ON BEHALF OF RESPONDENT): Well, it’s not necessarily an object. I don’t know whether you would call a stream of photons that is constantly repeated under the Atlantic Ocean an object.
Transcript at page 40.
JUSTICE SCALIA: I hope we can continue calling it the golden disk. It has a certain Scheherazade quality that really adds a lot of interest to this case. (Laughter.)
Transcript at page 43.
JUSTICE BREYER: But I then would be quite frightened of deciding for [AT&T]and discovering that all over the world there are vast numbers of inventions that really can be thought of in the same way that you’re thinking of this one, and suddenly all kinds of transmissions of information themselves and alone become components. So I’m asking you, is there any outside the computer field analogous instance where the transmission of information has itself been viewed as the transmission of a component?
Transcript at page 53.
JUSTICE BREYER: You’re right, Justice Ginsburg, that the court of appeals for the Federal Circuit thought it was bringing this statute up to date and it even said so. We are making an extension of the statute to keep up to date with the technology. That is not for courts to do.
Microsoft v. AT&T: Argument Transcripts
The link to the transcript for the February 21st oral arguments before the SCOTUS in Microsoft Corp. v. AT&T Corp. can be found here.
Any thoughts? Discussion to follow!
Microsoft Corp. v. AT&T Corp.: USSC Hearings Scheduled for Wednesday, February 21st.
As reported at MSN/Money, the Supreme Court on Wednesday will hear oral arguments in a case that could test the global reach of U.S. patent law. The dispute centers on 35 U.S.C. § 271(f)(1), aimed at preventing companies from circumventing U.S. patent law by shipping “components” overseas for assembly. The case tests whether software is such a “component” and whether creating copies of software overseas from a master disk shipped from the U.S. is covered by § 271(f)(1).
Specifically, the background and questions presented before the USSC have been articulated as follows:
Title 35 U.S.C. § 271(f)(1) provides that it is an act of direct patent infringement to “suppl[y]. . . from the United States . . . components of a patented invention . . . in such manner as to actively induce the combination of such components outside of the United States.”
In this case, AT&T Corp. alleges that when Microsoft Corporation’s Windows software is installed on a personal computer, the programmed computer infringes AT&T’s patent for a “Digital Speech Coder” system. AT&T sought damages not only for each Windows-based computer made or sold in the United States, but also, under Section 271(f)(1), for each computer made and sold abroad. Extending Section 271(f)—and consequently, the extraterritorial application of U.S. patent law—the Federal Circuit held that Microsoft infringed under Section 271(f)(1) when it exported master versions of its Windows software code to foreign computer manufacturers, who then copied the software code and installed the duplicate versions on foreign-manufactured computers that were sold only to foreign consumers.
The questions presented are:
(1) Whether digital software code—an intangible sequence of “1’s” and “0’s”—may be considered a “component[] of a patented invention” within the meaning of Section 271(f)(1); and, if so,
(2) Whether copies of such a “component[]” made in a foreign country are “supplie[d] . . . from the United States.”
AIPLA Amicus Brief in GSK v. USPTO.
The American Intellectual Property Law Association (AIPLA), feeling pressure from its membership, filed an amicus brief yesterday with the E.D. Virginia in support of GSK’s challenge to the new USPTO claims and continuations rules.
The brief focuses primarily on the irreparable harm that the rules will cause, both in signficant loss of patent rights and in compliance costs.
A copy of the brief is available via the PLI Blog here.