Monday, March 23, 2009

e^(ip) in Alltop

We've been added to the alltop listing for patent blogs. Alltop is a great site, based on the concept by popurls, but with greater depth and variety of topics. IP strategy and management is still a very nich sub-topic, but at least this content is now in a place where it can easily scanned with the more traditional and popular IP blogs. Thanks to for adding e^(ip)


Saturday, March 14, 2009

Important Cases for IP Management

(pi ruler via flickr)

For this years pi-day post, I wanted to list some of the rulings which have most impacted the day to day management of IP. These cases are worth the time sitting down with outside counsel and deeply understanding. Stephen Albainy-Jenei just did a good summary over at Patent Baristas of many of these cases in the context of courts dictating patent reform. Here are a few of the most key:

eBay Inc. v. MercExchange LLC, 547 U.S. 388 (2006) (reversing Federal Circuit)

Permanent injunctions: Rejected “categorical rules” favoring or disfavoring permanent injunctive relief following a nonappealable judgment of infringement. In all cases, courts must retain equitable discretion to consider the merits of a request for permanent injunctive relief based on the traditional “four factor” test. (e^ip note: critical to understand, especially in forming policy regarding non-practicing entities)

KSR v. Teleflex, 550 U.S. 398 (2007) (reversing Federal Circuit)

Obviousness: Rejected, in part, the Federal Circuit’s “TSM test,” which conditioned obviousness on a specific finding of some motivation, teaching or suggestion to combine prior art teachings, in the particular manner claimed. The Supreme Court left intact the TSM test as a general standard for evaluating obviousness but held that TSM is not the exclusive test for establishing obviousness. Instead, the Court endorsed a flexible and expansive approach to the obviousness inquiry in lieu of any rigid or narrow formula.  By making it easier to establish obviousness, KSR makes it more difficult to obtain patent protection in the first instance, and tougher to defend against invalidity challenges post-issuance. (e^ip note: critical to understand in initial claim drafting and prior art analysis)

In re Seagate Technology, 497 F.3d 1360 (Fed. Cir. 2007)    

Willfulness standard: Abandoned long-standing Federal Circuit precedent imposing an affirmative duty of care on accused infringers, and held that willful infringement requires at least a showing of objective recklessness. (e^ip note: takeaway for setting IP policy - objectively reckless is difficult to define, but critical to avoid)

In re Bilski, 88 USPQ2d 1385 (Fed. Cir. 2008)    

Subject matter eligibility of software/business methods: Narrowed the scope of patent-eligible software/business method patents under Section 101 to methods that are either tied to a particular machine or apparatus or that transform a particular article into a different state or thing (the “machine or transformation test”).  Bilski will make it more difficult to obtain patents for such methods and tougher to defend method patents against invalidity challenges and, in the process, drag in non-software/business method inventions including pharmaceutical and biotechnology patents. (e^ip note: software case law is rapidly changing, so software specifications should be able to support a broad range of claim strategies - at least for now, claims need to conform to the Bilski standard)

In re TS Tech, Misc. No. 888 (Fed. Cir. 2008)    

Venue: Ordered transfer of venue from the Eastern District of Texas to the Southern District of Ohio. The fact that vehicles containing the allegedly infringing article are sold in the Eastern District of Texas does not provide a meaningful connection with the venue since such vehicles are sold throughout the United States. Product sales are often the sole basis for asserting venue in this district. (e^ip note: important right now in preventing litigation in popular venues for patent actions, however, may be temporary as patent holding companies become more creative) 

Monday, March 9, 2009

The IP Strategist

An IP Strategist's Perspective: A Reality Check for Entrepreneurs Who Believe they Need a Patent to Protect Their Idea
View more presentations from Jackie Hutter. (tags: ip strategy)
Just saw this on BlawgIT - whether internal or external, look for this kind of deeply invested, somewhat embedded professional to become much more common in business...