Edward A. Courtney

We are pleased to announce that Woodard, Emhardt partners Thomas Henry, Spiro Bereveskos and Daniel Lueders have been named Super Lawyers for 2010. Additionally, Woodard, Emhardt associate Marta Paul has been named a Rising Star for 2010. Congratulations to all!

Partners Holiday W. Banta and T.J. Cole are once again the chairs of the 12^th Annual Elegant Vintages International Wine Auction.  The event will be held on Saturday, March 20, 2010 from 6 p.m. to 12 a.m. at the Conrad Hotel in downtown Indianapolis.  As always, event proceeds benefit the Indianapolis Zoo and its conservation and community programs.  Other Woodard Emhardt members are serving on the event Steering Committee and volunteering to work the event.  If you or someone you know is still interested in attending this great event, online registration will be open until Friday, March 19, 2010.  Click here to register.

As we previously discussed, the United States Patent and Trademark Office (USPTO) proposed significant changes to the Examiner count system on September 30, 2009.  Those proposed changes took effect on February 18, 2010.  As indicated in the USPTO press release (found here), the changes “place emphasis on complete and thorough initial examination, and are expected to decrease redundancy and encourage quicker resolution of issues in the patent application process.”

Among other things, the changes give the examiners more time for a first office action on the merits and time for examiner-initiated interviews, while reducing the credits received on requests for continued examination.  In order to gauge the effectiveness of the changes, the USPTO has launched a “Feedback Channel”.  The public now has an opportunity to provide comments and input to agency official regarding the new count system.

The Federal Circuit has recently addressed the issue of the knowledge required to support a finding of induced infringement under 35 U.S.C. § 271(b).  SEB S.A., et al. v. Montgomery Ward & Co., et al., Case Nos. 2009-1099, -1108, -1119 (Fed. Cir. 2010).  The Federal Circuit addressed past precedent and drew upon case law from other civil contexts to ultimately find that “a claim for inducement is viable even where the patentee has not produced direct evidence that the accused infringer actually knew of the patent-in-suit.”  P. 25.  The Federal Circuit found that the record supported the conclusion that the defendant deliberately disregarded a known risk that a patent covered its product.  In this case, (1) the defendant copied the plaintiff’s product, (2) the defendant hired a patent attorney to perform a right-to-use study for its product, but did not tell the patent attorney that it had copied the plaintiff’s product, and (3) the defendant’s president was well versed in the U.S. patent system.  As a result and based on a finding of direct and induced infringement, the Federal Circuit upheld the $4.8 million judgment against the defendant.

The Federal Circuit clearly stated that a “failure to inform one’s counsel of copying would be highly suggestive of deliberate indifference in most circumstances.”  Id.  As is always the case, clients should be open and honest with their attorneys.  This is particularly important if the disclosed invention was in any way based upon a known product or design.  Inventors should understand that this type of information is important to the work of their patent attorney.

To download a copy of the SEB decision, please click here.

The Federal Circuit has recently affirmed a Northern District of California decision finding, among other things, U.S. Patent No. 5,820,551 (the ‘551 patent) unenforceable due to inequitable conduct. Therasense, Inc. v. Becton, Dickinson and Co., Case No. 2009-1511 (Fed. Cir. 2010). During prosecution before the U.S. Patent and Trademark Office (USPTO), the ‘551 patent was rejected on prior art grounds. In order to avoid the rejection, the Applicant submitted a declaration attesting that the cited prior art’s disclosure of an element being “optionally, but preferably” present in the disclosed device would be interpreted by one of ordinary skill as being “required”. The Applicant then failed to disclose to the USPTO statements made by the Applicant to the European Patent Office (EPO) in a related European application. During a proceeding before the EPO, the Applicant argued that the identical prior art language was “unequivocally clear” that the particular element was “optionally utilized” in the disclosed device. The Federal Circuit found that the Applicant violated its duty of disclosure for failing to make the USPTO aware of the contrary position presented to the EPO.

As a result of the Therasense decision, inventors and their patent attorneys should be mindful of the assertions made to the USPTO and patent offices abroad. In the event contrary representations are made to another forum, an Applicant should consider whether the USPTO should be made aware of the statements.

To download a copy of the Therasense decision, please click here.

February 11^th is National Inventors’ Day in the United States.  It is celebrated on the birthday of one of the best inventors in the history of the United States: Thomas Alva Edison.  Edison has over 1,000 U.S. patents issued in his name, as well as many patents in the United Kingdom, France and Germany.

In early 1983, President of the United States Ronald Reagan proclaimed February 11, 1983 as National Inventors’ Day.  The words of the Proclamation are just as strong as they were 27 years ago, which read, in part:

Almost two hundred years ago, President George Washington recognized that invention and innovation were fundamental to the welfare and strength of the United States. He successfully urged the First Congress to enact a patent statute as expressly authorized by the U.S. Constitution and wisely advised that “there is nothing which can better deserve your patronage than the promotion of science . . .” In 1790, the first patent statute initiated the transformation of the United States from an importer of technology to a world leader in technological innovation.

Today, just as in George Washington’s day, inventors are the keystone of the technological progress that is so vital to the economic, environmental, and social well-being of this country. Individual ingenuity and perseverance, spurred by the incentives of the patent system, begin the process that results in improved standards of living, increased public and private productivity, creation of new industries, improved public services, and enhanced competitiveness of American products in world markets.

In recognition of the enormous contribution inventors make to the nation and the world, the Congress, pursuant to Senate Joint Resolution 140 (Public Law 97 – 198), has designated February 11, 1983, the anniversary of the birth of Thomas Alva Edison, one of America’s most famous and prolific inventors, as National Inventors’ Day.  Such recognition is especially appropriate at a time when our country is striving to maintain its global position as a leader in innovation and technology.  Key to our future success will be the dedication and creativity of inventors.

Proclamation 5013

On February 11^th, please honor inventors of the past and present and encourage the inventors of tomorrow.

The United State Patent & Trademark Office (USPTO) is considering modifications to rules governing practice before the Board of Patent Appeals and Interferences (BPAI) in ex parte appeals. Changes to the BPAI rules were first proposed in 2007 and finalized in June 2008 (“final rules”). However, those changes were withdrawn by the USPTO on the day before they were scheduled to become effective.

Based on the previously submitted comments and public concerns regarding the final rules, the USPTO has recently issued a Notice seeking public comment on possible revisions to the final rules. A roundtable discussion regarding the proposed revisions is set to be held January 20, 2010 and written comments are to be submitted by February 12, 2010.

More specifically, the changes the USPTO is considering are: (1) deleting portions of the final rules that require the filing of (a) a jurisdictional statement, table of contents, table of authorities, and statement of facts in appeal briefs, (b) a table of contents, table of authorities, and statement of additional facts in reply briefs, and (c) a table of contents and table of authorities in requests for rehearing filed in ex parte appeals; (2) deleting portions of the final rules that require the appellant to specifically identify which arguments were previously presented by the Examiner and which arguments are new; (3) deleting portions of the final rules that require specific formatting requirements and page limits for appeal briefs, reply briefs, and requests for rehearing; (4) deleting portions of the final rules that require appellants to provide a list of technical terms and other unusual words for an oral hearing; (5) allowing the Examiner to continue to enter a new ground of rejection in an examiner’s answer (as is allowed under the current rules); and (6) not allowing the Examiner to file a supplemental examiner’s answer in response to the appellant’s reply brief.

Generally, the proposed modifications will substantially align the final rules with the rules currently in effect. In practice, only minor changes to the appeal and reply brief would be necessary if the proposed modifications take effect. Fortunately, the USPTO has proposed that the most onerous provisions of the final rules be deleted.

For further details, the official USPTO Notice is available here. Please check back here in the future as we will provide further information once the proposed modifications are finalized or additional modifications are proposed.