Patent Pilot Program Judges 6' title='Patent Pilot Program Judges 6' />Patent Docs Enablement. By Andrew Williams In a sequel of sorts to the hugely popular Streck, Inc. Research Diagnostic Systems, Inc. Fed. Cir. 2. 01. 1, the Federal Circuit released Streck II Streck, Inc. Research Diagnostic Systems, Inc. Fed. Cir. 2. 01. 2 earlier this month. Blofeld Software Editor Programs. Not to be upstaged by the original, this ambitious follow up leaves the priority determination behind, and instead focuses on the infringement proceeding appeal. Notably, Streck II clocks in at over twice the length of its predecessor. However, if you have ever asked yourself whether a counterclaimant could maintain the full scope of a declaratory judgment challenge if a plaintiff narrows the scope of asserted claims early on in litigation, then Streck II could keep you on the edge of your seat. Spoiler alert the answer is no. The background and cast of characters was basically the same for both opinions. For those unfamiliar with the original Streck, the technology at issue in both cases was integrated controls for hematology analyzers. Prior to 1. Such stand alone controls using either true reticulocytes also referred to as natural reticulocytes or reticulocytes analogs were known before the filing dates of the patents at issue. As the instrument makers began attempting to develop an integrated analyzer that could measure the different blood components in the same sample, both Streck and Research Diagnostic Systems R D sought to create an integrated control. As we learned in Streck, one of the difficulties to overcome was the stability of the controls over extended periods of time. Streck obtained a patent to such controls, U. S. Patent No. 6,2. R D in the U. S. District Court for the District of Nebraska for infringement of three patents. Claim 1 of the 6. A hematology control composition comprising a  a stabilized reticulocyte component andb  a fixed and stabilized white blood cell component capable of exhibiting a five part differential. The District Court construed the claims to encompass both true reticulocytes and reticulocyte analogs. Strecks inventor, however, only actually reduced his invention to practice with his previous developed reticulocyte analogs, while R Ds commercial product used true reticulocytes. At this point, the plot of Streck II gets a bit convoluted. As previously mentioned, Streck filed its lawsuit in Nebraska. However, both parties agreed to be bound by the local patent rules of the United States District Court for the Northern District of California. As a result, Streck served a Disclosure of Asserted Claims and Preliminary Infringement Contentions shortly after the initial case management conference. In this disclosure, Streck narrowed the scope of asserted claims. R D followed up with preliminary invalidity contentions narrowly drawn to the asserted claims, but later expanded the contentions to include all but one of the claims in the patents at issue. Streck further narrowed its asserted claims to ten, and then to nine, prior to the Courts Summary Judgment decision. On September 9, 2. Court held that Strecks patents satisfied the Written Description requirement with respect to integrated controls with true reticulocytes, and denied R Ds motion for summary judgment on enablement. The Court also dismissed the counterclaims with respect to Claim 3 of two of the patents, because there was no reasonable apprehension of suit, and found that, as a matter of law, R D infringed the asserted claims and that there was evidence from which a jury could find willfulness. Subsequently, just before trial, the Court sided with Streck and excluded the evidence related to the validity of all unasserted claims, stating that the validity of these claims would not go to the jury. After an eight day jury trial, the Court granted JMOL for Streck on enablement. The only issues submitted to the jury were priority, damages, and willfulness. The jury did not find R Ds infringement to be willful and awarded damages of 1. As the priority issue was covered in Streck, it will not be addressed here. The procedural background concluded with the District Court entering an injunction against R D. Declaratory Judgment Jurisdiction over Counterclaims. The first issue on appeal was whether R D could maintain invalidity counterclaims against claims that Streck was no longer asserting. Steck originally filed suit in June 2. R D, in turn, responded with preliminary invalidity contentions against those fifteen claims, but expanded the scope of its invalidity contentions in the next two years to all but one claim of the patents in suit. Streck subsequently narrowed the asserted claims to ten, and then to nine. As a result, the District Court dismissed R Ds invalidity counterclaims against two claims because it had no reasonable apprehension it would face an infringement suit on any claim other than the claims asserted by Streck. Moreover, prior to trial, the Court excluded R Ds evidence with regard to the unasserted claims, because of these same jurisdictional concerns. The Federal Circuit agreed with the District Court that there was no jurisdiction, even though it used the outdated reasonable apprehension test. As the Federal Circuit pointed out, even though Med. Immune rejected strict reliance on the reasonable apprehension of suit test, it did not do away with the relevance of this test. The Federal Circuit looked favorably on a New Jersey District Court case as persuasive authority, Hoffman La Roche Inc. Mylan Inc., No. 2 0. U. S. Dist. LEXIS 1. D. N. J. Dec. 9, 2. In that case, like here, the patentee narrowed the scope of the asserted claims when it served infringement contentions. That court noted that jurisdiction exists on a claim by claim basis at every stage of the litigation, and that even though the plaintiffs decision to change the scope of the suit did not automatically divest the court of jurisdiction, the counterclaimant must show why jurisdiction continues to exist. Applying the same reasoning, the Federal Circuit found that there was no evidence that R D met its burden of showing a continuing case or controversy with respect to the unasserted claims. In fact, the Court noted that R D relied too heavily on the District Courts use of the reasonable apprehension test, and pointed out that Med. Immune doesnt stand for the proposition that jurisdiction automatically exists whenever a competitor wants to mount a validity challenge. Interestingly, the Federal Circuit cited favorably to Strecks narrowing of the scope of the claims at the outset of the litigation, prior to any dispositive rulings. In fact, it appears that neither party cited to the preliminary infringement and invalidity contentions, but instead the Court itself identified the early nature of the narrowing of scope of the litigation. This begs the question, therefore, of when is it advisable to narrow the scope of the claims in an infringement suit  Should it be done as soon as possible, thereby possibly foreclosing the ability to assert relevant claims before fact discovery is completed or perhaps has even begun  Or can a patentee wait until the eve of filing of Summary Judgment motions  Of course, after Med. General information concerning patents USPTOUNITED STATES PATENT AND TRADEMARK OFFICEOctober 2. ALEXANDRIA, VIRGINIAFunctions of the United States Patent and Trademark Officehe United States Patent and Trademark Office USPTO or Office is an agency of the U. S. Department of Commerce. The role of the USPTO is to grant patents for the protection of inventions and to register trademarks. It serves the interests of inventors and businesses with respect to their inventions and corporate products, and service identifications. It also advises and assists the President of the United States, the Secretary of Commerce, the bureaus and offices of the Department of Commerce, and other agencies of the government in matters involving all domestic and global aspects of intellectual property. Through the preservation, classification, and dissemination of patent information, the Office promotes the industrial and technological progress of the nation and strengthens the economy. In discharging its patent related duties, the USPTO examines applications and grants patents on inventions when applicants are entitled to them it publishes and disseminates patent information, records assignments of patents, maintains search files of U. Patent Pilot Program Judges 6' title='Patent Pilot Program Judges 6' />250 thoughts on Section 101 Pivotal Moment for Clarity on Patent Subject Matter Eligibility. The Mauritius government signed an MoU with the Andhra Pradesh government on 13th August 2009 to use APs eprocurement platform for its projects and in its. InformationWeek. com News, analysis and research for business technology professionals, plus peertopeer knowledge sharing. Engage with our community. Offers general information about court administration and procedures as well as access to local rules and opinions. Today, in unexpected news, The Atlantic announced that the Emerson Collective has taken a controlling stake in the magazine. That may sound like humdrum media news. Honorable Thomas O. Rice, Chief District Judge Sean F. McAvoy, District Court ExecutiveClerk of Court. S. and foreign patents, and maintains a search room for public use in examining issued patents and records. The Office supplies copies of patents and official records to the public. It provides training to practitioners as to requirements of the patent statutes and regulations, and it publishes the Manual of Patent Examining Procedure to elucidate these. Similar functions are performed relating to trademarks. By protecting intellectual endeavors and encouraging technological progress, the USPTO seeks to preserve the United States technological edge, which is key to our current and future competitiveness. The USPTO also disseminates patent and trademark information that promotes an understanding of intellectual property protection and facilitates the development and sharing of new technologies worldwide. What Are Patents, Trademarks, Servicemarks, and Copyrights Some people confuse patents, copyrights, and trademarks. Although there may be some similarities among these kinds of intellectual property protection, they are different and serve different purposes. What is a PatentA patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 2. United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U. S. patent grants are effective only within the United States, U. S. territories, and U. S. possessions. Under certain circumstances, patent term extensions or adjustments may be available. The right conferred by the patent grant is, in the language of the statute and of the grant itself, the right to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO. There are three types of patents 1 Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof 2 Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture and. Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. PIPLA Annual Judges Dinner November 15, 2017 WIPO seminar on international IP protection to be held November 12 October 2014 meeting recap. What Is a Trademark or Servicemark A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms trademark and mark are commonly used to refer to both trademarks and servicemarks. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks that are used in interstate or foreign commerce may be registered with the USPTO. The registration procedure for trademarks and general information concerning trademarks can be found in the separate book entitled Basic Facts about Trademarks. BasicFactsTrademarks. What is a Copyright Copyright is a form of protection provided to the authors of original works of authorship including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1. 97. 6 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the Library of Congress. Patent Laws. The Constitution of the United States gives Congress the power to enact laws relating to patents, in Article I, section 8, which reads Congress shall have power. Under this power Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1. The patent laws underwent a general revision which was enacted July 1. January 1, 1. 95. It is codified in Title 3. United States Code. Additionally, on November 2. Congress enacted the American Inventors Protection Act of 1. AIPA, which further revised the patent laws. See Public Law 1. Stat. 1. 50. 1 1. The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the United States Patent and Trademark Office to administer the law relating to the granting of patents and contains various other provisions relating to patents. What Can Be Patented. The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained. In the language of the statute, any person who invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent, subject to the conditions and requirements of the law. The word process is defined by law as a process, act, or method, and primarily includes industrial or technical processes. The term machine used in the statute needs no explanation. The term manufacture refers to articles that are made, and includes all manufactured articles. The term composition of matter relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.