Editors of the ABA Journal today announced they have selected Patent Baristas as one of the top 100 best websites by lawyers, for lawyers, as selected from their directory of more than 1,500 blawgs in dozens of categories.

The Journal is now asking lawyers to vote on their favorites in each of the Blawg 100’s 12 categories ranging from best Black Letter blawg and best Ivory Tower blawg to best Gossip blawg.

Included in the Blawg 100 are perennial favorites like May It Please the Court (with trusts for pets) and Patently-O (with gifts for patent attorneys).

We hope you’ll make your voice heard.

Vote for Patent Baristas here.

Read what the ABA Journal has to say about Patent Baristas here.

The Journal’s complete Blawg 100 list is located here.

Voting ends Jan. 2, 2008. Vote Early. Vote Often.

Posted November 28th, 2007 by Stephen Albainy-Jenei in Blawg Reviews
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In Biomedical Patent Management Corporation v. State Of California, Department Of Health Services (06-1515), the U.S. Court of Appeals for the Federal Circuit held that a state’s initial waiver of Eleventh Amendment sovereign immunity – when it intervened in an earlier, related action that was dismissed for improper venue — doesn’t mean that it waived sovereign immunity under the Eleventh Amendment in a later case.

Biomedical Patent Management Corp. sued the state’s Department of Health Services claiming the state was infringing U.S. Pat. No. 4,874,693, which claims a method for screening birth defects in pregnant women. BPMC alleges that DHS performs laboratory services, and induces others to perform services, that infringe the ‘693 patent. At the district court, Judge Marilyn Hall Patel dismissed the lawsuit but expressed concern over the fact that California could sue for patent infringement on one hand while using sovereign immunity to keep from being sued for patent infringement itself:

“The court is indeed troubled by the University of California’s ability to reap the benefits of a patent system without being exposed to liability for infringement,” she wrote. “Similarly situated private universities enjoy no such advantage.”

The suits that led up to this whole mess:

• In 1997, Kaiser Foundation Health Plan, a subcontractor of DHS, filed a declaratory judgment action against BPMC in U.S. District Court for the Northern District of California, seeking a declaratory judgment that the DHS screening program does not infringe the ‘693 patent and that the ‘693 patent is invalid. DHS moved to intervene. BPMC asserted a compulsory counterclaim against DHS for infringement of the ‘693 patent, including money damages. BPMC was granted a motion to dismiss the action for improper venue pursuant.
• In 1998, five days later, BPMC filed a new action against DHS for infringement of the ‘693 patent in the United States District Court for the Southern District of California. DHS then asserted the defense of sovereign immunity but did not assert a counterclaim.
• Afterwards, the Supreme Court granted a petition for a writ of certiorari to review this court’s decision in Coll. Sav. Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., which held that Congress validly abrogated the sovereign immunity of the States to suit for patent infringement. Because of the potential impact of the Supreme Court’s pending decision in Florida Prepaid, BPMC sought to voluntarily dismiss the 1998 lawsuit.
• In 1999, the Supreme Court issued its decision in Florida Prepaid, reversing the decision of this court and concluding that Congress’ abrogation of State sovereign immunity from patent infringement claims was invalid. As a result of Florida Prepaid, States retained their sovereign immunity to suit for patent infringement.
• In 2006, BMPC filed the present lawsuit against DHS in the United States District Court for the Northern District of California (Yes, the Northern District again!).
• DHS again moved to dismiss this case on the ground that sovereign immunity under the Eleventh Amendment barred BPMC’s claims. The district court granted the motion and dismissed the case.

The Federal Circuit noted that:

It has long been recognized, however, that a State’s sovereign immunity is “a personal privilege which it may waiver at its pleasure.” As the Supreme Court has explained, “[w]hile this immunity from suit is not absolute, we have recognized only two circumstances in which an individual may sue a state.” Those circumstances occur where Congress validly authorizes such a suit “in the exercise of its power to enforce the Fourteenth Amendment,” or where a State has waived its sovereign immunity by consenting to suit. In the present case, only the latter circumstance is at issue. “Generally, we will find a waiver either if the State voluntarily invokes our jurisdiction, or else if the State makes a clear declaration that it intends to submit itself to our jurisdiction.” (citations omitted).

Having found that DHS’s intervention in the 1997 lawsuit constituted a waiver of its sovereign immunity in that suit, the question left in this case is when, if ever, a waiver of immunity in an earlier lawsuit prevents a State from asserting sovereign immunity in a later lawsuit between the same parties.

BPMC argued that DHS’s waiver in the 1997 lawsuit extends or carries over to the instant lawsuit because this action involves the same subject matter and the same parties. This court applies Federal Circuit law, rather than regional circuit law, to the issue of Eleventh Amendment waiver

The district court in this case found that, like a dismissal under Rule 41(a)(1), a dismissal for improper venue “leaves the situation as if the action had never been filed.”

The Federal Circuit held that, where a waiver of immunity occurs in an earlier action that is dismissed, or an entirely separate action, the waiver does not extend to the separate lawsuit:

By distinguishing Lapides, Gunter, Vas-Cath, and Ramsey, on one hand, and City of S. Pasadena and Tegic, on the other, we do not mean to draw a bright-line rule whereby a State’s waiver of sovereign immunity can never extend to a re-filed or separate lawsuit. We note only that the case law relied upon by BPMC does not support its contention that waiver of immunity in one suit should extend to a separate action simply because the action involves the same parties and same subject matter. Indeed, two relevant principles we can extract from these cases are that a State’s waiver of immunity generally does not extend to a separate or re-filed suit, and that, as we reaffirmed in Tegic, even a waiver by litigation conduct must nonetheless be “clear.” These principles, of course, are related, as a waiver that does not “clearly” extend to a separate lawsuit generally would not preclude a State from asserting immunity in that separate action. With those principles in mind, we address BPMC’s arguments that the policy behind the rule governing waiver by litigation conduct — the need to avoid unfairness and inconsistency — should prevent DHS from asserting sovereign immunity in this case.

After considering the general unfairness of the issue, the Federal Circuit held:

In sum, we conclude that any unfairness or inconsistency that would arise from permitting DHS to assert sovereign immunity in the present case is not so substantial as to cause us to diverge from the general principles of waiver that we have laid out in this opinion: that a waiver generally does not extend to a separate lawsuit, and that any waiver, including one effected by litigation conduct, must be “clear.”

Read more on what Mark Lemley calls “a travesty of justice” at the Wall Street Journal’s Blog: http://blogs.wsj.com/law/2007/10/26/lets-take-a-trip-to-patent-land/

Posted November 28th, 2007 by Stephen Albainy-Jenei in IP Litigation
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In a nonprecedential opinion, the U.S. Court Of Appeals For The Federal Circuit held that just because a case involves patents doesn’t mean that you get federal jurisdiction.  Wisconsin Alumni Research Foundation (WARF) v. Xenon Pharmaceuticals (07-1026-33).

The court ruled that it has no jurisdiction over the case because it does not present a claim arising under the patent laws. Xenon Pharmaceutical looked to the mention of the Bayh-Dole Act 35 U.S.C. 200 et seq.) in WARF’s complaint to get jurisdiction.

The court noted that the Bayh-Dole Act concerns government funding agreements and contracts in the language of 35 U.S.C.  201, an area that is outside our section 1295(a) jurisdiction. See Bonzel v. Pfizer, Inc., 439 F.3d 1358, 1362-63 (Fed. Cir. 2006) (noting that contract obligations do not “arise under” the patent laws merely because the contract is a patent license).

Therefore, the case was transferred to the United States Court of Appeals for the Seventh Circuit.

Earlier, WARF won a $1 million jury award against Xenon Pharmaceuticals, a Canadian biotechnology company in a dispute of licensing of WARF’s stem cell patent.  The award was based on the amounts that Xenon Pharmaceuticals failed to pay in fees related to a licensing agreement with WARF, the patenting and licensing arm for the University of Wisconsin-Madison.

In 2001, WARF licensed technology to Xenon, a privately held company that pulled in $31 million of private financing last month. The technology was based on four UW-Madison researchers’ discoveries of a compound related to the control of cholesterol, obesity and diabetes. Xenon announced in September 2004 that it had an agreement with Novartis Pharma AG to commercialize related compounds. WARF filed the lawsuit against Xenon last spring in Madison.

The Foundation for Taxpayer and Consumer Rights has argued that WARF’s stem cell patent is overly broad and is impeding stem cell research. They hope the earlier Supreme Court ruling in eBay v. Merc Exchange will limit what the foundation calls “dubious patent claims to control all human embryonic stem cells in the United States.”

Another partying eyeing this case is the California’s Proposition 71 stem cell research program and should be challenged. The California Institute of Regenerative Medicine (CIRM), the state’s stem cell institute, will finance $3 billion in stem cell research. When bond financing is factored in, a total of $6 billion in California taxpayer funds are at stake.

After PUBPAT filed formal reexamination requests, the U.S. Patent and Trademark Office (PTO) rejected the claims of three key patents (US 5,843,780, US 6,200,806 and US 7,029,913) that cover research using human embryonic stem cells.

In reaching the preliminary decision, the examiners stated that the stem cells described in the patents appeared to be either the same or obvious variations of stem cells described in earlier patents and literature references.

The USPTO granted each of the requests in September 2006 and rejected all claims of each of the patents on March 30, 2007. In June 2007, PUBPAT submitted comments to the Patent Office supporting the rejections. The proceedings are currently ongoing.

IP Biz had a few things to note about the dust-up and the award process of early-stage stem cell research grant applications.

Posted November 26th, 2007 by Stephen Albainy-Jenei in IP Litigation
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Managing patents is often a time consuming and disjointed effort, especially for small companies (or even larger ones running lean).  Fortunately, a number of companies have been mixing things up on the internet in an attempt to provide order to the chaos.

One new effort is WizPatent, a patent management solution offering to ”Extract the Juice from your Patents” with downloadable WizPatent Manager and WizPatent Express.WizPatent Express is a patent search and management system integrated with Internet Explorer that abstracts search results directly from USPTO, Espacenet, FreePatentsOnline and Google Patent Search. 

WizPatent Express uses Google Patent Search to search for keywords within the text images and has the ability to batch download and save patents from Google.Some highlights include: 

• Batch PDF download capabilities and drag-and-drop features. 
• Store collections locally on your harddrive. 
• View the INPADOC status of EP patents as well as the PAIR status of US patents. 
• Copy a block of text into your clipboard and WizPatent Express automatically abstracts out the relevant patent numbers immediately. 

Granted, it would be nice if the USPTO would offer these types of functionality on their own but it does help that third parties are eager to fill any niche.

You can download WizPatent Express here.

Note to Apple users, this requires Windows XP or 2000 so I couldn’t try it out on my iMac Intel.

Posted November 20th, 2007 by Stephen Albainy-Jenei in Cool Tools
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According to a report from the Government Accountability Office, the time it takes to examine and allow patent applications has increased due to “increases in the volume and complexity of patent applications.”

In FY 2007, USPTO’s patent examiners:

• Examined 362,227 applications - the highest number in history.
• Quality compliance was 96.5 percent - equaling last year’s results, the best in a quarter century.
• Patent examiner decisions were upheld by the USPTO’s patent appeals board 69 percent of the time, up from 51 percent in 2005.

The government also issued more than 184,000 patents, up slightly from more than 183,000 last year. But the backlog of applications just collecting dust waiting to be acted on hit 761,924 in 2007, up from 701,147 in 2006, bringing the whole pile to a whopping 1,112,517 applications. That’s some serious reading material.

Of particular note is how proud the USPTO is that they granted far fewer patents. In 2000, a record high of 72 percent of all patent applications became patents. In contrast, 51 percent of patent applications were granted in FY 2007.

It took an average of more than 25.3 months for applicants to get a first response with total pendency at 31.9 months (the highest was Unit 2600, Communications, now at 43.1 months).

While the Office likes to blame the applicants for the backlog, its not hard to find the cause. Since the USPTO cannot run a budget deficit in maintaining the Office, the USPTO sets its hiring based on the availability of funding and not on the expected workload or the (growing) backlog.

The GAO found that from 2002 through 2006, one patent examiner left for nearly every two the agency hired. Not only that, “70 percent of those who left had been at the agency for less than 5 years and new patent examiners are primarily responsible for the actions that remove applications from the backlog.” The office currently has between 5,400 and 5,500 examiners.

So why do new hires leave at a greater rate than experienced staff? The answer depends on who you ask. When the GAO asked the management of the USPTO, the answer was that examiners leave “primarily for personal reasons, such as the job not being a good fit or family reasons.” But, when the GAO asked the examiners themselves, they found that 67% of patent examiners identified the agency’s production goals as “one of the primary reasons examiners may choose to leave USPTO.”

“These production goals are based on the number of applications patent examiners must complete biweekly and have not been adjusted to reflect the complexity of patent applications since 1976,” the GAO reported.

Management says it has tried “a variety of retention flexibilities such as a special pay rate, performance bonuses, flexible work schedules, and a telework program to encourage patent examiners to stay with the agency.” Let’s hope they can find something that works.

See the whole report here.

Posted November 19th, 2007 by Stephen Albainy-Jenei in USPTO
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PatentFizz is a site that claims to be a place where members of the community can comment on individual patents and it also has a few tricks up its sleeve.

They recently rolled out some improvements to their FirstPage Reports product, which gives you a single .pdf document containing the first page of every patent document in your project.

See an example of patents by Steve Jobs here.

The site also allows you to copy your USPTO search results and paste them directly into the Report order form. No matter the search, just copy everything from the results listing and paste it into the order form. The script will extract the numbers for every utility, design, and reissue patent - as well published applications - in the listing, and give you a link that lets you immediately download your Report.  There is also a screencast.

We think you’ll like these features.

Posted November 12th, 2007 by Stephen Albainy-Jenei in Cool Tools
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This week’s Blawg Review #134 is run by Eric Turkewitz at the New York Personal Injury Law Blog — it’s definitely a marathon.  Unfortunately, David Giacalone at f/k/a thinks that themed blawg reviews tend to be “annoying, strained and distracting.”

We especially enjoyed the Consumer Law & Policy Blog’s take on the Center for Consumer Freedom, an independent organization that advocates for consumers’ rights to make informed choices in the marketplace.  Well, as long as consumer freedom actually means a consumer’s ability to purchase products without adequate information about potential dangers and without adequate remedies if they are harmed.

We’re more concerned about Above the Law’s gossip on a judge that may have played a role in changing his kid’s bar exam grade from fail to pass. But, that’s another story.

We’ll have to see how Turkewitz fares as a trademark scofflaw. 

Posted November 12th, 2007 by Stephen Albainy-Jenei in Blawg Reviews
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The IP Department of Frost Brown Todd LLC will once again be a sponsor of the BioOhio conference in Columbus, OH. This year’s BioOhio 2007 focus is “Devices & Diagnostics,” recognizing both sectors’ rapid growth and convergence with other bioscience fields.

On November 12, we convene with a networking reception featuring great food and drink, sponsors’ exhibit booths, door prizes, the 4th Annual Ohio Bioscience Student Poster Competition, and a first-time device/diagnostics product showcase.

The next day, November 13, features an agenda with local and national experts on advanced medical technology industry trends, regulatory issues, venture capital, and education, including FDA Clinical Deputy Director Ron Yustein, MD.

I’ll be there handing out Patent Baristas coffee mugs and Kona coffee.  Stop by and pick one up if you’re attending the conference.  

Special Offer: 

I have One (1) complimentary full registration for the BioOhio Conference.  If you’d like to take advantage of this offer, simply email me your name along with company, title and email address as soon as possible. 

The Fine print: 

One entry per person. We reserve the right to disqualify any entry that looks like it isn’t legitimate. The winner will be contacted at the email address given. Failure to respond within 24 hours will result in the registration being given to someone else. The winner will randomly be selected from all entries received by 5:00 pm (EST) on Friday, November 9th, 2007. Your email address will not be shared with any third party. Sorry, no refunds, substitutions or exchanges, not available to clients or family members and void where prohibited.

For more information on BioOhio 2007, contact Matt Schutte at 614/675-3686. See a full agenda or register online here.

See you in Columbus!

Posted November 8th, 2007 by Stephen Albainy-Jenei in Conferences
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