In a combined proceeding in which a third person sought re-examination of an issued patent (Re-examination No. 90/005,892) and the patentee sought re-issue of the patent to broaden the claims, the United States Patent and Trademark Office’s Board of Patent Appeals and Interferences held the patent claims invalid on multiple grounds, including that they would have been obvious at the time the invention was made.

In a nonprecedential decision, the US Court of Appeals for the Federal Circuit affirmed the obviousness determination saying the yellow color of the bean pods were pretty much what you’d expect if you took some yellow beans seeds and planted them. In re Pod-Ners LLC (08-1492).

In 1994 Larry Proctor purchased in Mexico a package of non-magical beans, which contained beans of various colors and varieties, including yellow beans, which he brought back to the United States. Over the next three years, he planted and harvested the beans and their producing plants. After three annual plantings and harvestings, he was issued U.S. Patent No. 5,894,079, which he assigned to POD-NERS, L.L.C.

The ‘079 patent contained 15 claims. There were two categories of claims covering the bean itself, which was called “Enola.” One was for a bean with a yellow coat described as within a narrow range of shades of yellow on a particular color chart. The other covered a bean “designated Enola as deposited in” the American Type Culture Collection under an ATCC accession number 209549. Other claims covered a plant produced from an Enola seed, and a method for producing the plant by crossing parent plants, at least one of which came originally from an Enola seed.

A “cultivar” is a cultivated plant that has been selected for desirable, reproducible characteristics which differentiate it from otherwise similar plants of the same species. In this case, the reproducible characteristic that differentiates the Enola beans from other old beans is its particular yellow color.

Claim 8 simply claimed:

A field bean variety of Phaseolus vulgaris that produces seed having a seed coat that is yellow in color, wherein the yellow color is from about 7.5 Y 8.5/4 to about 7.5 Y 8.5/6 in the Munsell Book of Color when viewed in natural light.

A third party filed with the Patent and Trademark Office a petition for re-examination of the patent that also sought to invalidate it. POD-NERS responded by seeking a re-issue of the patent to include eleven additional claims.

The Board held that all of the claims in the ‘079 patent, including those sought to be added through re-issue, were invalid on several grounds, including that they would have been obvious. The obviousness ruling rested on a well-known yellow bean called “Azufrado Peruano 87,” which was disclosed in an article by Salinas. The Board found that the Azufrado Peruano 87 plant and seed reasonably appeared to be substantially the same as the Enola plant and seed. The common characteristics of both included that they are yellow-seeded cultivars.

The Board also relied on a published article by Pallotinni and others stating and comparing the genetic fingerprints of Enola and Azufrado Peruano 87 and concluding that “the DNA fingerprint of ENOLA is identical to a fingerprint found in Mexican yellow-seeded beans of the Peruano group.” Finally, the Board relied on a declaration pointing out that some variations between plants are the result of environmental conditions

The Federal Circuit agreed with the Board that the ‘079 patent yellow beans would have been obvious to one ordinary skill in what POD-NERS identifies as the “breeder-grower” art:

There is no indication that in taking these steps Proctor sought to provide beans of the particular narrow range of yellow that the claims specified. To the contrary, it appears that all Proctor was attempting to do was to reproduce the yellow beans he had acquired in Mexico, and hopefully to improve them.

In a somewhat different context, we held that a prima facie case of obviousness exists when a claimed metal alloy composition and a prior art alloy are similar, even if they do not have precisely overlapping ranges of component metals, absent a showing that they have different properties. See Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) (concluding that a claim directed to an alloy containing “0.8% nickel, 0.3% molybdenum, up to 0.1% maximum iron, balance titanium” would have been prima facie obvious in view of a reference disclosing alloys containing 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium).

Proctor does not argue that seed coats falling within a particular range of yellow colors have any meaningful impact on the properties of the beans. Nor did he provide objective evidence of secondary considerations that might show non-obviousness—that the particular shades of yellow resulted in substantial sales of the Enola beans, that there was a long need for beans of that color that others were unable to supply, or that others copied the Enola bean. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).

In the end, the Federal Circuit hammered in the last nail saying that “[t]o reject the Board’s obviousness ruling here, would be to deny the Board that very “recourse to common sense” that the Supreme Court there warned against.”

A field bean variety of Phaseolus vulgaris that produces seed having a seed coat that is yellow in color, wherein the yellow color is from about 7.5 Y 8.5/4 to about 7.5 Y 8.5/6 in the Munsell Book of Color when viewed in natural light.
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Ireland Overhauls Patent Rules

Ireland has overhauled its patenting rules to make patent applications more user-friendly and the awarding of patents more in line with US and European standards. The new changes include removing legal impediments to the online delivery of Patent Office services. The Office website already offers a range of online interactive services on a par with  and in some cases, exceeding those provided by other national patent offices in Europe.

Does This (Health Insurance) Make Me Look Fat?

The Volokh Conspiracy looked at a recent paper correlating health insurance and weight gain stating that health insurance constitutes a “true economic subsidy for obesity.” According to the paper, which estimates weight gain in terms of body mass index, a measure of weight related to height, “private insurance increases BMI by 1.3 points and public insurance increases BMI by 2.1 points.” The VC remains unconvinced:

I am both intrigued with and skeptical of papers purporting to find economic-sy rationales underlying cultural and, more exactly, biologically-grounded behaviors (food, eating, hunger, etc.). A quick (granted, very quick) read of the paper suggested that the details and qualifiers make it far more cautious than suggested by statements such as “insurance makes you fat” or that the fact of certain correlations quite so literally “literally encourages obesity.”

VoloMedia Decides It Wants to Be Most Hated Company

VoloMedia announced that it was awarded U.S. Patent 7,568,213, entitled “Method for Providing Episodic Media,” and now claims to have patented all manner of media delivery by episodes.  The patent claims:

1. A method for providing episodic media, the method comprising: providing a user with access to a channel dedicated to episodic media, wherein the episodic media provided over the channel is pre-defined into one or more episodes by a remote publisher of the episodic media; receiving a subscription request to the channel dedicated to the episodic media from the user; automatically downloading updated episodic media associated with the channel dedicated to the episodic media to a computing device associated with the user in accordance with the subscription request upon availability of the updated episodic media, the automatic download occurring without further user interaction; and providing the user with: an indication of a maximum available channel depth, the channel depth indicating a size of episodic media yet to be downloaded from the channel and size of episodic media already downloaded from the channel, the channel depth being specified in playtime or storage resources, and the ability to modify the channel depth by deleting selected episodic media content, thereby overriding the previously configured channel depth.

VoloMedia claims it’s application, filed in November 2003, was “almost a year before the start of podcasting.” Really? That must explain the lack of non-patent cited references.  They helpfully set themselves up for invalidation saying, “Today, podcasting is 100% RSS-based. However, the patent is not RSS-dependent. Rather, [the patent] covers all episodic media downloads.” VoloMedia says it has filed a dozen U.S. patent applications since 2003.  No word on whether or not their patent on the Internets will issue.

NPR Listeners Pick 100 Best Beach Books (For NPR Listeners)

Time Traveler's WifeI know what you’re thinking: “NPR listeners go to the beach?!” We don’t know about that but NPR got 136,000 votes from 16,000 listeners for their top picks for the 100 Best Beach Books Ever. Here’s the top 10:

1. The Harry Potter series, by J.K. Rowling
2. To Kill a Mockingbird, by Harper Lee
3. The Kite Runner, by Khaled Hosseini
4. Bridget Jones’s Diary, by Helen Fielding
5. Pride and Prejudice, by Jane Austen
6. Divine Secrets of the Ya-Ya Sisterhood, by Rebecca Wells
7. The Great Gatsby, by F. Scott Fitzgerald
8. The Hitchhiker’s Guide to the Galaxy, by Douglas Adams
9. Fried Green Tomatoes at the Whistle Stop Cafe, by Fannie Flagg
10. The Poisonwood Bible, by Barbara Kingsolver

Our pick of The Time Traveler’s Wife, by Audrey Niffenegger just missed the top slot at number 11.  See the whole list here.

Midlevel Associates Sad They Make So Much

The American Lawyer’s annual survey of AmLaw 200 midlevel associates pointed out the obvious:  that cutbacks and uncertainties are making lawyers unhappy. Wachtell, Lipton, Rosen & Katz, scored well in the pay ranking with the median fourth-year associate earning $215,000, plus a $135,000 bonus. (Note to GC’s: If your lawyers are paying associates this much money, you seriously need to check out the services offered in the Midwest). But there’s no pleasing everyone.  One associate at Boston’s Nutter McClennen & Fish — ranked number one overall — complained: “The firm switched from serving Starbucks coffee to regular, unbranded coffee. As sad as that is, I miss that the most!”  Wait, they got Starbucks?!?!

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Schneider Electric, a provider of power and control solutions headquartered in France, just settled a three-year patent litigation suit with Chint, one of the largest manufacturers of low- voltage devices in China. The settlement amount of CNY 157.5 million (about USD 23 million) paid by Schneider is believed to be the largest for a patent litigation settlement in China. The settlement highlights the changing patent landscape in China.

The Chinese patent office grants three types of patents:

  1. invention patents or 20-year patents, which are similar to utility patents in the US and cover new technical solutions that relate to a product, a process or an improvement thereof;
  2. design patents;
  3. utility models or 10-year patents. The utility models are granted for ‘new technical solutions that relate to a product’s shape or structure, or a combination of the two, and are also fit for practical use’ and do not undergo a substantive examination and are granted rather quickly, typically within a year from the filing date. Evidently, utility models or 10-year patents are a cheaper and quicker way of obtaining patent protection.

Chint originally paid CNY 500 (about USD 70) in 1997 in filing fees for the utility model application at the State Intellectual Property Office (SIPO) of China. The utility model was granted in a little over 15 months without undergoing any substantive examination.

In 2007, the Wenzhou Intermediate People’s Court ordered Schneider to pay over CNY 330 million (about USD 45 million) and to stop the manufacture and sale of five of its products that allegedly infringe Chint’s utility model.

Schneider Electric tried to get the Chinese Patent Re-examination Board to invalidate the utility model by providing evidence to prove that the technology covered in Chint’s utility model was not novel and hence not legally enforceable. The Board disagreed and the Beijing Higher People’s Court upheld the validity of Chint’s utility model in March 2009.

The settlement is noteworthy in China but should not be taken that the courts will rule only pro- Chinese, as a number of non-Chinese companies have been successful in defending their intellectual property rights within the country. For example, Philips Electron Corp., Ltd., was able to invalidate utility models granted to a Chinese patentee, Yang Weijiang, relating to its shaver technology. In 2007, Yamaha Corporation of Japan was awarded over USD one million for trademark infringement by three Chinese companies: Zhejiang Huatian Industrial Co. Ltd., Taizhou Jiaji Motorcycle Distribution Co. Ltd. and Taizhou Huatian Motorcycle Distribution Co. Ltd.

Currently, more than 99% of utility models are filed by Chinese domestic companies indicating a general lack of use by companies in other countries. This decision means that companies should take utility models seriously and should track utility models filed by their competitors, include these in their prior art studies and licensing analysis, and consider leveraging this form of intellectual property (IP) protection for their own Chinese patent portfolio.

The above is from the article, “Patently Speaking: Failure to Heed IP in China Can be Costly,” and is used by permission.  The article is authored by Ram Deshpande, Assistant Vice President with the Intellectual Property division of Evalueserve China, and Dr. Alok Aggarwal, the Co-founder and Chairman of Evalueserve.

Evalueserve provides knowledge services to a global client base of Fortune 5000 companies, including Investment, Commercial and Retail Banks; Insurance Companies; Private Equity Firms; Corporates; Consulting and Research Firms; Law Firms and Intellectual Property Firms. Evalueserve’s expertise covers areas such as Financial and Investment Research, Business Research, Market Research, Intellectual Property, Data Analytics and Knowledge Technology Services.  The sole owner of copyright is Evalueserve and use of the protected material is by permission only.

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The Houston Business and Tax Law Journal (HBTLJ) is looking for a few good intellectual property articles for publication.

HBTLJ is a scholarly journal published by students at the University of Houston Law Center.   The Journal is a medium for academic discussion and practical application insight in business, commerce, taxation, and intellectual property. The Journal is currently ranked #10 in the Washington & Lee Tax Journal rankings.

If you are interested in submitting a peice, please forward articles for consideration to Any questions may be directed to Andrew Doud, submissions editor, at

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The Japanese Government’s IP Strategic Headquarters announced plans to revise the patent examination standards for medical inventions of known drug compounds. The new standard will grant patent protection for new and inventive dosage regimens and modes of administration as a “product-related invention” provided the claimed medicament has remarkable effects beyond that which is expected by a person skilled in the art. The new examination standard will go into effect as early as the end of this year.

Since 2005, Japan has allowed new medicinal use claims of a known pharmaceutical ingredient to be a patentable subject matter. However, this will be the first time novelty is conferred on optimization of  known medicines. Talks are also underway for methods for medical treatment claims (claims pertaining to surgery and other therapeutic treatment of the human body) to be patentable. Those in the pharmaceutical industry should see this change as a very positive step towards other changes to come relating to patents for medical inventions.

The Japan IP Strategic Headquarter’s report entitled “The Current State of Patent Protection in Advanced Medicine” is here.  (via Keisen Associates)

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The Innovation Alliance announced the release of a new study that details what it says is the negative impact on the U.S. economy that would result from enactment of currently considered patent legislation.

The new study: “Problems to be Expected from Expanded Administrative Challenges to U.S. Patents,” is authored by Scott Shane, Ph.D., Professor of Economics at Case Western Reserve University and was commissioned by the Manufacturing Alliance on Patent Policy.

According to Dr. Shane’s analysis, expanding the ability for administrative challenges by adopting a “litigation-like mechanism for third party-initiated post grant review and expand the existing inter partes reexamination process,” would likely have several adverse effects, including:

  1. Increasing the length of patent pendency
  2. Creating uncertainty about patent validity
  3. Decreasing the disclosure of knowledge necessary for innovation
  4. Increasing the costs of achieving patent validation
  5. Reducing investment in R&D
  6. Hindering efforts of U.S. universities to transfer their inventions to the private sector
  7. Increasing strategic patenting behavior by large, established firms

Moreover, the proposed legislation will not have many of the beneficial effects the proponents of the “Patent Reform Act” claim it will have. In particular, the proposed legislation:

  • Will not improve patent quality
  • Will not reduce the cost of patent litigation
  • Will not speed the determination of patent validity

To draw your own conclusions, get a copy of the study here.  But, maybe it’s time to just start acting.

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While I wait for the buzz of local activity and excitement that comes with Spring, what could be better fun that partaking in the blawgosphere carnival, the Blawg Review? It’s perfect for my predicament. A fun celebration, globally shared in a space where it feels like it is always Spring.  ~IP Think Tank

Blawg Review #222 is out at Duncan Bucknell’s IP Think Tank blog.  This is from a blog site that practically provides an entire blawg review weekly in its fantastic IP updates.

In this week’s version, Blawg Review is replete with interesting law bites.  Obviously, the top item is the “Gates-gate” fiasco circulating among the legal community as Fresno Criminal Defense writes about the connection between bigotry, prejudice, tolerance.   Simple Justice asks if:

“[W]hat happened to Henry Louis Gates is the outgrowth of the conflict between law and order, order represented by police who have been empowered, in our post 9/11 age, to believe that their every command is the law, that our blind obedience is mandatory.  Other than a few old-timers on the Supreme Court who live in a fantasy world where ordinary people can assert their rights and refuse to comply with the command of a police officer with impunity, this encounter between a distinguished scholar, within his own home, and a police sergeant who believes that his command is sufficient to create the divide between citizen and criminal, may offer the chance to question who commands whom in our society.”

Obama PosterIn IP-related issues, we enjoyed reading about the PrawfsBlawg discusses the copyright dispute between Associated Press and Shepard Fairey, who based his “Hope” poster of Obama on a photo taken for the A.P. by freelance photographer Mannie Garcia. (Garcia has now joined the lawsuit, contesting the A.P.’s original claim that they own the copyright in the photo pursuant to the work made for hire doctrine.)

Since Fairey did not seek or receive permission to use the photo in making his poster, the question is whether Fairey’s taking is defensible under the fair use doctrine, looking at the vague four-part statutory balancing test. Looking mainly at the fourth fair use factor, which requires judges to consider “the effect of the use upon the potential market for or value of the copyrighted work” in evaluating a fair use defense, the discussion focuses on whether an artist who creatively appropriates a news photograph needs to pay for a license to do so since Garcia has said that he would have given Fairey permission to use the photo if Fairey had simply asked him about it beforehand.

“I think this counterfactual characterization of a smoothly functioning licensing market suffers from hindsight bias in a couple of respects. For one thing, even if it were true that Garcia would have given Fairey permission to use the photo, his grant of permission may not have been sufficient. The A.P. claims that it is the copyright owner, so a good-faith effort by Fairey to clear the rights could still have landed him in trouble (copyright is a strict liability offense, so an innocent state of mind would not be a defense). And corporations have a track record of not extending as much generosity to potential licensees as individual owners might. (In any event, I’m not so convinced that Garcia would have been so generous. If he really was so indifferent to Fairey’s—or anyone’s—profiting off of his photo, why would he now be joining the lawsuit and seeking to claim ownership of the work?) Finally, markets in creative work don’t function as seamlessly as markets in stocks or commodities, where actors regard the goods in trade as largely fungible. Rather, copyright cases are full of instances where owners reject a lucrative licensing offer for personal or idiosyncratic reasons (e.g., Campbell v. Acuff-Rose; Fisher v. Dees).”

For our own addition this week, we’d like to submit Free Range Kids’ article on Haverford, PA, cops preventing a massive terrorist plot to raise money by going door to door selling lemonade. The group, known as the “Haverford Seven” and made up of seven children including a set of 5-year-old triplets,  were busted after ever-vigilant neighbor William Nickerson recognized the evil plot to distribute uncontrolled substances without a permit and dutifully ratted out the group.  There is no word on whether the Obama administration had considered deploying active military troops to arrest the group.

More on living in a police state:

  • The terrorist haven known as the City of Lancaster, CA (pop. 145,000), wants a 24-hour spy plane to patrol the city for a cool $1.5M  a year.
  • Alabama (pop. 4,600,000) has banned Cycles Gladiator wine, produced by Hahn Family Wines in Soledad, Calif., for showing a vintage 1895 advertising poster for Cycles Gladiator bicycles on the label.  The wine label — showing the known terrorist coded message of a nude nymph flying beside a winged bicycle — was just too much for Alabama’s liquor control agency.
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Now, provisional exclusive and/or non-exclusive licenses can be registered at the Japan Patent Office based on a license agreement effective before an application is granted a patent. The new recordation system will provide protection for the licensee regarding the pending patent application against any third party who subsequently acquires the right to the license to the pending patent application or granted patent with respect to either the provisional non-exclusive or provisional exclusive license.

Therefore, even if the licensor (applicant or patentee) goes bankrupt, the bankruptcy trustee will not be permitted to terminate or change the license agreement once it is registered with the Patent Office.

  1. There are two types of provisional licenses, “provisional exclusive license” and “provisional non-exclusive license”. A provisional license can be granted within the scope of the disclosure of the originally filed patent application.
  2. A provisional exclusive license goes into effect upon registration thereof at the JPO. Once a provisional non-exclusive license is registered at the JPO, it shall be effective against any assignee of the patent application.
  3. A registered provisional exclusive and/or non-exclusive license remains effective even after amending the application. Furthermore, when a divisional application is filed from a parent application under which a provisional exclusive and/or non-exclusive license has been registered, a provisional exclusive and/or non-exclusive license is deemed granted under the divisional application as well.
  4. Where a provisional exclusive or non-exclusive license is registered under a patent application, the applicant may withdraw the patent application only with the consent of the registered licensee. (Article 38bis)
  5. When a patent is granted for the patent application, the provisional exclusive license and/or provisional non-exclusive license loses its provisional status and matures into an exclusive license and/or a non-exclusive license respectively.
  6. When a patent application is finally rejected or abandoned, the provisional exclusive license and/or provisional non-exclusive license lose its effect.

In order to preserve the confidentiality of the content of the agreement, the licensee’s name, the license’s scope of claims, and the name of the bankruptcy trustee will not be made public for non-exclusive licenses. (via Keisen Associates)

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