Pillsbury Winthrop Shaw Pittman LLP - United States - Claim Construction: The Dictionary/Specification Dichotomy (20/04/2005) from Mondaq

Pillsbury Winthrop Shaw Pittman LLP - United States - Claim Construction: The Dictionary/Specification Dichotomy (20/04/2005) from Mondaq: "20 April 2005 Article by John R. Wetherell, Ph.D. and Michelle Mehok Companies understand that in order to protect their technology from competitors, the company must have a strong patent portfolio. However, achieving this goal is requiring greater levels of drafting sophistication and strategy. It has become increasingly clear, by the recent case ruling in Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., just how important it is to have a well drafted patent document that has clearly defined claim terms. At issue in the Merck case was the meaning of the apparently simple term "about" in the claims and what the patentee asserted was the meaning of this term as defined in the specification. The Federal Circuit’s ruling on the legally operative meaning of this term emphasizes the critical need for the patentee to exercise caution in drafting patent applications where a term in the claim is redefined from its common meaning. Numerous court decisions have held that claim construction requires terms used in the claims to be given their "ordinary", "accustomed", or "dictionary" meaning unless the patentee has chosen to otherwise clearly define the terms in the patent specification or prosecution history. It is well settled that a patentee can act as his own lexicographer by choosing his own definition of a term and using it as he wishes so long as he remains consistent in its use and makes the meaning clear. The law provides the patentee with this opportunity because the public may not be schooled in the terminology of the technical art or there may be more than one way to interpret the structure or concept that is being claimed. However, the lexicographer privilege has recently come under criticism by some courts that have viewed it as imposing on the interpreter of the claims the burden of determining, through study of the patent’s specification or prosecution history, whether the patent gives an unconventional meaning to a term that otherwise has an established meaning. Most recently, courts have questioned what sources should be consulted during the claim construction process to determine the legally operative meaning of the words in a claim. In a recent decision, the Federal Circuit reversed an August 2003 district court ruling thereby invalidating Merck’s patent on Fosamax, an osteoporosis treatment that was Merck's second-best-selling drug. In a statement to the press after the verdict, Merck said that it disagreed with the court's ruling "and is considering its options, including a request for reconsideration by the court of appeals." Thus, Merck is considering asking the Supreme Court to review the ruling. It is doubtful that the Supreme Court would do so, because it rarely accepts patent cases. The district court held that Merck had acted as its own lexicographer and in the specification had redefined the ordinary meaning of the term "about". Merck had taken the position that it acted as its own lexicographer and that the claim term "about 70 mg of alendronate monosodium trihydrate on an alendronic acid base" should mean exactly 70 mg of alendronic acid. Ordinarily, of course, the term "about" would mean "approximately", but the district court sided with Merck and ruled that the term "about" meant "exactly". Relying on this latter construction of the term "about", the district court found the prior art cited against the patent to be insufficient to invalidate the patent based on anticipation or obviousness. Teva’s allegations that the claims at issue were invalid was based on (1) anticipation by a July 1996 Lunar News article and (2) obviousness in light of an April 1996 Lunar News article combined with the July 1996 article. However, the district court found the patent valid and infringed by Teva’s Abbreviated New Drug Application ("ANDA"), effectively delaying Teva’s FDA approval of the ANDA until the Merck patent expires. On appeal, the Federal Circuit addressed claim construction and obviousness. The Federal Circuit opined that when construing a claim term, the court must first consider the intrinsic evidence, starting with the language of the claims. "General claim terms should be construed consistently with their ordinary and customary meanings, as determined by those of ordinary skill in the art." In this regard, the specification is reviewed to determine whether the patentee acted as his own lexicographer of a term that already has an ordinary meaning. However, any "statement in the specification must have sufficient clarity to put one reasonably skilled in the art on notice that the inventor intended to redefine the claims term." Merck’s position was that the following passage from the specification redefined "about" to mean "exactly": Because of the mixed nomenclature currently in use by those or [sic] ordinary skill in the art, reference to a specific weight or percentage of bisphosphonate compound in the present invention is on an active weight basis unless otherwise indicated herein. For example, the phrase "about 70 mg of a bone resorption inhibiting bisphosphonate selected from the group consisting of alendronate, pharmaceutically acceptable salts thereof, and mixtures thereof, on an alendronic acid active weight basis" means that the amount of the bisphosphonate compound selected is calculated based on 70 mg of alendronic acid. The Federal Circuit disagreed and held Merck’s definition of "about" is ambiguous in that this passage was not clear enough to put one of skill in the art on notice that the ordinary meaning of "about" was redefined. The term "about" was amenable to two interpretations. The Federal Circuit stated that, under Merck’s construction, the phase "about 70 (or 35) mg" means that one should administer approximately 70 (or 35) mg of the derivative compound, such that the end result would be that the patient received exactly 70 (or 35) mg of active compound. In other words, the phrase "about 70 (or 35) mg" modifies the quantity of the derivative compound rather than the resulting active compound. However, according to Teva, the phrase could also be construed to mean that "about 70 (or 35) mg" refers to the amount of resulting active compound rather than the amount of the derivative compound administered. The term "about" would then serve to modify the quantity of the active compound in a way consistent with its ordinary meaning of "approximately". Given that the passage was agreeable to both interpretations, the Federal Circuit held that Merck did not clearly set out its own definition of "about". The Federal Circuit further decided the invention was obvious in light of earlier published articles. In short, the Federal Circuit opined that the district court clearly erred in not (1) distinguishing the claimed invention from the two Lunar News articles, (2) ascertaining the required motivation to combine references to achieve the claimed invention which clearly suggested the dosages described in the articles, (3) determining the probative value of the articles, and (4) weighing the secondary considerations or Merck’s commercial success. Judge Rader wrote a dissent in which he made two specific points: (i) that the majority erred in its analysis of the lexicographer doctrine and (ii) that the majority should have given some deference to the lower court's decision. The Merck decision warns the patentee to be clear when defining claim terms. It is hoped that another case pending before the Federal Circuit will provide additional clarification regarding the process of defining terms used in the claims. In Phillips v. AWH Corp., which was heard en banc on February 8, 2005, the Federal Circuit prudently chose to re-examine and consider seven issues: (1) how and to what extent various types of evidence, particularly the specification and dictionaries, serve the public notice function of patent claims; (2) how the specification should be used to interpret claims without impermissibly importing limitations into the claims; (3) how and to what extent various types of evidence, particularly the specification and dictionaries, should be used for claim construction; (4) whether the two approaches (dictionary and specification) should be treated as complementary methodologies such that there is a dual restriction on claim scope, and a patentee must satisfy both limiting methodologies in order to establish the claim coverage it seeks; (5) when, if ever, should claim language be narrowly construed for the sole purpose of avoiding invalidity under, e.g., 35 U.S.C. §§ 102, 103 and 112; (6) what role should prosecution history and expert testimony by one of ordinary skill in the art play in determining the meaning of the disputed claim terms; and (7) what deference, if any, the Federal Circuit should give to a district court's claim construction. Thus, this decision is expected to provide additional guidance on the proper approach to construing patent claims. In light of the fact that it is not uncommon for the patentee to use a word to mean something different than its dictionary definition and because a patent’s specification can be ambiguous, it is advisable that the patentee and his counsel work closely together to clearly define claim terms having technical, scientific, or multiple meanings. The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Responding to Restriction Requirements

Anything Under the Sun Made By Man: Responding to Restriction Requirements: "Responding to Restriction Requirements I recently had a three way restriction requirement from the US PTO on an application. The examiner had restricted the invention three ways: 1. An apparatus with features possibly usable outside the client’s business. 2. A special instance of the apparatus directly relating to a product being developed by the client. 3. A method for using either invention 1 or 2. The business situation of the client is this: they are in the process of developing a technology that could be widely deployed in 3-5 years. Right now, any potential infringers/licensees are very small players and do not pose a business threat. The client is feverishly working to deploy some product and prove that it works. If their trials are successful, the market is much bigger than they can supply right now. They may raise capital and expand to meet the market, or they may license the technology to one or more existing players in the market. The question is: how to respond to the restriction? My suggestion is to elect the first invention, the one which does not necessarily directed at the client’s product. Rather than filing divisional applications right away, I would wait and file a divisional on the method claim, then file a divisional on the invention directed specifically at the client’s product. There are several reasons for this. Looking at the invention directed specifically at an embodiment like the client’s product, if we pursue it now, we will get a patent based on today’s understanding of what we think is the important features of the invention. We would rather make that definition as far into the development cycle as possible. There is always the possibility that technology or market considerations may cause certain parts to be more important than we can see at this point. This is one reason why I want to do this embodiment last. Another reason is that there are no potential infringers that need to be dealt with immediately. If we did have a patent issue protecting the client’s product, we would do little with it, except hang a plaque on the wall. Having a patent issue on invention #1, the apparatus outside the client’s business, the client will have a bargaining chip or a potential licensing stream outside the core business. The client could negotiate such a patent away without losing coverage on the core product. Looking at the method inventions, the potential infringers may be customers who buy the product. However, because the product is not widely deployed and thoroughly shaken out, there may be some changes to the methods that we may wish to make to the application with a continuation-in-part application. Taking all of this into consideration, I suggest taking the generic invention first, the methods second, and the actual client device third. I also suggest doing them as serially as possible, filing a divisional as late as possible and on paper, and keeping the application alive. There are a couple situations that may change the strategy. The first is if the client feels like the product has matured and stabilized and that there is a potential licensee. In such a case, I would suggest pursuing the product invention as quickly as possible. Another situation is if another player in the market looks like they will infringe. In that case, I suggest beginning to tailor the claims to match the potentially infringing product so that a licensing deal can be reached quickly and amicably, or so the infringer be shut down fast. Because we have no knowledge of the merits of the case from the examiner, we cannot use the merits as a basis for evaluating one invention over the other in the restriction requirement. In summary, the business considerations of the client, including their ultimate potential business strategies, can be the key to deciding which step to take in this case. The patent attorney who does not have the ability to appreciate the client’s business interests and operate with those in mind does his client a gross disservice.

Anything Under the Sun Made By Man: Vagueness in the Written Description

Anything Under the Sun Made By Man: Vagueness in the Written Description: "April 07, 2005 Vagueness in the Written Description One of the biggest challenges in writing the written description is that it is almost impossible to guess how the invention might be used over the next twenty years, which is the life of the patent. Especially in developing technologies, what makes sense today may be turned on its ear by changes in technology or the market. However, reading that crystal ball is essential for good patent protection. There are a number of cases where limitations from the specification are read into the claims by the courts. In the Phillips v. AWH Corporation case before the Federal Circuit, the lower courts read a limitation into a claim because the drafter described ‘the’ advantage of the invention had a special feature. The drafter seemed to me to be describing only ‘an’ advantage of a particular embodiment. However, the applied the feature to all the claims. If the drafter had used ‘an advantage’ rather than ‘the advantage’, it is likely that the case would not be in front of an en banc Federal Circuit and would have been settled a long time ago. The best way to deal with this situation is to eliminate any mandatory language from the written description. Use terms like ‘may’ and ‘could’ rather than ‘must’ and ‘should.’ Give every alternative embodiment that can be imagined, and especially examples at the outlying extremes of the invention. Many times, the inventors see their specific embodiment as the most logical and rational of the possibilities. What is an optimal embodiment today may be obsolete in three years. I see the invention as a combination of several elements, regardless of the embodiment. When writing the written description, I try to take each element to its logical extreme and cover every possibility for that element. After going through each element in as much detail as possible with as many examples as possible, the entire field of various embodiments should be covered. Remember, the purpose of the written description is not only to support the claims, but to give as much breadth and scope to the claims as possible. Additionally, a broad written description effectively keeps other inventors from attempting to patent a close invention, one that may turn out to be even better than the inventor’s optimized embodiment of today.

Prism Legal Consulting, Inc.

Prism Legal Consulting, Inc.: "Outsourced Legal Services print Introduction and Explanation Outsourced Legal Services print Introduction and Explanation List of Outsourced Legal Services Outsourced Legal Services - Background This list of selected legal outsourcing activity was compiled and is maintained by Joy London, author of the blog excited utterances and Ron Friedmann, President of Prism Legal Consulting, Inc and author of the blog Strategic Legal Technology. We have observed with interest a recent trend by US law firms and law departments to outsource some legal work overseas. As bloggers, we have informally tracked legal offshoring activity and wanted to consolidate our observations in a single list. We hope that readers will offer updates, corrections, and comments as appropriate. The primary focus of our list is offshore outsourcing by US firms and corporations of certain substantive and administrative legal functions, specifically # Document drafting by lawyers # Legal research # IP legal work, substantive or administrative # Review of discovery documents # Paralegal services # Administrative and secretarial support services, excluding digital dictation The list does not include offshore litigation support coding or vendor-provided technology services. Nor does it include offshore vendors whose business does not focus primarily on the legal market. A secondary focus of the list is selected outsourcing by US law firms or vendors within the United States. The inclusion criteria are loose but exclude outsourcing to US-based vendors of technology support, legal research, and copy/mail-room services. This type of outsourcing has occurred for years and is thus of less interest to us. Our list is neither complete nor comprehensive. We assembled it based on web research, articles we have read, and people we have met. Each entry includes a source, either a web site or article. For web sites, we list the URL; for articles, we provide a citation. We checked URLs at the time we assembled the list. Where the source is an article, we have no way to track possible changes since the publication date. We welcome comments, suggestions, and corrections from readers. We reserve the right to post reader comments at excited utterances and/or Strategic Legal Technology unless requested otherwise. If we receive corrections and/or suggestions for new entries, we will include them in periodic updates to the list. List of Outsourced Legal Services Organization Organization Type Services Location Source | Notes Date Added Accenture Corporation Law dept. support (contracts) Mauritius Corporate Legal Times, Sep 2004, reports company has set up owned and operated office in Mauritius for company legal work. Mar 05 Andrew Corp Corporation Law dept. support (patents) NZ See Outsourcing Reaches Corporate Counsel, The Recorder, 8/25/04 Mar 05 General Electric Corporation Law dept. support (contracts) India See Outsourcing Reaches Corporate Counsel, The Recorder, 8/25/04 Mar 05 General Mills Corporation Patent work NZ and Australia See Corporate Legal Times article, July 2003 Mar 05 Microsoft Corporation Patent work India See Briefed in Bangalore American Lawyer, Nov 2004 Mar 05 Baker & McKenzie Law Firm Network ops & doc production Philippines See http://www.lwk.co.uk/ViewItem.asp?id=16509 Mar 05 Bickel & Brewer Law Firm Litigation Support India See also Briefed in Bangalore American Lawyer, Nov 2004 Mar 05 Orrick Herrington Law Firm Tech, finance, admin US (Wheeling, WV) See http://www.orrick.com/offices/goc/ Mar 05 Atlas Legal Research Vendor Legal research India See Briefed in Bangalore American Lawyer, Nov 2004 Mar 05 CBF Group Vendor Secretarial & admin support US (Fargo, ND) Mar 05 Docuserve Vendor Reception, telephone & fax services, mail-room, printing & reprographics & hospitality functions Scotland See http://news.scotsman.com/index.cfm?id=199662005 Mar 05 Evalueserve Vendor IP work & market research India Mar 05 Intellevate LLC Vendor Paralegal, docketing, technical research, proofreading, bookkeeping India See http://www.practicesource.com/ale/blog/pivot/entry.php?uid=standard-532 Mar 05 Intercom India Vendor Legal transcription, legal coding India See http://www.globallawreview.com/outsourcing.html#Annexure Mar 05 Law Abroad Vendor Legal work S. Africa and UK Not clear if operational yet (see http://www.lawabroad.com/outsourcing.php) Mar 05 Lawwave Vendor Legal research, IP analytics, doc review, back office India See also India Abroad article Jan 04 Mar 05 Lexadigm Vendor Legal research India Mar 05 http://www.lexwerx.com/ Vendor Legal research India Specializes in insurance and re-insurance; has a UK office Mar 05 Manthan Services Vendor Case management, legal transcription, data digitization & archiving India See http://www.globallawreview.com/outsourcing.html#Annexure Mar 05 Mindcrest Vendor Legal process outsourcing, legal research & business research services India See http://www.globallawreview.com/outsourcing.html#Annexure Mar 05 http://www.officetiger.com/ Vendor Document processing, legal research, professional support, finance & accounting services India See http://www.hildebrandt.com/Documents.aspx?Doc_ID=1802 Mar 05 QuisLex Vendor Legal support services India Web site does not specify services Mar 05

law.com - Article

law.com - Article: "Briefed in Bangalore Briefed in Bangalore Legal services are moving offshore -- will India's lawyers help reshape the U.S. legal market? Helen Coster The American Lawyer 11-01-2004 In recent months Microsoft Corp. began using Indian professionals to search for prior art -- written information about an invention -- in preparation for filing patent applications. Other Fortune 500 companies, such as Oracle Corp., have considered it. And law firms, which often follow the lead of their clients on new initiatives, are finally catching on. Outsourcing may be a dirty word in this year's presidential campaign. But in the real world -- where costs and competitiveness matter -- lawyers, like other professionals, have started to recognize the value of tapping into the highly educated, English-speaking Indian workforce to carry out tasks that would typically be performed by junior-level employees. Several outsourcing companies are courting the U.S. legal market, using Indian lawyers, scientists, and other trained professionals in cities like Hyderabad, Bangalore, and Noida. There are a few different emerging models. Vendors like Lexadigm Solutions and Lawwave.com rely exclusively on Indian lawyers to conduct low-level legal work and analysis. Others, like OfficeTiger, use a mix of lawyers and trained professionals to handle legal and nonlegal tasks such as managing conflicts databases and document management and review. A few vendors specialize. Intellevate has hired an Indian staff of lawyers and Ph.D.s to conduct patent research and other IP work. The company has a dedicated team devoted just to Microsoft's patent work. Smaller law firms are taking advantage of the range of services offered by these companies. Document review is the most popular task to outsource. In most cases a vendor scans and uploads the documents onto a secure Intranet site. Lawyers in India access the documents, identify responsive and privileged documents, and, when complete, upload their findings back onto the Intranet. The process varies slightly for lawyers who outsource IP prosecution work, rather than just discovery. "A large company will send us an invention description," says Intellevate chief executive Leon Steinberg, who oversees 72 Indian employees and offices in Bangalore and Noida, a suburb of New Delhi. "We would have a computer science expert, or some other kind of trained specialist, do research and determine whether the invention can be patented. They use proprietary databases and online tools to conduct research. Then they post their search result on a Web site that only our client can access." Some law firms and legal departments have opened their own offices staffed by Indian employees, rather than outsourcing their work to a third-party vendor. This is called offshoring. In 2001 General Electric Co. established a legal team in Gurgaon, India, with lawyers and paralegals who draft documents like contracts. Bickel & Brewer, a 34-lawyer Dallas litigation firm, opened a facility in Hyderabad, India, in 1995. Several hundred Indian employees -- both lawyers and nonlawyers -- scan, code, index, and abstract documents. Bickel & Brewer's offshore practice has been so successful, says partner William Brewer, that the firm spun it off as a standalone company. While cost might be the most obvious incentive for outsourcing legal work to India, lawyers cite a number of other motivating factors. One is the 9-to-13-hour time difference between the United States and India, which gives U.S. lawyers the sense of operating on a 24-hour-basis. "When I go home at six I can have them do the grunt work, research, and proofreading that I would otherwise have other people do," says Solan Schwab, a New York-based solo practitioner who outsources research projects like analyzing state-by-state insurance regulations with QuisLex, which has 12 lawyers in Hyderabad. "Then when I come in in the morning, I receive a beautiful e-mail with research done exactly how I like it." Schwab sees outsourcing as the answer to the age-old dilemma facing solo practitioners: an erratic work flow that doesn't justify the overhead of a full-time staff. He estimates that by outsourcing legal work, he spends about one-third to one-half of what he would spend on hiring a full-time associate. He adds that because he has the manpower to take on new business, he has been able to generate about $50,000-$60,000 in new revenue. "I usually bill the clients a certain hourly rate and pay these folks a portion of that rate." Schwab says that the markup depends on whether the client is an individual or a corporation. Even with the occasional markup, lawyers say that the financial incentive of outsourcing legal work is the factor that most impresses their clients. "None of my clients have opposed it because it saves them money," says Noah Henry Simpson, of five-lawyer Simpson, Woolley, McConachie of Dallas. "It probably saves them at least half of what they would usually pay." Vendors charge an hourly rate or on a per-project basis. Lexadigm charges $60 per lawyer per hour, Atlas Legal Research charges $80, and OfficeTiger will not disclose its fees. (London's Allen & Overy is currently outsourcing word processing to 74 OfficeTiger employees, a practice that the firm says saves "a seven-figure sum.") Quislex gives clients the option of being billed by the hour or project. Intellevate offers three pricing mechanisms: a seat license, which can range from $1,200 to $4,500 per month; a straight hourly rate, which varies from $12 to $65 per hour based on experience; and a flat fee for a particular activity, such as $390 for seven hours of prior arts searching. The lure of inexpensive labor, however, isn't enough to convince many lawyers that outsourcing legal work to India is a good idea. Their primary concern is security, and how to deal with issues of attorney-client privilege. "If I'm one firm and I'm outsourcing work in India, then I don't know that another firm isn't using the same lawyers," says G. Hopkins Guy, an IP partner in the Silicon Valley office of Orrick, Herrington & Sutcliffe. Proponents of outsourcing explain that outsourcing work to India is no different from outsourcing scanning and coding of litigation documents to a vendor or legal work to a temporary lawyer. But Guy and others are not convinced. "We need to tightly manage conflicts," he says. "I've heard of instances where just by sending documents out to a place like Kinko's, lawyers have had problems with conflicts." Guy adds that while Orrick routinely uses outside vendors to do document imaging and processing, he prefers that those vendors be located fairly close to his office and within easy access to manage the quality of the end product. Orrick also hires temporary, or contract, lawyers. The difference, says Guy, is the hands-on way that Orrick manages and integrates these lawyers. "We'll put a group of contract attorneys with Orrick lawyers in a room with eight computer terminals," Guy says. "[While reviewing documents] someone will often have a question, like 'I see this here. Is this important?' and they can ask a supervising attorney. But if I have a contract attorney who is by himself, in India, what do they do with that question? Maybe he can send an e-mail and get a reply a day later. But quite naturally you would think that they would say it's not important and move on. And I want that question immediately answered. That's why I don't see outsourcing of this type working." Many lawyers feel uncomfortable with the idea of outsourcing work to professionals whom they've never trained, let alone met, yet whose work reflects the quality of the firm. "I would be concerned about the absence of quality assurance," says Matthew Powers, the head of patent litigation in the Silicon Valley office of New York's Weil, Gotshal & Manges. "If you ship work to India and there's a problem and the judge says, 'How did this happen?' and you say, 'I don't know,' then there's an abdication of responsibility." Powers says that he'd be nervous to rely on legal research completed by someone he doesn't know. "We invest a lot of time in training and managing our people to ensure that we get a high-quality work product. I'd rather find efficiencies in other forms." Other lawyers question the wisdom of outsourcing, citing the time needed to review the work done by Indian professionals or to manage the flow of information. Oracle, for example, decided it wanted its patent professionals closer to the business units. Yet proponents of outsourcing say that the practice becomes increasingly efficient with time. H. Wynne James III, a partner in 250-lawyer Louisville, Ky.-based Stites & Harbison, is realistic about the management required to outsource legal work to India. His firm has outsourced legal research and pieces of M&A transaction and is currently considering forming an alliance with outsourcing vendors and Indian firms. "If I think that I am going to get a high quality from the first day, I'm kidding myself," he says. "I think that this is not without its real challenges. One is efficiently managing Indians and American lawyers in the same engagement. I think that the internal mechanics of a lot of firms are not structured to handle that very well." Lawyers were reluctant to use temporary lawyers when the service started nearly two decades ago. Small firms were the first to embrace the concept. Today, they are present in firms of all sizes. But as some lawyers have found, this kind of universal acceptance doesn't happen overnight. As James says, "One of my partners said, 'I thought you were crazy when I thought you meant Indiana.'" THE INSIDE SCOOP ON LEGAL OUTSOURCERS Company Web site Personnel Most popular outsourcing requests: Atlas Legal Research atlaslegal.com 3 lawyers in Bangalore legal research and brief writing Intellevate intellevate.com 72 employees in Bangalore and New Delhi patent proofreading, prior arts searches, and paralegal functions Lawwave.com lawwave.com 8 lawyers working on an as-needed basis in Chennai document review and legal research Lexadigm Solutions lexadigm.com 6 lawyers in Gurgaon research memos, briefs, and surveys of state law OfficeTiger officetiger.com Declined to say how many lawyers and nonlawyers in Chennai word processing and legal research Quislex quislex.com 11 lawyers in Hyderabad research and document review The 2004 Global 100 Database is now available in an electronic spreadsheet. These definitive rankings of the world's largest international law firms can be sorted, searched and imported into an active database. The rankings include gross revenue for FY 2003, number of lawyers, average revenue per lawyer, profit per equity partner, number of countries in which the firm has offices, percentage of lawyers outside the firm's home country, key marketing contacts and more.

Bloglines | My Feeds

It is proper to limit the scope of the claims according to the specification By Dennis Crouch PatentlyOImage022Rhodia Chimie v. PPG Industries Inc., (Fed. Cir. 2005) By Baltazar Gomez, Ph.D. Rhodia is an international chemical company and the assignee of U.S. Pat. No. 6,013,234 ("the '234 patent"). The patent discloses and claims certain essentially spheroidal precipitated silica particulates. Rhodia markets “Micropearl” which is a silica particulate covered by the patent. PPG also makes three silica products, namely, Hi-Sil SC60M, SC72 and SC72C. Rhodia alleges that these products infringe claim 1 of the '234 patent. The district court granted summary judgment for noninfringement in favor of PPG. On appeal, Rhodia argued that the district court erred in interpreting claim 1. The CAFC, however, affirmed the district court’s construction. Claim 1 of the '234 patent partly reads as follows: Dry, dust-free and non-dusting, solid and homogeneous atomized precipitated silica particulates essentially spheroidal in geometrical configuration… (emphasis added) In addition, the specification included examples tested both for flowability and dusting properties. Flowablity tests were performed by a pour test which compared the flowability of Micropearl with the prior art. The dusting tests were measured by the German DIN 53 583 standard (the "DIN test"). During the district court’s claim construction hearing, PPG asserted that the phrase "dust-free and non-dusting" should be interpreted literally to mean "no dust cloud whatsoever." Conversely, Rhodia argued that such a meaning was improper in view of the results of the pour test that showed production of some dust. Accordingly, Rhodia advocated construing "dust-free and non-dusting" to mean "very low dust." The district court was concerned, however, that Rhodia's proposed definition of the phrase was relative and that such a definition would not meet the statutory requirement that the claims particularly point out and distinctly claim the invention. Thus, to resolve the perceived ambiguity of the phrase, the district court adopted a construction based upon the only meaningful guidance provided in the patent, namely the DIN test. On appeal, Rhodia argued that the DIN test was not the only means by which to assess the amount of dust produced by the invention. Rhodia asserted that the pour test could also be used to determine the level of dustiness, and therefore, it is inappropriate for the district court to limit the phrase "dust-free and non-dusting" to the DIN test. Further, Rhodia cited statements made during prosecution of the ‘234 patent explaining that the pour test could be used to show the non-dusting and free-flowing properties of the ‘234 patent. In affirming the district court's construing of "dust-free and non-dusting", CAFC noted that although the pour test may also provide evidence of dustiness, the results of the pour tests presented in the '234 patent were only identified as evidence of the products' flowability. The CAFC further noted that there is no language in either the claims or the written description that taught the application of the pour test to determine the level of dustiness. Finally, CAFC stated that Rhodia's statements made during prosecution cannot serve to fill such a gap. Thus, the CAFC concluded that the district court did not erred in limiting the scope of the claims by defining the phrase "dust-free and non-dusting" to the only disclosure in the patent. Note: Dr. Baltazar Gomez is a scientific advisor at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. Dr. Gomez obtained his PhD in biochemistry from the University of Texas and researched retrovirology as a PostDoc at Cornell University. File Attachment: Chimie v. PPG.pdf (98 KB)

Pierce Law IP News Blog | All the IP News that's fit to blog.

Pierce Law IP News Blog | All the IP News that's fit to blog.: "The Next Time You Want to do the 'Tree Pose,' it Might Be Wise to Check First With the Copyright Office Submitted by Carey on Sat, 04/09/2005 - 6:48pm. * In a decision announced on April Fools, U.S. District Judge Phyllis Hamilton handed down a mixed ruling, denying summary judgment to both the plaintiffs and defendant, in a copyright case that is starting to 'heat up.' Bikram Yoga, a form of Hatha yoga which its founder, Bikram Choudhury, has modified and shortened to 26 principal poses (or asanas) and 2 breath exercises (called pranayama), done in a room with a heated temperature of 105 degrees. Open Source Yoga Unity(OSYU), had challeneged the copyrights and trademarks that Mr. Choudhury holds in his form of yoga. The website for OSYU claims that the group was formed in part to 'provide a common voice, and the pooling of resources, to oppose the litigious position Bikram Choudhury is taking against the Yoga community by his attempted enforcement of copyright protection.'"

PATENTS & TRADEMARKS > FACTS & MYTHS

PATENTS & TRADEMARKS > FACTS & MYTHS PATENTS MAKE PEOPLE RICH There is no guarantee that an invention, design, or plant that is patented will sell. In fact, most patents do not generate income for their owners. (See sidebar) Fact U.S. PATENTS ARE ENFORCEABLE ONLY IN THE UNITED STATES A U.S. patent is only enforceable in the United States. Myth PATENTS CAN BE ISSUED FOR REALLY GOOD IDEAS Patents are not issued for great ideas or mere suggestions. Patents are granted to people who (claim to) "invent or discover any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof"—to quote the essence of the U.S. statute governing patents. Myth YOU MUST PATENT YOUR INVENTION A patent provides protection for your intellectual property, but when you are deciding if you should apply for a patent you should keep in mind that: 1) it takes work and it can be expensive to obtain a patent, and 2) patents protect your invention for a limited term, but they also disclose your information. Disseminating information while protecting inventors is one of the reasons patent offices exist. If you have invented something you think you can profit from but still want to keep the important details secret, you may opt not to get a patent. Myth A PATENT MEANS THE INVENTION WORKS The government does not get involved in testing or verifying submitted inventions to see if they work.