Thursday, March 30, 2006

Coverage of MercExchange Hearing. reports that "Justices Seem Divided Over eBay Patent Injunction Case." From the article: "One problem on the horizon for the case before the Court, noted several times by Roberts, is the fact that on review, the Patent and Trademark Office has invalidated all of MercExchange's patents involved in the case." Reuters has more.


Lawrence B. Ebert said...

It is incorrect to say that the USPTO "invalidated all of MercExchanges patents," as has been discussed on
on IPBiz.

Moreover, the details of the re-examination of the '265 patent merit discussion. See and Intellectual Property Today, p. 5 (Feb. 2006). said...

Not surprising (I haven't been following that closely). Most reporters aren't exactly known for their accuracy when it comes to IP topics (as I've noted elsewhere, the conflation of tradmark and copyright in most IP reporting is one of my pet peeves). But thanks for the link.

Lawrence B. Ebert said...

There is an interesting sub-theme here that deals with the interplay between re-examination and litigation. Twice in this case, the USPTO has issued a re-exam Office Action "just before" a major litigation event. In the last week, there was an Office Action mailed on March 24, "just before" the oral argument scheduled for March 29. Even more interesting, the prior art at issue, the '111 patent, is the same in both the re-exam and in the litigation (although invalidity was NOT at issue before the Supreme Court, CJ Roberts did bring up the re-examination results (probably the earlier ones)) Curiously, the evidentiary standards for invalidity in a re-exam are not the same as in litigation. However, watchers of the eBay v. MercExchange case should go beyond Roberts' remarks to appreciate that the court and the USPTO reached DIFFERENT conclusions about invalidity over the SAME prior work.

There is more on

Lawrence B. Ebert said...

Of the issue of bad reporting of intellectual property issues by the press, note that the July 28, 2006 issue of the prestigious journal Science has a serious error. Science refers to a [supposed] well-known loophole in US patent law:

"Companies can continually add detail to a pending application while benefiting from the early filing date of the initial scientific discovery. Such revised applications, known as continuations, last year made up nearly one-third of all filings with the U.S. Patent and Trademark Office. (PTO)"
See 313 Science 425.

In truth, a continuation application utilizes the specification of the earlier-filed parent application. Detail cannot be added. Detail can be added in a continuation-in-part application, but the priority date for the added detail is the date of the filing of the new detail. The combination of continuations and continuations-in-part comprised no where near one-third of applications in FY 2005.

If you can't believe what's in Science, what can you believe?

[There's more on IPBiz.]