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• i4i Victorious at CAFC, Microsoft Word Enjoined Jan. 11, 2010
  Earlier today, the Federal Circuit gave i4i an early Christmas present and delivered a big fat lump of coal to Microsoft. The Federal Circuit has upheld Judge Davis’ decision with one small exception. The Federal Circuit found the 60 day period in which the injunction was to become effective too short, instead preferring to give Microsoft 5 months to comply with the permanent injunction, which means that the permanent injunction will go into effect on January 11, 2010. Microsoft’s legal options are limited. They can and likely will seek an expedited rehearing en banc, and they can appeal to the Supreme Court. Neither appeals will be as a matter of right, so look for Microsoft to announce a “deal” with i4i in the days leading up to January 11, 2010.
• US Patent Office Seeks to Modify Appeals Rules… Again
  The United States Patent and Trademark Office earlier today announced in the Federal Register that they will once again attempt to modify the rules of practice and procedure in ex parte appeals before the Board of Patent Appeals and Interferences (BPAI). It seems that the working document moving forward will be those estopped Final Rules, which apparently are no longer quite so final and now open for debate. With that in mind, and to keep things as clear as possible, allow me to refer to the June 10, 2008 rules that were stopped by OMB to be “the previously Final Appeals Rule.” The Office will consider the Appeals Rules anew and seeks comment both on potential modifications to the previously Final Appeals Rules and issues of law and policy raised by those rules.
• Industry Insiders Make Patent Wishes for 2010
  It is that time of the year where we all start to look ahead to the new year, and in this case the start of a new decade. Last year I wrote an article titled Patent Wishes for the New Year, and I have been working on my wish list already and will launch the article soon, likely on December 31, as I did last year. I thought it might be interesting to contact a variety of industry news makers, policy wonks and those on the front lines to see what they wish for in the year ahead. I was lucky enough to get a handful of responses from folks with a variety of experiences.
• Top Patent Stories of the Decade 2000 – 2009 (Part 1)
  This year as we wind down and look back we not only need to look back at the previous year, but the first decade of the new century and new millennium will be ending. So at this reflective time of year it seems appropriate to take a look back at the biggest patent related news stories of the decade. As with any Top 10 list, or any ranking, there will undoubtedly be disagreements, arguments and some things that people believe should have been on the list. What follows is Part 1 of my personal Top 10 patent news related stories for the decade.
• What the Board of Patent Appeals Can Learn from the NFL
  So what does any of this have to do with the USPTO? Well, imagine another fumble call being made on the field by an NFL referee. Now, after the conference, imagine the referee walking to the center of the field turning on his microphone and stating “after further review, we were right” This is the level of feedback currently provided in unfavorable Pre-Appeal Brief Conference Request determinations.
• Patent Office Delay and Inventors Representing Themselves
  Earlier today I stumbled across US Patent No. 7,631,368, which is titled Combined concealed carry holster undergarment and outergarment with quick release and quick access mechanisms. This patent is one that offers a number of lessons, both for inventors and for those who are seeking to reform the US patent process. The lesson for inventors is a cautionary one; namely be extremely wary about representing yourself. Inventors who represent themselves always wind up with rights more narrow than they should. The second lesson relates to needless delay. This particular patent application was filed on August 11, 2004. A restriction was made on September 30, 2008, which is over 4 years after the application was filed. The application wasn’t even assigned to an examiner until June 25, 2009! So when this patent issued on December 15, 2009, it was entitled to 1218 days of additional patent term as a result of Patent Office delay.
• CAFC Rules Validity of Design Patent Judged by Ordinary Observer Test
  Last year, an en banc Federal Circuit ruled in the seminal case of Egyptian Goddess, Inc. v. Swisa, Inc. that the so-called “point of novelty” test was no longer valid in determining design patent infringement. Instead, design patent infringement was to be judged solely by the “ordinary observer” test from the 1871 Supreme Court case of Gorham Mg. Co. v. White. But what test should be used in determining the validity of a design patent? A Federal Circuit panel in International Seaway Trading Corp. v. Walgreens Corp. unanimously answered that the validity of design patents must likewise be judged solely by the “ordinary observer” test.
• US Congress Poised to Implement National Innovation Tax
  Failure to properly fund the US Patent Office is madness, absolutely ridiculous and borders on insane. At a time when the US economy continues to struggle, has reported unemployment rate of 10% and there are worries about another dip due to commercial foreclosures, now is not the time to institute a tax on innovation. Now is the time to unleash American innovation and fund the USPTO to the point necessary to rapidly turn patent applications into assets, which would prompt the trillions of dollars sitting on the sidelines to enter the market and launch the next great US economic expansion. The Capitol Building and Congressional Offices must be home to the largest population of intellectually challenged individuals in the world!
• Recession Not Responsible for Dip in US Patent Filings
  FY 2009 filings outpaced FY 2007 filings, which is significant because there was no recession at any point in time during FY 2007. According to the National Bureau of Economic Research, the current recession started in December 2007. According to the Wall Street Journal blog, this was determined because December 2007 marked the peak upward swing of the US economy, which started in 2001. So December 2007 marked the beginning of the decline. That means that for most of FY 2008 the US economy was in recession, and was not in recession at any point in time during FY 2007. Therefore, there is no support for the argument that the recession caused FY 2009 patent filings to be lower.
• Apple Patents iPhone Remote Control of Personal Computer
  Among the thousands of patents issued by the United States Patent and Trademark Office yesterday was an interesting one granted to Apple, Inc. US Patent No. 7,634,163, titled “Remote control of electronic devices,” gives a glimpse of what might be in store for the iPhone down the road. The patent covers a method of using a telephony device, such as an iPhone, to remotely control various tasks associated with a controlled device, such as a personal computer. Essentially, the iPhone or next generation smart phone will allow a user to control navigation of user interfaces associated with applications or an operating system residing on the second device.
• Small Business Patent Coalition Established to Oppose Legislation
  A group of organizations today announced that they have banded together to form the Small Business Coalition on Patent Legislation created to draw attention to current patent reform proposals that have not been addressed by established patent stakeholders and that would be uniquely harmful to small business patentees if enacted.
• CAFC Rules Patentee’s Expert Failed to Sufficiently Identify Elements
  A “black letter” rule of patent law is that infringement requires proof that the alleged infringing device includes all elements or limitations recited in the claim. Known alternatively as the “All Elements Rule” (AER) or “All Limitations Rule” (ALR), it behooves a patentee to make sure that each and every cla