Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

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Entries in Patents (9)


"When Patents Attack!... Part Two" from This American Life

"When Patents Attack... Part Two!" was a recent episode of This American Life.  It is a radio show and podcast episode discussing patents, licensing, "patent trolls" and the like.

The podcast is pessimistic about patents.  There are solutions and strategies to many of the topics.

  • Liability can come from unexpected places--buy licensed raw materials, do not waive indemnity from suppliers, even better make it express in a purchasing agreement
  • The Eastern District of Texas is a hostile jurisdiction--file a local declaratory judgment action upon receipt of a cease and desist letter.
  • Everyone else is settling--consider joint defense agreements

Email me your questions about the when patents attack podcast and I will collect and publish the questions and answers.

By the way, I am a podcast fan.  A podcast is a syndicated episode (typically audio) that can be played later--kind of like a DVR for radio on your computer or smartphone.  The following list are my favorite five podcasts, the link is to their webpages and the RSS feed can be found there:

  1. ESPN: The B.S. Report with Bill Simmons.  A sports/pop culture podcast
  2. Filmspotting; Streaming Video Unit (SVU)  Film critics discuss movies through the streaming video (e.g. Netflix) prism.
  3. Shields and Brooks: PBS NewsHour Podcast  A civilized discussion of the week's politics.
  4. Sound Opinions  Music podcast featuring new music review, classic album dissections, etc.
  5. Valtimax Business Strategy and Marketing Podcast  Dave Lorenzo shares his business knowledge

Myriad Genetics v. USPTO

The Federal Circuit upheld Myriad’s right to patent “isolated” genes known as BRCA1 and BRCA2, which account for most inherited forms of breast and ovarian cancer.  But the court denied the biotechnology company’s effort to patent methods of “comparing” or “analyzing” DNA sequences.

Read the Federal Circuit Opinion.

Dennis Crouch summarized the opinion in Patently-O:

On remand from the Supreme Court (GVR), a three-member panel of the Court of Appeals for the Federal Circuit has released its highly anticipated decision in AMP v. Myriad. The key results:

  1. Affirmed: The courts properly have jurisdiction over the declaratory judgment case.
  2. Reversed: Myriad's composition claims to isolated DNAs, including cDNAs fall within the scope of Section 101 patentable subject matter.
  3. Affirmed: Myriad's method claims directed to comparing or analyzing gene sequences are not subject matter eligible.
  4. Reversed: Myriad's method claim to screening potential cancer therapeutics via in vitro changes is subject matter eligible."

This decision largely follows the decision previously released by the same panel in 2011. Each member of the court wrote separate opinions, with the opinion of the court filed by Judge Lourie, Judge Moore concurring in part and Judge Bryson dissenting in part. In dissent, Judge Bryson again employed his leaf analogy – arguing that a gene that was merely isolated from the human body cannot itself be patentable in the same way that a naturally grown leaf does not become patentable simply because it is plucked from its tree. Judge Bryson writes:

[E]xtracting a gene is akin to snapping a leaf from a tree. Like a gene, a leaf has a natural starting and stopping point. It buds during spring from the same place that it breaks off and falls during autumn. Yet prematurely plucking the leaf would not turn it into a human-made invention. That would remain true if there were minor differences between the plucked leaf and the fallen autumn leaf, unless those differences imparted "markedly different characteristics" to the plucked leaf.

The majority (here judges Lourie and Moore) disputed the leaf analogy based upon the apparent technical difficulty of isolating human DNA.

It is also important to dispute the dissent's analogy to snapping a leaf from a tree. With respect, no one could contemplate that snapping a leaf from a tree would be worthy of a patent, whereas isolating genes to provide useful diagnostic tools and medicines is surely what the patent laws are intended to encourage and protect. Snapping a leaf from a tree is a physical separation, easily done by anyone. Creating a new chemical entity is the work of human transformation, requiring skill, knowledge, and effort.

Prof. Crouch comments continue that he expects the decision to be reheard en banc.

The opinion shows that patent relating to DNA remain patentable subject matter.  However, care must be taken in drafting the claims.

Also notable, the ACLU was one of the appellants.  The American Civil Liberties Union, which brought the case, argued that patents on human genes violated the First Amendment and patent law because genes are “products of nature.”


Will Your Invention Change How People Think about Your Industry?

While many inventions revolutionize an industry based on cutting-edge high technology or materials with miraculous properties, some of the most sweeping inventions involve apply disruptive (i.e. non-traditional) thinking to a pervasive problem.

Keith W. Tantlinger, who was eulogized in the New York Times by David Leonhardt, was an inventor who had a simple invention (US Patent No. 3,027,025) that revolutionized the shipping industry:

"Tantlinger developed a lock that connected to the corners of containers and that crane operators could mechanically open and close from their seats.

A drawing from Tantlinger’s 1958 patent for stacking shipping containers, from United States Patent and Trademark Office.

The lock, which led to the adoption of uniformly sized containers over the next 15 years, caused a revolution in shipping. The time and cost of transporting goods fell sharply, which contributed to an astonishing boom in global trade."

What the invention and the article point out is "'There was no breakthrough in terms of material. ... There was a breakthrough in thinking.'"

If you have an invention that will revolutionize how people in your business will think, you should contact a registered patent attorney for a consultation to begin protecting your invention.


New Patent Fee Schedule Announced by USPTO

The United States Patent and Trademark Office (USPTO) announced its September 26, 2011 Fee Schedule.  The new schedule is effective on September 26, 2011.  A surcharge of 15% will be added to most patent fees.

A side-by-side comparison of prior and new patent fees is posted on the USPTO website.

The surcharge was provided by Section 11 of the recently enacted America Invents Act (AIA).  The surcharge fees are to be held for patent office expenses only and are not to be designated for other purposes.

Micro-entities will NOT be provided a 75% discount, at this time.  The AIA gives the USPTO the power to especially micro-entity discounts.  Rules regarding micro-entities are to be created before the reduction is enacted.  Small entities will continue to be entitled to 50% discounts on all fees.

Fees that are payable now with deadlines after September 26, 2011, can be paid before the deadline to avoid the surchage.



US Supreme Court Affirms Invalidity Must be Proven by Clear and Convincing Evidence

Microsoft Corp. v. i4i Ltd. Partnership

The US Supreme Court in Microsoft Corp. v. i4i Ltd. Partnership affirmed that 35 USC 282 requires an invalidity defense to be proved by clear and convincing evidence.  The opinion was deliverd on June 9, 2011.

Read the slip opinion.  SOTOMAYOR, J., delivered the opinion of the Court, in which SCALIA, KENNEDY, GINSBURG, BREYER, ALITO, and KAGAN, JJ., joined. BREYER, J., filed a concurring opinion, in which SCALIA and ALITO, JJ., joined. THOMAS, J., filed an opinion concurring in the judgment. ROBERTS,
C. J., took no part in the consideration or decision of the case.

This results maintains the legal value of patents to patent holders and prevent those rights from being diminished.

Read "Microsoft Loses Final Appeal in $290 Million Patent Case" for the NY Times story on the case.

Microsoft Loses Final Appeal in $290 Million Patent Case