Category Archives: Intellectual Property Law

Patent Pilot Program in Certain U.S. District Courts

On December 17, 2010, Congress approved H.R. 628, a bill for a decade-long pilot program in which certain U.S. district courts will encourage enhancement of expertise in patent cases among district judges. During the Pittsburgh Intellectual Property Law Association Federal Judges Appreciation Luncheon & CLE Program’s Federal Judges Roundtable Discussion on March 16, 2011, Chief Judge Lancaster stated that he put in a request for the Western District of Pennsylvania to be one of at least six district courts that will be selected for the program.

The pilot program will allow district judges to request to hear patent cases. Those district judges who request to hear patent cases are then designated by the chief judge to hear them. In a participating district, a patent case will be able to be removed from a non-designated judge’s case load and then randomly re-assigned to a district judge designated to hear patent cases. The program is intended to “create a cadre of judges who gain advanced knowledge of patent and plant variety protection through more intensified experience in handling the cases, along with special education and career development opportunities” co-sponsor Hank Johnson, Jr. (D-GA) remarked.

The courts that are eligible to participate in the program are either: (1) the 15 district courts with the largest number of patent and plant variety protection cases filed in calendar year 2010; or (2) district courts that have adopted or certified the intention to adopt local rules for patent and plant variety protection cases. The Director of the Administrative Office will select at least: (1) three district courts with at least ten authorized district judgeships in which at least three judges have made a request to hear patent cases; and (2) three district courts with less than ten authorized district judgeships in which at least two judges have made a request to hear patent cases. During the ten year pilot program, periodic reports to the House and Senate will be made including comparison data between designated and non-designated judges on issues such as their reversal rates by the CAFC.

- Katie Cooper

The USPTO’s 2010 Performance and Accountability Report

The USPTO recently released its Performance and Accountability Report for Fiscal Year 2010. The Report provides a summary of program and financial results to assess the USPTO’s performance. This article will summarize some of the statistics that were provided in the Report.

At the end of fiscal year 2010, the USPTO work force included 9,507 federal employees. Of those 9,507 employees, 6,225 were patent examiners and 378 were trademark examining attorneys.

The Report provided statistics on the target and actual number of months from fiscal year 2006 to fiscal year 2010 for (1) Patent Average First Action Pendency, which measured the average time in months from filing until an examiner’s initial determination on the patentability of an invention; and (2) Patent Average Total Pendency, which measured the average time in months from filing until the application is issued as a patent or abandoned by the applicant.
(1) Patent Average First Action Pendency (in months)
Fiscal Year – Target – Actual
2006 – 22.0 – 22.6
2007 – 23.7 – 25.3
2008 – 26.9 – 25.6
2009 – 27.5 – 25.8
2010 – 25.4 – 25.7

(2) Patent Average Total Pendency (in months)
Fiscal Year – Target – Actual
2006 – 31.3 – 31.1
2007 – 33.0 – 31.9
2008 – 34.7 – 32.2
2009 – 37.9 – 34.6
2010 – 34.8 – 35.3

The results from 2010 in the two categories above were slightly below target.

The Report also included statistics from fiscal year 2006 to fiscal year 2010 on the percentage of patent applications that were filed electronically. The number of patent applications filed electronically has continued to increase as follows:
Patent Applications Filed Electronically
Fiscal Year – Target – Actual
2006 – 10% – 14.2%
2007 – 40% – 49.3%
2008 – 69% – 71.7%
2009 – 80% – 82.4%
2010 – 90% – 89.5%

Similarly, the Report provided information on the target and actual number of months from fiscal year 2006 to fiscal year 2010 for: (1) Trademark Average First Action Pendency, which measured the number of months from the date of application filing to the first office action; and (2) Trademark Average Total Pendency, which measured the average number of months from date of filing to notice of abandonment (unless a notice of allowance was issued), notice of allowance, or registration for applications based on use in that month.
(1) Trademark Average First Action Pendency (in months)
Fiscal Year – Target – Actual
2006 – 5.3 – 4.8
2007 – 3.7 – 2.9
2008 – 2.5 to 3.5 – 3.0
2009 – 2.5 to 3.5 – 2.7
2010 – 2.5 to 3.5 – 3.0

(2) Trademark Average Total Pendency (in months)

Fiscal Year – Target – Actual
2006 – 16.3 – 15.5
2007 – 14.8 – 13.4
2008 – 14.3 – 11.8
2009 – 13.0 – 11.2
2010 – 13.0 – *

* The average total pendency including suspended and inter partes cases was 13 months. Excluding applications that were suspended or delayed for inter partes proceedings, the average total pendency was 10.5 months. The above 2010 trademark targets were met.

The number of trademark applications filed electronically has also continued to increase:

Trademark Applications Processed Electronically

Fiscal Year – Target – Actual
2008 – Baseline
2009 – 62% – 62.0%
2010 – 65% – 68.1%

The data in the Report will be finalized and reported in the USPTO’s 2011 Performance and Accountability Report.

- Katie Cooper

USPTO Data Visualization Center and Patents Dashboard

In early September, David Kappos posted an article on his blog introducing the USPTO Data Visualization Center and Patents Dashboard. To help meet his goals of reducing the backlog of unexamined patent applications and driving patent pendency down, he will be making USPTO data easily accessible to the public through the Data Visualization Center and Patents Dashboard. He explained that traditionally the USPTO measured patent pendency at two points in the process: (1) measuring the average time from filing to the First Office Action; and (2) measuring the average time from filing to allowance or abandonment of the application. He stated that “these measures do not provide complete data about pendency across the USPTO. We therefore will now measure pendency in several additional ways to ensure we have a more complete picture, and will make the data available to the public.”

The patents dashboard provides USPTO performance indicators such as the number of applications in the backlog, production, actions per disposal, and staffing levels. The traditional “Total Pendency” measure stopped the clock with the filing of an RCE. A new measure, “Traditional Total Pendency Including RCEs” looks at pendency of applications from filing of the original application to ultimate disposal of that same application, including additional time attributable to RCE filings. Similar measures are provided for divisional applications and other types of continuation applications. The dashboard also provides information about pendency for applications in appeal. Some of the improvements the USPTO has made over the past year include a drop in the number of actions per disposal. One of the USPTO’s stated goals is to reduce first action pendency to an average of 10 months by 2015.
The August 2010 dashboard statistics at a glance are as follows:

1. First Office Action Pendency – 26.2 months;
2. Traditional Total Pendency – 35.4 months;
3. Patent Application Backlog – 728,055;
4. Average Actions Per Disposal – 2.4; and
5. Patent Examiners on Staff – 6,038.

The dashboard will be updated monthly. For those interested in more details about a particular statistic, a more detailed spreadsheet will be available for each measure with available data. Mr. Kappos has set up a mailbox for feedback from the public.

- Katie Cooper

Patent Infringement Suit in the District Court for the Western District of Pennsylvania

Ames True Temper, Inc. filed suit in the Western District of Pennsylvania against Southern Sales & Marketing Group, Inc. claiming patent infringement. Ames’ principal place of business is located in Camp Hill, Pennsylvania.

The complaint alleges that Southern Sales is infringing U.S. Patent No. 6,360,484, entitled “Planter and method of manufacturing same”. The abstract for the invention reads as follows:

A decorative planter includes a base having upper and lower portions and a flange disposed about the outer periphery of the upper portion. The planter also includes a collar dimensioned to encompass the upper portion of the base. The collar has a mechanical interface which engages the flange such that the collar and the flange form a decorative rim about the upper portion of the planter. The present disclosure also relates to a method of forming a decorative planter which includes the steps of: a) forming a base having upper and lower portions and a flange disposed about the outer periphery of the upper portion; b) forming a collar dimensioned to encompass the upper portion of the base, the collar having a mechanical interface dimensioned to mechanically engage the flange; and c) engaging the collar and the flange to form a decorative rim about the upper portion of the base.

An answer has not yet been filed.

Patent Infringement Case in Pittsburgh

Best Medical International Inc., a Virginia corporation, filed suit for patent infringement in the Western District of Pennsylvania against Accuray Inc. and several defendants as individuals on August 6, 2010. The patent in suit, U.S. Patent No. 5,596,619 entitled “Method and Apparatus for Conformal Radiation Therapy” is related to a method and apparatus for conformal radiation therapy with a specialized radiation beam.

The complaint alleges that Accuray has manufactured and sold a product that infringes the ‘619 patent. The complaint also alleges that the individual defendants have aided and abetted Accuray’s infringement of plaintiff’s patent and have divulged plaintiff’s trade secrets and intellectual property to defendant Accuray.

An answer has not yet been filed.

Trademark Infringement Suit Between Pennsylvania Companies

R.E. Whittaker Co., a Pennsylvania corporation based in New Castle, PA, filed a trademark infringement suit against Misco Products Corporation, a Pennsylvania corporation based in Reading, PA on July 9, 2010 in the United States District Court for the Western District of Pennsylvania.

Whittaker has been in the business of manufacturing and selling commercial carpet cleaning products for over twenty-five years. In 1992 Whittaker introduced a carpet cleaning product under the brand name Crystal Dry®. The Complaint alleges that Misco recently started promoting, advertising, and selling a carpet cleaning product identified by the mark “Crystal Clear.”

The causes of action in the Complaint are: trademark infringement under federal trademark law, false designation of origin and unfair competition, dilution of famous marks, and trademark infringement and unfair competition under Pennsylvania common law.

Pennsylvania Company Files Suit for Patent Infringement

On June 24, 2010 Jones Performance Products, Inc., a Pennsylvania corporation, filed suit in the United States District Court for the Western District of Pennsylvania against Bad Ass Custom Truck Parts Inc., a Kentucky corporation, asserting patent infringement.

U.S. Patent No. D549,624 was issued to Jones Performance for a “Truck Fender.” The ‘624 Patent discloses and claims an ornamental design for a truck fender.

The Complaint alleges that Bad Ass Custom Truck Parts has been making, offering for sale, selling, making use of, and applying the design shown in the ‘624 Patent to its own custom truck fenders. Jones Performance Products also allege that Bad Ass Custom Truck Parts created at least one mold for the creation of the infringing product.

An Answer has not yet been filed.