Tag Archives: United States Patent and Trademark office

Reporter: Patent system failed heart valve inventor

One of the biggest obstacle to inventors today may the system created to protect them. Research cardiologist Tory Norred thinks so.  

In a recent post on IP Watchdog, excerpted below, I summarize how investigative reporter Scott Eden skewers the U.S. patent system in the July-August Popular Mechanics article, “How the U.S. Patent System Got So Screwed Up.”

Eden, an award-winning reporter, whose credits include the Wall Street Journal, ESPN and TheStreet, examines the devastating impact of recent changes to the patent system by focusing on an inventor who got caught up in it.

The NPR-style article tells the story of Tory Norred, a fellow in the cardiology program at the University of Missouri cardiologist, who in 1998, came up with the idea for a collapsible prosthetic aortic valve that could be fished up through an artery with a catheter, and implanted in the hearts of patients who suffered from failing aortic valves. Unlike previous valves, Norred’s stent disperses the force needed to hold it in place against the aorta’s walls, requiring no sutures.

gallery-1466458424-pmx07116-patentoffice15In November 2002 he received U.S. Patent No. 6,482,228, “Percutaneous Aortic Valve Replacement.” Norred knew that he was onto something important, but that was not the beginning of success, it was the start of a nightmare that led to repeated frustration.

“That’s my valve!”

Norred spent the next four years talking to venture capitalists, medical products companies and even a Stanford University consultant, in an effort to finance his invention. Despite many quality meetings, no one was interested in providing capital or product development – including the product-development people he signed non-disclosure agreements with at Medtronic, Edwards Lifesciences, Johnson & Johnson, and Guidant.

“By September 2003,” writes Eden, “Norred had all but given up on his dream when he and a colleague were strolling the exhibition hall at an important cardiology congress held annually in Washington, D.C. They came upon a booth occupied by a California startup called CoreValve. With increasing alarm, Norred studied the materials at the booth. He turned to his colleague: ‘That’s my valve!'”

The rest of the story is not unfamiliar: CoreVale basically ignored him, and Norred settled into private practice. Then, in 2009, Norred saw the news online: CoreValve had sold itself to Medtronic for $775 million in cash and future payments.

In fact, collapsible prosthetic valves fished up through an artery with a catheter and implanted in the aorta are well on their way to becoming the standard method of replacing worn-out heart valves. Thee annual market has already surpassed $1.5 billion and is expected to grow.

Immediate Suspicion

The remainder of “How the U.S. Patent System Got So Screwed Up,” is devoted to the slow decline of the patents system over the past decade, and how a handful of patent “trolls” have been used as the reason to systematically dismantle much of the patent system. The same system that was the envy of the free-world and spawned many breakthrough inventions, as well as successful businesses that employ millions.

“Norred wasn’t a troll,” continues the article, “and the decision to sue did not come easily for him. His lawyer told him that the cost to litigate could exceed half a million dollars. Norred did not have half a million dollars. He considered letting it drop and moving on with his life, but in the end he couldn’t. ‘It’s gallery-1466458804-pmx07116-patentoffice17hard to give up on something you’ve worked so hard on,’ he said.”

“Whenever an independent inventor sues for infringement today, an immediate suspicion attaches to the case,” states Eden. “The anti-patent feeling is such that to assert one is to become stigmatized as a troll or, worse, a con artist or a quack. But there’s another way to look at these litigants. It could be that an inventor-plaintiff is a modern-day Bob Kearns, the Michigan engineer who spent decades fighting the global automobile manufacturing industry over the intermittent windshield wiper. They made a movie about it called Flash of Genius.

Greater Uncertainty

Inter partes reviews (IPRs) were supposed to clear up much of the uncertainty surrounding patents that are thought to be infringed, by determining which, if any, of their claims are valid in the first place. But IPRs also have had an unfortunate side effect. IPR tribunals make it easier for sophisticated defendants to kill patents held by legitimate inventors.

“The IPR isn’t an effort to figure out whether an inventor invented something,” says Ron Epstein, the former Intel attorney. “It has turned into a process where you use every i-dot and t-cross in the law to try to blow up patents… There isn’t a patent that doesn’t have some potential area of ambiguity.”

Go here to read, “How the U.S. Patent System Got So Screwed Up.”

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Popular Mechanics was first published in 1902. It is known as the monthly bible of the independent inventor. 

In 2011, two of Scott Eden’s pieces received “Best in Business” awards from the Society of American Business Editors and Writers (one for investigative reporting and one for feature writing). Eden is former staff reporter for TheStreet and Dow Jones Newswires.

Image source: popularmechanics.com

Patent Quality Commissioner will provide performance update at Corporate IP Counsel Forum

Valencia Martin Wallace, Deputy Commissioner for Patent Quality at the United States Patent and Trademark Office, will deliver the keynote address at the USPTO’s Enhanced Patent Quality Initiative at the 8Valencia_Wallace-Martinth annual Corporate IP Counsel Forum in New York, March 23-24.

Chief IP and In-House Counsel from a broad cross-section of industries and companies will be speaking at the two-day event. Topics include “Navigate the PTAB Process” and “Evaluate Patent Damages Reform Measures to Improve Risk Management.”

Readers of IP CloseUp who are in-house attorneys are invited to attend IP Counsel Forum at an 80% discount. By using the promo code BBIPCU when reserving they can attend for $195.

“Exploring the IP Issues of Open Source Software” will be the topic of a round-table discussion led by Red Hat’s Robert H. Tiller at the end of the first day.

Industries and companies represented include:

IT/Electronics:

  • Vringo
  • Entegris
  • Broadcom, Ltd.
  • IBM Research
  • NCR Corporation
  • Red Hat

Insurance/Finance:

  • MasterCard
  • The Hartford Financial Services Group
  • Aetna

Pharmaceutical:

  • HR Pharmaceuticals
  • MedImmune
  • Merck
  • Alexion Pharmaceuticals

Consumer Products:

  • Colgate-Palmolive
  • Avon Products
  • PepsiCo
  • Conair Corporation
  • FormLabs
  • Monsanto
  • Robert Bosch
  • Luxottica Group
Higher Education:

  • Columbia University
  • UVA Licensing and Ventures Group

Entertainment/Hospitality:

  • CBS Law Department
  • Fuse Media
  • Marvel Entertainment
  • Starwood Hotels & Resorts

Chemicals/Biotech:

  • Heraeus Incorporated
  • Advaxis
  • Chemtura
  • Rambus
  • Thermo Fisher Scientific

Corporate IP Counsel Forum is produced by the World Congress and sponsored by Intel among others. The event is being held at the Marriott Eastside at 525 Lexington Avenue at 48th Street. For the agenda and speakers go here. For pricing and registration information here or call +1 800-767-9499.

Image source: uspto.gov; worldcongress.com

 

Appointment & Timing of “Deputy” USPTO Director Disturbs Many

By naming former Google IP Chief Michelle Lee Deputy Director the Obama administration has tipped the patent scales in favor of tech businesses with special interests.

In the absence of a named Director for over a year, naming Michelle Lee as Deputy effective January 13 will make her the Office’s highest ranking executive. Ordinarily this would not cause a stir, but Google is not a typical technology company. It is vehemently anti-patent, opposed to broad range patents and holders. The company has spent tens of millions of dollars lobbying the Congress and the White House for weaker innovation rights.

Google makes no bones about its position, especially as it relates to software patents, where its ubiquitous search franchise could be vulnerable.

Michael Loney reports in “Lee’s Appointment Causes a Stir” on the Managing Intellectual Property blog that the naming “has sparked concerns, as well as questions cpcnsl-MichelleLee-by-Dino-Vournasabout whether legally [Lee] can be appointed at all.”

Dennis Crouch of PatentlyO also weighed in, questioning the legality of the appointment in “Michele Lee, Acting as Director but not ‘Acting Director’.” 

“Lee’s appointment does have a genuine statutory problem. In particular, the statute requires that a Deputy Director be appointed by the Secretary of Commerce “upon nomination by the [USPTO] Director.” 35 U.S.C. § 3. Because there is no Director, there could be no such nomination.

“One reason why there is no Director is that position requires Senate approval (as required by the Constitution), and the President’s approach here appears to be an attempted end-run around that process.”

Joff Wild in the IAM blog observed in “Why now and why not at director?” that the timing of Lee’s appointment has profound implications:

“What is interesting about the deputy job, though, is that while the post-holder runs the office in the absence of a permanent Director, she does not have to be approved by legislators. Had Lee been appointed Director now or any time earlier she would have had to have gone in front of the Senate Judiciary Committee, which would then have had to have decided whether to forward her nomination to the full Senate for a final vote of approval.

“It’s inconceivable that this was not fully known to everyone involved in the process of putting Lee in place. Thus, it is hard to escape the conclusion that a principle driving force behind making her deputy Director and not Director is that the Obama administration wanted to avoid legislative scrutiny of her appointment. If that is the case, the question then is why?

“The obvious answer is Lee’s past links to Google, a company which has thrown a lot of lobbying money at and provided loud vocal support for significant reform to the US patent litigation system, and which also strongly supports restricting the patentability of certain types of invention – notably those relating to software. There is little doubt that members of the Senate would have focused on Lee’s views on such issues and her ties with Google had they been given the opportunity to do so.”

*     *     *

Last month at the IP Business Congress in Singapore, someone said to me, half in jest, I thought at the time, that “Google is to Obama Administration what Halliburton was to Bush’s.”

That’s no longer sounding very funny. Former Google CEO Eric Schmidt has been a close Obama adviser and fundraiser, and has helped to craft the White House’s IP policy.

While Google may be the definitive search engine its patent policies are designed to promote its own agenda, not the future of innovation, inventors or other businesses. It is the job of the President and Congress to refrain from partisan politics and keep a watchful eye on potential conflicts of interest, or their appearance.

The questionable appointment of Ms. Lee after more than a year without a USPTO Director, and without the Senate’s approval, may very well cement Mr. Obama’s legacy as the anti-patent/ anti-innovation President, and one too easily lead astray.

Image source: patentlyo.com; bizjournals.com


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