In Golden Hour Data v. emsCharts, a decision rendered by the Court of Appeals for the Federal Circuit on August 9, 2010, the Federal Circuit remanded the case to the district court for it to make detailed factual findings as to whether Applicant and/or patent counsel actually read a highly material brochure that they identified on an information disclosure statement but never produced to the Patent Office, knowing it to be material. The brochure cover was consistent with, but its inside contents were inconsistent with, prosecution arguments. Golden Hour Data, No. 2009-1306, slip op. at 26.  

In this action involving charges of inequitable conduct during prosecution of a patent application, the Court explained that the failure to advise the PTO about the integrated billing disclosed in the brochure is explainable by either (1) the failure of Applicant or patent counsel to read the brochure or (2) the deliberate withholding by Applicant and/or patent counsel of damaging information on the inside of the brochure that they had read.  Id. at 21  On the key question of whether Applicant and/or patent counsel in fact read the brochure the district court failed to make any finding of fact.  Id. at 21  The Federal Circuit remanded this issue to the District Court since “it is not the task of the Federal Circuit to make factual findings [on materiality and deceptive intent]”.  Id. at 12, 26-27. 

The Federal Circuit also affirmed a grant of judgment as a matter of law (JMOL) with respect to joint infringement.  The majority first considered the process claims and relied on Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) and BMC Resources, Inc. v. Paymentech, L.P, 498 F.3d 1373 (Fed. Cir. 2007), for the well established proposition that “control or direction” of one party by another is required for joint infringement of process claims. The Federal Circuit held the method claims not infringed because no one person exercised “control or direction” over the entire process.  The system claims were likewise not infringed but only because the parties had agreed to submission of the system claims to the jury on a joint infringement theory based on the control or direction of Softech by emsCharts. Id. at 28  As stated by the Court “such a sale might well [have] create[d] liability on the part of emsCharts for the sale of the patented system, whether or not emsCharts controlled Softech.”  Id. 

The Juhasz Law Firm can help you to better understand the effect of Golden Hour Data on your patents. For more information regarding Golden Hour Data and advice on how this decision may affect your patents, please contact The Juhasz Law Firm.

Your patents may be your most important asset. To help you protect your patents contact Juhasz Law, the firm committed to Positioning Your Patent Beyond The Horizon℠.

For more on Golden Hour go to the August 2010 Juhasz Law Advisory.

The Supreme Court’s decision in Bilski was a welcome relief for the business, software, and medical diagnostic industries.  Yet the Supreme Court has provided very little guidance on how to patent business, software, and medical diagnostics patents other than stating that an abstract business method is not patentable and that the method must include more than technological limitations or insignificant post-solution activity.

In the aftermath of Bilski, now more than ever, a practitioner needs to understand what structure or process makes a post-solution activity not insignificant.  For software patents, it is no longer enough to tie the software to a computer or the internet.  Software claims should recite computer architecture specially programmed and recite data representing physical and tangible and not abstract objects.  For diagnostic method patents, claims should recite determining chemical levels by other than visual inspection and not rely on naturally occurring samples for patentability; rather reciting transformation of biological samples. 

To help you better protect your patents, Juhasz Law is happy to make available a Special Edition of the Juhasz Law Advisory entitled Juhasz Law’s 20 Claim Drafting Tips – For Patenting Business, Software, and Medical Diagnostic Methods in the Aftermath of The Bilski Decision.  This Special Edition of the Juhasz Law Advisory was released on a limited basis on July 17, 2010 but is now available on the Firm’s website.  To receive your copy of this publication, go to the July 2010 Juhasz Law Special Edition Advisory  .

Hope you find these drafting tips useful in your practice.

Your patents may be your most important asset.  To help you protect your patents contact Juhasz Law, the firm committed to Positioning Your Patent Beyond The Horizon℠.

Posted by Paul R. Juhasz, President

 6/29/2010

 In In re Bilski[1], a decision rendered by the U.S. Supreme Court on June 28, 2010, the Supreme Court held that business methods are not categorically outside of 35 U.S.C. §101.  Still, the Supreme Court rejected the Bilski application under its precedents on the unpatentability of abstract ideas providing little further guidance on what constitutes a patentable “process” other than “pointing to the definition of the term in §100(b) and looking to the Benson, Flook, and Diehr precedent.”  In re Bilski, No. 08-964, slip op. at 16. 

The Benson precedent referred to by the Court is the holding that an algorithm is not a “process” but an unpatentable abstract idea.  Id. at 13  A contrary holding “would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”  Id. at 13  In Flook, unlike the algorithm in Benson, the mathematical formula used for monitoring conditions during the catalytic conversion process in the petrochemical and oil-refining industries was limited so that it could still be freely used outside the petrochemical and oil-refining industries.  Id. at 14  Nevertheless, the Flook Court rejected “[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process.”  Id. at 14  As the Court later stated in Diehr, Flook stands for the proposition that the prohibition against patenting abstract ideas “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment” or adding “insignificant post solution activity”. Id. at 14.  Finally, in Diehr involving a method for molding raw, uncured synthetic rubber into cured precision products using a mathematical formula to complete several of the steps by computer, the Court explained that “while an abstract idea, law of nature, or mathematical formula could not be patented, an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”  Id. at 14

In determining what business methods are not an abstract idea the Supreme Court has provided little guidance other than pointing to the definition of the term “process” in §100(b) and the trilogy precedent of the Court in Benson, Flook, and Diehr”.  For more on Bilski and its likely impact on your patents, go to the June 2010 Juhasz Law Advisory .

As the Supreme Court noted “the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles”.  Id. at 10  For today’s patent program to be successful, Companies must understand this balance and craft their business method claims so they are applied to structure or process defined by other than a limitation to a particular environment or by the addition of an insignificant post solution activity.

The Juhasz Law Firm can help you to better understand this balance and the effect of Bilski on your claims, including, if you are a patent holder, helping you craft claims to better weather a 35 U.S.C. §101 statutory challenge, or, if you are dealing with a third party patent, providing you with strategic counseling to help you understand whether asserted claims likely meet or fail to satisfy the statutory subject matter standard.

Your patents may be your most important asset.  To help you protect your patents contact Juhasz Law, the firm committed to Positioning Your Patent Beyond The Horizon℠.

Posted by Paul R. Juhasz, President

(News Release) – May 21, 2010 – Juhasz Law, whose core business is providing strategic patent lawyering services that allow companies to better see, understand, and realize the potential strategic value from their patents has announced a new office location. The new office is located in the center of the Westchase business district at 10777 Westheimer, Suite 1100, Houston, TX  77042.

“We feel that our new surroundings in the heart of the Westchase District better reflects our ambitions and concept of what Juhasz Law should be,” stated Paul R. Juhasz Founder of Juhasz Law.

The Juhasz Law Firm is undergoing great changes as part of its strategic structuring to leverage the strengths of several new and existing members of the Patent Horizon legal team.

These changes bring great experience to the Juhasz Law team and reflect the company’s determination to better serve clients. As part of the new aggressive growth strategy for 2010, Juhasz Law is also increasing its focus on creating a national footprint  with the new office marking a physical transformation for this ever responsive organization.

 To reach Juhasz Law, the main telephone number is 713—260-9643. 

 # # #

Juhasz Law is a highly flexible, forward-thinking patent law firm, whose core business is the development of strategic patent solutions for Guiding Your Patent Beyond the Horizon℠.

In Association For Molecular Pathology v. U.S.P.T.O and Myriad Genetics[1], a decision rendered by the U.S. District Court for the U.S. District Court for the Southern District of New York on March 29, 2010, isolated DNA containing naturally-occurring human BRCA1/2 gene sequences linked to breast and ovarian cancer were not “markedly different” from native DNA as it exists in nature and hence constitute unpatentable subject matter under 35 U.S.C. §101.  For an analysis of Association For Molecular Pathology see the April 2010 Juhasz Law Advisory .

Understanding how to claim a composition or process narrowly enough to encompass only a particular application of a fundamental principle rather than pre-empting the principle itself, is easier said than done.  There needs to be meaningful specific “machine” or “transformation of an article” limits on the claim’s scope to impart patent-eligibility.  In addition, the “machine” or “transformation” must be central to the purpose of the claimed process; not merely be insignificant extra-solution activity. This exercise is very case specific and fact intensive. 

That is why the more you can do to understand this evolving body of law and the factors important to lending patentability to a composition or process claim, the more, if you are a patent holder, steps you can take to ensure your claims meet the statutory patentability standard, or, if you are dealing with a third party patent, confidence you can have that the third party patent claims constitute or do not constitute statutory subject matter.  The Juhasz Law Firm can help you to better understand the effect of this body of law on your claims, including, if you are a patent holder, helping you craft claims to better weather a 35 U.S.C. §101 statutory challenge, or, if you are dealing with a third party patent, providing you with strategic counseling to help you understand whether asserted claims likely meet or fail to satisfy the statutory subject matter standard.

Your patents may be your most important asset.  To help you protect your patents we hope you think of Juhasz Law, the firm committed to Positioning Your Patent Beyond The Horizon℠.

Posted by Paul R. Juhasz, President

The Juhasz Law Firm, P.C. has announced the first dates and details for the Spring Conference Series “Choosing a Path to Value for Your Intellectual Property . . . Is there a better way?”  The Conference series is planned as a series of seminars to be held March and April in the Pacific Northwest and Texas regions.  The seminars are intended for executive management and those in the organization held accountable for better patent decision making and return on investment.

At the core of the Spring Conference Series is the IP Path to Value℠ platform which is how business and legal strategies can be integrated to drive company value.  For more on the virtual blueprints of The IP Path to Value℠ platform go to the IP Path to Value℠ Lawyering Services page on the Juhasz Law Firm website.

Companies attending the seminars will be treated to a host of intellectual property topics around the integration of business and legal strategies to drive company value including the following:

     1. How the changing business climate and patent laws are forcing companies to rethink how they manage their intellectual property assets.

      2. The differences between managing a business and managing IP and how to recognize those differences to gain competitive advantage.

      3. New perspectives as to the importance of strategic thinking in IP management and how to design, develop, and implement strategic IP thinking to impact business strategies.

      4. Introduction to business tools useful in selecting and managing IP for strategic positioning and corporate value.

      5. The IP Path to Value℠ nine stage model and how it can help companies to get more out of their IP assets.

Each Conference event in the Series is intended to be a networking event and an exchange of ideas for those who have responsibility for developing and managing their company’s intellectual property programs.

Bellevue, WA – March 4, 2010

The Hyatt Regency Bellevue

900 Bellevue Way Northeast – The Maple Room
Bellevue, WA 98004

Registration begins at 4:30pm.

Program starts promptly at 5:00pm and ends no later than 6:30pm. Refreshments, including wine and cheese, will be served.

Houston, TX – March 31, 2010

JW Marriott Houston

5150 Westheimer
Houston, TX 77054

Registration begins at 5:00pm.  Program starts promptly at 5:30pm and ends no later than 7:00pm. Refreshments, including wine, cookies and cheese, will be served.

Austin, TX – April 1, 2010

Austin Renaissance Hotel

9721 Arboretum Boulevard
Austin, TX 77054

Registration begins at 5:00pm.  Program starts promptly at 5:30pm and ends no later than 7:00pm. Refreshments, including wine, cookies and cheese, will be served.

For more information about these seminars please contact pjuhasz@patenthorizon.com  

To register for the event visit http://www.the-sage-group.com/choosing-an-IP-path-to-value/

In Hewlett-Packard v. Acceleron LLC, a decision rendered by the Federal Circuit in December 2009, objective factors surrounding Acceleron’s licensing initiative did indeed implicate specific HP products giving rise to the right of HP to bring a declaratory judgment action.  For an analysis of Hewlett-Packard v. Acceleron LLC in light of  MedImmune, Inc. v. Genentech, Inc. see the January 2010 Juhasz Law Advisory .

Yet understanding the objective factors that may cause a potential licensee to believe that the relationship drawn by the patent holder does indeed implicate a specific product is easier said than done.  Further complicating this subject is that this exercise is very case specific and fact intensive.  

That is why the more you can do to understand these objective factors the more, if you are a patent holder, steps you can take to immunize yourself against a declaratory judgment action, or, if you are a licensee target, confidence you can have in bringing a declaratory judgment action on an offer to license.  The Juhasz Law Firm can help you to better understand the effect of this body of law on your licensing and litigation programs, including, if you are a patent holder, the strategic use of confidentiality agreements and relationships to minimize the likelihood of triggering a declaratory judgment action, or, if you are licensing target, strategic counseling on bringing a declaratory judgment action.

Speaking about strategic relationships, The IP Path to Value^(SM) program offered by The Juhasz Law Firm through a Strategic Alliance with The Sage Group provides companies with important strategic licensing options.  In Hewlett-Packard v. Acceleron LLC, the Federal Circuit found significant the objective factor that the letters to HP came from a patent holder company Acceleron, whose sole business was to license patents.  As stated by the Court “Acceleron is solely a licensing entity, and without enforcement it receives no benefit from the patent.  This adds significance to the fact that Acceleron refused HP’s request for a mutual standstill.” See discussion in the Juhasz Law Advisory noted above.  The IP Path to Value^(SM) program enables a company to leverage the strategic business counseling skills of The Sage Group in managing some or all parts of a licensing program, like initiating and conducting licensing discussions.  As strategic business consultants, they provide a compelling alternative to trolls or licensing companies whose business involves patent litigation or patent litigators or lawyers. For more on the IP Path to Value^(SM) program visit the Firm’s website at www.patenthorizon.com .  For more on The Sage Group, visit www.the-sage-group.com

Posted by Paul R. Juhasz, President

Paul R. Juhasz

The Juhasz Law Firm, P.C.

11806 Montmarte Blvd.

Houston, TX 77082

Email: pjuhasz@patenthorizon.com

(d) 281-741-0633

Juhasz Law Firm strikes alliance with The Sage Group℠Delivering a “Path to Value” for Intellectual PropertyHouston, TX – November 20, 2009

The Juhasz Law Firm announced today a strategic alliance with The Sage Group, a value strategy company headquartered in Seattle, WA.

Through this alliance, both companies intend to make available the IP Path to Value℠ suite of products and service offerings through a nine stage multi-disciplinary approach. “We are assisting companies to strategically identify, grow and realize a company’s patent portfolio value”, said Paul R. Juhasz, the founder of the Juhasz Law Firm and co-developer of The IP Path to Value services.

“We intend to guide an organization to strike the appropriate balance between patenting everything (but doing so at considerable cost and inefficiency) and patenting little to nothing leaving the company unprotected with unrealized intellectual capital”, said Juhasz.

“The IP Path to Value suite of products and service offerings integrate patent management with business strategy and technical innovation”, said Ron Worman, Managing Director of The Sage Group. “We believe organizations can leverage intellectual property assets to drive technology leadership, market position, and competitive advantage resulting in increased economic value using our approach.”

The Juhasz Law Firm has been qualified as a preferred vendor of independent legal services in the IP Path to Value program. The Sage Group manages the value strategy propositions in the IP Path to Value suite of products and service offerings.

“The IP Path to Value suite of products and services is available to clients of the firm as yet another tool to assist them to think more strategically about their patents – not just when it comes to asserting their patents through downstream licensing programs or in litigation, but at every upstream step of the patent process,” said Juhasz. “The IP Path to Value suite of products and services provides clients of the firm with certain strategic patent thinking options that nicely complement the traditional patent lawyering services that are provided by The Juhasz Law Firm.”

The IP Path to Value suite of products and services is scheduled for wide release in January, 2010.

About the Juhasz Law Firm, P.C.

The Juhasz Law Firm is an IP counseling, protection, licensing and litigation company. Combining deep IP experience, broad IP capabilities across a wide spectrum of industries and technologies, and extensive expertise in IP strategies, The Juhasz Law Firm collaborates with clients to help them better see, understand, and realize the potential strategic value from their IP. Contact Paul R. Juhasz.@ 281-741-0633. www.patenthorizon.com

About The Sage Group℠

Fundamentally, The Sage Group is about “value”. Sage assists business owners and leadership teams facing a business inflection point around “value”: how to see “value” more clearly, how to grow “value” more effectively, and how to realize “value” more predictably. SAGE works closely with client’s internal resources and the company’s market ecosystem creating a path to achieve optimized value for their business by defining, accelerating, and sustaining compelling personal, professional, and corporate performance. Contact Ron Worman @425.467.4667. www.the-sage-group.com

Download a PDF Version of this Press Release

View The Sage Group’s press release

On the surface, the firm offers a traditional patent practice. But under the hood you will also find strategic counseling services based on proprietary methodologies that may enable more strategic protection for your ideas.

The protection of your ideas gets better with more options and innovation. The strategic counseling that The Juhasz Law Firm provides is another option. The firm hopes you give the firm a chance to assist you in protecting your ideas.

So check out the firm’s WebSite at www.patenthorizon.com for yourself and see how The Juhasz Law Firm, P.C. can help you protect your ideas.

The website was designed to showcase the services offered by the Firm. It is also intended to give companies a feel for how offering these services through the “prism of value” of methodologies like that represented by The IP Path to ValueTM suite of products and services differentiates the Firm from other patent attorneys.

The Firm invites you to check out the firm’s website at www.patenthorizon.com for yourself and see how The Juhasz Law Firm, P.C. can help you protect your ideas. If you are in need of “value enhancing IP services”, the Firm hopes you think of The Juhasz Law Firm, the firm committed to “Positioning Your Patent Beyond The Horizon”™.

Contact:
Paul R. Juhasz
The Juhasz Law Firm, P.C.
11806 Montmarte Blvd.
(o) 281-741-0633
(c) 631-525-2710