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					PATENTING TAX STRATEGIES: KILLIN’ THE SNAKE




          PATRICK LEWIS O’DANIEL
            Fulbright & Jaworski L.L.P.
          600 Congress Avenue, Suite 2400
                 Austin, TX 78701
                         &
               KEVIN THOMASON
              Thompson & Knight LLP
          1700 Pacific Avenue, Suite 3300
                 Dallas, TX 75201




              State Bar of Texas
              25TH ANNUAL
        ADVANCED TAX LAW COURSE
             August 30 - 31, 2007
                   Houston

                   CHAPTER 5
                                        Patrick L. O’Daniel
                                     Fulbright & Jaworski L.L.P.
                                      600 Congress, Suite 2400
                                        Austin, Texas 78701
                                           (512) 536-5264

Education       The University of Texas School of Law
                J.D., with high honors, 1992 GPA: 4.07/4.3

                The University of Texas at Austin – May 1989
                Bachelor of Business Administration, Highest Honors
                Double Major in Accounting and Honors Business

Activities      Member, State Bar of Texas (1992 – Present)
                Member, State Bar of Texas, Tax Section, Chair, Committee on
                Government Submissions (COGS) (2005 – 2007)
                Treasurer, State Bar of Texas, Tax Section (2007 – Present)
                Member, Tax Section, American Bar Association (1993 – Present)
                Sub-Committee Chairman of Partnership Workouts Committee,
                American Bar Association (1998 – Present)
                President, Business, Corporate and Taxation Section of Travis County Bar Association
                (1997-1998)
                Treasurer, Texas Law Review (1992-1997)
                Articles Editor, Texas Law Review (1991 - 92)
                Editor, Harvard Journal of Law and Public Policy (1991-92)
                President, Federalist Society, University of Texas School of Law (1990-01)
                Omicron Delta Kappa – Leadership Fraternity
                President, Board Member, Catholic Charities of Central Texas (2000- Present)
                General Counsel, Board Member, Zachary Scott Theatre (2002-Present)

Awards          Marvin Key Collie Endowed Presidential Scholarship in Tax Law
                Carrington, Coleman Award for Academic Performance
                Jenkens & Gilchrist Tax Note Award
                Grand Chancellor
                Order of the Coif
                National Merit Scholarship
                Phi Kappa Phi, Golden Key Honor Societies
                Beta Gamma Sigma Business Honor Society

Experience      Fulbright & Jaworski L.L.P., Austin, Texas (Partner, 2007)

                Jenkens & Gilchrist, Austin, Texas
                tax associate, 1993-98; partner, 1999 – 2006

                University of Texas School of Law, adjunct professor, Partnership Tax, (2000-
                Present)

                Hon. Clarence Thomas, Supreme Court of United States, law clerk (1998-99)

                Hon. William L. Garwood, United States Court of Appeals, Fifth Circuit, law clerk
                (1992-93)

Miscellaneous   Certified Public Accountant
                               KEVIN THOMASON

                               Partner, Thompson & Knight LLP
                               1700 Pacific Avenue, Suite 3300, Dallas, TX
                               75201
                               214.969.2561, Fax 214.999.9261
                               Kevin.Thomason@tklaw.com



PRACTICE
Tax

PRACTICE DESCRIPTION
Kevin Thomason focuses his practice on the representation of clients in tax matters. He provides advice and
   counseling on partnership, corporate, and real estate tax issues, with an emphasis on tenant-in-common
   syndications, master limited partnerships, and like-kind exchanges.

DISTINCTIONS/HONORS
The Best Lawyers in America (Tax Law); 2006-2007
Texas Super Lawyers, Texas Monthly; 2003-2004, 2006

PUBLICATIONS/PRESENTATIONS
"Planning Under The Often Overlooked At-Risk Rules, Including The Impact of the Hubert Case," 65th Institute on
    Federal Taxation, New York University, San Diego, California, November 2006
"What's Hot In Section 1031?," Dallas CPA Society, Dallas, Texas, November 2006
"Partnership Interests for Services: The Proposed Regulations," Dallas CPA Society, Dallas, Texas, November 2006
"Introduction To Petroleum and Mineral 1031 Exchanges: Oil & Gas TIC Boot Camp," Panelist, Panel Discussion,
    The Inaugural Texas IMN Tenant-In-Common Transactions Forum, Dallas, Texas, November 2006
"What's Hot in Section 1031?," 54th Annual Taxation Conference, University of Texas CLE, Houston, Texas,
    November 2006
"What Impact are TIC Buyers Having on the Metroplex Investment Market?," Moderator, Panel Discussion, 5th
    Annual RealShare Dallas, Dallas, Texas, October 2006
"Exchanges of Oil and Gas Properties," Moderator, Panel Discussion, Real Estate Committee Program, Fall Meeting
    of the Section of Taxation of the American Bar Association, October 2006
"Yield Enhancements in Today's TIC Market," Panelist, Panel Discussion, 2006 Tenants-In-Common Association
    Annual Conference, Las Vegas, Nevada, October 2006
Sponsors Forum, Panelist, Panel Discussion, 2006 Tenants-In-Common Association Annual Conference, Las Vegas,
    Nevada, October 2006
"So You Want To Invest In A TIC Deal?," reprinted in Texas Real Estate Business, October 2006
"Proposed Regulations - Sections 83 & 721: Partnership Interests for Services," with Ronald C. Kalteyer, State Bar
    of Texas Advanced Tax Law Course, Dallas, Texas, September 2006
"Damage Control: When a Deal Doesn't Go as Planned," Panelist, RealShare TIC, San Francisco, California, August
    2006
"Black Box or Pandora's Box - What's in Third Party Due Diligence Reports, What Are Their Purposes, Who Are
   They For and Why?," Panelist, Panel Discussion, OMNI Brokerage Fall Conference, Midway, Utah, August
   2006
"Who'd a Thunk it? Pitfalls for New Sponsors," TICTALK, April 2006
"So You Want To Be A Sponsor? ," Moderator, Panel Discussion, Tenant-In-Common Association 3rd Annual
   Symposium, San Diego, California, March 2006
"Partnership Equity for Services," Tarrant County Bar Association, Tax and Estate Planning Section, Fort Worth
   Texas, February 2006
"So Your Client Wants to Invest in a TIC Deal," Moderator, Panel Discussion, Real Estate Committee Program,
   Midyear Meeting of the Section of Taxation of the American Bar Association, San Diego, California, January
   2006
"TICs and DSTs: The Cutting Edge of Like-Kind Exchanges," 52nd Annual Texas CPA Tax Institute, San Antonio
   and Dallas, Texas, November 2005
"TIC Update: The Future of TICs and How They're Helping Solve 1031 Exchange Investors' Replacement Property
   Challenges," Panel Discussion, RealShare Houston, Houston, Texas, November 2005
"What's Next for the TIC Business," Moderator, Panel Discussion, RealShare Dallas, Dallas, Texas, November 2005
"Alphabet Soup Entities," AICPA National Real Estate Conference, Las Vegas, Nevada, October 2005
"Like-Kind Exchanges: TICs and DSTs, an Update," with William P. Bowers, International Council of Shopping
   Centers, Phoenix, Arizona, October 2005
"Hot Tax Topics: Understanding the IRS and TICs," 2005 Tenants-In-Common Association Annual Conference, Las
   Vegas, Nevada, October 2005
"Overview and History of TICs, Basics of TICs," with Louis S. Weller, Anatomy of a TIC, Texas A&M University
   Real Estate Center, Dallas and Houston, Texas, September 2005
"Like-Kind Exchanges: TICs and DSTs, an Update," August 2005
"Partnership Tax Update," University of Texas CLE, Austin, Texas , July 2005
"Like-Kind Exchanges: Update, TICs and DSTs," State Bar of Texas Advanced Real Estate Law Course, San
   Antonio, Texas, July 2005
"Tenancy-in-Common Syndications: The Unanswered Questions," Moderator, Panel Discussion, 21st Annual Texas
   Federal Tax Institute, San Antonio, Texas, June 2005
"The American Jobs Creation Act of 2004 and Circular 230," Program Chair, State Bar of Texas, Dallas, Texas,
   April 2005
"The Evolution of TICs and Section 1031," Moderator, Panel Discussion, Real Estate Committee Program, Midyear
   Meeting of the Section of Taxation of the American Bar Association, San Diego, California, January 2005
"Tax Strategies Using Like-Kind Exchanges," Professional Education Systems Institute, Dallas and Houston, Texas,
   December 2004
"Goodwill Hunting: The Use of 'Personal Goodwill' and Other Planning Techniques in the Sale of Businesses," 2004
   Texas Society of CPAs Tax Institute, Dallas and San Antonio, Texas, November 2004
"Hot Topics in Taxation - What a Shopping Center Lawyer Needs to Know About Tenancy-in-Common
   Exchanges," with William P. Bowers, 2004 ICSC U. S. Shopping Center Law Conference, Hollywood, Florida,
   October 2004
"The Next Big Thing...The Who, What, Where, Why & How of Tenant-in-Common Investing...and How It Could
   Impact the Investment Market," Moderator, Panel Discussion, RealShare Dallas, Dallas, Texas, October 2004
"The Life Cycle of a 1031/TIC Transaction," Panelist, Triple Net Properties, LLC, 1031 Symposium, Las Vegas,
   Nevada, September 2004
"Practical Planning for Tenancy in Common (TIC) Exchanges," with Anthony Thompson and Louis Rogers, Section
   of Taxation of the American Bar Association Teleconference, July 2004
"Mergers, Acquisitions, and Conversions with Partnerships and LLCs," Current Issues Affecting Partnerships,
   Limited Partnerships & LLCs, University of Texas CLE, Austin, Texas, July 2004
"Use 1031 Exchanges to Invest In TIC Properties," Commercial Mortgage Insight, May 2004
"Goodwill Hunting," Financial Planning, May 2004
"Current Developments," Moderator, Panel Discussion, Partnership Committee Program 2004 Meeting of the
   American Bar Association Tax Section, Washington, D.C., May 2004
"1031 Exchange Update: Legal Issues Dealing with 1031 Exchanges," IBA Real Estate Networking Conference,
   Harvey Hotel, Irving, Texas, February 6-7, 2004
"Partnership Options: The Regulations at Last," 62nd Institute on Federal Taxation, New York University, San
   Francisco, California, November 2003
"Partnerships/LLC's: Options," Philadelphia Tax Conference, Philadelphia, Pennsylvania, October 2003
"Tax Strategies Using Like-Kind Exchanges," with Bradley C. Borden, Professional Education Systems Institute,
   LLC, Dallas, Houston, and Austin, Texas, September 2003
"A Practical Guide for the Rest of us on the Tax Treatment of Options in Partnerships and LLCs," University of
   Texas CLE Law, Austin, Texas, July 2003
"Tax Issues, Including 1031s and Entity Choices," Advanced Real Estate Law Course, San Antonio, Texas, July
   2003
"Partnership Options: The Proposed Regulations," Moderator, Panel Discussion, Partnership Committee Program
   2003 Meeting of the American Bar Association Tax Section, Washington, D.C., May 2003
"The Triumph of Policy: The Proposed Partnership Options Regulations," Co-Authored with John Maxfield, Journal
   of Passthrough Entities, March-April 2003
"Partnership Options and Related Instruments," 61st Institute on Federal Taxation, New York University, San Diego,
   California, November 2002
"Partnership Options," Moderator, Panel Discussion, Partnerships Committee Program, Fall Meeting of the
   American Bar Association Tax Section, Los Angeles, California, October 2002
"Entity Characteristics," Texas Wesleyan, October 2002
"Navigating the Maze of Partnership Options and Profits Interests," State Bar of Texas Advanced Tax Law Course
   2002; Houston, Texas, September 2002
"The Myth of the Capital Shift," Journal of Passthrough Entities, September-October 2002
"Estate Tax Phase Out and Repeal: What It Means for Real Estate Tax Lawyers," Moderator, Panel Discussion, Real
   Estate Committee Program, 2002 Meeting of the American Bar Association Tax Section, Washington, D.C., May
   2002
"Report on Partnership Options Project," Moderator, Panel Discussion, Partnerships Committee Program, 2002
   Meeting of the American Bar Association Tax Section, Washington, D.C., May 2002
"Estate Planning for Real Estate after Bush I," Moderator, Panel Discussion, Real Estate Committee Program, 2002
   Midyear Meeting of the American Bar Association Tax Section, New Orleans, Louisiana, January 2002
"Remember the Lock Box," Texas Lawyer, December 2001
"The Federal Income Tax Treatment of Partnership Options," Dallas Bar Association Tax Section, October 2001
"Avoid Tax Legally with 1031 Exchanges," Dallas Business Journal, August 10-16, 2001
"Treatment of Options in the Partnership and LLC Context: Report of the LLC Subcommittee on its Government
   Submission," Panel Discussion, Partnerships Committee Program, 2001 Annual Meeting of American Bar
   Association Tax Section, Chicago, Illinois , August 2001
"Reverse Like-Kind Exchanges: Analysis of New 'Safe Harbor' Rev. Proc. 2000-37," with William A. Kramer,
   Advanced Real Estate Law Course 2001, Houston, Texas, July 2001
"Reverse Like-Kind Exchanges: Analysis of New 'Safe Harbor' Rev. Proc. 2000-37," with William A. Kramer,
   Advanced Real Estate Law Course 2001, Dallas, Texas, June 2001
"The Taxation of Partnership Options," 17th Annual Texas Federal Tax Institute, June 2001
"How Will Estate Tax Repeal or Reform Affect Real Estate?," Moderator, Panel Discussion, Real Estate Committee
   Program, Meeting of the American Bar Association Tax Section, Washington, D. C., May 2001
"Plays Well With Others: IRS Amends Rules and Eases Reverse-Exchange Game," Co-Authored with William A.
   Kramer, Texas Lawyer, January 2001
"Reverse Like-Kind Exchanges: Analysis of New 'Safe Harbor' Rev. Proc. 2000-37," with William A. Kramer,
   Dallas Bar Association Tax Section, Dallas, Texas, December 2000
"Redefining Income from Discharge of Indebtedness," 9th Annual Advanced Institute for Partnership and Real
   Estate Tax Planning, Dallas, Texas, January 1993
"Federal Tax Deductions," Warren Gorham & Lamont, 1983

ACTIVITIES
Member, Dallas Bar Association, Tax Section; Chair, 2003; Vice Chair, 2002; Council Member, 2002-2003
Member, American Bar Association, Taxation Section; Real Estate Committee, 2000-present; Chair, 2007; Vice
   Chair, 2003-present; Subcommittee on Estate Planning Issues, Chair, 2000-2004; Partnerships and LLCs
   Committee, 2000-present; Subcommittee on Continuing Legal Education, Chair, 2002-2003
Member, State Bar of Texas, Taxation Section; Chair, 2007; Chair-Elect, 2006-2007; Secretary, 2005-2006;
   Treasurer, 2004-2005; Council Member, 1994-1997, 2002-2004; Partnerships and Real Estate Tax Committee,
   Chair and Vice-Chair, 1994-1997
Vice Chair and Moderator, Texas Federal Tax Institute, 1997-present
Director, Central Dallas Ministries, 2007
Director, Dallas For Children, 1995-2005; Chairman of the Board of Directors, 1995-1998
Trustee, Miracle at Pentecost Foundation, 2000-present
Member, Tenant-in-Common Association, 2004-present; Vice Chair, Legislative and Regulatory Committees, 2006-
   present

EDUCATION
J.D., 1979, cum laude, SMU Dedman School of Law, Hatton W. Sumners Scholar; Order of the Coif
B.S. in Accounting, 1976, summa cum laude, Oklahoma Christian College

ADMISSIONS
Texas, 1979
U.S. Dist. Ct., N. Dist. Texas, 1982
U.S. Tax Ct., 1982

PRIOR EXPERIENCE
Attorney-Advisor to the Honorable William A. Goffe, United States Tax Court, 1979-1981
Patenting Tax Strategies: Killin’ the Snake                                                                                                                         Chapter 5

                                                                  TABLE OF CONTENTS

I.     INTRODUCTION................................................................................................................................................... 1

II.    BACKGROUND..................................................................................................................................................... 1
       A. Some Basics ....................................................................................................................................... 1
       B. Obtaining a Patent.............................................................................................................................. 1
              1.     Eligible for Patent.....................................................................................................................................1
              2.     Useful .......................................................................................................................................................2
              3.     New and Not Obvious ..............................................................................................................................2
              4.     Difficulty of Judging Novelty and Obviousness ......................................................................................3

III. TAX STRATEGY PATENTS ................................................................................................................................ 3
       A. The PTO’s Classification of Tax Reduction Techniques .................................................................. 3
              1.     Class 705 and Subclass 36T Numbers......................................................................................................3
              2.     Three General Classes of Known Subclass 36T Tax Strategy Patents.....................................................4
       B. Concerns Regarding Patented Methods Consistent with the Code.................................................... 4
              1.     The SOGRAT Case ..................................................................................................................................4
              2.     Ramifications of the SOGRAT Patent Litigation .....................................................................................4
       C. Areas of Concern ............................................................................................................................... 4

IV. PROPOSED LEGISLATION ................................................................................................................................. 5
       A. Bar Efforts.......................................................................................................................................... 5
       B. Two Methods for Limiting the Scope of the Patent Laws by Legislation ......................................... 5
       C. The Texas Tax Section Proposal........................................................................................................ 5
              1.     Substance of the Texas Tax Section Proposal ..........................................................................................5
       D. Legislative Progress ........................................................................................................................... 5
       E. Congressional Bills ............................................................................................................................ 5
              1.     Senate Bill S.681 ......................................................................................................................................6
              2.     House Bill H.R. 2365 ...............................................................................................................................6
              3.     House Bill H.R. 1908 ...............................................................................................................................6
       F. Remaining Legislative Issues ............................................................................................................ 6

V. ETHICAL ISSUES ................................................................................................................................................. 6
       A.     Conflicts of Interest............................................................................................................................ 6
       B.     Confidential Client Information......................................................................................................... 6
       C.     Inducement Issues.............................................................................................................................. 7
       D.     Attorney Fees ..................................................................................................................................... 7
       E.     Circular 2.30 Issues............................................................................................................................ 7
       F.     Advertising Issues.............................................................................................................................. 7
       G.     Infringement Litigation...................................................................................................................... 7
       H.     Patent Ownership Issues .................................................................................................................... 7

VI. CONCLUSION ....................................................................................................................................................... 8




                                                                                        i
Patenting Tax Strategies: Killin’ the Snake                                                                   Chapter 5

PATENTING TAX STRATEGIES: KILLIN’ THE                         Financial, Inc., 149 F.3d 1368 (Fed. Cir. 1998) (State
SNAKE                                                         Street Bank).

I.   INTRODUCTION                                             a.    State Street Bank
                                                                    This seminal case is a tax method patent case
      Tax strategy patents have been making headlines         based on the provisions of the Internal Revenue code
recently due to the legislation being considered in the       of 1986, as amended (the “Code”), couched as an
Congressional House and Senate. If the bills are              applied algorithm. It was a patent on section 704(b)
passed, they would ban the patenting of tax strategies        and 706 compliance by a hub-and-spoke mutual fund
and make tax strategy patents unenforceable. In this          structure having a partnership at the center and
article we give an overview of the process behind             regulated investment companies (“RICs”) as partners.
patenting a tax strategy and the problems tax strategy        The patent involved daily book-ups and book-downs
patents create, we discuss pending legislation that           under section 704(b), reverse section 704(c)
could remedy the tax strategy patent problem, and we          allocations, and allocation of profits and loss according
raise the ethical issues that tax attorneys may face          to capital. See id., at 1371.
when confronted with a patented or patentable tax                   The Federal Circuit treated the patent as a method
strategy.                                                     for open-ended funds to process data in order to
                                                              determine share price. The signature patent claimed a
II. BACKGROUND                                                computerized method of managing “master feeder”
                                                              stock funds. See id., at 1371-77. However, the claims
A. Some Basics                                                and the Internal Revenue Service (the “Service”)
      Patents must be issued by the Patent and                regulations were very similar.
Trademark Office (“PTO”). Patents arise out of                      The district court held the patent invalid because it
federal law under Title 35 of the U.S. Code. Patents          was not patentable subject matter: it was merely a
last twenty years and provide robust protection for the       business method and/or an abstract mathematical
invention during that term. Specifically, a patent            algorithm. See id., at 1370.
provides the right to exclude others from making,                   The Federal Circuit reversed the district court,
using, selling, offering to sell or importing into the        stating that the district court “erred by applying the
United States, the thing that has been patented. A            Freeman-Walter-Abele test to determine whether the
patent holder brings a lawsuit in federal court and all       claimed subject matter was an unpatentable abstract
appeals go to the Court of Federal Claims.                    idea.” Id., at 1373. The Federal Circuit said that test
                                                              was no longer applicable after Diehr and In re Alappat,
B.  Obtaining a Patent                                        33 F.3d 1526 (Fed. Cir. 1994), because “the mere fact
    To obtain a patent, an inventor must invent               that a claimed invention involves inputting numbers,
something that is:                                            calculating numbers, outputting numbers, and storing
       •Eligible for patent                                   numbers, in and of itself, would not render it non-
       •Useful                                                statutory subject matter, unless, of course, its operation
       •New; and                                              does not produce a ‘useful, concrete and tangible
       •Not obvious.                                          result.’” Id., at 1374 (citing, in part, In re Alappat, 33
    Diamond v. Chakrabarty, 447 U.S. 303 (1980).              F.3d at 1544).
                                                                    The Federal Circuit held in In re Alappat, that
1.   Eligible for Patent                                      algorithms, which at one time were thought non-
     Traditionally, products eligible for patent were         patentable, may be patented if they are practically
new and inventive products and processes involving            applied, such as by programming them into a computer
industrial technology. As noted by the Supreme Court,         to provide a useful result. See State Street Bank, 149
eligibility for patent protection is meant to extend to       F.3d at 1373.
“[a]nything under the sun that is made by man.”                     Reviewing many of its earlier patent cases, the
Diamond v. Chakrabarty, 447 U.S. at 309. There were           court said that the business method exception had
only a few exceptions which included, laws of nature,         never been used by that court to deem an invention
natural phenomena, abstract ideas and pure algorithms.        unpatentable. Id., at 1375. The court ultimately held
See Diamond v. Diehr, 450 U.S. 175, 185 (1981)                that business methods may be patented as long as they
(Diehr).                                                      meet the general requirements for patentability. See id.
     Historically, business methods were considered                 Because this case was couched as an applied
pure algorithms Today, however, business methods              algorithm—a software program for computing
are eligible for patents based on the State Street Bank       allocation calculations—the tax bar unfortunately did
case. See State Street Bank & Trust Co. v. Signature          not perceive it as a patent of a tax strategy.

                                                          1
Patenting Tax Strategies: Killin’ the Snake                                                                   Chapter 5

b.   The State of the Law After State Street Bank              c.    The KSR Case: The Supreme Court’s More
     After State Street Bank, business method patents                Flexible Obviousness Test
are just as available as other patents: if the invention             In KSR International Co. v. Teleflex Inc., 550 U.S.
achieves a concrete, tangible, useful result, then it is       ___ (2007) (KSR), the Supreme Court adopted a more
patentable.                                                    flexible standard for judging the obviousness of an
                                                               invention when the invention is compared to prior art.
2.    Useful                                                         In its unanimous ruling in KSR, the Supreme
      The useful requirement has always been easy to           Court reversed the Federal Circuit and held that the
meet. See Juicy Whip, Inc. v. Orange Bang, Inc., F.3d          Federal Circuit applied the TSM test—a test for
1364 (Fed. Cir. 1999). It is important to note that            judging whether an invention is obvious based on
patent examiners are engineers and are not specially           comparisons to prior art—too narrowly and rigidly.
trained in tax matters.                                        See id.
      Thus usefulness does not mean an inquiry into                  Teleflex sued KSR for infringement of a patent
whether the invention is against public policy or              that Teleflex had on a certain type of adjustable
whether it is permissible under the tax law. Patent            automobile gas pedal. In defense, KSR asserted that
examiners traditionally cannot consult others outside of       the Teleflex patent was “invalid under the Patent Act,
the PTO, not even other federal agencies, in examining         35 U.S.C. § 103, because its subject matter was
particular patent applications.                                obvious.” Id., at *1. The district court applied the
      This was the Service’s initial concern that tax-         TSM test and granted summary judgment to KSR,
shelter promoters would patent their shelters and claim        stating that there was “little difference” between the
that the patent gave such a shelter a seal of government       prior art’s teachings and the patented invention. KSR,
approval. In the preamble to the proposed Treasury             550 U.S. at *9.
Regulations under Code Section 6011 issued just a few                The Federal Circuit reversed, saying that the
months ago, Treasury raised the issue of making                district court did not apply the TSM test strictly
patented techniques listed transactions. The Texas Tax         enough. See id.
Section submitted comments to Treasury supporting                    In reversing the Federal Circuit’s decision, the
this proposal.                                                 Supreme Court said that if a technique has been used to
      However, the usefulness requirement is not the           improve one device, and a person of ordinary skill in
cause of the greatest concerns surrounding patenting           the art would recognize that it would improve similar
tax strategies.                                                devices in the same way, using the technique is
                                                               obvious unless its actual application is beyond his or
3.    New and Not Obvious                                      her skill.” Id., at *13.
a.    Novelty                                                         However, the Court also emphasized that when
      The basic premise behind the novelty requirement         determining the obviousness of an invention, a court
is that if a person or entity has known about, used,           must ask whether the improvement of prior art
written about, or otherwise disclosed an idea before an        resulting in this invention is more than the predictable
individual invents something or applies for a patent,          use of elements of prior art according to their
those acts may, depending on timing, preclude the              established functions. See id., at *12. The Court
individual from obtaining a patent. The novelty                expanded the definition of an ordinary person such that
requirement is supposed to prevent patenting                   “[a] person of ordinary skill is also a person of
techniques that have been known or used for years.             ordinary creativity.” Id., at *17.
b. Obviousness                                                       The Court also described several factors that
      An invention is obvious if it would have been            should be considered when a court evaluates the
obvious to a person having ordinary skill in the art at        obviousness of an invention created by using elements
the time the so-called invention was made. A “person           of prior art: “Often, it will be necessary for a court to
of ordinary skill in the art” is neither a novice nor an       look to interrelated teachings of multiple patents; the
expert. An obviousness inquiry may not rely on                 effects of demands known to the design community or
hindsight bias, and the inquiry must consider only the         present in the marketplace; and the background
state of the art at the time of the invention.                 knowledge possessed by a person having ordinary skill
      Recently, the Supreme Court redefined the                in the art.” Id., at *14.
“teaching, suggestion, or motivation” (“TSM”) test for               This more flexible approach to the TSM test may
obviousness.                                                   make courts more likely and able to find an invention
                                                               obvious, but it may not help PTO examiners to see
                                                               when a tax strategy is truly obvious.



                                                           2
Patenting Tax Strategies: Killin’ the Snake                                                                         Chapter 5

4.    Difficulty of Judging Novelty and Obviousness                        •    Click on “Advanced Search” and enter:
      In general, it is likely very difficult for a PTO                         ccl/705/36T.
examiner to judge the novelty and obviousness of a tax
strategy, because no examiner is a tax lawyer.                         However, if a lawyer does a patent search, the
Typically, novelty and obviousness are judged by                  lawyer increases the possibility of treble damages for
looking at published and publicly available prior art,            knowingly inducing infringement if the lawyer advises
particularly in databases. However, examiners only                a client later to engage in a tax strategy that is already
have an average of 32 hours per application in which to           under a valid patent. One suggestion is to add a
make this determination.                                          sentence to the standard tax disclaimer legend saying
      Additionally, examiners frequently do not know              that no patent search has been conducted concerning
how to do tax research to access prior art. The Service           the advice, if any, given.
has given PTO examiners training regarding pension,
estate and gift, and financial products and the                   1.   Class 705 and Subclass 36T Numbers
American Bar Association (“ABA”) has organized a                       After the State Street Bank decision, business
pilot session for the PTO on how to do tax research,              method applications rose from 1,500 in 1998 to around
but compared to the average patent examiner’s                     7,000-8,000 applications per year in the last few years.
expertise in researching prior art in organic chemistry,               There are currently 59 issued tax patents in
the average patent examiner’s skill in researching tax is         Subclass 36T and 80 known pending applications. For
severely lacking.                                                 example, we know that the PTO has granted patents for
      Moreover, the pool of prior art for tax strategies is       “System and method for automating investment
very limited. Patent regulations permit submission of             planning,” No. 7,149,713, and “Financial methods
prior art to the PTO within two months of an                      using a charitably integrated business operation,”
application’s publication. Consideration is being given           Application No. 20070088582.
to extend this window to six months.
      However, the patent application must be disclosed           a.   System and Method for Automating Investment
only if the applicant intends to seek patent protection                Planning
abroad. This is unnecessary for most tax patents, and                  This patent is for a computerized scheme that
thus most tax patent applications will likely be                  automates investment planning for a client. The
undisclosed. Further, other tax practitioners will be             scheme uses client data regarding desired asset
reluctant to demonstrate such prior art because of                allocation, current asset portfolio, and preferred
lawyer-client confidentiality and the confidentiality of          domain to generate specific financial transaction
tax returns.                                                      recommendations. No. 7,149,713.
      Though fully training patent examiners in
conducting tax research would help them to better                 b.    Financial Methods Using a Charitably Integrated
judge novelty and obviousness, the limited availability                 Business Operation
of prior art would still be an obstacle to accurately                   This application is intended to patent the use of
judging the invention.                                            charitable trusts to achieve a business goal. More
                                                                  specifically, the patent application describes the
III. TAX STRATEGY PATENTS                                         process as: 1) establishing either a charitable remainder
                                                                  trust or a charitable lead trust, to achieve at least part of
A. The PTO’s Classification of Tax Reduction                      a business objective; 2) transferring one or more assets
     Techniques                                                   to the trust; 3) disposing of at least one asset within the
     The PTO already has a specific subclass of                   trust in furtherance of the business objective; and 4)
business method patents for tax reduction techniques.             passing benefits resulting from disposition of the asset
The PTO classifies patents and patent applications into           from the trust while shielding the business from a tax
classes and subclasses based on the technology field.             liability due to the disposing step, if the tax liability is
Generally, the PTO classifies all business method                 owing. Application No. 20070088582.
patents under Class 705, and it classifies patents
concerning tax strategies in Subclass 36T. Another                      However, as we mentioned above, since many tax
sub-category is 31. These are the numbers by which                strategies do not need foreign protection because they
one would search on the PTO website.                              are correlated to specific United States tax laws, the
                                                                  applications relating these strategies need not be
         •   To search the PTO website:                           disclosed. Thus, we do not know what types of tax
         •   Go to:                                               strategy patent applications may be pending.
             http://www.uspto.gov/patft/index.html.


                                                              3
Patenting Tax Strategies: Killin’ the Snake                                                                    Chapter 5

2.   Three General Classes of Known Subclass 36T                2.   Ramifications of the SOGRAT Patent Litigation
     Tax Strategy Patents                                            Certainly, some might argue that this patent
     The patents of which we know break down into               should have been invalidated in the litigation because
three general categories. First, many of the patents            funding a GRAT with an appreciating asset is arguably
concern algorithms for compliance and reporting—tax             a basic planning technique. Indeed, there exists the
software and the like—which do not raise particular             statutory “first inventor” defense. 35 U.S.C. § 273.
concerns regarding tax policy or tax administration.            This defense provides an infringement defense to any
Second, a few patents may constitute abusive tax                tax practitioner who “acting in good faith, actually
shelters, but, not surprisingly, few people have actually       reduced the subject matter to practice at least 1 year
risked publicizing these tax shelters by patenting them.        before the effective filing date of such patent, and
Finally, a substantial number of patents have been              commercially used the subject matter before the
issued for methods consistent with the Code.                    effective filing date of such patent.” 35 U.S.C. §
                                                                273(b)(1).
B.    Concerns Regarding Patented Methods                            However, the “first inventor” defense provides no
      Consistent with the Code                                  protection from the costs of litigating a patent
      The main concern with patented tax strategies that        infringement case. In 2005, the America Intellectual
are consistent with the Code is that these patents may          Property Law Association reported that the average
allow for the private capture of public law. There is a         patent infringement case typically costs $650,000 for
risk that a patent holder could claim ownership of              each party when the amount at risk is less than
certain routine planning tools, or a method which               $1,000,000 and $2,000,000 for each party when the
constitutes the most efficient manner of complying              amount at risk is between $1,000,000 and $25,000,000.
with the Code. That is tantamount to granting a patent
holder an ownership right over the relevant provisions          C. Areas of Concern
of the tax law and allowing the holder to collect                    Based on the information we can find about the
economic rent from other taxpayers whose transactions           types of tax strategy patent applications that might be
or activities fall within that area. The best example of        pending, we have identified several possible areas of
this disturbing trend is the so-called SOGRAT patent.           concern.
                                                                     Because the Service is offering PTO examiners
1.   The SOGRAT Case                                            training in estate and gift tax, several of those types of
     On January 6, 2006, the Wealth Transfer Group              patent applications must be in the pipeline. Also, it is
LLC sued Aetna, Inc.’s executive chairman, John W.              no coincidence that the first filed complaint in this area
Rowe, alleging infringement of U.S. Patent No.                  involves estate and gift tax planning.
6,567,790 (the “’790 patent”). See Wealth Transfer                   Another concern is the patent on tenant-in-
Group LLC v. Rowe, No. 3:06-cv-00024 (D. Conn.                  common (“TIC”) replacement property in a section
Filed 1/06/06). The ‘790 patent claims a method of              1031 transaction where the TIC property is under a
“establishing and managing grantor retained annuity             master lease. Questions have been raised regarding
trusts funded by nonqualified stock options” hence the          whether this patent is compliant with Rev. Proc. 2002-
moniker, SOGRAT. The patent was secured by an                   22, 2002-1 C.B. 733, Doc 2002-6847, 2002 TNT 54-
insurance broker—not a lawyer. Wealth Transfer                  12. That kind of consideration is irrelevant, though,
found Dr. Rowe because they were monitoring the                 because, as noted above, the PTO and the Service
quarterly filings by public companies, looking for a            operate in mutual administrative vacuums so that one
footnote indicating that an executive had transferred           agency’s rulings do not affect the other. Public policy
nonqualified stock options to a GRAT. This appears to           concerns are not the PTO’s concern in granting a
be the first and only case involving a tax patent.              patent.
     The case was in the discovery phase which was                   There is also a patent on the use of blocker
scheduled not to close until June of this year, but it          corporations to prevent tax-exempt investors in private
recently settled. The settlement was confidential,              equity funds from incurring unrelated business taxable
however, we know that the patent “is presumed to be             income (“UBTI”) with respect to their investments in
valid,” that the parties stipulated that “there are facts       such funds. This, too, is a well-known and popular
from which a trier of fact could conclude that the ‘790         structuring device. Further, there are questions on
patent is not valid and is not enforceable,” and that the       whether such blocker corporations have any non-tax-
defendant, Dr. Rowe, entered into a confidential patent         motivated purpose and would be respected for tax
license. See id. Neither side admitted any liability.           purposes.     That, though, is again irrelevant for
                                                                purposes of granting a patent.



                                                            4
Patenting Tax Strategies: Killin’ the Snake                                                                    Chapter 5

IV. PROPOSED LEGISLATION                                       the patent. This statute, therefore, does not make
                                                               medical processes ineligible subject matter for a patent,
A. Bar Efforts                                                 but it does prevent the patent holder from enforcing the
      First, the tax bar approached the ABA. However,          patent against those parties most likely to infringe it.
the ABA cannot support an initiative if one substantive        There are, however, several carve-outs for patented
group is opposed to it—that would be the ABA patent            medicines and medical devices.
bar. So the ABA has remained neutral on this issue.
      Second, Treasury visited with the PTO. At the            C. The Texas Tax Section Proposal
ABA meeting several months ago, Treasury Tax                        The Texas Tax Section proposal has adopted a
Legislative Counsel, Michael Desmond relayed that his          variation of the medical option.    The language,
talks with PTO counterparts have been nonproductive,           however, can be expanded to embrace the nuclear
and the PTO has been unreceptive to any fixes in this          option – thereby rendering all covered tax matters
area. “Their reaction was basically: ‘get over it. This        unpatentable.
is another business method and we’re going ahead with
it,’” Desmond told practitioners.                              1.   Substance of the Texas Tax Section Proposal
      Finally, the Texas Tax Section came up with its               The amendment eliminates the ability to obtain
own proposal. First, due to retroactivity concerns, the        injunctive relief or money damages with regard to
legislative fix will not apply to any patents issued           patent infringement involving either a taxpayer’s or a
based on an application filed prior to the date that the       tax practitioner’s (including that tax practitioner’s
legislation was introduced. So the patents granted and         “related professional organization’s”) utilization of a
in the pipeline are here to stay—no statutory fix for          “tax planning method.”
SOGRATs. Fortunately, many attorneys came to                        “Tax Planning Method” means a “plan, strategy,
recognize that tax attorneys are merely the “canaries in       technique or structure that is designed to or has, when
the coal mine” and that other attorneys will be affected       implemented, the effect of reducing, minimizing or
soon by these developments. Indeed, there is already a         deferring a taxpayer’s tax liability, but shall not include
patent for “a computer-based system for determining            the use of tax preparation software or other mechanical
whether certain items of evidence prove a conclusion”          tools used solely to perform or model mathematical
to model or select a jury.                                     calculations or prepare tax of information returns.”
                                                                    The “tax preparation software” exception is a very
B.   Two Methods for Limiting the Scope of the                 important carve-out for entities such as TurboTax.
     Patent Laws by Legislation                                Also note that “tax” covers not just federal but also
     There are two methods for limiting the scope of           State, county, city, municipality or other governmental
the patent laws by legislation. First, there is the            tax levy. The American Institute of Certified Public
nuclear option (literally). Congress has the power to          Accountants (“AICPA”) also as a lobbying push and is
declare particular types of technologies unpatentable.         looking to adopt what it calls the “Texas Solution.”
It has done this in one area—not surprisingly, for
nuclear devices.      Under 42 U.S.C. § 2181(a),               D. Legislative Progress
inventions useful solely in connection with special                 The Texas Bar is the first bar in the country to
nuclear material or atomic weapons are exempted from           formally endorse a legislative fix for the patenting of
patent protection.                                             tax strategies, and the Colorado Tax Section recently
     Second, there is the medical option. A few years          approved a resolution in support. The President of the
ago, doctors and surgeons began patenting medical              Texas Tax Section, Kevin Thomason, has been leading
procedures. Not surprisingly, infringement litigation          the charge.
followed. In Pallin v. Singer, 36 U.S.P.Q.2d 1050 (D.
Vt. 1995), Dr. Singer was sued for infringing a                E.   Congressional Bills
patented surgical technique, a stitch-free incision,                Currently, the Senate and the House of
developed for use during cataract surgery. The                 Representatives are each considering bills that would
American Medical Association (“AMA”) criticized the            limit tax strategy patents. Senate bill S.681 would
granting of the patent because it patented a common            essentially ban patents on tax strategies. House bill
procedure “used by an estimated 40% of                         H.R. 2365 essentially adopts the language proposed by
ophthalmologists.”                                             the Texas Tax Section. House bill H.R. 1908 parallels
     The result was the creation of the Physicians             S.681 in part and would make tax planning methods
Immunity Statute, under which patent holders are               “unpatentable.”
deprived of all remedies, both monetary and injunctive,
against licensed medical practitioners or related health
care facilities with respect to the performance of a
“medical activity” that constitutes an infringement of
                                                           5
Patenting Tax Strategies: Killin’ the Snake                                                                    Chapter 5

1.    Senate Bill S.681                                              Second, there are concerns regarding the World
      Senators Carl Levin, Barak Obama and Norm                 Trade Organization Agreement on Trade-Related
Coleman have introduced Senate bill S.681 which                 Aspects of Intellectual Property Rights (“TRIPS”).
would curtail patents on certain inventions, where “the         The United States could violate some of its treaties if
invention is with respect to a tax planning method, the         the United States made unenforceable patents that
predominant purpose of which is to minimize, avoid,             would be respected by foreign countries.
manipulate, or defer an individual taxpayer’s tax                    Finally, someone has to address whether and how
liability; provided, however, that this limitation does         to give immunity to tax practitioners and their firms
not include tax preparation software or other tools used        with respect to practitioners giving advice regarding
solely to perform or model mathematical calculations            the enforceability of tax patents.
or prepare tax or information returns.” Note, however,
that S.681 would have no effect on tax strategy patents         V. ETHICAL ISSUES
already granted.
                                                                     Tax attorneys may have more to worry about than
2.   House Bill H.R. 2365                                       whether or not they will get immunity for giving
     H.R. 2365, introduced by Rick Boucher, Steve               imperfect advice regarding the enforceability of tax
Chabot, and Bob Goodlatte and supported by AICPA,               patents; they have to worry about the ethical issues
would amend the limitations on damages provision of             surrounding tax strategy patents. This outline details
the Patent Act to essentially ban infringement actions          many of the ethical issues raised by the ABA in its
against tax payers, tax practitioners and related               May 2007 Section of Taxation meeting. Further,
professional organizations for use of a patented tax            although these issues have no answers given the recent
planning method (i.e., the nuclear option). While               developments in this area, it is important to present the
S.681 would have no effect on tax strategy patents              myriad of ethical questions in order to encourage tax
already granted, H.R. 2365 would essentially make the           lawyers to think about the ethical issues they may face
patents unenforceable.                                          in the course of their practices.
     “Tax Planning Method,” according to the bill,
“means a plan, strategy, technique, or structure that is        A. Conflicts of Interest
designed to reduce, minimize, or defer, or has, when                 Regarding conflicts of interest, under what
implemented, the effect of reducing, minimizing or              circumstances can a lawyer advise the client to use a
deferring, a taxpayer’s tax liability, but does not             patented tax planning strategy where the lawyer is the
include the use of tax preparation software or other            patent holder or owns an interest in the patent?
tools used solely to perform or model mathematical                   First, the lawyer may want the client to use the
calculations or prepare tax or information returns.”            lawyer’s patented tax strategy to validate the patent,
                                                                even if the lawyer is unsure of whether the desired tax
3.    House Bill H.R. 1908                                      consequences will result. In this situation, the lawyer
      The House adopted H.R. 1908, introduced by                would not be weighing all possible tax strategy options
Rick Boucher, on July 18, 2007. The section of the bill         and choosing the best one for his client; he would be
that amends Section 101 of the Patent Act would make            putting his own interests ahead of his client’s.
tax planning methods “unpatentable.” The bill defines                The lawyer might be further discouraged from
a “tax planning method” almost exactly as H.R. 2365             considering other tax strategies for his client because
does, the only change is that H.R. 2365 substitutes             of the license fees the lawyer could charge if the client
“scheme” for the word “structure.” The bill also states         used his patent. The lawyer might be more interested
that it cannot be construed as validating patents issued        in his financial gain than in his client’s needs; the
before the date of the bill’s enactment. Though this            lawyer would again be putting his interests ahead of
bill will stop future patenting of tax planning methods,        the client’s.
it will have no effect on existing tax strategy patents.             Even if the lawyer truly believes that his patented
                                                                tax strategy is the best option for his client, the lawyer
F.    Remaining Legislative Issues                              could be violating the Model Rules of Professional
      Nevertheless, both bills leave open several               Conduct (“MRPC”) if he does not disclose his interest
important legislative issues that should be discussed.          in the patent to his client and obtain the client’s
First, there is the issue of how to word the software           informed consent to “waive” the conflict.
exclusion. If worded carelessly, the software exclusion
could allow a patent applicant to change almost any tax         B.   Confidential Client Information
patent into a software patent by saying that the strategy            Will a lawyer be protecting the confidentiality of
is implemented through a software format.                       client information if the lawyer uses client information
                                                                to apply for a patent at the PTO?

                                                            6
Patenting Tax Strategies: Killin’ the Snake                                                                    Chapter 5

      Because MRPC 1.6 does not provide an exception             attorney has charged the client for work that will
for information provided to the PTO, it is unlikely that         ultimately require the client to pay an additional
a lawyer will be able to disclose confidential client            license fee if the client wishes to continue to reap the
information to obtain a patent without getting written           benefits of the work. Is this an ethical violation?
client consent. If a lawyer requests the client’s                      Suppose that an attorney already holds a tax
informed consent by offering to reduce the client’s fee,         strategy patent and wishes to have his client use that
MRPC 1.7 may raise ethical issues. In this situation,            tax strategy. Does MRPC 1.5 impose any limit on how
the lawyer wants to disclose the information in order to         much a lawyer holding a patent on a tax planning
obtain the patent, while the client may prefer                   strategy may charge a client for the use of the patented
nondisclosure.                                                   strategy?
      Additionally, what happens if patented tax                       In other words, are the license fees that the
strategies become a new class of “reportable                     attorney charges the client to use the patented tax
transactions” under IRC § 6011, with those who hold              strategy considered legal fees subject to MRPC 1.5?
patents and license them to others classified as
“material advisors”?                                             E.    Circular 2.30 Issues
      This could be an exception to MRPC 1.6.                          Submission of requested information to Internal
                                                                 Revenue Service under Circular 2.30, § 10.20 raises an
C. Inducement Issues                                             issue. Moreover, when does a patent application or
      Must tax advisors inform their clients of the risk         advice with regard to a patent trigger application of
of infringement of an existing patent?                           Circular 2.30?
      Although MRPC 1.4 does not specifically address                  Does application for a patent on a tax planning
this issue, it does require that a practitioner “explain a       strategy constitute practice before the Internal Revenue
matter to the extent reasonably necessary to permit the          Service under Circular 2.30, § 10.3?
client to make informed decisions regarding the                        If so, what are the consequences if the person
representation.” Essentially, when a lawyer knows that           obtaining the patent is not admitted to practice before
a client’s proposed course of action may result in               the Internal Revenue Service? If the patent applicant is
adverse legal action, such as an infringement suit, the          admitted to practice before the Service, do the covered
lawyer may have a duty under MRPC 1.4 to inform                  opinion and written advice rules of Circular 2.30, §§
and advise the client regarding the possibility of               10.35 and 10.37 apply to the submission of the patent
infringement.                                                    application?
      When can lawyers or clients be held liable for                   Do these rules apply with respect to other written
active inducement to infringe another’s patent if the            advice provided to users of the patent?
lawyers do a patent search for a tax strategy that they’d
like to use?                                                     F.   Advertising Issues
      In DSU Medical Corp. v. JMS Co. Ltd., 471 F.3d                  Will publicizing a tax strategy patent constitute
1293 (Fed.      Cir. 2006), en banc, the Federal Circuit         misleading advertising in violation of ethical rules?
held that in order to recover for inducement the
patentee must show that the defendant intended to                G. Infringement Litigation
cause infringement of the patent, in addition to having               When handling infringement litigation for a client
intended to cause the acts which happened to infringe.           that has infringed on the lawyer’s tax strategy patent,
This result will likely make inducement harder to                how should the lawyer deal with confidentiality of
prove. However, this result might also deter persons             client information and the conflict of interest between
with potential inducement infringement liability from            the lawyer and the client?
learning about existing patents.                                      Should the lawyer withdraw from representing the
                                                                 client, under MRPC 1.16?
D. Attorney Fees
     Suppose an attorney creates a tax strategy for a            H. Patent Ownership Issues
client and then wishes to patent the strategy. Can a                  How should a tax attorney address a situation
lawyer charge a client for work that benefits the client         where a client seeks a patent on a tax strategy that the
and is integrated into a patent application covering the         attorney developed for the client?
planning technique used for the client?                               How can an attorney prevent a client from
     This raises two additional issues: First, if the            patenting a tax strategy the attorney has created?
client and the attorney both benefit from the work, then              Perhaps the attorney can reserve the rights to
how should the attorney allocate the cost of that work           patent any tax strategies he develops for the client in
to reflect the shared benefits? Second, if the attorney          the engagement letter.
charges a client for work done in creating a tax strategy
and then uses that same work to patent the strategy, the
                                                             7
Patenting Tax Strategies: Killin’ the Snake                      Chapter 5

      Finally, suppose that a lawyer creates a tax
strategy for a client and then seeks to patent the
strategy. Who ultimately owns the patent?
      The lawyer or the lawyer’s firm? If the lawyer
joins another firm, can the first firm prevent the lawyer
from using the patent for a client’s benefit at the
second firm?

VI. CONCLUSION

      Though patenting tax strategies poses a significant
problem for the future of tax law, legislation seems to
be moving toward preventing that problem from
becoming unmanageable. With the House’s adoption
of H.R. 1908, the privatization of the public tax laws
will likely come to a halt, and if H.R. 2365 is
eventually enacted, all existing tax strategy patents will
become unenforceable, reversing any privatization of
the tax law that may have already taken place.
However, should legislative progress move in a
different direction, the ethical issues discussed above
will become more pronounced as the pool of tax
strategy patents grows.




                                                             8
Patenting Tax Strategies: Killin’ the Snake                                                                                                                      Chapter 5

                                                                 TABLE OF AUTHORITIES


Cases
Diamond v. Chakrabarty, 447 U.S. 303 (1980). ............................................................................................................. 1
Diamond v. Diehr, 450 U.S. 175, 185 (1981) ................................................................................................................. 1
In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) ................................................................................................................. 1
Juicy Whip, Inc. v. Orange Bang, Inc., F.3d 1364 (Fed. Cir. 1999) ............................................................................... 2
KSR International Co. v. Teleflex Inc., 550 U.S. ___ (2007).......................................................................................... 2
Pallin v. Singer, 36 U.S.P.Q.2d 1050 (D. Vt. 1995) ....................................................................................................... 5
State Street Bank & Trust Co. v. Signature Financial, Inc., 149 F.3d 1368 (Fed. Cir. 1998) ................................ 1, 2, 3
Wealth Transfer Group LLC v. Rowe, No. 3:06-cv-00024 (D. Conn. Filed 1/06/06)..................................................... 4
Statutes
35 U.S.C. § 103............................................................................................................................................................... 2
35 U.S.C. § 273............................................................................................................................................................... 4
42 U.S.C. § 2181(a) ........................................................................................................................................................ 5




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