January 30, 2007
Sensitech is exclusive licensee of RE36,200; Donald W. Berrian, inventor. Sensitech sued Time 'N Temperature (TNT) for infringement of '200. On summary judgment, the district court found the patent valid, and infringed, and placed an injunction on TNT. The appeals court readily ruled that was wrong (CAFC 06-1404).
The Patent Troll Myth
Emory law student James F. McDonough III has written an excellently researched paper on patent licensing companies, titled "The Myth of the Patent Troll: An Alternative View of the Function of Patent Dealers in an Idea Economy."
January 29, 2007
Thai Patent Snatch
Thailand has pulled the plug on patent protection for two drugs: Plavix, a blood-thinner, and Kaletra, a "second-line" treatment for HIV/AIDS. The move is not against World Trade Organization rules, called TRIPS, which allow a government to unilaterally declare a public health crisis and peddle patented drugs under compulsory license. Naturally, the drug companies are howling.
January 28, 2007
Wooden Claim Construction
Anderson sued Fiber Composites, both composite wood makers, for infringing six patents in two groups. At the district level, claim construction split the difference in decision. Both parties appealed (CAFC 05-1434). The core issue was whether the process to make a product could be read into the claims. In this case, the CAFC observed, prosecution estoppel narrowed construction: "An applicant’s argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well."
January 27, 2007
Lipitor is the best-selling drug in the world, having raked in worldwide sales last year approaching $13 billion. Thursday, an Ottawa district court judge invalidated one of the Canadian patents protecting Lipitor. (T-507-05)
January 26, 2007
Claiming methods for "enhancing the security of negotiable documents," Toronto-based Advanced Software Design (ASDC), exclusive licensee of 6,233,340; 6,549,624; & 6,792,110, owned by inventor Calin Sandru, Monday filed a complaint in the patent litigation hotbed Eastern District of Missouri (huh?). ASDC asserts that competitor FiServ's check fraud product, sold to Federal Reserve branch banks, infringes. (4:07-cv-00185-MLM)
At a meeting Wednesday of the Intellectual Property Forum of the Asia-Pacific Economic Cooperation (APEC), Japan proposed standardizing patent application forms and sharing examination results among member nations.
January 25, 2007
In a 2-1 split decision, the appeals court vacated and remanded a district court dismissals of a patent antitrust claim, where the patent was under a fog of accused fraud, and, separately argued, breach of contract related to patented technology. (CAFC 2006-1188).
January 24, 2007
The Needle and the Damage Done
January 22, 2007
Star Scientific owns 6,202,649 and 6,425,401, which claim methods for curing tobacco to reduce nitrosamine (TSNA), a carcinogen. Star sued R.J. Reynolds for infringement. RJR argued that claim terms to getting the right "controlled environment" were indefinite. (Maryland MJG-01-1504)
January 19, 2007
Ortho-McNeil Pharmaceutical sued Caraco Pharmaceutical Laboratories for infringing 5,336,691 after Caraco filed an ANDA. This claim construction dual was about defining the range meant by the claim term "about."
Terminal Disclaimer & Extension
Merck owns 4,797,413, a CIP of a CIP of a CIP, terminally disclaimed at the end of June, 2004, but granted a three-and-a-half year extension by the USPTO because it took the FDA almost six years to okay Merck's dorzolamide (trade name: Trusopt), the drug for glaucoma treatment claimed by the patent. Merck claims the extension rides on the tail of the terminal disclaimer, extending the patent to the end of 2007. Hi-Tech Pharmaceutical wants to market a generic version, and says there is no tail to a terminal disclaimer, at least in this instance. A New Jersey district court ruling favored Merck; a ruling Hi-Tech appealed. No appeals court decision yet, but the murky intersection between terminal disclaimer and patent extension may be plowed clear as a result.
January 18, 2007
Privity & Judicial Estoppel
5,318,080 claims a device for changing automatic transmission fluid. Transclean is exclusive licensee. In October 1997, Transclean sued Bridgewood, a maker of transmission service equipment, for infringement, and won. Then Transclean went after Bridgewood's customers.
January 17, 2007
FTC Commissioner Jon Leibowitz has his knickers in a twist, testifying today before the Senate Judiciary Committee about what he called anticompetitive patent settlements in the U.S. pharmaceutical industry.
January 16, 2007
Canon began SED TV technology research in 1986. In 1999, Canon took a patent license from Nano-Proprietary for its SED TV technologies. Canon then entered a joint venture with Toshiba in 2004 to develop this new type of flat-panel display. In doing so, it seems to have run afoul of its licensing agreement. Nano-Proprietary sued.
January 12, 2007
Not A Card
E-Pass shot blanks in asserting 5,276,311, which claims a method of replacing a bunch of credit cards with a single "multi-function card", against the makers of Palm PDAs and VISA. Following a narrow claim construction from the district court, E-Pass appealed, with the original district court ruling vacated by the CAFC. Next round: summary judgment of non-infringement by the district court on a slightly broader claim construction. So E-Pass appealed again (CAFC 2006-1356, -1357, -1358).
January 11, 2007
ITC Pummeling on Appeal
Jazz Photo refurbished and sold the shells of disposable cameras made by Fuji Photo Film. Fuji took Jazz to the ITC for patent infringement and won. Not entirely satisfied with the pummeling, Fuji appealed (CAFC 04-1618). The Jazz COO, Jack Benun, was dissatisfied with being pummeled, so he appealed.
January 10, 2007
MedImmune: The Practical Implications
January 9, 2007
Having It Both Ways
MedImmune took a patent license from Genentech to make and sell its cash cow drug Synagis, used to prevent a respiratory tract disease in the very young. When faced with the perceived prospect of having to pay more royalties for a follow-on Genetech patent, MedImmune bolted - stopped paying fees, and sued for declaratory judgment of invalidity. The case headed north, to the Supreme Court, as the lower courts wouldn't touch it, because, the lower courts ruled, a licensee can't wiggle out by acting scared. In a narrow 8-1 holding, the Supreme Court ruled that a licensee may seek declaratory judgment of patent invalidity without breaching its licensing obligations.
January 8, 2007
Amini Innovation sued Anthony California for infringing dresser furniture design patent D488,936. Anthony got a district court summary judgment of non-infringement. The appeals court: "not so fast." (CAFC 06-1096).
January 7, 2007
Bioprospecting is back in the news, with maca as the spearhead (pun intended). Maca is supposed to boost stamina, particularly sexually. Why would anyone be interested in such a thing?
January 6, 2007
IncreMentalAdvantage offers seminars on different aspects of the patent game, including litigation and overall patent strategies, IP valuation & patent monetization. The seminars are geared towards corporate IP counsel; fitting, as law firm attorneys benefit from understanding that perspective, as well as the conferences offering networking potential for prospective clients and service providers.
January 5, 2007
Abbott's Preliminary Injunction Rabbit
Abbott Labs sued Andrx, Roxane, and Teva for infringing patents related to extended release clarithromycin (6,010,718; 6,551,616; 6,872,407), sold by Abbott as Biaxin XL. The three defendants had filed ANDAs, which were approved. Abbot successfully moved for a preliminary injunction against all three from marketing their generic versions. Here is the case Andrx appealed (CAFC 06-1101).
Phillips v. AWH Turnabout
Phillips v. AWH was last year's CAFC claim construction classic. Remanded, the district judge in the case has overturned the $1.85 million willful infringement jury award, entering JMOL of non-infringement. The case has lasted a decade.
January 4, 2007
fedcirc.us is a new blog dedicated to slow-roasted reviews of federal circuit decisions, hosted by inveterate patent law bloggers Matt Buchanan, Stephen Nipper, and Doug Sorocco. Welcome!
DESA owns 5,598,066, for motion-activated security lights, a popular item with home-owning suburbanites. DESA sued EML Technologies and Costco for infringement. Claim construction of the claimed sensor means at the district court dimmed infringement, DESA conceded. Appealing, the CAFC (06-1168) remanded with a proper claim construction.
January 3, 2007
Back in March 2004, Kodak sued Sony for patent infringement of digital imaging technologies. Sony duly replied with its own ten-patent counterclaim. They then upped the ante with 24 Sony patents and 7 Kodak patents, for things like printers and film development. Folks couldn't keep track of the score, even reputedly changing the channel to snappy dance competitions. Faced with dropping ratings, the series was threatened with cancellation. So they gave it a happy ending by settling at the end of the year in a cross-licensing deal, with a bit of royalty to Kodak.
January 1, 2007
Injunctive relief, extraterritoriality, claim construction review, patent monetization, prosecution ways and means, and getting drugged are patent events and trends to watch for in 2007.
Measured by complaints filed, patent litigation rose 2% year-to-year in 2006, continuing a long-term trend (following a dip in 2005), with litigation up 11% in the past five years.