March 30, 2007
Generic drug maker Teva took on Novartis for its Famvir® herpes drug by filing an ANDA with the FDA. Teva figured facing five patents, but Novartis only sued for infringing one. So Teva sought declaratory judgment "to obtain patent certainty" on the other four. The district court dismissed, but, in light of the Supreme Court MedImmune ruling last November, and the CAFC's Sandisk ruling a few days ago, the CAFC (06-1181) remanded, telling the district court to take the case. Any "actual controversy" now lays the tarmac for takeoff of a declaratory judgment filing.
March 29, 2007
Acer Computer has been doing fine: sales are up, and Acer is now ranked fourth in computer product sales in the U.S. So what does competitor Hewlett-Packard do? Saddle up the palomino; ride on down to the Eastern District of Tejas (HP-207-cv-00103-TJW); draw the pistolero out of its holster, and make Acer dance.
Merck sued Hi-Tech Pharmacal for patent infringement. Hi-Tech replied: patent expired. Merck said it had an extension, and the district court agreed. So Hi-Tech appealed (CAFC 2006-1401). The CAFC ruled:
[As to] whether a patent term extension under the Hatch-Waxman Act, 35 U.S.C. § 156, may be applied to a patent subject to a terminal disclaimer under 35 U.S.C. § 253, filed to overcome an obviousness-type double-patenting rejection[: b]ecause the language of § 156 is unambiguous and fulfills a purpose unrelated to and not in conflict with that of § 253, we hold that a Hatch-Waxman term extension may be so applied.
March 28, 2007
Now that major corporations, such as IBM, Microsoft, and General Electric, have bought into "community" patent application review, as a seemingly altruistic but really self-interested way of appearing to care about improving patent quality, they're figuring the gotcha': willful infringement. In other words, top corporations are led by folks who have more money than brains to think through the legal consequences of their actions.
IBM IP suit David Kappos mealymouths patent reformist sentiments, hard-pedaling statutory patent reform with soft-core reasoning. BusinessWeek's latest pro-corporate missive: It's Time for Patent Reform. Computer technology anti-patent sycophants at least may eat this up.
March 27, 2007
Declaratory Judgment Threat
In its Sandisk ruling yesterday, the appeals court lowered the bar for seeking declaratory judgment (DJ) in patent cases, rebuking its own precedent in light of the Supreme Court's recent MedImmune v. Genentech ruling. While not defining "the outer boundaries of declaratory judgment jurisdiction," having had infringement asserted is now reason enough to seek declaratory judgment; a company need not "bet the farm," waiting for a lawsuit, while pursuing its business. Fear or internal knowledge of infringement is not enough; the patentee must take some "some affirmative act." Could a simple invitation to license trigger a DJ reaction? - It certainly seems so.
March 26, 2007
Winning the War
While we are winning the war in Iraq by gentle persuasion that touches the hearts and mind of the whole world, other governmental efforts are also reaping the fruits of benevolence. Today, USPTO director Jon Dudas launches his five-year agency-wide Strategic Plan, with the goal of becoming "employer of choice." Row, row, row your boat to the PTO.
March 24, 2007
The Salt of Obviousness
Apotex's successful appeal against Pfizer (CAFC 06-1261) points at the near chaotic state of anticipation in case law, ad hoc consideration of what constitutes an obvious innovation, as opposed to a patentable invention. In the case of Pfizer's Norvasc compound, invalidity challenges had been rejected by three different district courts before the CAFC pulled an upset, declaring the mixture obvious. The court elucidates where presumptions lie with regard to obviousness, what constitutes "reasonable expectation of success" has to do with what would have been expected, that the threshold of "undue experimentation" is beyond routine testing, that "obvious to try" isn't good enough, and that predictability has nothing to do with it (huh?). "[P]atentability is not imparted where ‘the prior art would have suggested to one of ordinary skill in the art that this process should be carried out and would have a reasonable likelihood of success.’" Creating a formula to promote litigation, to the appeals court, obviousness is like pornography: you only know it when you see it. And, like good pornography, you better look it over carefully.
March 23, 2007
Verizon pressed for an injunction against Vonage, after a jury found three patents infringed of five asserted. East Virginia district court Judge Claude Hilton indicating he would consider signing a permanent injunction on the affected technologies was like a toilet flush on Vonage stock, which dropped 26% today, to $3.
March 22, 2007
Liebel asserted four patents against Medrad. In the second appeal of the litigation, the appeals court (CAFC 06-1156) concurs with a district court ruling that Liebel had not enabled broadened claims in two of the four patents, thus invalidating the patents under 35 U.S.C. § 112, ¶ 1. Liebel had broadened its claims to ensnare Medrad, and so tripped itself up over its own greed. The full scope of claims must be enabled. As the CAFC tooted: "The motto, “beware of what one asks for,” might be applicable here." Concurring again with the district court, the other two asserted patents were found invalid by prior art; cited prior art; in summary judgment, with no factual dispute.
Microsoft & Fuji Xerox
Microsoft announced yesterday evening that it had eloped with Fuji Xerox, inking a broad patent cross-licensing agreement. From it, Fuji Xerox obtains peace of mind for its software, some of which includes a Linux base. Microsoft gets to stick Fuji Xerox technology into Office as it pleases. Terms of the deal were not disclosed.
March 20, 2007
Doctrine of Equivalents Screwed
According to Festo, prosecution estoppel forecloses enforcement under the doctrine of equivalents (DOE) owing to surrendered claim scope during prosecution to gain allowance. In litigation, the rub becomes how closely associated the narrowing of a claim is to the rejection, and whether the equivalent in the accused product was foreseeable at the time of prosecution. In Cross Medical v Medtronic (CAFC 05-1415), the majority find Festo in full flower, while a well-reasoned concurrence rails at the very principle of tangentiality.
Cantor sued Brokertec over 6,560,580, which claimed trading fixed income securities, replacing the prior art of "open outcry" trading. When Cantor asserted '580, it dredged a past it could not erase: Cantor had initially failed to disclose earlier work, then put forth a disingenuously deceptive declaration to cover that up. About intent to deceive: "The affirmative act of submitting an affidavit must be construed as being intended to be relied upon."
March 19, 2007
Copyright Infringement Safe From Patent Infringement
6,614,729 claimed a digital live event recording system, designed to "virtually eliminate the problem of illegal bootlegs." Evil bastards! So the Electronic Freedom Foundation (EFF) shot it down.
March 18, 2007
The patent flogging of Vonage continues, this time by patent holding company Web Telephony, which asserted two patents against a slew of VOIP players and wannabes, including Vonage nemesis Verizon, as well as AT&T, Earthlink and SunRocket.
Chalk One More
Microsoft won a small victory Wednesday in fending off Alcatel-Lucent's patent onslaught, when the San Diego district court judge refereeing the conflict pitched 4,763,356, claiming touch-screen form entry, in summary judgment as not infringed.
March 16, 2007
The vast majority of patent cases settle, often when facing trial, or after a preliminary ruling, such as Markman (claim construction). With trial scheduled for Monday, Broadcom and Qualcomm have settled another of their multifarious cases against one another. Software security maven McAfee settled with Acacia over a patent on Internet hyperlinks on CDs and DVDs. And the Orlando Utilities Commission settled with Emergis Technologies for a patented online payment system.
March 15, 2007
In a press release celebrating its prosecution con job, the USPTO wants your patent application on virtual methamphetamine. Just like the self-destructive nature of chemical speed on the human body, accelerated examination may feel like a rush towards patent grant, while leaving the patent holder with open-ended liability.
This is not patent related, but I feel an obligation to my readers to warn them away from Microsoft Vista® and Office 2007. I've been using them for almost two months, and rue the day I transferred to the new computer.
March 14, 2007
Aiming to get security screening equipment free, the U.S. Airport Police State, officially known as the Transportation Security Administration (TSA), has aimlessly wandered into a patent infringement suit, among other charges, between two competitors, over ads on "divestiture bins" and "composure tables."
March 13, 2007
Ready for Patenting?
Ultra Flex sued PolyPro for infringing 6,186,934 and 6,428,208, going to plastic display bags with “chip hooks” for hanging the bags on retail display racks. Infringement was undisputed, but PolyPro won summary judgment via one-year on-sale bar (35 U.S.C. §102(b)). The appeals court (CAFC 06-1497) ruled that summary judgment was premature, owing to factual dispute as to whether Ultra Flex's invention had been reduced to practice, and thus "ready for patenting," when Ultra Flex started selling the product.
March 12, 2007
To encourage technological development, in November 1996, the USPTO provided a partial waiver of restriction requirements for claimed nucleotide sequences. In an about face today, looking to cut pendancy, the agency rescinds the waiver, effective immediately.
March 9, 2007
Consumer products whiz 3M has sallied forth in Minnesota district court and the ITC over its lithium-ion battery patents (6,964,828 & 7,078,128). The targets are computer laptop makers: Sony, Lenovo Group (who bought the IBM PC line), CDW, Batteries COM, Hitachi, Matsushita Industrial Electronic, Panasonic, Total Micro Technologies, and a host of subsidiary siblings. Hint to defendants: save yourself grief & take a license.
March 8, 2007
Losing business because of lousy service, Goliath Verizon nailed David Vonage for infringing three patents. The immediate damage to Vonage: $58 million, 70% less than the $197m sought, and an ongoing 5.5% royalty if Vonage doesn't figure a workaround. The infringement was found not willful. Verizon is seeking a permanent injunction. This is but the first patent attack which Vonage must weather, or wither.
March 6, 2007
LegalForce IP launches, in beta, its patent classifieds: patents for sale, and networking for hungry patent practitioners (none yet onsite). Using "patent engineers" in India, LegalForce IP also aims to provide a variety of cut-rate patent services, including prosecution, prior art search, valuation, auctioning, clearing opinions, licensing & litigation support.
Roche sued Apex Biotechnology and Hypoguard, then Home Diagnostics, over its diabetes test devices, patented under 5,366,609 & RE 36,268. Apex and Hypoguard filed summary judgment motions, mooted by subsequent settlement under confidential terms. Last Friday, Home Diagnostics won a summary judgment of non-infringement.
March 5, 2007
Amberwave asserted 5,158,907 against Intel in July 2005 in the Eastern District of Texas, later adding 7,074,655. Intel rebutted, and various lawsuits arose in a running battle. Intel continually cried wolf with non-infringement, while Amberwave was a wolf snarling willful infringement. Now the posturing is history. Amberwave scored a settlement from hard-nosed Intel, who laid down like a lamb, getting a 10-year license to Amberwave's patent portfolio in return for undisclosed big green.
March 4, 2007
In a stunning concession, Sony agreed to pay Immersion $150 million to settle a five-year litigation battle. Sony puts behind it a string of courtroom defeats.
A week after getting handed a $1.52 billion tab for infringing MP3 digital music patents, Microsoft, in a district court ruling Thursday, dodged a different Alcatel-Lucent patent bullet over speech recognition.
March 2, 2007
Franklin Electric sued OPW for infringing 5,085,257, which claims a sump cover. Summary judgment of noninfringement was based upon a narrow claim construction of "facilitate positioning." The appeals court (CAFC 06-1442) took a different view, not reading too much into the figures, and noting that "[A]n attribute of the preferred embodiment cannot be read into the claim as a limitation."
Continuation Limits Undead
A couple of days ago, Hal Wegner reported USPTO Under Secretary Jon Dudas putting nails in the coffin of earlier proposed continuation restrictions. Now it appears continuation restrictions are undead.
March 1, 2007
Patent Enforcement Trends
PricewaterhouseCoopers released its 2007 survey of patent enforcement. It found less business method action, more alternative dispute resolutions, and, owing to rising costs, the first decline in litigation filings in 16 years.