December 21, 2008
Sour Grapes
6,673,064
claims a laser catheter. Dr. Peter Rentrop sicked '064 on Spectranetics, and
copped a cool half million. Spectranetics, after sloppily stirring as
much trouble for Rentrop as it could, appealed losing on obviousness, among
other profundities. The appeals court reminded Spectranetics that they could
have floated that boat, but didn't, and it's water under the bridge now.
Continue reading "Sour Grapes"
Posted by Patent Hawk at 2:28 PM | Prior Art | Comments (0)
December 1, 2008
Consequence of Silence
Qualcomm
"breached its duty to disclose" two patents before a standards-setting
organization, the Joint Video Team (JVT). Consequently, the district court
deemed the patents "unenforceable against the world," and, finding the case
exceptional, awarded competitive combatant Broadcom attorneys fees. The appeals
court found "the scope of the remedy of unenforceability as applying to the
world... too broad."
Continue reading "Consequence of Silence"
Posted by Patent Hawk at 11:21 PM | Inequitable Conduct | Comments (0)
October 11, 2008
Effective Filing Date
Technology
Licensing (TLC) went after Gennum for infringing a family of patents going to
video synchronization. The most interesting facet of this case pivoted on patent
priority date. With a continuation-in-part (CIP), a claim is entitled
to the effective filing date of an application that provides written description
support for the claim. The effective filing date becomes an issue when
invalidating prior art exists between the initial parent filing date and the
filing date of a later CIP. Plus, other songs in this dance
hall: "Beast of Burdens of Proof," "Cutting a Bitch on Rule 56," and "Reaching to Delve
With a Thin 112."
Continue reading "Effective Filing Date"
Posted by Patent Hawk at 9:37 PM | Prior Art | Comments (0)
October 4, 2008
Inequitable Conduct
Professor
Lisa A. Dolak
of Syracuse law school has given considerable research and thought to what
amounts to a death sentence for patents. Excerpts from
a paper presented last month -
There is no question that inequitable conduct allegations drain resources and inject uncertainty into litigation. And, no doubt, the defense is overpled. But it is also undeniable that serious breaches of the duty of candor occur.
Furthermore, the reported instances of inequitable conduct represent only a small fraction of the cases which involve credible evidence of inequitable conduct. Most such cases presumably settle before trial. Accordingly, the inequitable conduct doctrine, like other defenses to patent infringement, curtails litigation in some cases, and presumably tends to function most efficiently where the evidence is the most compelling and the allegations the most meritorious. Eliminating the defense would lead to an increase in the instances of successful enforcement of patents procured through deception, and, likely, an increase in attempts to mislead the USPTO.
Continue reading "Inequitable Conduct"
Posted by Patent Hawk at 7:49 PM | Inequitable Conduct | Comments (1)
September 29, 2008
Tanked
Praxair sued Advanced Technology Materials (ATMI)
for infringing three patents:
6,007,609;
6,045,115; and
5,937,895. All claim pressurized storage tanks. '609 and '115 went down on
inequitable conduct, '895 on §112 ¶2 indefiniteness. On appeal, '609 and '895
popped back up from the grave, while '115 remained buried in a 2-1 split
decision. Herein, the CAFC in full caprice.
Posted by Patent Hawk at 7:44 PM | Inequitable Conduct | Comments (0)
August 25, 2008
Prove It
In
a touchstone ruling, Star Scientific v. R.J. Reynolds, the CAFC resets
the high bar for inequitable conduct:
The burden of proving inequitable conduct lies with the accused infringer. The patentee need not offer any good faith explanation unless the accused infringer first carried his burden to prove a threshold level of intent to deceive by clear and convincing evidence. If a threshold level of intent to deceive or materiality is not established by clear and convincing evidence, the district court does not have any discretion to exercise and cannot hold the patent unenforceable regardless of the relative equities or how it might balance them. Even if a threshold level of both materiality and intent to deceive are proven by clear and convincing evidence, the court may still decline to render the patent unenforceable.
Posted by Patent Hawk at 2:15 PM | Inequitable Conduct | Comments (1)
August 2, 2008
Inequitable Conduct
Proving inequitable conduct
requires jumping "a high bar." There are two prongs to inequitable
conduct: the materiality of omission (failing to disclose relevant information to the
patent office), and intent to deceive. The Eisai
CAFC ruling last week elucidated the current standard, with the contentious Aventis ruling
in May shedding heat and light. For prosecutors, here's a checklist to guard
against a patent going rancid.
Continue reading "Inequitable Conduct"
Posted by Patent Hawk at 11:34 AM | Inequitable Conduct | Comments (0)
August 1, 2008
There Is No Arizona
Whether
Arizona has a functioning patent court remains an open question. Research
Corporation Technologies (RCT) sued Microsoft for infringing its halftoning
six-pack patent portfolio. After RCT won summary judgment of infringement, the
case was transferred to a different judge, who reversed the ruling and granted
Microsoft's motion of non-infringement, without opinion. At Microsoft's behest,
the judge then scrapped the scheduled jury trial, and ran a kangaroo court for
inequitable conduct. Appeal turned the tables once again.
Continue reading "There Is No Arizona"
Posted by Patent Hawk at 1:16 PM | Inequitable Conduct | Comments (3)
July 21, 2008
Tummy Ache
Eisai
sued Dr. Reddy's Labs and Teva for infringing
5,045,552 after the two filed ANDAs to make a generic version prior to
patent expiration. '552 claims a digestive antacid. Eisai overcame obviousness
and inequitable conduct arguments to prevail. In its affirmation, the CAFC
elucidated the current standard for chemical obviousness.
Posted by Patent Hawk at 2:07 PM | Prior Art | Comments (1)
June 19, 2008
Balled Out
Wily
guys Mork & Beaty of Scanner Technologies got semiconductor packaging inspection
patents. I thought it was
Mork and Mindy, but I was wrong again. In the patenting process, they got
hot under the collar about a competitor's product, hastening prosecution with a
"make special" petition. Enforcing the patents, which were about ball grid
arrays (BGA), turned out to be not such a ball. Defendant ICOS fought back with
an affirmative defense of bad juju, patent street jive for inequitable conduct. Courts
love street jive. Works every time. Well, not this time. At least, not for that.
Posted by Patent Hawk at 11:19 PM | Inequitable Conduct | Comments (1)
June 17, 2008
Fully Blown
Ole
Nilssen, patent goofball extraordinaire, in rather massive assertion against
Osram Sylvania, was found to have committed inequitable conduct in multiple
ways, a ruling affirmed on appeal. In awarding attorney fees in this exceptional
case, Nilssen's conduct went beyond inequitable conduct, to litigation
misconduct, the trial court judge ruled. 2-1, the CAFC agreed. The CAFC puts
plaintiffs on notice that prosecution and litigation tactics that resemble
shenanigans parades will not be tolerated.
Continue reading "Fully Blown"
Posted by Patent Hawk at 11:49 PM | Inequitable Conduct | Comments (0)
May 23, 2008
Puckered
John
Wong got
5,568,779 for TALtech, claiming a seam for wash-and-wear dress shirts that
don't pucker when laundered. Wong didn't disclose all the prior art he knew of,
including the prior art that was the inspiration for his invention. The district
court found inequitable conduct. The appeals court starches that shirt: "If the
material is cumulative to other disclosed material, as a matter of law, the
inventor is not obligated to disclose it." And, a lesson on best mode.
Posted by Patent Hawk at 1:52 AM | Inequitable Conduct | Comments (5)
May 15, 2008
Clotted
Aventis
owns
5,389,618 /
RE 38,743, claiming a blood clotting drug. Amphastar and Teva filed FDA
ANDAs, prompting suit by Aventis. Amphastar shot back with an affirmative
defense of inequitable conduct - Aventis failed to disclose that relied-upon
studies, done by a non-inventor, Dr. Uzan, had used different dosages, thus
muddying the results.
Posted by Patent Hawk at 12:30 PM | Inequitable Conduct | Comments (1)
April 30, 2008
Paying for Garbage
The
New York Times reports $4.3 million spent in the past 15 months lobbying at
the wounded Patent Act. The anti-patent
Coalition for Patent Fairness alone forked out $2.5 million, lining the
pockets of Sen. Leahy & Sen. Hatch. Pro-patent rival
Coalition for 21st Century Patent Reform
spent $1.8 million.
Continue reading "Paying for Garbage"
Posted by Patent Hawk at 2:06 PM | The Patent System | Comments (1)
April 23, 2008
Three Strikes
Bayer Bioscience appealed to the CAFC in a third round of the battle against Monsanto, pleading for the reversal of the district court decision granting attorney fees to Monsanto under 35 U.S.C. § 285, warranted due to Bayer's exceptional inequitable conduct. Not wanting to disappoint, Bayer failed to challenge the district court's discretionary determination to award attorney fees, instead clinging to battles already lost, only to lose again.
Continue reading "Three Strikes"
Posted by Mr. Platinum at 12:15 PM | Inequitable Conduct | Comments (0)
February 2, 2008
Pass the Glue
In
F&G Research v. Dynapoint (Taiwan), the CAFC ruled
Allen D. Brufsky a scumbag: having
"significantly misrepresented the facts," relying on "vague allegations without
basis in the record," and showing "a willingness to mislead the court." It's a
shame, because Brufsky has one gorgeous web site. You'd think a guy with taste
would have class, but there you go.
Continue reading "Pass the Glue"
Posted by Patent Hawk at 12:26 PM | Inequitable Conduct | Comments (0)
January 26, 2008
Corn Pone
Monsanto
brought a declaratory judgment action against Bayer Bioscience to preclude
infringement for its transgenic corn products. It worked: the patents were found both non-infringed and invalid by inequitable conduct. Bayer's appeals were futile.
Posted by Patent Hawk at 2:24 PM | Inequitable Conduct | Comments (2)
January 8, 2008
Sanctioned
Six
attorneys involved in a Qualcomm
video patent assertion fiasco against Broadcom were sanctioned for
"monumental" discovery violations, and referred to the State Bar of California
for possible discipline. Presiding U.S. Magistrate Judge Barbara Major found:
[The attorneys] assisted Qualcomm in committing this incredible discovery violation by intentionally hiding or recklessly ignoring relevant documents, ignoring or rejecting numerous warning signs that Qualcomm's document search was inadequate, and blindly accepting Qualcomm's unsupported assurances that its document search was adequate.
Posted by Patent Hawk at 12:09 AM | Inequitable Conduct | Comments (3)
October 10, 2007
Lights Out
Ole
Nilssen reaped a slew of patents related to electrical lighting. He asserted 15
against Osram Sylvania. Osram got the district court to find five reasons that
the patents were unenforceable due to inequitable conduct, and the CAFC
concurred. While not egregious in outrageousness, the number of reasons puts
Nilssen in the Guinness Book of Bad Patents.
Posted by Patent Hawk at 1:21 PM | Inequitable Conduct | Comments (0)
October 9, 2007
Trial Lawyers' Nightmare
19
attorneys that represented Qualcomm in its debauched video compression patent
suit against Broadcom are fighting to defend themselves against accusation of
hiding evidence, hobbled by sacrosanct attorney-client privilege.
Continue reading "Trial Lawyers' Nightmare"
Posted by Patent Hawk at 1:25 AM | Inequitable Conduct | Comments (6)
August 13, 2007
Out of the Loop
Patent
attorney
Michael Teschner (pictured below) had a patent he had a hand in prosecuting
go down to inequitable conduct, on failure to disclose prior art. Teschner fruitlessly appealed to step in and clear his name.
Continue reading "Out of the Loop"
Posted by Patent Hawk at 10:54 AM | Inequitable Conduct | Comments (0)
July 26, 2007
Scratch & Sniff
Premier
International sued Apple in 2005 for infringing
6,763,345 and
6,243,725 with the Apple iPod and iTunes. The patents claim building
playlists. Apple is looking to build its own playlist for hearing the off-key
hit of inequitable conduct.
Continue reading "Scratch & Sniff"
Posted by Patent Hawk at 9:23 PM | Inequitable Conduct | Comments (0)
July 23, 2007
Heart Attack
Toprol-XL®
is a drug used to treat heart-related malfunctions. Astra owns two patents for
its active ingredient, metoprolol succinate; patents which Astra asserted
against generic drug makers seeking FDA approval; patents with a peculiar
pedigree. The district court found Astra's metoprolol patents invalid owing to
double patenting, and inequitable conduct, owing to the peculiar pedigree. Astra
appealed the invalidity finding of one asserted patent, leaving the other dead
without appeal.
Continue reading "Heart Attack"
Posted by Patent Hawk at 9:11 PM | Claim Construction | Comments (0)
June 28, 2007
Snuffed
Star
Scientific sued tobacco giant R.J. Reynolds in May 2001 for infringing its
tobacco curing patents. R.J. Reynolds fought back, winning
invalidity by
indefiniteness in January for
6,202,649 and
6,425,401, and now egregious inequitable conduct for
6,805,134. Law firms
participated in a cover-up.
Posted by Patent Hawk at 8:48 PM | Inequitable Conduct | Comments (3)
June 27, 2007
Cat's Claw
William
Young patented a surgery procedure for removing cat claws. In suing Lumenis for
infringing, the district court ruled in summary judgment the asserted patent
indefinite under
35 U.S.C. § 112, ¶ 2, over the claim term "near," and unenforceable for
inequitable conduct, in part because Young was tardy giving the patent office a
litigation deposition during reexamination, though timely enough for the
examiner to consider its import. Young successfully appealed. (CAFC
06-1455)
Posted by Patent Hawk at 1:07 PM | Claim Construction | Comments (0)
May 18, 2007
The Plague
McKesson
Information Solutions sued Bridge Medical for infringing
4,857,716. The patent was trashed by inequitable conduct; a district court
ruling upheld at the appeals level (CAFC
06-1517) in a split
decision. Has the appeals court, in the dissent of Judge Newman, returned "to
the "plague" of encouraging unwarranted charges of inequitable conduct, spawning
the opportunistic litigation that here succeeded despite consistently contrary
precedent"?
Posted by Patent Hawk at 2:38 PM | Inequitable Conduct | Comments (0)
March 20, 2007
Open Outcry
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."
Continue reading "Open Outcry"
Posted by Patent Hawk at 10:50 AM | Inequitable Conduct | Comments (0)
March 15, 2007
Patent Speed
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.
Continue reading "Patent Speed"
Posted by Patent Hawk at 7:22 PM | Prosecution | Comments (0)
February 14, 2007
Intent to Deceive
Cargill, in its assertion of canola oil patents against Canbra Foods and Dow Agrosciences, slipped on oily slicks: on-sale bar and inequitable conduct.
Continue reading "Intent to Deceive"
Posted by Patent Hawk at 1:04 PM | Inequitable Conduct | Comments (0)
February 9, 2007
Deep Freeze
Dippin' Dots owns 
5,126,156, which claims a process for making ice cream.
"The Dippin’ Dots brand is known to patrons of amusement parks, stadiums, shopping malls, and the like." After Dippin's distributors turned competitors, Dippin' flipped into patent
enforcement, suing left and right. Counterclaim included antitrust, on what defendants called a fraudulently acquired patent. Claim construction, infringement, prior art
(including a newly minted definition of "obvious"), inequitable conduct; it's all in the dip. (CAFC 05-1330)
Continue reading "Deep Freeze"
Posted by Patent Hawk at 3:14 PM | Claim Construction | Comments (0)
August 25, 2006
NetFlix Rebuffed
Netflix
sued Blockbuster for patent infringement in April, and
Blockbuster retorted in countersuit that Netflix was just attempting
monopolization via unenforceable patents; unenforceable owing to inequitable
conduct: that Netflix didn't disclose known prior art. Netflix tried,
unsuccessfully, to get the judge to dismiss the countersuit.
Continue reading "NetFlix Rebuffed"
Posted by Patent Hawk at 12:00 AM | Inequitable Conduct | Comments (0)
August 7, 2006
Norwegian Wood
To
say that Norwegian Ole K. Nilssen went about it the wrong way would be
understatement. Though not found guilty of unclean hands, the man is a disgrace.
Pray tell, I am referring to five kinds of inequitable conduct. Is there a
Guinness record for this sort of thing?!
Continue reading "Norwegian Wood"
Posted by Patent Hawk at 3:45 PM | Inequitable Conduct | Comments (0)
August 4, 2006
Bad Deceiver
In Bayer AG v. Housey Pharmaceuticals, today the U.S. Court of Appeals (CAFC 06-1083) affirmed that Dr. Gerard M. Housey is a lying weasel, his four patents 4,980,281; 5,266,464; 5,688,655; and 5,877,007 voided for inequitable conduct. This guy made a seriously lousy impression on the court.
Continue reading "Bad Deceiver"
Posted by Patent Hawk at 10:52 AM | Inequitable Conduct | Comments (0)
July 13, 2006
No Rest
Flex-Rest
sued Steelcase for infringing patents
for computer keyboard rests (5,709,489
&
5,961,231). Flex-Rest's case followed the nightmare cliché: "The plaintiff's
best day is the day they file."
Posted by Patent Hawk at 1:42 PM | Litigation | Comments (0)
June 26, 2006
Obituary Page
Agfa
and Creo compete in the computer-to-plate
(CTP) large-scale printer market. Against Creo, Agfa asserted the patents of its
"Galileo" system, for creating printing plates of different sizes:
5,655,452;
5,738,014;
5,788,455;
5,791,250;
5,992,324; &
6,000,337. Creo accused Agfa or inequitable conduct, for failing to disclose
similar commercial prior art printing systems, including Creo's. Agfa patents
are now found on the obituary page. [CAFC
05-1079]
Continue reading "Obituary Page"
Posted by Patent Hawk at 4:22 PM | Inequitable Conduct | Comments (0)
June 14, 2006
Blockbusting
Facing
down a patent infringement suit by Netflix for online video rentals, on Tuesday,
Blockbuster Video threw a temper tantrum in a 44-page counterclaim.
Continue reading "Blockbusting"
Posted by Patent Hawk at 1:04 AM | Litigation | Comments (0)
June 12, 2006
PTO Inequitable Conduct?
NTP continues to pitch a fit over alleged shenanigans by the U.S. patent office in reexamining the NTP patents that netted $612.5 million from RIM.
Continue reading "PTO Inequitable Conduct?"
Posted by Patent Hawk at 7:57 PM | The Patent Office | Comments (0)
June 1, 2006
Funeral Fee
HP,
Seiko Epson, and Lexmark settled out of court when Research Corporation
Technologies (RCT) came knocking for infringing its image processing patents.
Microsoft fought back, putting RCT's patents six feet under, and making RCT pay
for the burial.
Continue reading "Funeral Fee"
Posted by Patent Hawk at 12:04 AM | Inequitable Conduct | Comments (0)
May 9, 2006
Up the Creek
Old
Town Canoe sued Confluence Holdings for infringing
4,836,963, which goes to a process for making plastic boat hulls by
rotational molding. Confluence got a summary judgment of non-infringement based
upon claim construction, but lost counterclaim motions on invalidity and
enforceability. So the parties appealed the rulings that went against them. The
CAFC (05-1123) found
the district court had been hasty in some of its summary judgment rulings, glossing
over disputable facts. And a well-reasoned dissent argued that the whole case
was overdone.
Continue reading "Up the Creek"
Posted by Patent Hawk at 2:24 PM | Litigation | Comments (0)
February 27, 2006
Inequitable Conduct - Intent
S&G
Tool Aid sued Astro Pneumatic Tool for threatening its customers with patent
infringement (5,259,914),
over a portable car sticker remover. S&G went whole hog, seeking declaratory
judgment of non-infringement, inequitable conduct, unfair competition, tortious
interference, false marking, and violations of the Lanham Act & New Jersey Fair
Trade Act to boot. S&G got an inequitable conduct summary judgment ruling out of
district court, "determining that there was clear and convincing evidence of
materiality and intent to deceive" the patent office. The appeals court said (CAFC
05-1224), not so
fast.
Continue reading "Inequitable Conduct - Intent"
Posted by Patent Hawk at 10:40 AM | Inequitable Conduct | Comments (0)
February 15, 2006
Indisputable Inequitable Conduct
Ferring B.V. sued Barr Labs for
infringing
5,047,398, claiming an oral antidiuretic. Barr was granted summary judgment for
inequitable conduct, as both materiality and intent were indisputable. The
appeals court concurred (05-1284).
Continue reading "Indisputable Inequitable Conduct"
Posted by Patent Hawk at 11:40 AM | Inequitable Conduct | Comments (0)
February 8, 2006
Pornography?
Dr. John Mercer was the
supposed inventor of
5,767,678 &
6,232,780, claiming
technology for horizontal drilling by which utility lines can be laid, patents
assigned to Digital Control. These patents were asserted against The Charles Machine
Works (CMW), aka DitchWitch, which tried burying Mercer's patents by inequitable
conduct, and may yet succeed.
Continue reading "Pornography?"
Posted by Patent Hawk at 8:07 PM | Inequitable Conduct | Comments (0)
January 25, 2006
Nellcor Bites The Bullet
Facing
a permanent injunction, and so biting the patent infringement bullet that
delusional RIM (v. NTP) still thinks it can miraculously dodge,
Nellcor, a division of Tyco Healthcare,
itself a subsidiary of industrial conglomerate Tyco International, has agreed to
fork over $330 million for infringing medical device patents owned by
privately-held mighty mouse Masimo.
Continue reading "Nellcor Bites The Bullet"
Posted by Patent Hawk at 1:59 PM | Litigation | Comments (0)
August 3, 2005
Inequitable Depth of Field
James Frazier, a photographer and film maker, was awarded 5,727,236 for a camera lens offering extreme depth of field: in-focus images of subject matter both close-up and far away. Then he tried enforcing the patent, creating his own horror movie.
Continue reading "Inequitable Depth of Field"
Posted by Patent Hawk at 12:01 AM | Inequitable Conduct | Comments (0)
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