July 31, 2011
Fear & Loathing
"An assortment of medical organizations, researchers, genetic
counselors, and patients" filed a declaratory judgment action against 15 claims
of seven Myriad patents. The claims covered "isolated" human genes "associated
with a predisposition to
breast and ovarian cancers." Myriad provoked the DJ by cease-and-desist
nastygrams and lawsuits against research institutes and universities. Those
with fear and loathing banded together.
Continue reading "Fear & Loathing"
Posted by Patent Hawk at 8:28 PM | Standing
June 7, 2011
Assignment
In
the least significant Supreme Court patent decision in years, the majority
ignores the cert issue posited to affirm the CAFC, while dissenters notice the
elephant in the room. The only surprise, and a small one at that, is that the
CAFC
is affirmed without getting whacked upside the head, as they normally do by the
bench above. The issues: inventorship assignment, and from that, standing.
Posted by Patent Hawk at 11:42 AM | Case Law
May 29, 2011
Injury
U.S.
justice is blind, but not necessarily in a good way. At root, garden-variety
judges are too easily bamboozled, led by the nose by bias, or simply muddle-headed
to begin with. Allergan makes and sells a patented vanity cosmetic drug
treatment, "to treat inadequate eyelash growth." Allergan sued competitors,
including Athena Cosmetics, for patent infringement, and unfair competition
under California law. Central California Judge James V. Selna dismissed the
unfair competition claim over standing, that Allergan had not been injured.
Posted by Patent Hawk at 11:01 AM | Standing
December 29, 2010
Exclusion
WiAV
Solutions sued mobile phone companies for infringing nine patents related to
signal transmission (encoding) and reception (decoding), including seven patents
owned by Mindspeed Technologies. The Mindspeed patents went through ownership
gyrations: assignment, corporate spin-off, and licensing agreement. The district
court got lost trying to follow the ownership bread crumbs, deciding that WiAV
was deprived of constitutional standing by third-party licensing rights, and so
booted the Mindspeed patents. The CAFC saw differently - exclusivity because the
accused are not able to license.
Posted by Patent Hawk at 1:18 PM | Standing
November 25, 2010
No Charge
A123
System filed a declaratory judgment action in Massachusetts against Hydro-Quebec
(HQ), who had a license for two lithium battery patents owned by the University
of Texas (UT). The district court dismissed the suit because "UT had transferred
to HQ less than all substantial rights in the patents in suit, granting HQ only
an exclusive field-of-use license."
Posted by Patent Hawk at 10:38 PM | Standing | Comments (11)
November 12, 2010
Pained
"Abraxis markets the drug Naropin® as a local or regional
anesthetic indicated for use in surgery and for acute pain management."
4,870,086,
5,670,524, and
5,834,489 apply. So when Navinta filed an ANDA to make
a generic version of Naropin®, Abraxis was pained, and sued for
infringement. These three patent had changed hands, including an acknowledged
"break in the chain of title." But Abraxis thought the patents were theirs, even
though patent transfer "confirmation" took place eight months after Abraxis
filed suit. Navinta filed a motion to dismiss for lack of standing, both because
of a Hatch-Waxman Act technicality, and because Abraxis didn't own the asserted
patents when the complaint was filed. The district court allowed Abraxis to
amend its complaint to overcome the technicality. The district court waived away
the ownership problem because the intent implied a nunc pro tunc
assignment based on corporate relationship. Nunc pro tunc is Latin for
"corporate friend with benefits."
Posted by Patent Hawk at 7:06 PM | Standing
September 10, 2010
Backbreaker Broken
Spine
Solutions, Inc. (SSI) sued Medtronic for infringing
6,936,071, which claims a spinal implant, "used to replace discs between
vertebrae in the spinal column that have degenerated or become diseased."
Summary judgment of infringement for claims 1 and 2, and dismissal of "all of
Medtronic's 35 U.S.C. § 112 defenses" led to stipulated capitulation by
Medtronic, setting up a trial on damages and obviousness. SSI was going for lost
profits even though it didn't sell or make any device covered by '071. But SSI's
sister companies did. SSI was allowed to amend its complaint to include them.
The jury found '071 not invalid, and willfully infringed, to the $5.7 million in
lost profits, and an 18% reasonable royalty on $9.1 million in infringing sales.
Whereupon the district court doubled the damages and awarded attorneys fees.
Adding insult to injury, the court entered a permanent injunction. All that left
Medtronic a lot to appeal. And some of it was appealing to the CAFC.
Continue reading "Backbreaker Broken"
Posted by Patent Hawk at 11:32 PM | Case Law | Comments (1)
September 1, 2010
Fit To Be Tied
Raymond
E. Stauffer, esquire, hankers to look dapper, in idiosyncratic fashion,
preferring bow ties to the normal skinny bib known as a necktie. A man with
taste such as Stauffer's may sojourn to a classy clothier such as
Brooks Brothers. But in his
shopping excursion, Stauffer was bemused to find that bow ties he had purchased
were marked, with numbers of patents expired over 50 years ago (1955). Umbrage
drove Stauffer to the courthouse, where he sallied forth with "a qui tam
action under
35 U.S.C. § 292, alleging that Brooks Brothers had falsely marked its bow
ties."
Continue reading "Fit To Be Tied"
Posted by Patent Hawk at 8:10 PM | Standing | Comments (4)
May 28, 2010
Custom Casket
In
offering a license, Ablaise accused Dow Jones of infringing
6,961,737 &
6,295,530, claiming web page personalization. Dow Jones replied with a DJ.
Realizing that validity was in jeopardy, Ablaise offered a covenant not to sue
for '530 (not '737), which Dow Jones spurned, because Ablaise wouldn't extend
the covenant to Dows' parent, News Corporation. In the issue of continuing
subject matter jurisdiction, the district court waved the proffered covenant
away, and kept the railroad running. The district court found the asserted
claims obvious in light of Fishwrap, an MIT online newspaper,
5,675,507, a customizable fax viewer, and HTGrep, with optional views of
search results. The CAFC took Ablaise's covenant offer more seriously.
Continue reading "Custom Casket"
Posted by Patent Hawk at 12:19 PM | Standing
May 23, 2010
Take The Gamble
Nevada
IP holding company Patent Rights sued "out-of-state gaming companies" on its
home turf, for infringing
6,475,087 and
6,860,814, which claim "casino-style gaming machines." The Nevada courts
dismissed the cases for lack of personal jurisdiction, and "denied Patent
Rights' request for jurisdictional discovery." Vacating and remanding, the CAFC
told the Nevada court to take it on. (CAFC
2009-1391,
precedential)
Posted by Patent Hawk at 3:45 PM | Standing
May 14, 2010
Crafty Stand
The
labyrinth of possibilities makes patent
licensing a byzantine form of contract, particularly regarding standing. Case in
point. AMF licensed ear implant patents
5,609,616 and
5,938,691 to AB, while retaining certain rights, including the "secondary
right to sue to enforce the patents." AMF informed AB of its plan to sue
Cochlear. AB said "have at it." Cochlear learned of the licensing agreement
during discovery, and got the district court to dismiss the case for lack of
standing to sue. On appeal, the CAFC stood up for for AMF, which had drafted a
crafty license.
Continue reading "Crafty Stand"
Posted by Patent Hawk at 10:27 AM | Standing
April 16, 2010
Keep It Secret, Keep It Safe
A
patent and/or its publication may be withheld indefinitely when deemed
"detrimental to the national security" under the Invention Secrecy Act,
35 U.S.C. § 181. An applicant/patentee may seek compensation for secrecy
withholding under
§ 183, beginning with "the date of first use by the Government." Alton B.
Hornback invented an improvement to missile guidance accuracy. The Air Force
liked his idea, and keep it secret from 1987 to 1999. Hornback finally got
6,079,666 in June 2000. He sought compensation.
Continue reading "Keep It Secret, Keep It Safe"
Posted by Patent Hawk at 6:45 PM | Standing | Comments (2)
April 12, 2010
Located
Global
Locate took SiRF and others to the ITC to stop the defendants from importing
products infringing six of its GPS patents, which claim methods for improving
signal reception. Global Locate prevailed. The defendants appealed. At issue
were standing, infringement, and whether GPS-based methods were patentable
subject matter under the Bilski standard.
Posted by Patent Hawk at 10:10 PM | Standing
December 10, 2009
Proviso Surgery
The
four-corners rule for contract law is straightforward. What is often not
straightforward is the clarity of contracts. Thus hinges the case of Tyco
Healthcare v. Ethicon Endo-Surgery. The upshot, in a contentious dispute
over patent assignment & license, was that Tyco lacked standing to sue, and so the case
was dismissed without prejudice. Ethicon wanted it dismissed with prejudice.
Continue reading "Proviso Surgery"
Posted by Patent Hawk at 7:37 PM | Standing
October 1, 2009
The One That Got Away
Leland
Stanford Junior University and Cetus researched HIV in the late 1980s and early
1990s. Written "agreements provided Cetus with licenses to technology that
Stanford created as a result of access to Cetus's materials." In December 1991,
Roche bought the part of Cetus's business involved in that research [the PCR
division], and started making HIV detection kits. Stanford filed the parent to
the patents at issue in May 1992. In 2005, after getting multiple patents in the
family, Stanford sued Roche for infringement. Roche's winning counter-punch was
that Stanford lacked standing.
Continue reading "The One That Got Away"
Posted by Patent Hawk at 9:13 PM | Standing
September 19, 2009
Stood Up
AsymmetRx
sued Biocare over cancer detection patents which Harvard owns by assignment.
AsymmetRx had a conditional exclusive license, while Biocare had its own
conditional non-exclusive license. Before asserting the patents, "AsymmetRx was
to 'give careful consideration to the views of Harvard and to potential effects
on the public interest in making its decision whether or not to sue.'" AsymmetRx
did no such thing. At issue was standing.
Posted by Patent Hawk at 1:33 AM | Standing
August 22, 2009
Standing
Sky
Technologies sued SAP over an e-trade patent portfolio it had acquired through a
foreclosure and associated contractual conniptions. Because litigation lawyers
argue almost anything regardless of merit, SAP pitched lack of standing and
lost, so it appealed, desperately trying to break the chain of title.
Posted by Patent Hawk at 12:46 PM | Standing | Comments (7)
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