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.
Posted by Patent Hawk at 8:28 PM | Standing
June 7, 2011
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
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
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
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."
November 12, 2010
"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
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.
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."
May 28, 2010
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.
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
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.
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.
April 12, 2010
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
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.
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.
Posted by Patent Hawk at 9:13 PM | Standing
September 19, 2009
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
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.