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."

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Posted by Patent Hawk at 8:10 PM | Standing | Comments (2)

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.

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Posted by Patent Hawk at 12:19 PM | Standing | Comments (0)

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 | Comments (0)

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.

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Posted by Patent Hawk at 10:27 AM | Standing | Comments (0)

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.

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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.

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Posted by Patent Hawk at 10:10 PM | Standing | Comments (0)

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.

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Posted by Patent Hawk at 7:37 PM | Standing | Comments (0)

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.

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Posted by Patent Hawk at 9:13 PM | Standing | Comments (0)

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.

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Posted by Patent Hawk at 1:33 AM | Standing | Comments (0)

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.

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Posted by Patent Hawk at 12:46 PM | Standing | Comments (7)