February 28, 2006

It was announced last week in a 10-Q filing that two video game patent lawsuits were recently settled by Atari Inc., the manufacturer of the 1980's Atari 2600 game console and current video games such as "Backyard Baseball®," "DRIV3R™," and "Enter the Matrix™." The first settlement of $300,000, resulting in a "irrevocable, nonexclusive, worldwide license to use, publish, sell, etc. products covered by the AVG patents," was in response to the suit filed in August, 2004, by American Video Graphics, L.P. (AVG) against Atari and several other software game companies. This settlement allows Atari to practice U.S. Patent No. 4,734,690 ("Method and apparatus for spherical panning"), teaching three-dimensional gaming technologies. A second settlement ($25,000) was reached between Atari and iEntertainment regarding U.S. Patent No. 6,042,477 ("Method of and system for minimizing the effects of time latency in multiplayer electronic games played on interconnected computers"), allowing Atari to practice this and other patents owned by iEntertainment. Several defendants were also included in that latter case, resulting in a cumulative settlement of $175,000.

Gamasutra Article: LINK
U.S. Patent No. 4,734,690: LINK
U.S. Patent No. 6,042,477: LINK
Atari's 10-Q (Filed 02/22/2006): LINK
Website for Atari (U.S.): LINK
The USPTO announced in the Federal Register (Vol. 71, No. 36, p. 9260) last Thursday its revisions regarding requirements on filing dates for ex parte and inter partes reexamination proceedings. These revisions are being made "for consistency with the provisions of the patent statute," where the PTO "is specifically revising the rules to require that a request for ex parte reexamination or for inter partes reexamination must meet all the applicable statutory requirements before a filing date is accorded to the request. These new changes amend 37 CFR Part 1, Sections 1.510(c) and (d), 1.915 (d), and 1.919(a). The full text of the amended sections are included in the link below.

Federal Register Notice (02/23/2006): LINK

February 27, 2006

The USPTO announced last Thursday its new patent software system, Private PAIR 6.0, via web-conference (link to archived conference below). Aside from general changes regarding access to Private PAIR, security updates, and the like, a "First Action Prediction and Status Letter" function was introduced, intending to give applicants a general time frame as to when to expect comments from the PTO after its initial application review. Note that you must be a registered user at the PTO in order to access Private PAIR and (perhaps) the webcast below.

Archived Webcast (username/password may be required): LINK
USPTO Download Page (Including 6.0 SP2): LINK
USPTO Installation Instructions: LINK

February 24, 2006

Balthaser Online Inc., the California-based manufacturer of the pro:Fx "online design system that empowers designers of all classes to streamline the development and maintenance of their rich media Internet production," recently obtained a patent on this technology. U.S. Patent No. 7,000,180 ("Methods, systems, and processes for the design and creation of rich-media applications via the internet"), issued earlier this month, discloses several methods and processes to create and maintain rich-media applications for a number of networks and devices. Neil Balthaser, CEO, considers this patent as "pioneer or umbrella," further stating that "if you got a rich Internet application, it is covered by this patent." According to the patent itself, "Rich-media components include 3D graphics, video clips, animation, special effects (including, but not limited to, zooms, wipes, fades, and spinning text), sound effects, and stereo music. Rich-media components may include WAV sound files, MP3 sound files, MPEG movie files, JPEG graphic files, GIF graphic files, SWF Shockwave Flash® files, and Java® applets."

U.S. Patent No. 7,000,180: LINK
Yahoo! News Story (TechWeb): LINK
Balthaser Online Rich-Media Website: LINK
I would like to personally thank Dennis Crouch for taking the time to correspond with me earlier this week, and for highlighting my blog on his prominent Patently-O® patent law blog. I truly appreciate the promotion, and wish him the best in his practice.

February 23, 2006

Transition Therapeutics Inc. announced on Tuesday the issuance of U.S. Patent No. 6,992,060 ("Prolonged efficacy of islet neogenesis therapy methods with a gastrin/CCK receptor ligand and an EGF receptor ligand composition in subjects with preexisting diabetes"), increasing its patent portfolio in this field of diabetes treatment to seven. This patent discloses methods of treating patients having insulin-insufficient diabetes and who are in need of islet neogenesis by delivering "both a gastrin receptor ligand and an EGF receptor ligand," a method of treatment claimed by the company in its patent to result in a "surprising long term remission of the diabetic condition." This patent supports Transition's main diabetes regenerative product, E1-I.N.T.™ (Islet Neogenesis Therapy), currently in Phase II clinical trials for the treatment of Type-1 and Type-2 diabetes.

Transition Therapeutics Press Release: LINK
U.S. Patent No. 6,992,060: LINK
Additional Information on Transition's I.N.T.™ Products: LINK

February 22, 2006

AirTight Networks Inc., a startup company offering what it claims to be “the industry’s first Wi-Fi firewall,” had its intellectual property portfolio expanded yesterday by the issue of U.S. Patent No. 7,002,943 (“Method and system for monitoring a selected region of an airspace associated with local area networks of computing devices”). This patent teaches methods and security monitoring systems that “can monitor wireless activity within and in the vicinity of the region of local area network [LAN] operation” and “advantageously detect unauthorized wireless activity and alert the owner of the network about it.” Two companies, Colubris Networks Inc. and Extreme Networks Inc., have already licensed this technology, and Dennis Tsu, the Vice President of Marketing at AirTight, claims to be “in talks with a number of other companies” about additional licenses. So far at least one company (AirDefense Inc.) plans to dispute this newly issued patent, claiming that it had filed applications considered to be “prior art” under current patent practice.

Unstrung Article: LINK
U.S. Patent No. 7,002,943: LINK
Homepage for AirTight Networks, Inc.: LINK
U.S. District Court for the Southern District of New York Judge Denise Cote ruled yesterday that a patent owned by Takeda Pharmaceutical Co. Ltd (U.S. Patent No. 4,687,777, “Thiazolidinedione derivatives, useful as antidiabetic agents”) was valid, ruling that the defendants failed to carry their burden against Takeda. The consolidated defendants (Mylan Laboratories Inc, Mylan Pharmaceuticals, Inc., UDL Laboratories, Inc., Alphapharm Pty. Inc, and Genpharm, Inc.), according to Judge Cote, “failed to carry [their] burden of showing either a material misstatement or omission [by Takeda]” and “also failed to present any evidence of intent to deceive the PTO.” Takeda claimed in its September, 2003, and March, 2004, filings that the defendant generic drug companies were infringing a patent that Judge Cote called “remarkable” in her opinion, and the joint defendants claimed that Takeda misrepresented its list of compounds disclosed to the USPTO during prosecution, and that this patent, covering the Type-2 diabetes drug ACTOS® (co-marketed by Takeda and Indianapolis based Eli Lilly & Company), was invalid for this reason. This opinion contains legal analyses regarding obviousness, ANDA filings, and inequitable conduct.

Judge Denise Cote’s Decision: LINK
Link to Yahoo! Asia News Story: LINK
U.S. Patent No. 4,687,777: LINK

February 21, 2006

Last Friday, Jon Dudas, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, announced his plan to hire 1,000 additional patent examiners per year over the next five years, with the goal of reducing the overall backlog of unexamined patent applications. During a speech given in North Carolina, Dudas mentioned that there is a current backlog of approximately 600,000 applications, and that this growth of the USPTO will help to “make the United States the best place in the world to invent.” For FY 2007, it is anticipated that the USPTO will keep the fees that it collects (approximately $1.8 billion) for the third year in a row.

Sacramento Business Journal Article: LINK
Department of Commerce FY 2007 Budget Information: LINK
Executive Biography – Jon W. Dudas: LINK

February 20, 2006

Last Friday, Energizer Holdings, Inc., announced that the U.S. Court of Appeals for the Federal Circuit upheld an Energizer patent (U.S. Patent No. 5,464,709, "Alkaline cells that are substantially free of mercury") as being valid, overruling an earlier decision of invalidity by the International Trade Commission (ITC). The issue surrounding this patent dispute, according to Energizer, is the large amount of "mercury-free" batteries allegedly being imported into the United States in violation of its patent. This case has been remanded to the ITC, where Energizer will argue for a ban on the importation and sale of the infringing batteries in the United States.

Energizer Press Release: LINK
Court of Appeals Decision: LINK
U.S. Patent No. 5,464,709: LINK

February 17, 2006

Forgent Networks announced on Wednesday that it entered into a license arrangement with BenQ America allowing BenQ to continue to use Forgent’s image compression technology. This technology, covered under U.S. Patent No. 4,698,672 ("Coding system for reducing redundancy"), is the subject matter of several dozen pending lawsuits (some consolidated) initiated by Compression Labs, Inc., a wholly-owned subsidiary of Forgent. Compression filed suit against 44 defendants, and so far, over a dozen have settled via license agreement. This is the fourth settlement announcement by Forgent this month alone. This patented technology has yielded Forgent and Compression the majority of the $105M in license fees and royalties from Forgent’s active Intellectual Property Program.

Forgent’s Press Release on the BenQ License: LINK
Forgent’s Intellectual Property ‘672 Patent Website: LINK
U.S. Patent No. 4,698,672: LINK
It was announced yesterday that AstraZeneca PLC has filed its Notice of Appeal of a January 17, 2006 ruling that two of its patents were invalid and unenforceable. Judge Sippel of U.S. District Court for the Eastern District of Missouri granted summary judgment against AstraZeneca on two grounds: (1) the patents were invalid for anticipation and double-patenting grounds, and (2) inequitable conduct regarding, at least in part, an inventorship dispute during prosecution. These two Patents (U.S. Patent Nos. 5,081,154 and 5,001,161) cover TOPROL-XL® (metroprolol succinate, extended release tablets), both originally set to expire on September 17, 2007. Andrx Pharmaceutals LLC, Andrx Corporation, Eon Labs Manufacturing, Inc., and KV Pharmaceutical Company were individual defendants prior to the consolidation of the cases. The original opinion contains case law and analysis regarding double patenting, terminal disclaimers, and inequitable conduct regarding inventorship disputes.

AstraZeneca's Press Release: LINK
U.S. Patent No. 5,001,161: LINK
U.S. Patent No. 5,081,154: LINK

February 16, 2006

Ferring B.V., et al. v. Barr Laboratories, Inc. (Fed. Cir. 2006)

On February 15, 2006, the Court of Appeals for the Federal Circuit upheld the decision of the Southern District of New York granting summary judgment to the plaintiff, Barr Laboratories. The Federal Circuit affirmed the grant of summary judgment on the issue of inequitable conduct, noting that the use of declarations of interested parties to support an argument during the prosecution of U.S. Patent No. 5,407,398 was both material and done with the intent to deceive. The court further noted that the lower court did not abuse its judicial discretion in finding inequitable conduct. As such, the court did not address the S.D.N.Y. grant of summary judgment for non-infringement as it affirmed the lower court on other grounds. The court concluded with a discussion of objectivity during the patent prosecution process, noting that if a declarant is to support a particular contention during prosecution, any affiliations of the declarant with the rights holder of the application need to be disclosed to the patent office. This case discusses the standard of review of a lower court's finding of inequitable conduct, as both the majority opinion and Judge Newman's dissent provide case law reviews on the topic.

The Federal Circuit decision: LINK
U.S. Patent No. 5,407,398: LINK
Golden Blount, Inc., v. Robert H. Peterson Co. (Fed. Cir. 2006)

On February 15, 2006, the Court of Appeals for the Federal Circuit upheld the district court's determination of willful infringement and attorney's fees, vacating the damages award for reconsideration, in a case discussing in part the impact of a thorough written infringement opinion. The district court ordered a ~$1.3M damages award (trebled) and just over $600k in legal fees for Peterson's willful infringement of U.S. Patent No. 5,988,159 ("Gas-fired artificial logs and coals-burner assembly"), and the determination of willful infringement was upheld. The court stated that Peterson was on actual notice of the patent 2 1/2 years prior to obtaining any written opinion of counsel regarding infringement, noting that the oral opinions received by Peterson were neither based on a review of the actual accused device nor the prosecution history of the patent. This opinion contains reference case law on appellate review of infringement, willfulness, damages, and attorney's fees, and contains a discussion on the effect of the quality of the opinion received.

The Federal Circuit decision: LINK
U.S. Patent No. 5,988,159: LINK

February 15, 2006

U.S. Patent No. 7,000,000 ("Polysaccharide Fibers") issued on 2/14/06, marking E. I. du Pont de Nemours and Company's place in history as the owner of the seven millionth U.S. utility patent. Inventor John O'Brien developed novel polysaccharide fibers with a "cotton-like" feel, particularly useful in a broad range of textile applications. This 15 claim patent covers both a broad range of α(1→3) polysaccharides as well as methods for producing such fibers.

USPTO Press Release on Patent No. 7,000,000: LINK
U.S. Patent No. 7,000,000: LINK
According to Li Yuguang, the deputy director of the State Intellectual Property Offices (SIPO) in China, the number of U.S. patent applications to China increased by 30% over the prior year. Although there are still more than twice as many applications filed here in the U.S. than filed in China, this increase may be due, in part, to the increased prosecution of IP related crimes by the Chinese government, demonstrating China's interest in protecting the IP rights granted in that country. Overall, in 2005, there were 20,395 such applications filed in China.

CHINA VIEW Article on this subject: LINK
The State Intellectual Property Office of the P.R.C.: LINK

February 14, 2006

U.S. Patent No. 6,995,278 ("Antiangiogenic agents") issued on 2/7/06, providing the Rockville, Maryland, pharmaceutical company with even broader intellectual property protection on its lead cancer drug, Panzem(R) . Panzem is touted as a "next generation antimitotic cancer drug" that focuses on destroying cancerous tumors in more than one fashion. Several Phase I and II clinical trials are either ongoing or about to begin, with three trials to occur here in Indianapolis, Indiana.

EntreMed Press Release: LINK
U.S. Patent No. 6,995,278: LINK
If you are in Alexandria, VA, on Thursday, February 16, you may wish to register for this second meeting at PTO headquarters involving open source software code. There is an effort to ensure that patent examiners have access to all available open source software, which will allow for more thorough reviews of software patents. Registration is limited, so if you are interested, please click on the following LINK .
Thank you for visiting the "Daily Dose of IP" blog. My goal with this blog is to post (hopefully) interesting tidbits on intellectual property law, including brief case summaries, news from the USPTO, interesting litigation news, and the like. Please feel free to comment as you wish, and please contact me with any "requests" that you may have.

Substantive content will begin Tuesday, February 14, 2006, and should occur on a daily basis.

Thanks again for visiting, and please do share a link to this blog with your colleagues.

Mark Reichel

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Copyright 2006-2010, Mark Reichel. The Daily Dose of IP is my personal website, and I am not providing any legal advice or financial analysis. Any views expressed herein should not be viewed as being the views of my employer, Ice Miller LLP. Any comments submitted to this blog will not be held in confidence and will not be considered as establishing an attorney-client relationship. Information submitted to this blog should be considered as being public information, and the submitter takes full responsibility for any consequences of any information submitted. No claims, promises, or guarantees are made or available regarding the completeness or accuracy of the information contained in this blog or otherwise available by searching from or linking away from this blog.

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The DDIP Author

Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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