January 31, 2007

It was recently announced that representatives of the USPTO and the Republic of the Philippines recently signed a memorandum of understanding (MOU) regarding several intellectual property issues. This MOU, signed by the Under Secretary of Commerce for Intellectual Property, Jon Dudas, and the Director General of the Intellectual Property Office of the Republic of the Philippines, Adrian Cristobal, is to “contribute to enhancing administration of intellectual property rights for IP users in both the Philippines and the United States,” according to Dudas. According to the USPTO press release (link below), this MOU contains terms for both offices to cooperate on several IP issues, including the USPTO’s “assistance on the development of patent and trademark examination manuals and automated patent and trademark examination tools, as well as provide assistance with modernization projects that the two sides identify.” Additional information exchange between the two offices regarding national laws and patent application examination procedures shall also occur based on the MOU.

USPTO Press Release: LINK
Intellectual Property Office of the Philippines Website: LINK
Philippine Patent Online Search System (PhilPAT) Website: LINK
Philippine Patent Rules & Regulations on Inventions: LINK

January 30, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the remaining patent cases that were appealed from the district court level and decided by the Federal Circuit, including an order deciding petition for writ of mandamus, during the fourth calendar week of 2007. All opinions are precedential unless otherwise indicated.

Hydril Company, LP, et al. v. Grant Prideco LP, et al. (01/25/2007): appeal of Fed R. Civ. P. 12(b)(6) dismissal of complaint for monopolization, infringement, and breach of contract; discussion of a patent relating to raw pipe with specified diameters and fitted connectors (U.S. Patent No. 6,244,631, “High efficiency drill pipe”), failure to allege the have failed to allege the minimum level of enforcement necessary to state a Walker Process claim (antitrust) against defendant; fraud on the Patent Office as potentially violative of § 2 of the Sherman Act, sole remedy of breach of contract action in license agreement precluding patent infringement allegation

Andersen Corp. v. Fiber Composites, LLC (01/26/2007): appeal of claim construction supporting jury decision of infringement, discussion of six patents relating to composite materials made from a combination of polymer and wood fiber and to the use of those composites to produce structural parts, support for initial claim construction found within the patent specification and the prosecution history, claim language “must be read consistently with the totality of the patent’s applicable prosecution history,” doctrine of claim differentiation (the written description and prosecution history “overcome any presumption arising from the doctrine of claim differentiation”)

International Electronic Technology Corp. v. Hughes Aircraft Co., Inc. (order, 01/26/2007): dismissal of appeal for lack of jurisdiction, filing of notice of appeal by non-prevailing party prior to dismissal of outstanding counterclaims by the prevailing party, no actual case or controversy

In re Seagate Technology (order, 01/26/2007, non-precedential) (order deciding petition for writ of mandamus is appropriate for en banc consideration): appeal shall address questions of whether or not “a party's assertion of the advice of counsel defense to willful infringement [should] extend waiver of the attorney-client privilege to communications with that party's trial counsel” (re: In re Echostar), the “effect of any such waiver on work-product immunity,” and [g]iven the impact of the statutory duty of care standard announced in Underwater Devices, Inc. v. Morrison-Knudsen Co. [ ] on the issue of waiver of attorney-client privilege, should [the] court reconsider the decision in Underwater Devices and the duty of care standard itself”

January 29, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the first four patent cases that were appealed from the district court level and decided by the Federal Circuit during the fourth calendar week of 2007. All opinions are precedential unless otherwise indicated.

VAS-CATH, Inc. v. Curators of the University of Missouri, et al. (01/23/2007): appeal of a dismissal of appeal of the USPTO in an the dismissal of its appeal in an interference proceeding, Eleventh Amendment not shielding the University from appeal of the USPTO’s decision, request and participation in an interference proceeding before the USPTO acting as a waiver of its constitutional immunity in the proceeding and the appeal, discussion of interference proceedings under 35 U.S.C. § 135 and appeals under 35 U.S.C. § 146, University seeking recourse to the USPTO tribunal for adjudication of claim of prior inventorship negates assertion of immunity to bar appeal

MBO Laboratories, Inc. v. Becton, Dickinson & Company (01/24/2007) (erratum: LINK): appeal of summary judgment of noninfringement, discussion of patent relating to the design of a hypodermic safety syringe (U.S. Patent No. RE 36,885, “Safety needle system assuring hazard-free handling after needle contamination”), discussion of claim construction for several terms including “immediately,” “relative movement,” “adjacent,” and “proximity”; discussion of sources of information to determine claim language meaning (patent specification, prosecution history, and extrinsic evidence, reviewed in that order), error to read specific claim limitation into a claim when no “textual reference in the actual language of the claim with which to associate a proffered claim construction”

Logan, Jr., et al. v Hormel Foods, Inc., et al. (01/25/2007, non-precedential): appeal of final judgment granting summary judgment of noninfringement, discussion of patent relating to a spirally sliced meat product (U.S. Patent No. RE 35,374, “Spirally sliced boneless meat product”), claim construction of “support member in the meat” used to create an axis for the spiral slicing of the meat to occur, language in the patent specification and the prosecution history considered over dictionary definitions, affirmation of summary judgment even though claim construction was revised

Adrain v. Superchips, Inc., et al. (01/25/2007, non-precedential) (erratum: LINK): appeal of judgment in favor of multiple defendants for noninfringement, discussion of a patent relating to an apparatus and method for modifying a vehicle engine control module (ECM) (U.S. Patent No. 5,523,948, “Apparatus and method for modifying control of an originally manufactured engine control module”), the prosecution history of an earlier patent in the same family applying “with equal force to subsequently issued patents that contain the same claim limitation,” claim construction to require the apparatus to remain in the vehicle once initially used (accused devices reprogram the ECM and are subsequently disconnected from the vehicle)

January 26, 2007

In two separate press releases this week, the USPTO has announced a new deputy commissioner and discussed the impact of protecting intellectual property in Seattle.

First, Jon Dudas, the Under Secretary of Commerce for Intellectual Property, named John J. Love the deputy commissioner for patent examination policy at the USPTO. Love, the former acting deputy commissioner, will lead the Patent Legal Administration, the PCT Legal Administration, the Office of Petitions, and the International Liaison operations at the USPTO. Love, a mechanical engineering major and graduate of the Georgetown University Law Center, has been with the USPTO in various capacities since 1969.

Second, the USPTO has issued an updated press release discussing Dudas’s recent discussion of intellectual property in Seattle. It was specifically noted that “Seattle has been ranked sixth in the nation for biotechnology industry concentration,” noting further that over 10,000 U.S. patent applications with at least one State of Washington inventor were filed last year. This is the most recent of a series of city- or state-specific discussions of intellectual property, where last year presentations or conference calls were held pertaining to IP issues in Orlando, Kansas City, Indiana, North Carolina, and Nevada, to name a few. Press releases for each of those cities and states, along with a few others, are available at the 2006 archive link below.

USPTO Press Release (John J. Love): LINK
USPTO Press Release (Seattle): LINK
USPTO 2006 Press Release Archive: LINK

January 25, 2007

It was announced in Tuesday’s Federal Register that the USPTO has amended the rules of practice regarding the electronic filing of documents through its electronic filing system (EFS). The major change is that applicants can now submit correspondence to the USPTO pertaining to national stage (35 U.S.C. § 371) applications and obtain the effective date of submission of the correspondence instead of the date the USPTO would have actually received the correspondence. This new change, effective January 23, 2007, also includes the creation of a new certificate of EFS-Web transmission to obtain the effective date of submission, and according to the Federal Register, “[t]he procedure for the certificate of EFS-Web transmission is similar to the procedure for the existing certificate of mailing or transmission under §1.8.” The example provided is that “correspondence sent in reply to an Office action setting a three-month shortened statutory period for reply would be considered timely if transmitted via EFS-Web at 11:59 p.m. Pacific Time on the last day of the three-month period for reply even though it was received in the Office more than three months from the mailing of the Office action.” The rule changes allow for EFS-Web submissions to be effectively treated the same way that submissions through first-class mail or facsimile using a certificate of mailing or certificate of transmission, as appropriate. The changes will modify 37 C.F.R. §§ 1.4, 1.6, 1.8, and 1.33, but at the time of this article, those sections have not yet been modified and made available on the USPTO website.

Federal Register Excerpt: LINK
USPTO Patent Electronic Business Center Website: LINK

January 24, 2007

If you are an avid football fan, you recognize the phrase “red zone” as being the portion of the field with 20 yards of the goal line. H.J. Heinz Co., the owner of a registered U.S. trademark for “HEINZ RED ZONE,” has asserted it rights in the mark against the Indianapolis Colts. According to the Indianapolis Star article (link below), Heinz sent a cease-and-desist letter to the Colts nearly a year ago, requesting that the Colts discontinue the sponsorship of the “red zone” by Red Gold, a tomato and ketchup product company headquartered in Elwood, Indiana. For the past four years, Red Gold has sponsored the Colts’ red zone, donating food to local food pantries every time the Colts quarterback, Peyton Manning, led his team to a touchdown from inside the 20 yard line. According to the article, a spokesperson for Red Gold doesn’t “feel like the name ‘red zone’ should be trademarked,” the article noting further that Red Gold is in discussions with Heinz to resolve the dispute. Heinz’s has filed three applications for “HEINZ RED ZONE,” including one abandoned application (for ketchup) and one pending application for IC 041 (education and training, described in the application as “[e]ntertainment services, namely, providing a web site featuring information and news relating to sports, sporting venues, and tailgating”) in addition to the registered mark for IC 030 (staple foods).

Indianapolis Star article: LINK
U.S. Trademark Reg. No. 3,142,801: LINK
U.S. Trademark Application No. 78/352,815 (pending): LINK
U.S. Trademark Application No. 78/263,753 (abandoned): LINK

January 23, 2007

In a press release issued yesterday, the USPTO has affirmatively announced that it will no longer be releasing its annual top 10 list of organizations obtaining the most U.S. patents during the preceding calendar year. Although this data will be available in the USPTO’s annual “Patenting by Organizations” report, it is ceasing the list in order to “emphasiz[e] quality over quantity by discouraging any perception that we believe more is better.” In support of this statement, the USPTO stated that “[l]ast year patent quality was the best in over 20 years, and the agency also had the lowest rate of patents approved in more than 30 years.” As referenced in an earlier DDIP post (link below), IFI CLAIMS® has released its own list of the companies obtaining the most patents, and in the IT Jungle article referenced therein, it was noted that the USPTO “was concerned that the industry was focusing too much on the quantity of patents awarded and wanted to shift the dialog out there in the tech world over to the quality of the patents awarded each year” and would no longer be publishing its list. The USPTO press release concludes with several bullet points identifying the “numerous programs to enhance the quality of patent examination,” including specific eight-month training programs and the electronic processing of patent applications.

USPTO Press Release: LINK
DDIP Top Patent Companies Article: LINK

January 22, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the patent cases that were appealed from the district court level and decided by the Federal Circuit during the third calendar week of 2007. All opinions are precedential unless otherwise indicated.

Transclean Corporation et al. v. Jiffy Lube International, Inc., et al (01/18/2007): appeal of grant of summary judgment precluding the prevailing party in a patent infringement action from pursuing infringement actions against customers of the infringer, discussion of patent relating to automatic transmission fluid changing machine (U.S. Patent No. 5,318,080, “Transmission fluid changer”), doctrine of claim preclusion preventing a second suit (separate argument from the doctrine of full compensation), elements of the doctrine of claim preclusion, issue of privity regarding infringing user of device and customer of infringing user of device, court raising claim preclusion issue sua sponte benefiting defaulting defendants

Ortho-McNeil Pharmaceutical, Inc. v. Caraco Pharmaceutical Laboratories, Ltd. (01/19/2007): appeal of grant of summary judgment for non-infringement, discussion of patent relating to combination of two analgesics (tramadol and acetaminophen, U.S. Patent No. 5,336,691, “Composition comprising a tramadol material and acetaminophen and its use”), claim construction of the phrase “about 5:1” pertaining to pharmaceutical composition ratios, infringement under the doctrine of equivalents, expert testimony to define range of ratios

January 19, 2007

On Tuesday, the USPTO issued its final rule pertaining to the changes to implement the priority document exchange between specific intellectual property offices. According to the January 16, 2007 Federal Register, “The Office has established a 21st Century Strategic Plan to transform the Office into a more quality-focused, highly productive, responsive organization supporting a market-driven intellectual property system,” and that a goal of the plan “is the electronic exchange of information and documents between intellectual property offices.” The USPTO has revised its rules of practice to permit such an electronic exchange, with specific revisions to 37 C.F.R. §§ 1.14, 1.19, and 1.55, including a document supply fee of “[$]0.00” applicable when a document s “provided to a foreign intellectual property office pursuant to a priority document exchange” (37 C.F.R. § 1.19(b)(1)(iv)).

The USPTO has also provided two forms for use to facilitate such a transfer. The first form (PTO/SB/38) “will permit applicants to request that the Office retrieve an electronic copy of any foreign application filed in an intellectual property office participating with the Office in a direct agreement to retrieve electronic copies of priority documents” (emphasis added), noting that upon receipt of a timely filed request, the USPTO will perform at least two attempts to retrieve the documents, and that “Applicants should consult the private Patent Application Information Retrieval (PAIR) system to determine of the copy of the foreign application was retrieved by the Office.” Upon publication of an application, the retrieved foreign counterpart application will also be made public through Public PAIR. The second form (PTO/SB/39) “would be used to provide the Office with written authority to provide a copy of a patent application to participating foreign intellectual property offices at no cost to the applicant” (emphasis added). The Federal Register further notes that “[o]nce an application is published under 35 U.S.C. 122(b), the application is open to the public and therefore the applicant’s written authority is not necessary to permit other participating intellectual property offices to retrieve a certified copy of the priority application or a copy of the complete application file.” These changes went into effect on January 16, 2007.

Federal Register Excerpt: LINK
PTO/SB/38 (PDF Form): LINK
PTO/SB/39 (PDF Form): LINK

January 18, 2007

First, the American Intellectual Property Law Association (AIPLA) is hosting its 30th Mid-Winter Institute meeting from January 24-27, 2007. This meeting, held at the Sheraton New Orleans Hotel, will include dozens of seminars on general intellectual property topics (Patent Law, Copyright Law, and Corporate Practice, for example) and specific IP topics (Anti-Counterfeiting and Anti-Piracy, Diversity in IP Law, and Emerging Technologies, for example) of potential interest to practitioners in all fields of IP law. Links to the full program and to registration information are provided below.

Second, I recently received my AIPLA Quarterly Journal, and I wanted to bring the three articles contained therein to your attention. Denise DeFranco and Adrienne Smith prepared an article entitled "Technology and the Global Economy: Progress Challenges the Federal Circuit to Define Extraterritorial Scope of U.S. Patent Law." This article discusses several recent cases pertaining to the extraterritorial scope of patent law under 35 U.S.C. § 271, including individual sections discussing § 271(a), (b), (c), (d) and (f). Christopher Reed's article entitled "A Trade Dress Approach to the Protection of Radio Brands" discusses the articulation of a working definition for a "radio format" and how format owners may assert rights in their programming concepts under trade dress law. The third article, "The Competency of State Courts to Adjudicate Patent-Based Malpractice Claims" by Sean Seymore, discusses malpractice claims against patent attorneys, whether or not state courts are competent to handle such matters, the tension between federal patent law and state tort law, and a proposed division of such matters between state and federal courts. Subscription information is available at the Quarterly Journal webpage link below.

AIPLA 2007 30th Mid-Winter Institute Program (PDF): LINK
AIPLA 2007 30th Mid-Winter Institute Webpage: LINK
AIPLA Quarterly Journal Webpage: LINK

January 17, 2007

According to a recent IFI CLAIMS® Patent Services press release (link below), International Business Machines Corp. (IBM) retained the top spot for the number of U.S. patents issued in 2006. The analysis performed by IFI shows that IBM obtained 3,651 U.S. patents in 2006, with Samsung Electronics Co. Ltd. second with 2,453, Canon K K third with 2,378, Matsushita Electric Industrial Co. Ltd. fourth with 2,273, and Hewlett-Packard Development Co. LP fifth with 2,113. Rounding out the top ten are Intel Corp., Sony Corp., Hitachi Ltd., Toshiba Corp., and Micron Technology Inc. IBM has obtained more patents per year than any other company since 1993. As noted in the IT Jungle article (link below), nine of the top 20 companies are Japanese and seven are from the U.S., with a Korean company (Samsung) holding the second place spot on the list. The IT Jungle article further notes that “[o]f equally important note, IBM is the only company in history to ever have more than 2,000 patents issued to it by Uncle Sam in a year--until 2006. The remaining top four patent holders--Samsung, Canon, Matsushita, and HP--all broke 2,000 patents for the first time in their histories.”

IFI CLAIMS® Press Release (Including Top 35 List): LINK
IT Jungle Article: LINK

January 16, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the fifth, sixth, and seventh patent cases that were appealed from the district court level and decided by the Federal Circuit during the second calendar week of 2007. All opinions are precedential unless otherwise indicated.

Shanghai Meihao Electric v. Leviton (01/10/2007, non-precedential): appeal of grant of summary judgment for non-infringement and issuance of permanent injunction from pursuing further claims against plaintiff (initial declaratory judgment action), discussion of four patents related to circuit interrupting devices (U.S. Patent Nos. 6,040,967 and 6,381,112 (both “Circuit interrupting device with reverse wiring protection”) and 6,246,558 and 6,437,953 (both “Reset lockout for circuit interrupting device”), discussion of “reset lock-out” and “reset lock-out means” and “operational” versus “nonoperational” states as claimed, review of claim construction, discussion of Fed R. Civ. P. 56(d) pertaining to injunctions (setting forth the reason(s) for the injunction), no establishment of “necessity” for permanent injunction

Charles W. Parker v. Microsoft (01/10/2007, non-precedential): here’s the entire opinion: “Charles W. Parker (“Parker”) appeals a final judgment of the United States District Court for the District of Columbia dismissing his patent infringement action against Microsoft Corporation as frivolous. Parker v. Microsoft Corp., No. 06-CV-00540 (D.D.C. Mar. 23, 2006). We review a district court’s frivolousness determination for an abuse of discretion. Denton v. Hernadez, 504 U.S. 24, 32 (1992). Parker’s allegations that he has patented the “elemental atom” and that Microsoft has infringed his rights by using and improperly claiming inventorship of such an invention are “fanciful,” “fantastic,” and “delusional” contentions supporting the district court’s determination. Id. at 33-34. On appeal, Parker provides us with no persuasive basis to conclude that the district court abused its discretion in dismissing the action. We affirm.”

E-Pass Technologies, Inc. v. 3Com Corporation (also known as 3Com, Inc.), et al. (01/12/2007): appeal of final summary judgment of non-infringement, discussion of patent relating to an electronic multifunction card (U.S. Patent No. 5,276,311, “Method and device for simplifying the use of a plurality of credit cards, or the like”), discussion of claim construction of the term “card,” discussion of potentially improper addition of a dimensional element to a claim, comparison of “card” to electronic handheld devices, discussion of “all elements rule” of doctrine of equivalents, discussion of lack of evidence of infringement of method claims

January 15, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the first four patent cases that were appealed from the district court level and decided by the Federal Circuit during the second calendar week of 2007. All opinions are precedential unless otherwise indicated.

Amini Innovation Corp. v. Anthony California, Inc. (01/08/2007, non-precedential): appeal of summary judgment for non-infringement of design patent, discussion of a design patent relating to a dresser and a mirror (U.S. Patent No. D488,936, “Dresser and mirror”), discussion of protections offered by design patents, ordinary observer test, analysis of each element together, instead of separately, during ordinary observer analysis; evidence sufficient to demonstrate infringement to a jury, discerning points of novelty from design patent

Roper v. Jo-Ann Stores, Inc. (01/09/2007, non-precedential): appeal of dismissal of patent and copyright infringement suit for failure to state a claim, effect of failure to respond to motion to dismiss, discussion of patent relating to growing plants in a small area using cloth (U.S. Patent No. 4,713,909, “Indoor and Outdoor Cloth Farm”), no literal infringement when accused product embodies no structural claim elements, no copyright infringement when no connection between the copyrighted material and activities of the defendant, discrimination claim based on race dismissed without merit, no claim for sanctions for a frivolous lawsuit because no separately filed motion under Fed R. App. P. 38

Aspex Eyewear, Inc. v. Concepts in Optics (01/09/2007, non-precedential): appeal of grant of partial summary judgment, discussion of reissue patent relating to eyeglasses with two sets of lenses (U.S. Patent No. RE37,545, “Auxiliary lenses for eyeglasses”), challenge of district court’s claim construction, use of claim construction by appellate court from another panel of the same court reviewing different claims but the same limitation of a patent, affirmation of infringement regardless of the claim construction adopted

Grasty v. U.S. Patent & Trademark Off. (01/09/2007, non-precedential): review of dismissal of prior claim by res judicata and/or collateral estoppel, abandonment of patent application for failure to submit proper declaration, claim preclusion under res judicata doctrine, failure to prosecute claim operating as adjudication on the merits

January 12, 2007

On Wednesday, Cisco Systems Inc. filed suit in the United States District Court for the Northern District of California against Apple Inc., in part requesting a preliminary and permanent injunction against Apple’s use of the “iPhone” trademark. As you have heard in this week’s news, Apple Inc. unveiled its iPhone at Macworld Expo in San Francisco on Monday, a $499 to $599 device (depending on storage size) that will offer e-mail, internet, music, movies, and telephone capabilities via Cingular later this year.

According to the Yahoo! News article (link below), Cisco obtained rights to the iPhone trademark in 2000, and sometime afterwards, it began selling a line of inexpensive iPhones utilizing Voice-over Internet Protocol (VoIP) that cost as little as $12 alone or from $70 to over $200 as a kit. Cisco’s mark (U.S. Trademark Reg. No. 2,293,011) describes “computer hardware and software for providing integrated telephone communication with computerized global information networks,” of which Cisco deems Apple’s iPhone to be “deceptively and confusingly similar” to its own mark. The article further notes that back in 2001 Apple requested a license or rights in the name from Cisco, and when no deal could be reached, Apple started Ocean Telecom Services LLC in an effort to pursue its own iPhone.

Cisco’s complaint (PDF link below) is “a complaint for Trademark Infringement, Unfair Competition, and False Description arising under §§ 32 and 43 of the Lanham Act, 15 U.S.C. §§ 1114(1) (Trademark Infringement) and 1125(a) (Unfair Competition and False Description), for Unfair Business Practice arising under California Business and Professions Code § 17200 et seq., and for injury to business reputation.” The complaint describes how Cisco obtained the iPhone mark (originally registered by InfoGear Technology Corporation in 1996, and Cisco acquired InfoGear in 2000), noting that “InfoGear first began selling iPhone-branded devices in 1997” and that “Cisco continues to use the iPhone mark for its family of voice over IP telephones and other telephony equipment distributed by Cisco-Linksys LLC.” According to the Yahoo! article, “Apple spokeswoman Natalie Kerris called the lawsuit "silly," and Apple senior vice president Phil Schiller said other companies have tried to use the name for VoIP phones — but only Apple's iPhone is a cellular phone.”

Cisco’s Complaint: LINK
U.S. Trademark Reg. No. 2,293,011: LINK
Yahoo! News Article: LINK
Apple’s iPhone Press Release: LINK
Cisco’s iPhone Family Webpage: LINK
Cisco’s Lawsuit Press Release: LINK

January 11, 2007

This Friday the AIPLA will present its “Patent, Trademarks and Copyright: Hot Topics in 2006” seminar from 12:30 – 2:30 Eastern time. This seminar, according to the description, will involve “three experienced practitioners reviewing interesting case law and other developments in the past year in the fields of Patent, Trademark, and Copyright Law.” Most states approved for CLE credit are offering 2.0 hours to attendees of the full seminar. The fee for the seminar for a single site is $135 ($160 if not an AIPLA member), and $285 for 2-10 attendees at a single site ($310 for non-members).

As a side note, the Intellectual Property Section of the Indianapolis Bar Association (IBA) will be hosting a “2006 IP Year in Review” seminar on March 6, 2007, from noon to 1:30PM. This seminar (not yet formally announced) will discuss a number of the patent, trademark, and copyright decisions from 2006 that every intellectual property practitioner should know. If you are interested in this seminar, check out the IBA’s website (link below) in a couple of weeks for more information. I am the chair for this particular seminar, and if you are in the Indianapolis area, I look forward to meeting you in person at the seminar.

AIPLA “Hot Topics in 2006” Seminar Webpage: LINK
AIPLA Seminar Registration Webpage: LINK
Indianapolis Bar Association Website: LINK

January 10, 2007

The U.S. Supreme Court issued its decision on MedImmune v. Genentech yesterday, reversing the Federal Circuit’s decision affirming the dismissal of the original action for lack of subject matter jurisdiction. This dispute surrounds a patent license agreement originally executed in 1997, with MedImmune licensing chimeric antibody technology (patented) and technology regarding “the coexpression of immunoglobulin chains in recombinant host cells” (then patent-pending) from Genetech for a fee. The license agreement defined “Licensed Products” as including products that “if not licensed under th[e] Agreement, [would] infringe one or more claims of either or both of [the covered patents,] which have neither expired nor been held invalid by a court or other body of competent jurisdiction from which no appeal has been or may be taken.” Later in 2001 the immunoglobulin patent application issued, and Genentech contacted MedImmune expressing a belief that a current MedImmune product, Synagis, was covered by this newly issued patent, and as such, MedImmune would need to pay royalties to Genentech starting in 2002. Synagis was a significant revenue source for MedImmune, accounting for more than 80% of MedImmune’s sales in 1999, and in order to avoid the risk of treble damages, attorney’s fees, and an injunction against further sales of Synagis, MedImmune decided to pay the royalties and did so “under protest and with reservation of all of [its] rights.”

Soon thereafter, MedImmune sought declaratory judgment from the United States District Court for the Central District of California as MedImmune felt that no royalties were owed because the second patent was invalid, unenforceable, and that its Synagis product did not infringe any claims of that patent. However, the District Court denied MedImmune’s petition, instead granting Genentech’s motion to dismiss the declaratory judgment claims for lack of subject matter jurisdiction. Specifically, Genentech contended that there was no Article III case or controversy because the license agreement “obliterate[s] any reasonable apprehension” that MedImmune would be sued for infringement of the patent. The Federal Circuit affirmed the District Court in October of 2005 (opinion link below).

The U.S. Supreme Court discussed two main issues in its opinion, those being whether or not a contract claim was properly raised and preserved, and whether or not the lower courts erred in dismissing (and affirming) the action for lack of subject matter jurisdiction. The first issue was addressed within four pages of the opinion, noting that the contract claims were indeed preserved by MedImmune. The Court pointed to MedImmune’s original amended complaint, containing in its first count a request for “DECLARATORY JUDGMENT ON CONTRACTUAL RIGHTS AND OBLIGATIONS,” noting further that during the appeal MedImmune also raised the contractual point before the Federal Circuit. Accordingly, the Court determined “that petitioner has raised and preserved a contract claim” and moved on to decide the jurisdictional issue.

The jurisdictional issue comprises the majority of the opinion of the Court. After an introduction of 28 U.S.C. § 2201(a), the court discussed a number of precedent opinions discussing the “case of actual controversy” aspect of that section, noting that all decisions by the Court have required that the dispute be “definite and concrete, touching the legal relations of parties having adverse legal interests,” that it be “real and substantial” and “admi[t] of specific relief through a decree of conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.” The main arguments focused on the fact that MedImmune continued to make royalty payments under protest instead of deciding not to make the royalty payments, and according to the Court, “[t]he rule that a plaintiff must destroy a large building, bet the farm, or (as here) risk treble damages and the loss of 80 percent of its business, before seeking a declaration of its actively contested legal rights finds no support in Article III.” (emphasis added)

The Court then discusses each of the respondent’s arguments in turn, noting that “[p]romising to pay royalties on patents that have not been held invalid does not amount to a promise not to seek a holding of their invalidity,” and that the common-law rule that a party to a contract cannot simultaneously challenge the validity of the contract and reap benefits from the contract does not apply as the petitioner “is asserting that the contract, properly interpreted, does not prevent it from challenging the patents, and does not require the payment of royalties because the patents do not cover its products and are invalid.” Furthermore, the Court notes that although 28 U.S.C. § 2201(a) says that a court “may declare the rights and other legal relations of any interested party,” the District Court “gave no consideration to discretionary dismissal,” and that “[d]iscretionary dismissal was irrelevant to the Federal Circuit for the same reason.”

Justice Thomas was the lone dissenter in this 8-1 decision, noting in his dissent that “[t]he facts before us present no case or controversy under Article III” because “MedImmune was a licensee in good standing that had made all royalty payments” and “by voluntarily entering into and abiding by a license agreement with Genentech, MedImmune removed any threat of suit.”

U.S. Supreme Court Decision: LINK
Federal Circuit Opinion: LINK
MedImmune’s Press Release: LINK

January 09, 2007

It was recently announced that Google Inc. obtained a patent directed to the calculation of similarity metrics for objects, including web pages. U.S. Patent No. 7,158,961, entitled “Methods and apparatus for estimating similarity,” issued on January 2, 2007, and includes 24 claims on systems and computer-implemented methods for generating a compact representation of objects. The method of claim 1 comprises the identification of a set of features corresponding to a first object, the generation of a hashing vector having n coordinates for each feature, “summing the hashing vectors to obtain a summed vector,” and the creation of “an nx-bit representation of the summed vector by calculating an x-bit value for each coordinate of the summed vector, the nx-bit representation of the summed vector defining the compact representation of the first object.” According to the patent, and from the search engine's perspective, “one problem in cataloging the large number of available web pages is that multiple ones of the web documents are often identical or nearly identical,” and that “[s]eparately cataloging similar documents is inefficient and can be frustrating for the user if, in response to a request, a list of nearly identical documents is returned.” The patent further states that “it is desirable for the search engine to identify documents that are similar or "roughly the same" so that this type of redundancy in search results can be avoided,” and that “there is a need in the art for improved techniques for determining similarity between documents.” According to the DailyTech news article (link below), several companies, including IBM and Hitachi, have also filed patent applications for “similarity-engines” over the past decade.

U.S. Patent No. 7,158,961: LINK
DailyTech News Article: LINK

January 08, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers patent cases that were appealed from the district court level and decided by the Federal Circuit during the first calendar week of 2007. All opinions are precedential unless otherwise indicated.

Desa IP, LLC v. EML Technologies, LLC, et al. (01/04/2007, non-precedential): discussion U.S. Patent No. 5,598,066 (directed to motion-activated security lights), review of claim construction, applicability of 35 U.S.C. § 112, ¶ 6, two-step inquiry for means-plus-function (applicability of statute and “identifying the claimed function and corresponding structures in the written description”), presumptions regarding § 112, ¶ 6 pertaining to the use of “means” in the claims

Propat International Corp., et al. v. Rpost, Inc., et al. (01/04/2007): discussion of U.S. Patent No. 6,182,219 (“Apparatus and Method for Authenticating the Dispatch and Contents of Documents”), who has standing to sue for patent infringement, rights to patents via license agreements, what is considered to be a transfer of all substantial rights in a patent, standing via legally protected interest in a patent, exclusive licensee joining with patent owner in infringement suits, determination of “exceptional” case under 35 U.S.C. § 285

Abbott Laboratories v. Andrx Pharmaceuticals, Inc., et al. (01/05/2007): discussion of three patents relating to extended release formulations of clarithromycin (U.S. Patent Nos. 6,010,718, 6,551,616, and 6,872,407), overturning a grant of preliminary injunction for abuse of discretion, collateral estoppel, discussion of “pharmaceutically acceptable polymer” claim limitation, claim construction based on Markush group included within patent specification, likelihood of proving infringement by doctrine of equivalents

January 05, 2007

At 10:00AM pacific time, Jon Dudas, the Under Secretary of Commerce for Intellectual Property, will host a conference call today to discuss the importance of intellectual property in the Seattle-Tacoma area. According to the USPTO press release (link below), the discussion will include “U.S. government efforts to curb theft of intellectual property, the importance of intellectual property protection in a global market, as well as to the Seattle-Tacoma economy, and the creation of new jobs in Washington and the entire United States.” Call-in information for reporters (phone number, passcode, and the call leader’s name) is also available at the link below. Dudas will also engage in a question and answer session at the end of his presentation.

As you may know, intellectual property in Washington state has been the news recently, as the Washington Research Foundation (WRF) recently filed suit in the U.S. District Court for the Western District of Washington at Seattle against the Matsushita Electric Industrial Co. (Japan), Samsung Electronics Co. (South Korea), and Nokia Corp., alleging that the defendants incorporated Bluetooth technology developed at the University of Washington into a number of cellular phone products. This lawsuit, filed on December 20th, references four issued patents and two pending patent applications and seeks unspecified damages and an injunction on further sales of allegedly infringing products. According to the Seattle Times news article (link below), Broadcom Corporation was not included in this lawsuit as it previously licensed the technology from WRF.

USPTO Press Release: LINK
WRF Complaint: LINK
Seattle Times News Article: LINK
Yahoo! News Article (Bluetooth lawsuit): LINK

January 04, 2007

It was announced on Wednesday that Eastman Kodak Company and Sony Corporation settled a long-standing patent dispute involving nearly two dozen issued patents issued over the last 20 years. Kodak and Sony entered into a cross-license agreement allowing both companies access to the patents in suit, and according to the BusinessWeek article (link below), Kodak “also said it has signed a cross-license agreement with cell-phone maker Sony Ericsson Mobile Communications AB, a joint venture of Sweden's LM Ericsson and Sony, the Japanese electronics and entertainment company.” Kodak is reportedly receiving royalties on both agreements. This dispute began in March of 2004 when Kodak filed suit in the U.S. District Court for the Western District of New York in Rochester alleging Sony’s infringement of ten of its digital image patents, which was followed by a counter-suit by Sony alleging Kodak’s infringement of ten of its own patents on related digital camera technologies. An interesting historical tidbit is also provided in the BusinessWeek article, noting that Kodak “created the world's first digital camera in December 1975 -- an 8-pound, toaster-size contraption that captured a black-and-white image on a digital cassette tape at a resolution of .01 megapixels.”

BusinessWeek Article: LINK
Kodak Press Release: LINK

January 03, 2007

According to a recent Honolulu Advertiser news article (link below), Hawaiian inventors obtained more patents in 2006 than were obtained per year over the last decade. Data obtained from the USPTO revealed that 137 patents with at least one inventor from Hawaii issued last year, compared to 68 in 2006, 112 in 2004, and 116 in 2003. Among the 137 patents include inventions pertaining to an oven mitt, a golf club cover, a garden tool, a backpack chair, a life preserver, a fire extinguisher, and new varieties of pineapple and grass. Other inventions are more scientific in nature, including advanced hospital bed technology, fuel cell technology, and a new biodegradable plastic material made from organic wastes. The article also provides a chart of the number of patents issued per year over the past ten years to Hawaiian inventors, noting that with the exception of 2005, at least 100 patents have issued every year during that period.

The Honolulu Advertiser News Article: LINK

January 02, 2007

In a recently filed Notice of Opposition, pop singer Mariah Carey has petitioned against the allowance of the MARY CAREY mark published for opposition this past August. In the Notice of Opposition (link below), four registered marks for MARIAH CAREY are referenced (U.S. Trademark Reg. Nos. 2,024,932, 2,207,439, 2,590,372, and 3,128,187), and that “[b]ased on the similarities of the parties’ marks and the similarities and related nature of the goods described in the parties’ application and registrations, the public is likely to mistakenly associate the goods offered by Applicant under the mark MARY CAREY with Opposer or with Opposer’s goods and services, or to believe that Applicant’s goods are sponsored, endorsed, or licensed by Opposer, or that there is some relationship between Applicant and Opposer.” The Notice further reveals that Mary Carey’s actual name is Mary E. Cook, and that “[o]n information and belief, Applicant adopted the mark MARY CAREY to trade on her perceived similarities to Opposer’s predessor[sp]-in-interest, stating on her website that she adopted the trademark MARY CAREY because of her “remarkable facial resemblance” to Mariah Carey.” Mary Carey’s application (U.S. Trademark Application Serial No. 78/743,591) was filed on October 31, 2005 for “[m]otion picture films featuring adult entertainment; a series of prerecorded video cassettes, DVDs, multimedia software recorded on CD-Rom and interactive multimedia computer programs featuring adult audio and visual dramatic performances." According to the Billboard.com article (link below), Mary Carey’s lawyer, David Beitchman was quoted as saying “my first thought was, does Mariah Carey realize what her lawyer is comparing her to and are they seriously concerned?” As you may recall, Mary Carey is the adult film star who ran for Governor of California and lost to Arnold Schwarzenegger in 2003.

Copy of the TTAB Notice of Opposition: LINK
Billboard.com Article: LINK
U.S. Trademark Application Serial No. 78/743,591: LINK
U.S. Trademark Reg. No. 2,024,932: LINK
U.S. Trademark Reg. No. 2,207,439: LINK
U.S. Trademark Reg. No. 2,590,372: LINK
U.S. Trademark Reg. No. 3,128,187: LINK

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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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