On Thursday, the USPTO announced and launched its newest search tool, namely the ability to text-search final decisions of the Board of Patent Appeals and Interferences (BPAI). For all decisions posted on the BPAI Final Decision FOIA web page (link below), one may now search those decisions for specific key words. According to the USPTO, “the database of final Board decisions that are posted on the Final Decision FOIA web page will be searched for a text string entered into a text search field and the identity of any decision(s) containing the string will be returned.” Aside from the general document text search, one may also search for a number of specific identifiers, including an application number, a patent number, an appeal number, interference number, a publication number, and an inventor name. The aforementioned searches may also be limited to a range of particular dates. I note that the general text-search also allows you to search for a particular attorney or law firm if that information is present within the text of the decisions.

USPTO Announcement: LINK
USPTO e-FOIA Webpage: LINK

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 32nd calendar week of 2007. All opinions are precedential unless otherwise indicated.

Dolby Laboratories v. Lucent Technologies (08/08/2007, non-precedential): affirmed appeal from the U.S. District Court for the Northern District of California (no reasoning provided within the opinion)

Foremost in Packaging Systems (doing business as EnviroCooler) v. Cold Chain Technologies (08/08/2007, non-precedential): affirmed appeal from the U.S. District Court for the Central District of California (no reasoning provided within the opinion)

Boston Scientific Scimed (formerly known as Scimed Life Systems) v. Medtronic Vascular (also known as Medtronic AVE) (08/08/2007): appeal of grant of summary judgment affirming the Board of Patent Appeals and Interferences’ final decision denying Scimed the priority benefit of an earlier-filed European patent application for the subject matter at issue in the patent interference (affirmed); discussion of interference between applications owned by Scimed and Medtronic and U.S. Patent No. 5,575,817, entitled “Aorto femoral bifurcation graft and method of implantation”; “At issue here is whether 35 U.S.C. § 119(a)[ ] permits an applicant for a United States patent to benefit from the priority of a foreign application previously filed by an entity that was not acting on behalf of the U.S. applicant at the time of filing. We hold that it does not.”; “[35 U.S.C.] § 119 gives rise to a right of priority that is personal to the United States applicant. … Due to the personal nature of this right, an applicant for a U.S. patent may only benefit from the priority of a foreign application if it was filed by the U.S. applicant or “on his behalf.”

Capital Bridge v. IVL Technologies (08/10/2007, non-precedential): affirmed appeal from the U.S. District Court for the Southern District of New York (no reasoning provided within the opinion)

Honeywell International v. Universal Avionics Systems Corp. (errata) (08/10/2007): errata to correct language present within two consecutive sentences in the July 3, 2007 opinion (link HERE)

An en banc panel of the U.S. Court of Appeals for the Federal Circuit recently revisited the law of willful patent infringement, overruling precedent that stood for about twenty-four years. The Court also addressed the scope of a defendant's waiver of its attorney-client privilege and work product protection resulting from the defendant's assertion of the advice-of-counsel defense to a willful infringement claim.

In In re Seagate Technology, LLC, the Court abolished the "affirmative duty of care" set forth in Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983), which required "a potential infringer [having] actual notice of another's patent rights" to exercise due care to avoid infringing those rights. Id. at 1389-90. As the Underwater Devices decision explained, the "affirmative duty includes, inter alia, the duty to seek and obtain competent legal advice from counsel before initiation of any possible infringing activity." Id. The duty was significant because any defendant found to have breached the duty was exposed to potential liability for up to three times the amount of damages it would otherwise have had to pay for infringing the patent (so-called "treble damages"), as well as the plaintiff's attorneys' fees.

After Seagate, however, a plaintiff can prove willful infringement – and therefore become eligible for an award of treble damages and attorneys' fees – only if the plaintiff shows that: (1) the defendant acted recklessly, that is, the defendant acted in the face of "an objectively high likelihood that its actions constituted infringement of a valid patent," and (2) the likelihood of infringement "was either known or so obvious that it should have been known" by the defendant.

In addition, the Seagate Court addressed the rules of discovery regarding the often-asserted advice-of-counsel defense. Specifically, the Court clarified the scope of privilege waiver based on assertion of the defense, setting forth the general rules that

"asserting the advice of counsel defense and disclosing opinions of opinion counsel do not constitute waiver of the attorney-client privilege for communications with trial counsel"; and

"relying on opinion counsel's work product does not waive work product immunity with respect to trial counsel."

The Court did not specify whether these general rules would apply in the situation where opinion counsel also serves as trial counsel.

Slip Opinion: LINK

Greg Duff is an attorney with Ice Miller focusing his efforts on patent litigation and prosecution.

At the request of a member of the USPTO Search and Information Resources Administration (SIRA) Customer Outreach Support group, I am sharing the following announcement regarding an opportunity for you to participate in a webcast regarding the new claims and continuations rules to be announced and implemented by the USPTO. I encourage your participation in the webcast as these rules have been discussed for quite some time, and the final versions of the rules will become effective on November 1, 2007.

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USPTO Webcast on New Claims and Continuations Rules Thursday, August 23rd

Date: Thursday, August 23, 2007
Time: 1:00 p.m. (EST)
Register: LINK

The U.S. Patent and Trademark Office (USPTO) will hold a special webinar on Thursday, August 23, 2007, at 1:00 p.m. (EST) on new claims and continuations rules that will allow the agency to continue to make the patent examination process more effective and efficient by encouraging applicants to use greater clarity and precision in describing the scope of their inventions. The new rules will be published in the Federal Register available at www.uspto.gov after noon on August 21, and will be effective on November 1, 2007.

During this live, two-hour webcast, USPTO officials will explain the new rules and answer questions. The presentation and audio for this event will be streamed over the Internet. All participants need is a computer with an Internet connection, sound card, speakers and the ability to view Windows Media presentations.

To register for this free webcast, click on the following link: LINK

An advance copy of the presentation will be made available to registrants prior to the event.

If you would like to receive regular updates from USPTO on its eCommerce initiatives, please register by clicking on the following link: LINK

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 three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 31st calendar week of 2007. All opinions are precedential unless otherwise indicated.

Somerset Pharmaceuticals, Inc. v. Dudas (07/31/2007, nonprecedential): appeal of district court’s order denying request for preliminary injunction (request to compel USPTO to issue a decision as moot dismissed, otherwise district court’s decision affirmed); discussion of patent related to a method for treating depression by using a drug patch (U.S. Patent No. RE 34,579, entitled "Method of treating depression"); plaintiff filed a patent term extension application with the USPTO in 2006 to extend the patent to 2007; "a movant is not entitled to a preliminary injunction if he fails to demonstrate a likelihood of success on the merits"; in this particular case, the Director of the USPTO denied Somerset’s application for extension because he has no statutory authority to issue the interim extension sought by the patentee; patentee has not demonstrated a reasonable likelihood of success on the merits, and because the district court did not abuse its discretion in denying Somerset’s motion for a preliminary injunction, that denial is affirmed

Sony Electronics, Inc., et al. v. Guardian Media Technologies, LTD. (08/03/2007): appeal of motion to dismiss declaratory judgment actions for lack of subject matter jurisdiction (vacated and remanded); discussion of two patents related to methods and apparatuses for blocking the viewing of certain television programs (U.S. Patent No. 4,930,158, entitled "Selective video playing system", and U.S. Patent No. 4,930,160, entitled "Automatic censorship of video programs"; plaintiffs sought a judgment that the two patents were not infringed, that they were invalid, and that they were unenforceable against them due to laches and equitable estoppel; the phrase "case of actual controversy" [from the Declaratory Judgment Act] "refers to the type of ‘Cases’ and ‘Controversies’ that are justiciable under Article III"; lengthy discussion included regarding what is and is not an actual case or controversy; "[i]n promulgating the Declaratory Judgment Act, Congress intended to prevent avoidable damages from being incurred by a person uncertain of his rights and threatened with damage by delayed adjudication"; Guardian asserted that it is owed royalties "based on specific past and ongoing activities" by the plaintiffs, and because the plaintiffs contend that they have a right to engage in those activities without a license, so there is an actual controversy; vacated and remanded for the district court to determine in its discretion whether to entertain appellants’ declaratory judgment suits.

SafeTCare Manufacturing, Inc. v. Tele-Made, Inc., et al. (08/03/2007): appeal of summary judgment of noninfringement of the patent-in-suit (affirmed); discussion of patent related to wide and strong hospital beds (U.S. Patent No. 6,357,065, entitled "Variable width bariatric modularbed"); in explaining the importance of referring to the specification in determining and understanding the meaning and scope of a patent claim, the Court has stated that "the specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term’"; based upon review of Markman claim interpretation, the allegedly infringing device does not exert a pushing force as required by the asserted claim; because Burke’s product does not infringe claim 12 (the only claim asserted of the ’065 Patent), the decision of noninfringement is affirmed

It was recently announced that Founder Electronics Co. of China has filed suit against Blizzard Entertainment, the developer of the popular “World of Warcraft” game, claiming losses of $1 billion Yuan (~$132M U.S. dollars) from Blizzard’s copyright infringement. According to the Yahoo! News article (link below), Founder filed the “interim claim” in Beijing against Blizzard, The9 (the company running the online game in China), and Qingwentuwen (the company distributing the game in Beijing), claiming that the $1B Yuan in lost earnings “was a conservative estimate.” The infringement claim is based on the alleged use of five of Founder’s different fonts in the World of Warcraft game, noting that Founder is the largest provider of Chinese fonts. According to the World of Warcraft Community Site (link below), “World of Warcraft is an online role-playing experience set in the award-winning Warcraft universe. Players assume the roles of Warcraft heroes as they explore, adventure, and quest across a vast world. World of Warcraft is a "Massively Multiplayer Online Role Playing Game" which allows thousands of players to interact within the same world. Whether adventuring together or fighting against each other in epic battles, players will form friendships, forge alliances, and compete with enemies for power and glory.” There are currently over 7 ½ million people across the globe who play World of Warcraft.

Yahoo! News Article: LINK
World of Warcraft Community Site: LINK
Blizzard Entertainment Website: LINK
Founder Electronics Co. Website: LINK

As mentioned in the Daily Dose of IP blog last month (link below), Denis Kvasov, the principal behind the now-disabled AllOfMP3 music website, was facing charges in Russia for massive copyright infringement. As reported in the Ars Technica article (link below), Kvasov was recently found not guilty of copyright infringement in Russia, in part because Russian copyright law was not amended to include references to digital downloads until sometime last year. Kvasov left the company behind AllOfMP3 (Mediaservices) in 2005, effectively shielding him from prosecution as until the Russian law was amended, and according to Ars Technica, AllOfMP3 “was apparently legal in Russia” up until the 2006 statutory revisions. As noted in my earlier DDIP post and the article below, the content and functionality of AllOfMP3.com appears to have swapped over to a new domain, MP3sparks.com, offering “identical” functionality to the prior and now defunct website. According to the Australian IT news article (link below), the current principal of Mediaservices, Vadim Mamotin, has “insisted” that “by paying royalties to a Russian licensing group, allofmp3.com was in compliance with Russian laws.” However, and according to that article, recording companies contend that the licensing group “never had the permission of music industry to collect and distribute royalties on its behalf.” At least two additional cases involving AllofMP3, including one against Vadim Mamotin, remain pending.

July 2007 DDIP Article: LINK
Ars Technica Article: LINK
Australian IT News Article: LINK

I was searching for something interesting to write about last evening, and I came across a news article (link below) discussing some of the details of Google, Inc.’s most recent SEC 10-Q filing. Google is quite clear with how it feels about its intellectual property:

“Our patents, trademarks, trade secrets, copyrights and other intellectual property rights are important assets for us.”

Google acknowledged that there are some “threats” to its intellectual property, its products, and its services, noting the following:

“[E]ffective intellectual property protection may not be available in every country in which our products and services are distributed or made available through the internet. Also, the efforts we have taken to protect our proprietary rights may not be sufficient or effective. Any significant impairment of our intellectual property rights could harm our business or our ability to compete. Also, protecting our intellectual property rights is costly and time consuming. Any increase in the unauthorized use of our intellectual property could make it more expensive to do business and harm our operating results.”

While these statements may apply to several internet-based companies, Google also acknowledged one specific threat unique to it, namely its desire to maintain trademark protection on “Google”:

“For example, there is a risk that the word “Google” could become so commonly used that it becomes synonymous with the word “search.” If this happens, we could lose protection for this trademark, which could result in other people using the word “Google” to refer to their own products, thus diminishing our brand.”

[Back in July 2006, I wrote a brief blog article (link below) entitled “Is “Google” Becoming Dilute?” noting that Merriam-Webster had then recently added the word “google” to its dictionary.]

Google’s full 10-Q is provided in the link below (via EDGAR Online through Yahoo!).

Yahoo! News Article: LINK
Google’s Recent Form 10-Q: LINK
July 2006 DDIP Article: LINK

On Friday, the World Intellectual Property Organization (WIPO) released its “WIPO Patent Report: Statistics on Worldwide Patent Activity (2007 Edition)” discussing where in the world patent applications are being filed and who is filing them. This Report includes sections entitled “Patent Filings by Residents and by Non-Residents”, “Indicators of Patent Intensity”, “Fields of Technology”, “The International Route: the Patent Cooperation Treaty”, “Patent Filing in the European Region”, “Patent Filing in the North East Asian Region”, “Processing of Patent Applications”, “Patents Granted”, “Patents In Force”, and “Statistical Tables”. One particular statistic that I found interesting (among several) is the “Resident Filings per Million Population” 2005 statistic, noting that Japan and the Republic of Korea lead with 2,875.68 and 2,530.08, respectively, with the United States third with 701.08. Regarding total resident patent filings in 2005, Japan led the way with 359,382, a figure larger than second (United States) and third (Republic of Korea) combined. Links to the HTML and PDF versions of the report, as well as a summary of the North East Asia statistics, are provided below.

WIPO 2007 Patent Report (HTML): LINK
WIPO 2007 Patent Report (PDF): LINK
WIPO Highlights of North East Asia: LINK

At the request of a member of the USPTO Search and Information Resources Administration (SIRA) Customer Outreach Support group, I am sharing the following announcement regarding an opportunity for readers of the Daily Dose of IP blog to provide feedback directly to the USPTO. I encourage your participation if you have suggestions and recommendations to improve the review of CWUs.

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The United States Patent and Trademark Office (USPTO) is seeking participants for a Complex Work Units (CWUs) Pilot Program scheduled for late 2007. CWUs are chemical structure drawings, mathematical formulae, protein crystal data, and table data, which often add significant complexity and cost to the examination and publication of patent applications in which they are contained.

The CWU Pilot Program will be conducted in an effort to:

* Investigate filing practice options for CWUs
* Gather information about existing CWU formats and their use in the Intellectual Property community
* Evaluate rule changes to allow applicants to submit CWU files
* Determine other acceptable file types

The pilot will allow applicants to submit original source files for CWUs through EFS-Web or on a CD, supplementing the traditionally-filed application parts. The CWU source file submissions will not be considered when calculating the application size fee, which will reduce the cost of filing for pilot participants.

The USPTO is requesting participants in an effort to gather more information about CWUs from the intellectual property community. If you have any questions or would like to participate in CWU Pilot activities, please send an e-mail to cwupilotsupport@uspto.gov today!

It was announced this week that Judge Rudi Brewster of the U.S. District Court for the Southern District of California in San Diego ruled on the post-trial motions in the patent infringement case involving Alcatel-Lucent and Microsoft Corp. As reported back in February on the DDIP blog, a jury awarded Alcatel-Lucent just over $1.5 billion in damages, determining that Microsoft infringed two of the plaintiff’s MP3 digital music file standard patents, rejecting Microsoft’s argument that it had previously paid $16 million for a license for the technology from Fraunhofer Gesellschaft and that it had a right to continue to use the licensed technology in its products. According to the Yahoo! article (link below), Judge Brewster ruled that one of the two asserted patents was not infringed by Microsoft, and because Fraunhofer (a European research organization and deemed co-owner of the other patent) did not join the suit, the court did not have jurisdiction over the suit on that patent. Alcatel-Lucent has publicly announced its plans to appeal this decision.

Yahoo! Article: LINK
February 2007 DDIP Article: LINK

The USPTO recently issued a reminder announcement regarding its free forum to educate business in the State of Washington about the threats of counterfeiting and piracy. As previously announced on the DDIP blog and again by the USPTO (links below), this seminar will be held in Bellevue, Washington, at The Westin Bellevue this Friday and will feature the Washington State Attorney General (Rob McKenna), the Chief of Staff of Washington Congressman Dave Reichert (Mike Shields), the Senior Advisor for the Global Anti-Counterfeiting and Piracy Initiative of the U.S. Chamber (Brad Huther), an Attorney-Advisor for the USPTO (John Koeppen), a Senior Attorney of the Worldwide Anti-Piracy Team at Microsoft Corp. (Bonnie McNaughton), and the President of Flex-a-Lite Consolidated (Lisa Chissus). According to the USPTO, “[s]mall businesses, which represent more than 98% of employer firms in the state of Washington [SBA Small Business Profile], are most at risk for counterfeiting and piracy because they often lack the knowledge and expertise to combat these problems. This is the first of three seminars to be hosted by the USPTO this month pertaining to piracy and counterfeiting.

USPTO Notice: LINK
DDIP Announcement: LINK

It was recently announced that Tiffany and Company obtained a Final Judgment by Consent in its favor from the U.S. District Court for the Southern District of New York against Starglam Inc. and John Shamir for widespread trademark infringement and counterfeiting. Shamir, the principal behind Starglam, previously served a prison sentence for his role in the counterfeiting, and was ordered to pay Tiffany and Company nearly $1M from the sale of counterfeit products. The counterfeit products were available in Asia, New York City, and across the world via eBay. According to the 2003 JCKOnline article (link below), a raid four years ago resulted in the confiscation of counterfeit jewelry and counterfeit packaging with the Tiffany & Co. trademark. Starglam had been selling counterfeit necklaces, bracelets, and rings through its own website and on eBay under the name “Tiffanyplus.” Tiffany and Company also has a civil action pending against eBay “because of the large amount of counterfeit Tiffany silver merchandise that has been sold on eBay auction sites” according to the Yahoo! article (link below). Tiffany and Company is the owner of dozens of registered U.S. trademarks, including 37 live registrations for “Tiffany & Co.” and related variants.

Yahoo! Article: LINK
JCKOnline Article: LINK

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 three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 30th calendar week of 2007. All opinions are precedential unless otherwise indicated.

In re Metoprolol Succinate Patent Litigation, Astrzeneca AB, et al. v. KV Pharmaceutical Company, et al. (07/23/2007): multiple suits filed by plaintiffs in various jurisdictions asserting the defendants’ filed ANDAs infringe their patents; cases consolidated in Missouri; appeal of grant of summary judgment finding the patents invalid and unenforceable (affirmed-in-part, vacated-in-part, and remanded); discussion of two patents related to a composition used to treat angina, hypertension, and congestive heart failure (U.S. Patent No. 5,001,161, entitled “Pharmaceutical composition comprising metroprolol succinate,” and U.S. Patent No. 5,081,154, entitled “Metoprolol succinate”); where decisions of the Court of Customs and Patent Appeals conflict, however, the later issued decision controls “because the Court of Customs and Patent Appeals always sat in banc and therefore later decisions overcome earlier inconsistent ones”; claim 1 of U.S. Patent No. 5,081,154 deemed invalid for obviousness-type double-patenting, and as the invalidity of the other patent was not appealed, summary judgment of invalidity of both patents was affirmed; “‘[i]ntent need not, and rarely can, be proven by direct evidence.’ Rather, intent to deceive is generally inferred from the facts and circumstances surrounding the applicant’s overall conduct”; because a genuine issue of material fact remains, vacated the district court’s inequitable conduct holding and remanded the case

Cybersettle, Inc. v. National Arbitration Forum, Inc. (07/24/2007, nonprecedential): appeal of summary judgment for patentee Cybersettle holding that NAF’s systems performed the claimed methods (vacated and remanded); discussion of patent related to online dispute resolution systems (U.S. Patent No. 6,330,551, entitled “Computerized dispute resolution system and method”); “the use of a [claimed] process necessarily involves doing or performing each of the steps cited”; “[i]t is improper for a court to [add limitations] . . . wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim”; use of the term “plurality” as referring to two or more of something, seen as “consistent with the well understood meaning of the term “plurality” both in general and in patent parlance”; the appellate court vacated the district court’s judgment and remanded for further proceedings because we one aspect of the district court’s claim construction was erroneous

Boynton, et al. v. Headwaters, Inc. (formerly known as Covol Technologies, Inc.) (07/27/2007, nonprecedential): appeal of dismissal of patent infringement claim on the pleadings and their claims for civil conspiracy, interference with contract, and constructive claims on summary judgment (affirmed-in-part, vacated-in-part, and remanded); discussion of patent related to a process for the agglomeration of coal fines comprising the steps (U.S. Patent No. 5,238,629, entitled “Process of coal agglomeration”); patent infringement dismissal affirmed as licensee cannot be a direct infringer of a patent; “[a] voluntary dismissal with prejudice operates as a final adjudication on the merits and has a res judicata effect”; vacated the district court’s grant of summary judgment in favor of Headwaters as to the civil conspiracy and constructive trust claims because Mr. Davidson’s underlying alleged fraud can serve as an underlying tort for plaintiffs’ civil conspiracy claim against Headwaters and as a basis for the imposition of a constructive trust, affirmed the district court’s dismissal of plaintiffs’ patent infringement claim on the pleadings and plaintiffs’ interference with contract claim on summary judgment

YouTube has recently announced its plans to implement a digital technology aimed at curbing copyright infringement of videos posted by users on its website. According to the Geek.com article (link below), this technology is expected to be implemented sometime in September and “should be as good as FBI fingerprint technology in identifying videos that include content that is copyrighted.” As reported by the Associated Press (FOXNews.com AP article link below), “[t]he video recognition technology will allow those holding copyrights on videos to provide a digital fingerprint, so that if anyone tries to share a copyrighted video, the system will shut it down within a minute or so.” According to that article, “hundreds of thousands” of videos are now exchanged by users of YouTube per day. In response to several copyright infringement lawsuits filed against YouTube, it states that its actions to reduce infringement exceed those requirements under the Digital Millennium Copyright Act (DMCA), noting further that it alleges to immediately comply with requests to remove unauthorized material from its website.

Geek.com Article: LINK
AP Article (via FOXNews.com): LINK

As noted in Monday’s USPTO press release (link below), the USPTO and the Japanese Patent Office (JPO) announced that they have “launched a free service that will allow the two offices to electronically exchange patent application priority documents and help further streamline the patent application process” resulting from an early agreement between the two offices from 2006. Priority documents are filed when an applicant claims an earlier filing date in one patent office based on an earlier filing in another patent office, and according to the press release, “[t]his electronic exchange of copies of priority documents promotes sharing of information between the intellectual property offices and reduces the administrative costs associated with handling paper copies of priority documents and scanning them into the offices' electronic image record management systems.” Two forms will be used (PTO/SB/38 and PTO/SB/39), and according to a January 2007 Federal Register excerpt (link below), “[t]he 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,” and “[t]he 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.” Links to the two forms and instructions for use are also provided via the “forms and instructions” link below.

USPTO Press Release: LINK
Federal Register Excerpt (PDF): LINK
USPTO Forms and Instructions: LINK