There are only 24-hours remaining in Ron Meritt’s eBay auction of his alternative fuel kit and associated intellectual property. The current price is $8,520. According to the disclosure:
The prototype motor currently runs approximately 99% pollution free, and is capable of operating on a variety of fuels.
Arnold O. Beckman, inventor of the pH meter, died recently at age 104.
Beckman, a resident of Corona Del Mar, Calif., was born the son of a blacksmith on April 10, 1900 in Cullom, Ill., and became the friend of world leaders. Of all his scientific innovations, Beckman was perhaps best known for inventing the pH meter, an instrument that changed an industry and served as the foundation for the company that still bears his name. (Link)
Those struggling with starting an in-house IP department should look here.
The absolute first thing you should get is your own customer number from the PTO. Immediately request it, listing only your reg. no. and listing the company address as the correspondence address! Changes can later be made depending on how you decide to handle things.
Harry has further advice if you want to push around the outside counsel.
Nipper on EU Patents: European Union goverments today killed a proposal to create a single EU-wide patent system.
in re Relafen Antitrust Litigation (D. Mass, May 12, 2004)
A Massachusetts district court has allowed (in-part) an end-payor class action suit against GlaxoSmithKline (GSK). (U.S. Patent No 4,420,639)
Background: In 2002 GSK’s lawsuit against generic Relafen (an NSAID) manufactures ended in an invalidity opinion that was affirmed by the Federal Circuit.
In the present suit,
the plaintiffs claim that but for SmithKline’s wrongful filing of patent lawsuits, consumers could have begun purchasing nabumetone in a competitive market — comprising both Relafen and its generic alternatives — as early as September 1998. Because of the pending litigation, however, the generic alternatives did not become available until after the stay period terminated and SmithKline’s patent was invalidated.
The court certified the following classes:
With respect to their antitrust and consumer protection claims
All persons or entities who purchased Relafen or its generic alternatives in the states of Arizona, California, Massachusetts, or Vermont during the period of September 1, 1998 through June 30, 2003 for consumption by themselves, their families, members, employees, insureds, participants, or beneficiaries.
and with respect to their unjust enrichment claims
All persons or entities in the United States who purchased Relafen in the states of Arizona, California, Massachusetts, Tennessee, or Vermont during the period September 1, 1998 through June 30, 2003 for consumption by themselves, their families, members, employees, insureds, participants, or beneficiaries.
Excluded from both classes were governmental entities; SmithKline and its officers, directors, management, employees, subsidiaries, and affiliates; persons or entities who purchased Relafen for purposes of resale; and persons or entities who purchased Relafen directly from SmithKline or its affiliates.
What is the safest advice an intellectual property attorney can give clients concerned about potential litigation? “Do absolutely nothing.”
Unfortunately, your clients will not make money by doing nothing. Short of doing nothing, Phil discusses the need to examine how much risk your client is willing to endure, and how to balance that risk level with the needs of the business.
Our Summer Associates start today. Shoot me an email if you have any great ideas for work assignments.
FYI: My firm, McDonnell Boehnen Hulbert & Berghoff (MBHB) has a great summer associate program. Every summer we bring in about ten of the very best of the crop of future patent attorneys. All of our attorneys are qualified to register as patent attorneys before the U.S. Patent Office and about a third have PhD’s in their respective technological area.
The dot.com business model was built around new technologies and new ways of doing business. Fast-growing companies and their intellectual property were snapped up in mergers and acquisitions at a blistering pace in the boom. Now, many of the purchasers are hoping to shed excess weight.
In steps the newly formed “Venture Buyout” firm Garnett & Helfrich Capital:
Now a pair of Silicon Valley-based venture capitalists have opened an unusual $250 million fund intended to buy and rehabilitate such companies, which Terry Garnett, one of the two founders, calls “the orphaned and the unloved.” (NYTimes)
In many cases, the partners hope to bring original creators back to run the new companies.
“We’ve heard from a number of founders,” Mr. Garnett said, “who told us, ‘Gosh, we sold our business four years ago, and now our baby has been all screwed up and we want it back.’ ”
Garnett & Helfrich provide their own definition of terms:
Ven-ture Buy-out (ven’cher bi’out’) noun. The purchase of a technology business from a parent company, and the subsequent rebuilding of that business into an innovative and profitable enterprise. Involves risk of capital and substantial changes to the business to improve management and operations after acquisition.
NYTimes is reporting that a chloesterol lowering drug will be sold over-the-counter in the UK beginning this summer.
Starting in July, a low dosage of the drug Zocor will be sold over the counter to people at moderate risk of heart disease, a number that could reach 5 million to 10 million. That group includes all men older than 55, as well as men over 45 and women over 55 who smoke, are overweight, have a family history of heart disease or come from the Indian subcontinent, all groups that are at higher risk than the general population.
The US patent for Zocor (simvastatin) is expected to expire in 2006.
Update 5/17/04: US drug makers are working with the FDA to get OTC approval.
A decision is months away, but approval by the Food and Drug Administration could significantly affect the nation’s biggest public health problem, heart disease, and greatly expand sales in the top-selling drug category. (Article)
A little off topic: Survey results indicate that Attorneys have the third highest motor-vehicle accident rate of any occupation. The two groups with worse records are students and medical doctors. (Small Firm Business).
Autoliv’s patented restraint system may help us make it out alive.
Drive Safely.
Judicial fact finding is back in vogue this time via Google.
In the United States and abroad, judges are turning to search engines such as Google to check facts, to look up information about companies embroiled in litigation, and to challenge statistics presented by attorneys in court. Dozens of judges have penned opinions describing Google as a valuable–and sometimes crucial–source of knowledge. (Declan McCullagh at CNet News)
Under the Federal Rules of Evidence (Rule 201), this type of judicial notice of facts is only allowed when the accuracy of outside sources “cannot reasonably be questioned.”
Related Book: The Lawyer’s Guide to Fact Finding on the Internet) by Carole Levitt and Mark Rosch has an updated edition with lots of examples.
Written especially for legal professionals, this … edition is a complete, hands-on guide … for conducting efficient research on the Web. Learn the differences between legal research and fact-finding. Discover the distinction between the “visible” and “invisible” Web and how to find information in each. Learn the nuances of search engines in order to formulate strategies for locating the information you need. And read real-world war stories of how Internet data has benefited other legal professionals. (ernietheattorney)
Other: Illustrated patent case law.
(Thanks to Lori Patel, Law.com for the Link)
Thomas Hitter has published new note in the Federal Circuit Bar Journal suggesting that the Federal Circuit implement an ADR program.
In re American Academy of Science Tech Center (Fed. Cir. May 13, 2004)
The Federal Circuit affirmed the Patent Board’s rejection of several claims during reexamination.
The patent claims a priority date back to 1982 and describes distributing processing functionality among several computers:
user applications are run on the user stations, while the database resides on a dedicated database computer. Several user stations are networked to the database computer so that a user application running on a user station can store data to and retrieve data from the database residing on the database computer. The patent describes using a “data base simulator” to “enable[ ] an application program . . . at the user station to call for storage or retrieval of data from the data center as though it were calling for data from a data base resident at the user station . . . .”
The Federal Circuit agreed that the broadest reasonable construction of the claim language allows prior art to read on the claims. Thus, the claims were properly held invalid.
Microchip Technology v. U.S. Philips and Philips Electronics N.A. (Fed. Cir. May 13, 2004)
Philips owns patents relating to a two-wire bus for communicating between integrated circuits (I2C). Microchip asserted that it did not infringe and that it was a licensee (by succession). The question before the Court was who determines whether there is an obligation to arbitrate.
Although the Federal Circuit generally follows local circuit law regarding non-patent issues, in this case the Court disagreed with prior 9th Circuit holdings. Instead, the Court held that under Supreme Court case law obligation to arbitrate is a threshold matter for the district court to determine. Thus, the Federal Circuit remanded for the District Court to determine whether Microchip was a successor party to the 1983 agreement before any issues may be referred to arbitration.
The appellate panel also found that the arbitration clause was not expired:
It is clear on the face of the 1983 agreement’s arbitration clause that the obligation to arbitrate survives expiration of the agreement’s other provisions. The arbitration clause specifically provides that “[a]ll disputes arising out of or in connection with the interpretation or execution of this Agreement during its life or thereafter” are subject to arbitration.
Appellate Jurisdiction: The Court also held that an order compelling arbitration is appealable:
An order compelling arbitration is in effect a mandatory injunction. Denial of a mandatory injunction is ordinarily appealable under section 1292(a)(1). (Citations omitted)
More info about the I2C technology is here:
Philips was the inventor of the Inter-IC or I²C-bus nearly 20 years ago, and it is now firmly established as the worldwide de-facto solution for embedded applications. It is used extensively in a variety of microcontroller-based professional, consumer and telecommunications applications as a control, diagnostic and power management bus. As a two-wire serial bus, its inherently simple operation was crucial to its emergence as the worldwide de-facto standard.
In re John Ngai and David Lin (Fed. Cir. May 13, 2004)
Ngai invented a new method for amplifying and normalizing RNA and submitted a patent application for his invention.
The Patent Board rejected Claim 19, which was drawn to a kit with printed instructions for performing the method. The Federal Circuit affirmed the Patent Board’s rejection of the claim.
All that the printed matter does is teach a new use for an existing product. As the Gulack court pointed out, “[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” Id. If we were to adopt Ngai’s position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product. This was not envisioned by Gulack. Ngai is entitled to patent his invention of a new RNA extraction method, and the claims covering that invention were properly allowed. He is not, however, entitled to patent a known product by simply attaching a set of instructions to that product.
An article in the USA Today presents a handful of anecdotes of universities reaping huge monetary rewards for their research.
The Stanford-Google ties spotlight a growing trend on campuses from California to Florida. More schools are trying to boost revenue by profiting from campus research — a once-taboo practice.
More than 300 universities are mining laboratories and classrooms for discoveries that could become the next Google or anti-cancer drug. That’s up from 25 in 1980.
“They pray that maybe they’ll get the big score,” says Eric G. Campbell, an assistant professor at Harvard Medical School who has studied the trend.
The users at Tribe.net have started an interesting conversation for individuals with great ideas, but no money to pursue them.
The Doctrine of Equivalents (DOE) has traditionally been justified as a way to overcome language limitations, mistake, and unforeseeability. Ironically, these elements are missing from leading DOE case law.
Michael Meurer and Craig Nard have released a working paper that brings to light a new justification for the DOE. According to Meurer and Nard, a highly skilled and motivated patent attorney / inventor team would not need the doctrine of equivalents. Through thoughtful and clever claim drafting, the team could obtain patents that would directly cover any potential infringers. This thoughtfulness and cleverness, however, will have a large price tag (i.e., many hours for a highly paid patent attorney).
We develop a better explanation of why claim breadth falls short of the maximum breadth allowed by patent law. Our explanation replaces the passive patent attorney depicted in the friction theory with an active inventor and attorney who are capable of responding effectively to the frictions mentioned above. Whether an inventor obtains the broadest permissible claim breadth depends mostly on the talent and effort of the inventor and attorney in identifying what has been enabled. A good attorney predicts the embodiments that could be chosen by infringers and finds appropriate language to draft a suitably broad claim. We call this process claim refinement, and we develop a refinement theory of the doctrine of equivalents.
Because the pricetag associated with patent drafting is so large, Meurer and Nard argue that such a cost will not be socially optimal. The DOE serves to accomodate less-than-perfect claim drafting — thus allowing a better allocation of resources.
Only a select few ex parte reexaminations are filed by patent owners. Often the technology at issue is of particular importance, and the owner hopes to ensure that the patent is valid before pursuing potential infringers.
3M recently filed for reexamination for several patents covering field flattening lenses used in wide screen television (TV) technology. (Nipper). This may be a reaction to the recent patent tussle between Fujitsu and Samsung.
Medtronic Vascular, Inc. v. CORDIS Corp. (3rd Cir. April 30, 2004)
Medtronic AVE alleged that Cordis infringed its coronary stent patents. In response, Cordis asserted that it held a license to the patents under a Settlement and License Agreement that it entered into with the parent corporation of Medtronic AVE to settle prior litigation.
Although the Agreement included an arbitration provision, the District Court held that the dispute was not arbitrable, and enjoined arbitration.
The 3rd Circuit panel vacated and remanded, finding that the the arbitration clause was applicable under New York law.