Kinzenbaw and Kinze Manufacturing v. Case Corporation and New Holland (Northern District of Iowa, May 20, 2004)
In a patent infringement suit over a seed planter, the Iowa District Court refused to disqualify Plaintiff Kinze’s attorneys, Perkins Coie, even though Perkins also represented Defendant Case in other matters. Perkins’ work for Case had not involved patent matters.
Kinze’s original attorneys had been disqualified after working on patent matters for both Kinze and Case.
The headline: Patent royalties threaten new mobile service
Patent royalties are posing threats to a new digital mobile broadcasting service in Korea before it is even launched. Digital mobile broadcasting, or DMB, is a service that enables users to view television through cellular phones by means of satellite transmission.
TU Media Corp. announced yesterday that Toshiba Corp., the Japanese company that holds the core technology for satellite mobile broadcasting, is demanding royalties for terminals sold in Korea. TU said Toshiba requested royalties of 2 percent per terminal for all gadgets that will use the satellite broadcasting service, reports JoonGang Daily.Commentary: The facts here don’t appear to show a great “threat” or that the patent owner plans to block all use of DMB — Toshiba just wants a piece of the action.
Federico Etro (Harvard): Etro proposes a new rationale for the persistence of monopolies based on a precommitment of the incumbent monopolist to invest in R&D. In other words, the monopolist stays on top, not by unlawfully exercising market power, but rather by continually investing in new technology.
Economic Journal, Vol. 114, pp. 281-303, April 2004
It looks like the job market for patent attorneys is still good. Need a job offer?
Update: A friend of mine has been a patent agent for several years in Chicago and also has a MolBio PhD. For family reasons, he is moving back to Northern California (Tiburon). He would like to continue doing patent work but does not want to commute to silicon valley. Please e-mail me patent@gmail.com with any leads or to request his info.
Currently, the Federal Circuit requires a “piercing of the corporate veil” for individual liability of corporate officers in a patent infringement suit. In a new manuscript, Lynda Oswald (Michigan) argues that the current standard is wrong and overly broad.
In adopting this piercing standard, the Federal Circuit has inadvertently and radically expanded the scope of individual officer liability and has exposed corporate officers to a form of strict liability for their corporation’s infringing activities. I propose instead a standard that parallels the “personal participation” standard of traditional corporate doctrine, which would ensure that culpable corporate actors are held liable in appropriate circumstances, but would avoid wholesale imposition of personal liability upon officers for the patent infringement of their corporations.
IDEA: The Journal of Law and Technology, Vol. 44
Supreme Court of Canada Friday upheld a claim by the Monsanto agricultural biotech company that a farmer had committed a gene patent violation by growing Monsanto-developed Ready Roundup canola seeds on his land without permission.
Read about the somewhat parallel U.S. case here.
Patent law is traditionally justified as an innovation incentive. In a new working paper, Jochen Bigus (Hamburg University) argues that patent law also serves a second goal:
Namely, mitigating conflicts of interest in the venture financing process, thereby making innovations more likely.
Essentially Professor Bigus argues that the clear milestones provided by patent law allow for a better relationship between investor and innovator.
Yesterday, the Senate overwhelmingly passed S.1637 that limits tax deductions for charitable contributions of patent, copyright, trademark, trade name, trade secret, know-how, or software. The limit is the lesser of 5% of the market value (at the time of contribution) or $1,000,000. The House bill is in the Ways and Means committee.
For more tax related news, see the TaxProf.
I just ran across another prime resource. Daubert on the Web is entirely devoted to the law of expert witness testimony and has an up-to-date blog.
Knoll Pharmaceutical Co. v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. May 19, 2004).
The Federal Circuit reversed and remanded the N.D. Ill. district court judgment of invalidity. (U.S. Patent 4,587,252). The patent covers a method for treating pain with hydrocodone and ibuprofen (an NSAID) and is sold as Vicoprofen®.
In reversing the district court’s obviousness finding, the appellate panel found that:
Although the prior art appears to suggest combining an opioid, such as hydrocodone, with various NSAIDs, . . . [t]here appears to be no record of evidence of prior art teaching or suggesting the enhanced biomedical effect of the combination of hydrocodone and ibuprofen.
Additionally, the district court excluded some evidence of unexpected results because those results were discovered after the patent had issued. In disagreement, the panel would allow such evidence:
Evidence developed after the patent grant is not excluded from consideration, for understanding of the full range of an invention is not always achieved at the time of filing the patent application. It is not improper to obtain additional support consistent with the patented invention, to respond to litigation attacks on validity.
The inherent contradiction of this opinion: Obviousness is judged at the time of the invention, but this case allows evidence that was developed after the invention to be used in determining obviousness.
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.