Patently-O Tidbits

Patent
  • PatentLawPic057Patent Sharks: The recording industry has focused its message — individuals who download share songs without paying will be sued. [$200k verdict against single mother]  In the 19th century, ‘patent sharks’ went after individuals in the same way — leading to major patent reforms. [Link] [Kirkman Blog]
  • PTO Morass: GAO Report on the PTO: “Hiring Efforts Are Not Sufficient to Reduce the Patent Application Backlog”. In response, the PTO will conduct its own study to “review assumptions the agency uses to establish production goals for patent examiners.” [Link] The Department of Commerce also notes that the new rule changes should help fix the employment mess. (p.36 of the report).
  • Obviousness: Milton & Anderson suggest a new obviousness acronym — the common sense selection (CSS) test. “[M]ere selection of elements from various prior art references and combining them together with no change in their respective functions is a matter of common sense to one skilled in the art, and, therefore, obvious and not patentable. On the other hand, a combination that includes something new or produces a new function or an unpredictable result remains potentially patentable.” [LINK]
  • Patent Reform:
  • Political Economist & Harvard Professor Mike Scherer has an excellent new paper on the Political Economy of Patent Reform in the US. [TIIP]
  • One report I’ve seen announces that the Senate has 41 anti-reform votes — enough to block consideration of the reform measures. A reformed reform bill may still have a chance.
  • Kathi Lutton (Fish & Richardson’s Chief Litigator) & Kelly Hunsaker continue to develop their Patent Reform Updates.

Claimed ‘plant cell’ must enable monocots and dicots; CAFC affirms noninfringement and invalidity of Monsanto GM corn patents

Patent, ,

Monsanto Co. v. Syngenta Seeds, Inc. (Fed. Cir. 2007)

Monsanto and its Dekalb subsidiary hold three patents covering Roundup-Ready Corn.

  • 4,940,835 covers a GM gene that confers glyphosate resistance to plants.
  • 5,538,880 covers the process of producing herbicide and insect resistant corn.
  • 6,013,863 covers the process of producing glyphosate resistant corn having a marker gene.

Syngenta grew Dekalb GM seeds that had been produced according to the patented methods and then grew genetically identical progeny exhibiting the same GM traits. 

In the ensuing infringement litigation, the district court held that the ‘835 patent invalid for under 35 USC 112 for lack of enablement and held that Syngenta did not infringe the two process patents because the accused infringer did not perform the initial step of the claims. (That initial step of “bombarding … cells with DNA-coated microprojectiles” was performed by Bayer prior to issuance of the patents).

Enablement: The ‘835 patent is not limited to corn. Rather, it claims to be applicable to ‘plant cells.’ During claim construction, the district court found that the patent scope extended to all plant cells – including both monocots and dicots. However, the ‘835 patent was filed before genetic transformation of monocot cells was possible.

“The claim requires transformation of the plant cell. Without the ability to transform a monocot cell, one skilled in the art could not determine whether the plant gene could carry out the claimed functions and thus fall within the scope of the claim.”

Thus, the ‘835 patent is invalid for lack of enablement.

Infringement of Dependent Process Claims: Generally, a dependent claim includes all the limitations of its parent.  Here, however, Monsanto argues that its process claim structure necessitates an alternative viewpoint.  In particular, Monsanto argued in the alternative that its Claim 4 is (1) not a dependent and (2) even if a dependent does not require all the limitations of Claim 1. The process claims line-up as follows:

  • Claim 1: A process for producing a fertile transgenic Zea mays plant comprising the steps of …
  • Claim 4: A process comprising obtaining progeny from a fertile transgenic plant obtained by the process of claim 1 which comprise said DNA.

Thus, Claim 4 is directed to a process of growing seeds from a plant that was produced according to the manner of claim 1.  This could be considered a claim directed to a process of using a product of a process.

The CAFC quickly shot-down Monsanto’s argument — holding that claim 4 is a dependent and the all element rule applies.

“Although in a somewhat unusual format, claim 4 is dependent from claim 1 because it only stands if all three steps recited in claim 1 have been performed. In other words, the additional fourth step of obtaining progeny depends on the performance of the process comprising the three steps recited in claim 1 for obtaining a fertile transgenic plant. Claim 4 contains each element of a dependent claim.”

The court also repeated its rule that one “cannot infringe” a dependent claim without also infringing the parent claim.

271(g) Infringement: Under 271(g), a product made by a patented process also creates infringement liability.  Here, however, Syngenta could not be held liable because several steps of the process were performed prior to issuance of the patent.

“Infringement is not possible under § 271(g) when the three first steps of the claimed process are performed before the issuance of the patent.”

Summary judgment of noninfringement and invalidity affirmed.

 

 

Short Article Request: Short-term Reaction to PTO Rule Changes

Patent

On November 1, 2007, the PTO’s new rules will become effective. Those claims will limit the number of continuation applications that may be filed as well as the number of claims included in each application.

Article request: I would like to publish two separate short articles (<1000 words) written by Patently-O readers. Topics: (1) What action, if any, should a patent applicant take between now and November 1 to preserve rights in an of an already pending valuable patent application?; (2) Are there any actions that should be taken prior to November 1 to preserve rights in a valuable invention that is not yet associated with a patent application?

Please send your questions and short articles to: dcrouch@patentlyo.com.

====

Of interest is the following statement from the PTO’s Rule Change FAQ: “[A]pplicant may file as many continuation or CIP applications as applicant wants between August 21, 2007 and October 31, 2007, without a petition and showing, regardless of the number of previously filed continuing applications.”

New Patent Fees

Patent

TenThe PTO has enacted a modest fee increase of roughly 3%. The largest bump is in appeal fees. An appeal with oral arguments now costs $2050 in fees. (I would query whether this appeal fee increase is meant to cover costs or as a disincentive)

Due on filing:

  • Utility Filing Fee: $310
  • Utility Search Fee: $510
  • Utility Examination Fee: $210
  • Total: $1030 (was $1000)

Due later:

  • Notice of Appeal: $510 (was $340 in 2005)
  • Appeal Brief: $510 (was $340 in 2005)
  • Oral Hearing: $1030 (was $340 in 2005)
  • Utility Issue Fee: $1440
  • 3.5 Year Maintenance Fee: $930
  • 7.5 Year Maintenance Fee: $2,360
  • 11.5 Year Maintenance Fee: $3,910

Fee Schedule

 

Emergency Injunction Denied

Patent

The CAFC occasionally grants emergency motions to stay injunctive relief pending the outcome of an appeal. That occurred earlier in 2007 in the Verizon v. Vonage litigation.

Going the other way, Novartis recently filed an emergency motion to enjoin Teva from selling a generic version of Famciclovir pending outcome of the patent litigation. In early September 2007, the CAFC granted a temporary injunction to block Teva’s introduction into the market. Now, however, after considering the merits of the case, the Court has denied the Novartis suggestion to continue the injunction throughout the litigation.

Consideration of Delayed Injunctive Relief Demanded by CAFC

Academic Studies, Patent

The recent Verizon v. Vonage majority opens the door to an expanded use of what I would call delayed injunctive relief.  In particular, the two-member majority (JJ Dyk & Gajarsa) explains in Footnote 12 that the district court “should have” considered whether to allow the adjudged infringer Vonage more time to implement a workaround before enforcing an injunction.

“One factor that is relevant to the balance of the hardships required by the Supreme Court’s decision in eBay was not considered by the district court, namely whether the district court should have allowed time for Vonage to implement a workaround that would avoid continued infringement of the ’574 and ’711 patents before issuing its injunction.”

The appellate panel also notes that Verizon’s interest in putting Vonage “out of business” is not a legitimate interest — rather, the court’s obligation is to protect Verizon’s patent interests without disrupting other business activity.

“Verizon had a cognizable interest in obtaining an injunction to put an end to infringement of its patents; it did not have a cognizable interest in putting Vonage out of business.”

Historically, a finding of patent infringement resulted in a relatively quick form of complete injunctive relief requiring that any adjudged infringement cease immediately.  The Supreme Court’s EBay v. MercExchange opinion considered injunctive relief a yes/no decision — either an injunction is granted or denied based on the traditional four-factor analysis.  Here, the CAFC appears to be reformulating debate to focus on a timing question —  i.e., if not now, at what point will the four-factors favor the patent holder?

In this case, the Court’s words are relegated to a footnote because Vonage never requested a workaround period.  And, in addition, sufficient time has already passed since the verdict.

“Vonage made no request for a workaround period to the district court, and Vonage has already had several months since the district court’s judgment to implement a workaround.”

Patent Assignment: “obligation to assign” treated differently than concurrent assignment

Patent

IpVenture v. ProStar (Fed. Cir. 2007)

IpVenture sued ProStar for infringement of its patent directed to a thermal and power management system for computers.

One of the inventors — Douglass Thomas — had been a patent attorney at HP at the time of the invention. The district court found that Thomas had an obligation under his employment contract with HP to assign rights to that company. Consequently, the district court dismissed the case for lack of standing. On appeal, the CAFC reversed.

All entities with independent substantial patent rights must be included in a patent infringement lawsuit — they are “indispensable or necessary parties” to the infringement suit.  The policy behind this judicial rule is to ensure that an accused infringer is only sued once.

Here HP has no rights for two reasons:

  1. Under contract law, HP did not have immediate ownership in the patent rights because the inventor’s employment agreement only created an “obligation to assign” the rights.  (The employment contract could have alternatively included terms such as “the inventor hereby grants all rights present and future…”).
  2. In 2005, HP agreed (via contract with IpVenture) that it did not own any rights to the asserted patent.

After disavowing any rights to the patent, HP ensured that it would not be able to sue ProStar for infringement — as a consequence, IpVenture had standing to sue without joining HP.

Dismissal vacated.

Notes:

  • Beware: Patent assignments are contracted interpreted under state law
  • There is some California state law supporting the idea that the assignment had ‘vested’ even though it was only an agreement to assign.

Stay Pending Appeal: Strong Likelihood of Success on Appeal Wins Stay

Patent

Muniauction v. Thompson Corp (Fed. Cir. 2007)

Thompson appealed a permanent injunction barring it from participating in municipal bond auctions over electronic networks in violation of Muniauction’s patent. The jury had found the Muniauction patent valid and willfully infringed based on a theory of joint infringement — the theory recently rejected in Paymentech.

Prior to the substance of the appeal, Thompson moved for a stay of the permanent injunction, which the court granted.

Stays Pending Appeal: Stays of injunctive relief follow the same jurisprudence regardless of whether the relief is permanent or preliminary.  The same four-factor test is also used when granting preliminary relief. The factors asses the chances of success on the merits (of the appeal) and weigh ‘hardships’ to the parties and to the public.

Four factor tests are tricky to apply — some factors may be required while others merely ‘balanced’ with various thresholds in between.  For stays, a moving party’s “strong likelihood of success on the merits” generally receives a stay of relief without regard to hardship of the parties. To win, the movant must present at least a threshold “substantial case on the merits.” In that instance, a stay would issue if coupled with proof of hardships associated with the injunction.

Here, the district court based its infringement decision on the faulty law of joint infringement — creating a high likelihood that the defendant will succeed on appeal. When the first factor is so strongly proven, a stay will always be granted.

Most Litigated Patents 2005-2007

Patent

PatentLawPic047The following table lists the patents asserted most often in patent infringement litigation since January 2005.

  • Patent No. 5,790,512. Asserted by electronics giant Koninklikje Philips in 29 separate lawsuits.
  • Patent Reissue No. 38,014. Asserted by Mag Instruments in 29 separate lawsuits.
  • Patent No. 5,313,229. Asserted by F&G Research in 24 separate lawsuits.
  • Patent No. 4,792968. Asserted by Ron Katz in 19 separate lawsuits.
  • Patent No. 6,766,304. Asserted by Trading Technologies in 17 separate lawsuits.
  • Patent No. 5,352,605. Asserted by Monsanto in 17 separate lawsuits.
  • Patent No. 6,241,739. Asserted by Altair Instruments in 16 separate lawsuits.

Interestingly, only two of these patents appear to be controlled by non-practicing entities.

(From Westlaw Patent Litigation Data)

PTO Claim Construction: “Flexible Foam” Is Not “Rigid Foam That Is Flexible When Crushed”

Patent, ,

In re Buszard (Fed. Cir. 2007)

The Buszard application is directed to a flame retardant composition that includes a flexible polyurethane foam base. The PTO Patent Appeal Board rejected Buszard’s patent application as anticipated by a prior patent.

On appeal, the CAFC reversed — Judge Newman penned the opinion that focused on the PTO’s practice of giving claims their ‘broadest reasonable interpretation.’

“Buszard’s specification and claims specifically state the requirement of a flexible polyurethane foam…. No matter how broadly “flexible foam…” is construed, it is not a rigid foam…. The [cited prior art] reference describes only a rigid foam reaction mixture that produces a rigid product. Only by mechanically crushing the rigid product into small particles is it rendered flexible, as a rock can be mechanically crushed to produce particles of sand. This description cannot reasonably be construed to describe, and thus to “anticipate,” the flexible foam product of a flexible foam reaction mixture. We agree with Buszard that it is not a reasonable claim interpretation to equate “flexible” with “rigid,” or to equate a crushed rigid polyurethane foam with a flexible polyurethane foam.”

Interestingly, Judge Newman’s claim construction intertwines analysis of the claim language with analysis of the scope of prior art disclosure.  Although the PTO may give an applicant’s claims broad interpretation — the scope of the prior art cannot extend beyond its disclosure.

Judge Prost dissented. In Prost’s view, any ambiguities in patent claim terms should be construed against the patentee during prosecution of the patent. That approach avoids the usual ‘guessing game’ of Phillips-style claim construction and it is quite easy for an applicant to make clarifying amendments to claim language.  

Peter Detkin on the New Patent Market

Patent, ,

DetkinPeter Detkin is Intel’s former director of patents, licensing, and litigation who coined the term patent troll. More recently, Detkin co-founded Intellectual Ventures. IV’s product is intellectual property and IP licenses. The company buys patents from small companies and individual inventors and also files patents on its own inventions.

Detkin has an interesting new article in John Marshall’s RIPL journal titled “Leveling the Patent Playingfield.” In the article, Detkin does a great job of explaining IV’s role in the process.

Normally small players have great difficulty simply avoiding being marginalized by major players.  One part of IV’s business is to aggregate the patent rights held by small players and then use its newfound size and power to license those portfolios.

Although IV’s purpose is clearly to make money, he also sees the results as helping the little guy:

“By matching patent owners with patent users, this market may enable small inventors to have a greater stake in their technological efforts.”

The article is an interesting and quick read (especially for a law review).

Ford Design Patents Block Import of Repair Parts – Infringers Call for Patent Reform

Design Patent, Patent, Patent Cases 2007

Patent.Law031In re Certain Automotive Parts, 2007 WL 2021234 (ITC 2007)

Ford Motor Company owns dozens of design patents covering various aspects of its vehicle designs. D496,890, for example, covers a vehicle grille; D493,552 covers a vehicle head lamp; D503,135 covers a bumper lower valance; and D496,615 covers a side view mirror. In 2005, Ford initiated a Section 337 action before the International Trade Commission (ITC) asking for an exclusion order against various auto parts importers whose imports violated the Ford design patents. For the most part, the accused parts are used to repair post-crash vehicles.

An administrative law judge (ALJ) found that the majority of the asserted patents were valid and infringed, although some patents were invalid.  The ITC then issued an order to exclude importation of the unlicensed repair parts.

Repair doctrine: Over the years, courts have created a non-statutory doctrine of permissible repair. Under the doctrine, post-sale repairs made to a patented object are not considered actionable. On the other hand, reconstruction of the patented object will be actionable as an unlicensed “making” of the invention.

Although interesting, the repair doctrine does not apply here. The accused infringers are not repairing anything — rather, they are importing replacement parts that on their own are infringing.

Calls for Patent Reform: After losing on the merits, the would-be importers have jumped on the patent reform bandwagon asking for a “repair parts” exception to the design patent laws. [Quality Parts Coalition]. Car manufacturers would like to go the other way — adding vehicle hull design protection to the Copyright Act. [See Boat Hull statute]

Appeal: The case, captioned as Ford v. ITC, 07–1357, is now on appeal at the CAFC — A decision is expected summer 2008.  The critical question for Ford — will the patents pass the CAFC’s dreaded points-of-novelty test?

DC Court Rejects PTO’s Novel Theory of Double Patenting

Patent,

Takeda v. Dudas (D.D.C. 2007)

Takeda’s priority date stretches back to 1974 when the company filed a Japanese patent application disclosing a set of anti-microbial agents known as cephem compounds. The first US patent did not issue until 1988 (‘606 patent). In 1996, Takeda’s ‘216 patent issued – also reaching back to the 1974 priority date. The ‘216 patent claims a process of compounds claimed in the earlier ‘606 patent — those process claims were not, however, added until 15 years after the priority date.

During a reexamination, the PTO Board of Patent Appeals rejected the ‘216 patent after applying the non-statutory double-patenting doctrine. Under the Board’s decision, the Takeda was guilty of attempted double patenting despite the fact that the two sets of claims were not obvioius variations. Instead, the Board found that the second patent was invalid becaues it “unjustly extends the patent rights of the first patent.”

In particular, the Board held that a process patent with an extended patent term will be invalid for double-patenting “where (1) the claimed method for making the [compound] is described in the [original] patent and (2) there is no credible alternative method for making the [compound] which does not involve an infringement of the method patent?” The Board also faulted Takeda for its 15 year delay in presenting the new claims.

Takeda appealed the BPAI rejection to the DC District court. That court granted summary judgment — ordering the PTO to issue a reexamination certificate.

Only way to make a previously patented product: Takeda submitted an unrebutted declaration that convinced the court that there were multiple ways to create the cephem compounds. Thus, the PTO’s conclusions regarding the lack of alternative methods were factually incorrect.  In its decision, the court rejected the PTO’s argument that the alternative methods must have existed as of 1974. Rather, the court held that those methods may be shown in subsequent technological advances.

Double Patenting Based on Delay: The court went on to find that a patentees delay in pursuing claims could never, on its on, be grounds for a double patenting rejection. Rather, the grounds for double patenting always primarily rest on the lack of patentable differences between the two inventions.

WegnerRejection Reversed

Notes:

  • Hal Wegner along with Ed Polk, Leon Radomsky & Steve Maebious handled the appeal for Takeda
  • BPAI Decision

Continued Patent Trouble for Vonage

Patent, ,

Verizon v. Vonage (Fed. Cir. 2007)

Judge Dyk wrote the majority opinion. Each of the five substantive sections of the opinion garnered two votes. Chief Judge Michel joined Parts I and V while Judge Gajarsa joined Parts II-IV. Both Judges Michel and Gajarsa filed additional dissenting opinions.

Earlier in 2007, Vonage was found to infringe three of Verizon’s IP Telephony patents. The verdict awarded $58M in damages along with an ongoing 5.5% royalty rate and an injunction against further infringement.

On appeal, the CAFC affirmed that two of the patents were valid and infringed and that an injunction had been properly granted. As to the third patent (the ‘880 patent), the CAFC vacated and remanded after finding claim construction errors, potential errors in application of the obviousness doctrine under KSR, and errors in determining injunctive relief under eBay. The damage award was also vacated because the jury verdict did not apportion damages according to the various patents.

Thus, Vonage still infringes, but perhaps not as severely. It is unclear at this point whether avoiding infringement of one patent helps Vonage in any substantive way…

Chief Judge Michel would have affirmed across the board. And, interestingly, he would not have disturbed the $58M damage award even though one of the three patents was not infringed.

“When, as here, the evidence shows that each of the accused products infringes all of the patents-in-suit, and the infringer fails to make any showing on appeal that the damages award would not be supported by only those patents for which we affirm liability, we must affirm the damages despite our reversal of part of the infringer’s liability.”

Judge Gajarsa found claim construction errors in one other Verizon patent, but could not convince a colleague.

============

Sprint v. Vonage (E.D.Kan. 2007) On September 25, a Kansas City jury found that Vonage also infringes a patent held by Sprint Nextel — tacking on another 5% in royalty revenue. [LINK].

Notes:

Need for Patent Reform?

Patent

Won’t it be interesting if the internet telephone industry is decimated through the assertion patent rights held by the largest telephone companies? How does this reflect on patent reform issues? Are there any examples industries being destroyed (or companies crippled) based on patent troll activity/

Let me Repeat: Means-Plus-Function Element Found Indefinite Without Corresponding Structure

Patent

Maurice Mitchell Innovations v. Intel (Fed. Cir. 2007) (non-precedential)

Mitchell’s patent is invalid as indefinite. In its opinion, the CAFC used a simple three step analysis:

  1. The claimed “means for causing” is a means plus function limitation.
  2. The specification contains no structure linked to the claimed means.
  3. Therefore, the claim is invalid as indefinite under 35 U.S.C. 112 p2.

The patentee pointed to a structure in the specification that could serve as the claimed “causing means.” That approach failed because the structure must be “linked” within the specification to the claim language.

Quid pro quo: The CAFC noted that a patentee creates additional burdens by using means plus function language:

“The quid pro quo for using a means-plus-function limitation requires specificity in reciting structure and linking that structure to the limitation.”

In recent history, a more accurate version of this quid pro quo may be written as follows: The quid pro quo for using a means-plus-function limitation is that the patent claims will either be found invalid or narrowly construed.

The CAFC had no reason to issue this as a precedential opinion because it almost identically follows the recent Biomedino case: Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 950 (Fed. Cir. 2007).

(more…)

Invalidation: Corroborating Evidence Required, Invalidity Judged by Totality of the Evidence

Patent

PatentLawPic041Adenta GMBH v. OrthoArm and American Orthodontics (Fed. Cir. 2007).

History:

  • OrthoArm patented a new type of bracket for holding orthodontic braces.
  • In 2001, OrthoArm assigned patent rights to American Orthodontics (in a settlement agreement). American agreed to pay an ongoing royalty of 4%. 
  • American distributes Adenta’s products — in a contract between American and Adenta, the German company began to share royalty payments.  
  • Adenta threatened to stop paying its share of the royalties and American responded with threats.
  • Adenta then sued for declaratory judgment of invalidity.

Declaratory Judgment Jurisdiction: In MedImmune, the Supreme Court made clear that declaratory judgment jurisdiction is much broader than allowed by CAFC precedent.  In particular, the court rejected the CAFC’s requirement that a DJ plaintiff show a “reasonable apprehension of suit.”  Under the court’s newly developed precedent, Article III jurisdiction will arise when a patentee asserts its patent rights against another party’s activity or planned activity.  No actual infringement is required nor is any cessation of royalty payments.

Here, jurisdiction was simple because the patent holder had threatened to assert its rights if Adenta failed to pay royalties — “thereby creating a substantial controversy.”

Evidence of 102(b) Public Use: Under the CAFC’s “rules of evidence,” a single person’s testimony is never sufficient to invalidate a patent. Rather, some corroborating evidence must always be presented. Once that threshold is passed, a jury may evaluate the validity of a patent considering all of the evidence as a whole (using a “rule of reason.”)

Here, Adenta brought forth five witnesses to testify that the invention had been shown at the trade show. In addition, Adenta produced a letter from a German attorney directing that the US application be filed quickly because of the trade show exhibit. Despite the patentee’s attempts to discredit the evidence, the CAFC found that the corroboration threshold was met and that the fact finder had not committed clear error in evaluating the totality of the evidence.

Sham Litigation: There is some indication that this was a sham litigation between Adenta and American. Although American owns the patent, it was required to continue to pay royalties to OrthoArm under their original settlement agreement. The CAFC, however, refused to hear that argument.

Notes:

  • John Fredrickson of Boyle Fredrickson represented Adenta
  • Thomas Reynolds of Michael Best (Milwaukee) took the other side

Warner Lambert’s Neurontin Patent May Be Infringed

Patent

PatentLawPic040In re Gabapentin Patent Litigation (Fed. Cir. 2007)

Warner Lambert sells its drug gabapentin under the trade name Neurontin to treat epilepsy and as well as post-shingle nerve pain. The related patent covers a method of making gabapentin that is stable enough to work well for pharmaceutical use.  Using tools of the Hatch-Waxman Act, Warner Lambert filed this patent litigation to keep generic versions of the drug off the market.  After years of litigation, the district court granted the generic manufacturers summary judgment of noninfringement.

Summary Judgment Basics: On appeal, the CAFC reversed — finding that the NJ District Court had been too quick to discount Warner Lambert’s expert witness testimony. In particular, the patentee’s expert had performed a test on Teva’s samples and determined that the acidic content of those samples fell within the scope of the claims. On summary judgment, “all reasonable inferences” must be weighed in favor of the non-moving party — here, those inferences lead to the conclusion that Warner Lambert’s expert might be correct and that the summary judgment was improperly issued.

Claim Construction: The CAFC also affirmed that a claimed “anion of a mineral acid” is properly defined as an “anion derived from a mineral acid” based on the plain language of the claim. 

A jury will likely now decide whether the generic manufacturers have done enough to avoid infringement.

Typically, generic manufacturers stay off the market throughout patent litigation in order to avoid the potential risk associated with infringement damages. Here, however, Teva began selling gabapentin in 2004 and several other generic manufacturers quickly followed.

Notes:

  • Morris Nichols of Delaware represented the Patentee
  • Mr. Haug of Frommer Lawrence Haug; Steven Lee of Kenyon & Kenyon; and Richard Basile of St. Onge represented the various generic manufacturers.

 

 

Threatening Letters to Infringer’s Clients Are Not Actionable Unless “Objectively Baseless” (Although They Will Create DJ Jurisdiction)

Declaratory Judgment, Injunctions, Patent, Patent Cases 2007

PatentLawPic039GP Industries v. Eran (Fed. Cir. 2007)

Eran makes “leakproof” rain gutter covers. Several Eran employees were fired during the summer of 2005.  Those individuals reorganized as GPI — a potential competitor to Eran. As a preemptive strike, Eran mailed letters to its distributors and contractors noting that GPI’s planned to sell a competitive product that infringed Eran’s patent.

After GPI filed for declaratory judgment, the district court (Nebraska) granted GPI’s motion for a preliminary injunction — stopping Eran from “(1) seeking to prevent GPI from making and selling its gutter products during the pendency of this litigation and (2) making vague and unspecified allegations of infringement against GPI in the marketplace.”

On appeal, the CAFC reversed — finding that the preliminary injunction had been improperly granted.

The party seeking a preliminary injunction has the burden of showing: “(1) a reasonable likelihood of success on the merits; (2) irreparable harm; (3) a balance of hardships in its favor; and (4) public interest in favor of the injunction.” Once granted, a preliminary injunction will only be vacated for clear error.

Injunction against Communications: Based on First Amendment rights and 35 U.S.C. § 287 (notice), injunctions relating to communications must pass a higher hurdle. In particular, “bad faith” is required in order to bar communications.

“One has a right to inform others of his or her patent rights. See 35 U.S.C. § 287. Thus, an injunction against communication is strong medicine that must be used with care and only in exceptional circumstances.”

In Globetrotter Software, the CAFC held that “bad faith” communications require “objectively baseless claims.”  Notably, these determinations are based on federal law that preempt any state laws that may be less strict.

Here, the CAFC found that Eran’s statements could not be “objectively baseless” since the lower court had noted the real potential that Eran would eventually succeed on the merits of the case.

Preliminary Injunction Reversed

Notes:

  • Hovey Williams of Kansas City, Missouri represented the patentee, Eran.
  • Kirton & McConkie of Salt Lake City, Utah represented the accused infringer.