GlaxoSmithKline recently filed several dedications on its patents relating to treatment of migraine headaches. The patents cover Imitrex, generically known as Sumatriptan Succinate. A dedication is a document signed by a patent owner filed in the U.S. Patent and Trademark Office giving up all patent rights. Usually, the patent owner will only file a dedication for patents that are believed to be invalid. Months ago, Glaxo filed suit against Dr. Reddy Labs to prevent generic production of Imitrex.
Re-Examination:
Alpha and Omega Semiconductor has requested that the Patent Office conduct an ex parte reexamination of Siliconix Inc.’s patent on a method for making planar vertical channel DMOS structures. (U.S. Patent 4,767,724). This move is simply the next step in the ongoing patent litigation between the two semiconductor manufacturers. A settlement conference is scheduled for November 17th, 2004.
Theis Research v. Brown & Bain (Now Perkins Coie) (9th Cir. 2004).
B&B was Theis’s attorney in patent litigation that turned out badly. Theis demanded arbitration of claims against B&B for legal malpractice, breach of fiduciary duty, fraud and breach of contract. In commenting on the litigation that spawned the arbitration, the arbitrator stated:
Viewed as a whole, the litigation that is the subject of this arbitration was an almost unmitigated disaster both for [Theis] and for B&B. The hopes of [Theis] and its investors were dashed; years of work by Mr. Theis and others went unrequited; B&B got no return on millions of dollars of invested time, and had to chalk up a major loss on its results chart.
The arbitrator awarded no compensation for Theis. Theis then filed a lawsuit for damages and to vacate the arbitration award.
On appeal, the Ninth Circuit first determined that the amount in controversy was sufficient for federal jurisdiction even though the arbitration award had been zero. The Appellate Panel then Affirmed, finding that Theis could not re-open arbitration as he had not shown that the “arbitral result … was a manifest disregard of the law, an implausible interpretation of the contract, the award was procured by corruption, fraud, or undue means, or the arbitrator exceeded his powers.”
GTA and Exro pursued a joint business venture to produce and market a drag reduction additive (DRA) for petrolium products. The startup company, EXG, never successfully produced or marketed any DRA. However, GTA successfully sued Conoco for infringement of its DRA patents — $60 million. Neither EXG or Exro were parties to that litigation.
Once Exro learned of the award, it demanded its share. According to Exro, EXG held an exclusive license to the GTA patents, thus making the infringement award property of EXG. However, the district court dismissed Exro’s claims on summary judgment.
On appeal, the 4th Circuit Court of Appeals reversed — finding that the district court lacked diversity jurisdiction over the claims. The case remanded to Virginia state court.
In Re Violation of Rule 28(c) (Fed. Cir. 2004) (Unpublished Order)
At the district court, Esab Group won a multi-million dollar judgment against Centricut for infringement of Esab’s patent relating to plasma welding products. Centricut appealed the judgment and the measurement of damages. Esab cross-appealed, asking for a modification of the judgment on damages.
While not yet deciding on the merits of the case, the Federal Circuit gave Esab’s attorney a written reprimand for filing a reply brief in violation of Rule 28(c) of the Federal Rules of Appellate Procedure.
Rule 28(c) limits the content of a cross-appeal reply brief to issues presented by the cross appeal. Further, the Practice Notes accompanying Rule 28 specifically caution counsel to limit the reply brief “to the issues presented by the cross-appeal.” However, Esab’s reply brief consisted of 23 pages, about 20 of which related only to the main appeal and not the cross appeal.
The appellate panel declined to impose sanctions against the offending attorney, but noted that “we wish to make clear that it is the duty of counsel to familiarize themselves with applicable rules, and that, in future cases, serious violations of applicable rules, whether or not ‘inadvertent,’ will potentially subject counsel to sanctions.”
A decision on the merits of Centricut v. Esab Group is expected later this year.
Notes:
Fed. R. App. P. 28(c) Reply Brief. The appellant may file a brief in reply to the appellee’s brief. An appellee who has cross-appealed may file a brief in reply to the appellant’s response to the issues presented by the cross-appeal. Unless the court permits, no further briefs may be filed. A reply brief must contain a table of contents, with page references, and a table of authorities-cases (alphabetically arranged), statutes, and other authorities with references to the pages of the reply brief where they are cited.
Bob Shaver‘s blog, Patent Pending is a breath of fresh air. Rather than rushing to opine on the newest developments, Shaver takes a deep breath and writes about history. In each post he weaves a story, building upon his years of experience as a patent attorney and technologist.
For instance, in a recent articles Shaver told the tale of the original Suez Canal — 600 BC to 800 AD, and the first Steam Engine. Articles like these help give me an appreciation for the history of ideas and innovation.
In the words of Shaver’s partner Stephen Nipper, “If you are interested in technology as it developed over the ages…check out his blog.”
DE Technologies owns the patent on multi-lingual e-commerce. (U.S. Patent No. 6,460,020). The patent, originally filed in 1997, covers a method carried out on a computer that allows international commercial transactions. Claim 1 of the patent includes the following steps:
(a) selecting a language from a menu; (b) selecting a currency from a menu; (c) selecting a product to be purchased and a destination for shipping; (d) obtaining from a database i) price information; ii) an international goods classification of the product; and iii) international shipping information; (e) calculating shipping costs; (f) determining a total cost; (g) confirming existence of available funds; and (h) accepting the order and generating a shipping invoice
Yesterday, BusinessWeek reported that DE has sued Dell for infringement of this patent. According to the article, If litigation goes forward, it will focus on whether, as DE contends, it really was the first company to demonstrate a system for processing international sales online when it filed for patent protection in 1997.
After waiting one day for the election to conclude, the Motion Picture Association of America (MPAA) reportedly plans to announce its new campaign against “movie piracy.” Following the lead of the major recording industry association, RIAA, the MPAA plans to take the law to the people. Specifically, the MPAA is planning to file copyright infringement lawsuits against individual downloaders.
Although the former MPAA chief Jack Valenti received some criticism during his tenure for promoting Copyright Extension Legislation and the DMCA, Valenti reportedly resisted the idea of individual lawsuits. The MPAA’s new president Dan Glickman is expected to announce the campaign in Los Angeles today. Glickman spent nearly 20 years in Congress representing the 4th District of Kansas.
Colida v. Matsushita (Fed. Cir. 2004) (unpublished opinion).
Facts: Tony Colida owns design patents covering the design of mobile phones designated A. Matsushita owns a patent on the design for mobile phone B. In addition Matsushita makes a GU87 phone that matches up with its patented design. After comparing the phone with the figures from Colida’s patents, the district court dismissed Colida’s infringement suit – finding that there was no infringement as a matter of law.
Appeal: Reviewing the summary judgment de novo, the appellate panel affirmed, finding no error in the district court’s conclusion that “no reasonable trier of fact could find infringement of the [patents] by the GU87 phone in this case.”
The [Non]Billable Hour, includes a regular feature known as Five-by-Five. Each month or so, author/lawyer Matt Homann gets five experts in an area of law to give five responses to a question about the law.
The most recent episode is the IP Edition. Matt was able to bring five IP attorneys together to answer the question: What five things would you change about IP law and/or practice? I was lucky enough to be included in the panel. Here are some snippets:
Stephen Nipper: Embrace the future. Lets face it, the Internet is changing the practice of intellectual property law. Many of the businesses we used to rely on for patent copies, copies of file wrappers, etc., have had to evolve or die as more and more of the USPTO’s data and knowledge is made available on the Internet for free. Do you really think that is the end of it? Do you think that it is not going to affect IP attorneys too? I’m afraid that you’ve got a big surprise coming. It is time to start thinking outside the box about how we provide our services, how we bill for them and how clients find us.
Douglas Sorocco: Everyone needs to take a deep breath regarding software patents. The end of the world is not near, the seas are not going to be flooding our coastal cities and software patents are not stifling development of new and useful tools and processes. Software developers are simply going to have to become better business people and accept that nothing is free and patent clearance searches must be made an integral part of the development process.
Martin Schwimmer: [A] tremendous amount of what trademark owners hate about Internet activity consists of third parties using their marks to divert traffic to unauthorized sites. We saw this concept in cyber squatting litigation, and now see it in the use of keywords. Related to this is the development of the concepts of contributory and vicarious infringement. It’s hard to get one’s hands around fly-by-night operators, so trademark owners go after the Internet service provider or registry or search engine. I think these are the key areas in which we are going to see development in U.S. jurisprudence.
Dennis Crouch: Law School: Becoming An Attorney: If you are a scientist or engineer who is thinking of becoming a patent attorney, my advice to you is to broaden your outlook. When you go to law school, don’t just worry about becoming a patent jockey – rather you are becoming a lawyer. Learn to think like a lawyer and talk like a lawyer. Take classes that have nothing to do with patents and make as many friends as you can. (Your classmates will likely refer some of your first clients). Law school provides a great transition point in life, and there is no requirement that pushes an attorney with an engineering degree into patent law. Take time to enjoy the freedom.
Mark Partridge: Require ADR before litigation: Litigation is extremely expensive, almost shockingly so to most clients, and prohibitively so to many. . . . My change would be to require all trademark litigants to try forms of alternative dispute resolution before proceeding with the expense of discovery and trial. As both a mediator and as an advocate in mediations, I know that facilitated negotiations can lead to resolutions at substantially reduced cost. Unfortunately, ADR is underused for many reasons. Clients don’t want to be the first to blink. Litigators don’t want to appear weak, loss control, or disclose information. Whatever the reason, the hesitancy to use ADR (either mediation or early arbitration) could be overcome by making it mandatory. Some jurisdictions already do. More should. An early effort to settle, facilitated by a competent neutral could, I believe, save the courts and clients a great deal of money.
Under New Jersey law, any voting machine must be examined by the Secretary of State before approving it for use at elections. In addition, the voting machine must be inspected by three examiners, “one of whom shall be an expert in patent law.” New Jersey Statutes § 19:48-2. The statute, passed in 1953, also requires “two mechanical experts.” The experts are appointed by the Secretary of State.
According to reports, New Jersey citizens are voting via electronic touch-screen voting in 15 of 21 counties throughout the state. Last month, a New Jersey Judge denied a last minute effort to block the use of e-voting machines. No word on the identity of the NJ patent law expert or whether the new voting booths were examined.
New Jersey Statutes § 19:48-2. Examination of voting machines by secretary of state
Any person or corporation owning or being interested in any voting machine may apply to the Secretary of State to examine such machine. Before the examination the applicant shall pay to the Secretary of State an examination fee of four hundred fifty dollars ($450.00). The Secretary of State within a period of thirty days shall examine the machine and shall make and file in the office of the Secretary of State his report of the examination, which report shall state whether in his opinion the kind of machine so examined can be safely used by the voters at elections under the conditions prescribed in this subtitle. If the report states the machine can be so used, it shall be deemed approved, and machines of its kind may be adopted for use at elections as herein provided.
Before making such report the Secretary of State shall require the voting machine to be examined by three examiners to be appointed for such purpose by him, one of whom shall be an expert in patent law and the other two mechanical experts, and shall require of them a written report on such machine, which the Secretary of State shall attach to his own report on the machine. Each examiner shall receive one hundred fifty dollars ($150.00) for his compensation and expenses in making an examination and report as to each voting machine examined by him from and out of the examination fee of four hundred fifty dollars ($450.00). Neither the Secretary of State nor any examiner shall have any pecuniary interest in any voting machine. When the machine has been so approved, any improvement or change that does not impair its accuracy, efficiency, or capacity, shall not render necessary a re-examination or reapproval thereof. Any form of voting machine not so approved cannot be used at any election.
The certificate of approval, or a certified copy thereof, shall be conclusive evidence that the kind of machine so examined complies with the provisions of this subtitle, except that the action of the Secretary of State in approving such machine may be reviewed by the Superior Court in a proceeding in lieu of prerogative writ.
Does anyone know if this law is still being followed?
The Patent Lawyer is published by the APLF and has released Issue 2. In an article on patent amendment practice, Stephen Favakeh provides some simple advice for overcoming novelty rejections. Generally, a novelty rejection is easier to overcome than an obviousness rejection because novelty is determined by more objective standards. However, when responding to an Office Action, you should not set your client up for an obviousness rejection.
It is usually not enough simply to list the limitations in the claim that are missing from the prior art reference, particularly when the differences are subtle. Doing so may lead to a dismissal of the Section 102 rejection, but only at the cost of substituting a section 103 [obviousness] rejection. “Sure,” the examiner may say, “the prior art doesn’t exactly disclose the claimed invention, but it is obvious to fill in the gaps.” To avoid this, explain why the missing limitations are significant.
Chicago still uses punch-cards for voting. Despite the risk of hanging chads or dimpled marks, the benefit of this system is the paper trail. Many voters, including myself, are reassured by the paper trail. Patent No. 4,445,731 (shown above) was invented by John Ahmann in the early 1980’s. The patent covers the type of portable voting booths used in my precinct. Ahmann is still recognized as an expert in voting technology and testified in the Bush v. Gore controversy of 2000. According to the BBC, about 30% of U.S. voters will use electronic voting (e-voting) machines in today’s election.
Problems and praise Opponents highlight the problems that have already occurred with the machines – pointing for instance to a congressional race in Ohio in which votes were incorrectly registered due to a problem with the memory cartridges.
At the same time however, Georgia’s entirely electronic system appears to have few naysayers after two years in operation – although it is widely accepted that the presidential election will prove the greatest test.
The principal criticism remains the lack of paper audit trails. Nevada is the only state using machines which will provide voters with the kind of receipt which would, if necessary, allow for a manual recount.
But in order to accommodate some of the concerns, a number of states – including California – will give voters the opportunity to vote using electronic machines or a paper ballot form.
Here is a picture of my neighbor and senate hopeful Barack Obama and his daughter casting his vote.
Rubik’s Cube (r) has been in the news and on the blogs lately. Once the patent on the cube expired, several companies began to copy and sell cubes having the same design.
According to the news reports that Greg Aharonian e-mailed, officers from the Department of Homeland Security recently asked a toy store owner to remove “Magic Cube” (r) toys that have the same look and feel of the original Rubik’s cube. Speculation has been flying around the net as to the source of the officer’s authority.
It turns out that the company that sells the original cube, Seven Towns Limited, holds a registered trademark on the design of the cube. According to the trademark description:
The mark consists of a black cube having nine color patches on each of its six faces with the color patches on each face being the same and consisting of the colors red, white, blue, green, yellow and orange. The drawing is lined for the colors red and green. The remaining colors — white, blue, yellow, and orange — do not appear in the drawing, but are claimed as a feature of the mark. (U.S. Trademark Registration No. 75,105,330).
From an initial glance, I would not think that this trademark description would cover the Magic Cube (r) because of the clear difference in stated colors. However, that would be for a jury to decide.
A trademark on the design of an object is known as “trade dress.” Generally, trade dress is thought of as a distinctive, nonfunctional feature of an object that allows a customer to readily identify the manufacturer of the object.
In a recent case (TrafFix), the Supreme Court ruled that items that were previously patented are generally considered functional. Because tradedress is only on nonfunctional features of an object, there can be no protection of previously patented elements.
The owner of Pufferbelly Toys in St. Helens worries when Homeland Security agents show up on official business
Thursday, October 28, 2004
ASHBEL S. GREEN
Nothing about running a small store called Pufferbelly Toys prepared Stephanie Cox for a cryptic phone call from the U.S. Department of Homeland Security.
“It’s all very surreal, quite honestly,” Cox said Wednesday. “I thought it was a prank when I first heard. I couldn’t understand why Homeland Security would be investigating a tiny toy store in St. Helens.”
The call came in late July or early August. A man identifying himself as a federal Homeland Security agent said he needed to talk to Cox at her store.
Cox asked what it was all about.
“He said he was not at liberty to discuss that,” she said.
They agreed to meet in early August, but the agent later canceled. Cox thought the matter had blown over when the agent called back Sept. 9 to say he was coming out there.
“I was shaking in my shoes,” said Cox, who has owned Pufferbelly Toys for more than four years. “My first thought was the government can shut your business down on a whim, in my opinion. If I’m closed even for a day that would cause undue stress.”
The next day, two men arrived at the store and showed Cox their badges. The lead agent asked Cox whether she carried a toy called the Magic Cube. She said yes. The Magic Cube, he said, was an illegal copy of the Rubik’s Cube, one of the most popular toys of all time. He told her to remove the Magic Cube from her shelves, and he watched to make sure she complied.
The whole thing took about 10 minutes.
After the agents left, Cox called the manufacturer of the Magic Cube, the Toysmith Group, which is based in Auburn, Wash. A representative told her that the Homeland Security agents had it wrong. The Rubik’s Cube patent had expired, and the Magic Cube did not infringe on rival toy’s trademark.
John Ryan, corporate counsel for the Toysmith Group, said Homeland Security, which includes Customs, routinely blocks shipments of products from overseas that violate intellectual property rights, such as patents, copyrights and trademarks.
“That’s fine. That’s not an outrageous federal act by any means,” Ryan said. “But we certainly were surprised that a federal agent approached a toy store owner and frightened them.”
Virginia Kice, a spokeswoman for Immigration and Customs Enforcement, said agents went to Pufferbelly based on a trademark infringement complaint filed in the agency’s intellectual property rights center in Washington, D.C.
Kice also said Homeland Security officials routinely investigate such complaints and follow up if they determine they are valid.
“One of the things that our agency’s responsible for doing is protecting the integrity of the economy and our nation’s financial systems and obviously trademark infringement does have significant economic implications,” she said.
After gaining assurances from Toysmith officials, Cox put the Magic Cube back on the shelf soon after the agents left.
Six weeks after her brush with Homeland Security, Cox is still scratching her head.
“Aren’t there any terrorists out there?” she said.
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Bard owns a patent on a method of repairing hernias with a flexible mesh plug. Bard sued U.S. Surgical for infringement and for inducing surgeons to infringe. Because in the prosecution history and specification Bard defined the claimed plug as having pleats, the district court’s claim construction requiring “pre-formed pleats” was affirmed. Noninfringement affirmed.
Concurrence by Judge Prost:
In this case, the inventors clearly and deliberately disclaimed any coverage of non-pleated plugs they might otherwise have had when they stated during reexamination that “the surface of the inventive plug is pleated” in an attempt to overcome the prior art-based rejections of claims 19 and 20. Under the theory that the inventors acted as lexicographers, the majority holds that this statement, among others, shows that the inventors “clearly defined the plug of claim 20 as having pleats.” The statement, in my view, is a surrender of claim scope, which precludes Bard from recapturing coverage of non-pleated plugs. Litton Sys., Inc. v. Honeywell, Inc., 140 F.3d 1449, 1458 (Fed. Cir. 1998). Because the inventors clearly disclaimed coverage of non-pleated plugs in the reexamination, I believe we may affirm the judgment of the district court on that basis alone; accordingly, I find it unnecessary to reach the remaining grounds for affirmance relied upon by the majority.
Disney’s patented fastPass system allows customers to reserve a time to ride an attraction, rather than waiting in line. (U.S. Patent No. 6,173,209).
According to a report by Sean Mussenden at the Sun Sentinel, a Tennessee man has sued Disney for stealing his idea for the line management system.
After Robert Keyes watched a man pass out in a ride queue at Disney-MGM Studios, he had an epiphany, he said: Theme park visitors do not have to stand in line.
So, according to a patent lawsuit Keyes filed this month in federal court in Orlando, he sent a letter to Disney executives in 1991 describing a system that would allow some theme-park visitors to wait in a “standby” line but give others a ticket to return later and avoid the wait.
A top Disney executive sent him a letter back a month later, telling him the idea wouldn’t work and would result in “more guest inconvenience,” according to Keyes’ lawsuit.
Now, Keyes has sued Disney for “stealing his idea.” In the complaint, he has requested correction of inventorship and damages for unjust enrichment.
On their website, Disney notes that “we are unable to accept or examine any creative idea, suggestion or document other than those solicited by the company itself. We hope that you understand the aim of this policy, which is designed to prevent any future misunderstandings or problems which might arise if projects developed by [Disney] were to show a resemblance to creative work originated from third parties.”
In a parallel case, the 9th Circuit Court of Appeals, in Jeff Grosso vs. Miramax Film Corp., found that movie and television executives enter an implied contract every time they read a script or hear a pitch.
The Court of Appeals for the Federal Circuit (CAFC) today vacated a jury verdict in a trade secret and contract dispute involving Caterpillar.
The technology at issue involved the use of residual magnetic latching in a fuel injector. (See, for example, U.S. Patent 3,646,898). The Appellate Panel, led by Judge Newman, decided several important issues in this case. One of the most interesting involved Juror No. 3 whose spouse was a current Caterpillar employee.
At the beginning of trial, during the jury selection process, Sturman moved to dismiss for cause any current or former Caterpillar employees and their spouses. The district court denied Sturman’s blanket objection, but specifically allowed Sturman to show cause for individual jurors. . . . Sturman did not individually challenge for cause Juror No. 3, the spouse of a current Caterpillar employee, nor did it use one of its peremptory challenges to have her removed. Juror No. 3 ultimately sat on the jury.
Sturman appealed the district court’s opinion to allow Juror No. 3 to sit on the jury.
Potential for bias reviewed de novo.
Normally, the question of whether an individual juror is biased is a factual determination entitled to deference on appeal. However, the CAFC ruled that a district court’s decision on “implied bias, as opposed to actual bias” is reviewed de novo.
Spouse of Employee is Biased as a Matter of Law.
Applying Seventh Circuit law, the court found that implied bias is demonstrated by “showing that the juror has a personal connection to the parties or circumstances.”
Juror No. 3 had a financial interest in this case because her husband worked for Caterpillar at the time of the trial. As noted in Polichemi, even a tiny financial interest is enough to warrant dismissal. And it is legally irrelevant whether this financial interest arose due to his employment in management or under a union contract. . . . In addition, we find no distinction in the law between the financial interest of an at-will management employee and the interest of an employee under a union contract, nor do we advocate creating one.
Jury verdict vacated. Case remanded for a new trial.
Knoll has received trademark registrations on several Mies van der Rohe furniture designs. (NYTimes Article). These pieces, originally designed in 1929, have been increasingly copied by furniture importers. A Knoll spokesman noted that the registration “gives a green light to U.S. customs to stop unauthorized products from reaching this country.” Knoll’s licensed version of the Barcelona Chair retails at just under $5,000. Ernest Beck reported that the registration has the potential to “reduce the availability of replicas of [the] classic modern furniture.”
Ludwig Mies van der Rohe was a famous German architect who left for Chicago in the late 1930’s to head the architecture program at the Illinois Institute of Technology. He is known for the International Style of Modernism and for his catch-phrase “less is more.”
Apple has received a design patent on its 3G iPod. The application was filed just days before the public release of the new iPods, and issued as a new patent on October 26. (U.S. Patent No. D497,618). Apple Insider and Steve Nipper have more information.
What is a Design Patent? A design patent covers ornamental, non-functional characteristics of an article of manufacture. The Patent Act provides that a design patent should be issued for any new, original and ornamental design for an article of manufacture. As such, a design patent only protects the appearance of an article and not any structural or utilitarian elements. A design patent has a term of 14 years from the date of issuance.
LINK: The patent laws provide for the granting of design patents to any person who has invented any new and nonobvious ornamental design for an article of manufacture. The design patent protects only the appearance of an article, but not its structural or functional features. The proceedings relating to granting of design patents are the same as those relating to other patents with a few differences. See current fee schedule for the filing fee for a design application. A design patent has a term of 14 years from grant, and no fees are necessary to maintain a design patent in force. If on examination it is determined that an applicant is entitled to a design patent under the law, a notice of allowance will be sent to the applicant or applicant’s attorney, or agent, calling for the payment of an issue fee. The drawing of the design patent conforms to the same rules as other drawings, but no reference characters are allowed and the drawing should clearly depict the appearance, since the drawing defines the scope of patent protection. The specification of a design application is short and ordinarily follows a set form. Only one claim is permitted, following a set form.
Link: Denise Howell has the scoop on the 6th Circuit’s reversal of the Lexmark DMCA injunction.
“We should make clear that in the future companies . . . cannot use the DMCA in conjunction with copyright law to create monopolies of manufactured goods for themselves[.]”
Via EFF: Lexmark’s DMCA case against Static Control is aimed at eliminating aftermarket laser printer toner cartridges. Lexmark has implemented an “authentication” handshake between its printers and toner cartridges. When Static Controls reverse-engineered the authentication procedure in order to enable refilled and remanufactured cartridges to work with Lexmark printers, Lexmark sued in Lexington, KY, claiming both copyright infringement and circumvention in violation of the DMCA.
