As we help clients navigate through the trademark application process we are careful to always explain the risks as well as the rewards associated with the breath of their registration.  Not surprisingly, afterwards we also emphasize the need to routinely maintain and update ones Intellectual Property portfolio because it is after all an investment that should not be neglected.  However, when the TTAB decided Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007), we hoped that the appeal of the decision would result in an interpretation that was more in line with the policies of public disclosure that the USPTO has consistently applied. 

Specially, the concern was that the Board had found that Bose’s 2001 renewal of its registration for the word-mark WAVE in connection with audio tape recorders and players was fraudulent because the company no longer manufactured those products. The issue of actual use, however, arose after the renewal when Bose opposed the registration of the HEXAWAVE mark and Hexawave fired back accusing Bose of committing fraud on the PTO.  In essence, the Board’s finding of fraud hinged on the determination that Bose “should have known” which in essence established a standard of subjective intent.  This finding led to the coining of the term fraudit, which are audits on Intellectual Property portfolios that seek to uncover what the owner “should have known.” 

In testimony before the House Judiciary subcommittee, U.S. Register of Copyrights, Marybeth Peters criticized the proposed agreement between Google and the Author's Guild, which would allow Google to create and maintain a vast digital library of scanned books. Specifically, this settlement would give Google the right to digitize millions of books, including "orphan books" (books for which there is no clear copyright owner), without permission from copyright holders. Consequently, Google would be shielded from liability and would establish a registry that would sell access to books to libraries and individuals. Revenue would be split among Google, authors, and publishers.

Ms. Peter's testimony, which could prove to be a crucial factor in the settlement agreement's fairness hearing on October 7th, argued that this registry created a back-door for Google to get around copyright restrictions by allowing them to sell books without prior author consent. She equated this situation to that of a compulsory license, in which the rights holder is forced to license his/her work to others, as Google would now have the right to display book text and control the sale of downloads. Most importantly however, Ms. Peters claimed that this settlement agreement usurped Congressional authority because only Congress, not the courts, can enact such licenses.

Tuesday, 25 August 2009 18:35

DAVID I4I VS. THE MICROSOFT GOLIATH.

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Earlier this month, the Honorable Leonard Davis of the United States District Court for the Eastern District of Texas made a determination of willful patent infringement in favor of a thirty (30) employee Canadian based software manufacture who sued the software giant, Microsoft.  The lawsuit filed by Infrastructures for Information Inc., known as i4i claimed that MS Word 2003 and 2007 included an Extensible Markup Language or XLM tagging feature that infringed its patent.  The plot was thickened by the fact that i4i developed a product based on the patent and even negotiated the possibility of a license with Microsoft which triggered allegations of willful infringement on the part of the software giant who is no stranger to litigation.  

Specifically, in May of this year, the jury found in favor of i4i and awarded it $200 million.  But earlier this month, Judge Davis found that the infringement was willful and added $40 million to the damages award along with pre-judgment interest in the amount of $37 million.  He then issued a permanent injunction prohibiting Microsoft from selling MS Word in the US and giving Microsoft 60 days to comply with the injunction. 

In Medela AG v. Kinetic Concepts, Inc., a writ of certiorari petitioning the Supreme Court was filed last week, seeking to supplant juries in deciding the issue of obviousness in patent cases in favor of judges.  The petition, filed by Medela, posed the following question to the Supreme Court:

“[w]hether a person accused of patent infringement has a right to independent judicial, as distinct from lay jury, determination of whether an asserted patent claim satisfies the “non-obvious subject matter” condition for patentability.”

Balanzza, a Miami company, has filed a patent infringement action against Travel Caddy, Inc., an Illinois company, alleging infringement of U.S. Patent No. 7,550,684, entitled "Portable Handheld Electronic Scale". 

The accused device  is Travelon's Ultra-Light Electronic Luggage Scale, Style No. 12243:

 

In Orenshteyn v. Citrix Systems, Inc., the Federal Circuit reversed in part a ruling from the U.S. District Court for the Southern District of Florida, which entered summary judgment of non-infringement in a patent infringement action brought by the inventor of  U.S. Patent 5,889,942and U.S. Patent 6,393,569, both entitled "Secured System for Accessing Application Services from a Remote Station."  The appellate court also reversed a sanction of $755,633.17, imposed against the Plaintiff inventor, and two of his attorneys.  

While the Federal Circuit found that the "case was not litigated well by [Plaintiff] and his counsel," it did find that there was a triable issue with regard to at least one of the asserted claims of the patents-in-suit, and reversed the summary judgment as to that claim, but affirmed the summary judgment as to all other asserted claims.  Accordingly, the case was remanded to the district court for trial on the remaining asserted claim, and the defendant's non-infringement and invalidity defenses.  

Based on the reversal, as well as the fact that the Defendant's Rule 11 motion for sanctions was served after entry of summary judgment, thereby depriving Plaintiff and his attorneys of the 21-day safe harbor, the appellate court found that an award of Rule 11 sanctions was an abuse of discretion.  However, because an issue remained as to whether the Plaintiff's attorneys should have corrected the Plaintiff's testimony regarding pre-filing investigation conversations, the appellate court left open for the district court's determination whether sanctions were appropriate for vexatious litigation, but cautioned that any award should be limited to the "costs, expenses, and fees attributable to the multiplication of the proceedings that resulted," which it predicted would be "a fraction of the total litigation cost".   

Wednesday, 08 July 2009 18:30

WILL BILKSI AFFECT YOUR BIOTECH PATENT?

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The recent Federal Circuit decision in In re Bilski last October has begun to cause some concern in the biotech sector. As we have reported in previous blog entries, Bilski created a new test for method claims in patents, requiring a claimed process to be tied to a machine or apparatus, or to transform an article into a different state or thing (see blogs “In re Bilski: What Constitutes a Statutory ‘Process’ Under §101?” posted 11/5/08, “Supreme Court To Review Method Patent Case” posted 6/2/09, and “More on Bilski and Business Method Patents” posted 6/3/09). Even though the technology in Bilski was not scientific in nature, some are concerned that the precedent set by this case could have ramifications for the biotech sector since many issued biotech patents and pending biotech patent applications, such as, but not limited to, certain processes for genetic testing, do not rely on a machine or transformation.   As we await the U.S. Supreme Court hearing in October, we hope that the potential application of Bilski to the biotech sector will be addressed by the Bench.

Patenting living organisms has been permitted since the Supreme Court’s decision in Diamond v. Chakrabarty in 1980. Whether this precedent will apply to gene patents remains to be seen. To date, the most controversial dispute in this arena involves gene patents related to breast and ovarian cancer.
 
In May, the ACLU and others filed suit against Myriad Genetics, Inc., The University of Utah Research Foundation, and the United States Patent & Trademark Office challenging the validity of various patents for the two human genes BRCA1 and BRCA2. The complaint lists patients and researchers who have been restricted or prevented access to these genes for disease diagnosis, research, or other clinical applications. The lawsuit, Association for Molecular Pathology, et al. v. United States Patent and Trademark Office, et al., filed in the United States District Court for the Southern District of New York, alleges certain claims of eight patents exclusively licensed to Myriad Genetics are (1) invalid under Article I, Section 8 of the U.S. Constitution and 35 U.S.C. § 101 for patenting “products of nature, laws of nature and/or natural phenomena,” and (2) unconstitutional under the First and Fourteenth Amendments of the U.S. Constitution for being “patents on abstract ideas or basic human knowledge and/or thought.”  Given the many issues raised by this case and the effect it could have on gene patenting, we will be following this case closely. (Click here to follow the progress of the case).