Tuesday, 25 August 2009 18:35


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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


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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).

Pursuant to Florida SB 872 the sate ficticious name statute 865.09, F.S, is being amended to require that a business publish its intent to use said ficticious name.  While some have noted some exceptions to this requirement, such as a valid Florida Trademark Registration, here, certaily the publication requirement offers a new way to police existing Sate and Federal Trademark rights. 

Friday, 26 June 2009 18:28


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Many titles were bestowed upon Michael Jackson during his lifetime, but one not commonly associated with him was "inventor".  

But indeed, The King of Pop is listed as a co-inventor of United States Patent Number 5,255,452, entitled "METHOD AND MEANS FOR CREATING ANTI-GRAVITY ILLUSION", and covering shoes of the type worn while performing dance routines in his hit single "Smooth Criminal", where he famously incorporated a 45-degree lean in the choreography.