Under instigating circumstances that appear similar to Robert Kearns’ famous battle against the Big Three automakers over the windshield wiper yet having a decidedly different outcome, the inventor of a side view mirror emergency light recently battled Ford Motor Company before the Federal Circuit after Ford appealed the District Court’s verdict finding the patent valid and awarding the plaintiff nearly $56 million.[1] Read the remainder of this entry »
IP Litigation Archive
Patent Found Invalid for Anticipation in Light of Foreign Patent
By Robert H. Bejcek II | Filed in CAFC, Damages, International IP, IP Litigation, Patent, Patent Licensing, Patent Litigation, Patent Prosecution, Prosecution HistoryBusiness Method Patents in Crosshairs
By Robert H. Bejcek II | Filed in IP and Business, IP Litigation, Patent, Patent Litigation, Patentable Subject MatterWith the passage and signing into law of the America Invents Act on September 16th of 2011, many business method patents will have, in one year, the possibility to be invalidated through an administrative process. According to the new law, covered business method patents include “data processing or other operations used in the practice, administration, or management of a financial product or service.” However, ATM patents are exempt. Read the remainder of this entry »
Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc.
By Dominic A. Frisina JD, MA | Filed in Doctrine of Equivalents, IP Litigation, Patent, Patent LitigationSiemens Medical Solutions USA, Inc. manufactures positron emission tomography (PET) medical imaging devices, and uses scintillation crystals known by their chemical name as cerium-activated lutetium oxyorthosilicate,” i.e. LSO.[1] Saint-Gobain sold another kind of scintillation crystal (LYSO) to Philips Medical Systems, which manufactures competing PET scanners.[2] In April of 2007, Siemens sued Saint-Gobain for infringement of their U.S. Patent No. 4,958,080 (the ‘080 patent) which claimed a “detector comprising a scintillator composed of a transparent single crystal of cerium-activated lutetium oxyorthosilicate,” i.e. LSO.[3] According to Siemens, Saint-Gobain’s infringement is due to its manufacturing of cerium-doped lutetium yttrium orthosilicate (LYSO).
The accused LYSO crystals are similar to LSO except that about 10% of the lutetium atoms are replaced with yttrium atoms. Thus, Siemens asserts that Saint-Gobain infringes the Read the remainder of this entry »
Pharmaceutical Claims Found Obvious
By Robert H. Bejcek II | Filed in CAFC, IP Litigation, Obviousness, Patent, Patent LitigationIn 1993, based on a priority date of 1986, Tyco Healthcare Group LP and Mallinckrodt, Inc. (collectively, “Tyco”) was issued U.S. Patent No. 5,211,954 (“the ‘954 patent”) directed to the hypnotic sleep-inducing drug temazepam for the treatment of insomnia.[1] One of the claims for temazepam formulation reads:
A hard gelatin capsule containing a temazepam formulation
consisting essentially of 6 to 8 milligrams of crystalline
temazepam having a surface area of from
0.65 to 1.1 m2/g and 95% of the temazepam
having a particle size of
less than 65 micronsin admixture with a
pharmaceutically acceptable carrier therefor.
The other claim reciting formulation is identical with the exception of teaching a composition containing 7.5 milligrams of crystalline temazepam.[2] Read the remainder of this entry »
Interference Proceeding Results in Invalidation of Issued Patent
By Robert H. Bejcek II | Filed in IP and Business, IP Litigation, Patent, Patent Litigation, Patent ProsecutionOccasionally during patent prosecution, another application or recently issued patent directed to identical subject matter prevents issuance of the new patent. When this occurs, priority between the two needs to be determined through an interference proceeding. In the nonprecidental case of Omura v. Shafer, an interference proceeding was declared between Shafer’s application, the Junior Party, and Omura’s patent, the Senior Party. The application and patent at issue involved “catadioptric projection objectives for imaging a pattern arranged in an object surface onto an image surface.” This technology generally refers to lenses in cameras or telescopes. After the interference was defined by the Board of Patent Appeals and Interferences (“Board”), Shafer moved for judgment against Omura asserting that certain claims in the patent lacked adequate written description. Additionally, this motion stated that if a lack of adequate written description were found, it would raise a threshold issue which would deprive Omura of standing in the interference.
In response, Read the remainder of this entry »
Threat of Alleged Inequitable Conduct in Patent Litigation Likely Lessened
By Robert H. Bejcek II | Filed in Fraud on the Patent Office, Inequitable Conduct, IP and Business, IP Litigation, Patent, Patent LitigationIn what in all likelihood will drastically change not only patent litigation but also patent prosecution, the Federal Circuit in Therasense, Inc. v. Becton, Dickinson and Co. restated the standard for patent inequitable conduct. This retooling of inequitable conduct will likely reign in the use of the doctrine in patent litigation as a standard trial strategy even when no actual inequitable conduct occurred. The patent in question centered on “disposable blood glucose test strips.” According to the patent, the test strips, which test whole blood, have an electrochemical sensor “without a membrane over the electrode.”
During prosecution of the application, the applicant, originally Therasense, Inc. but now Abbott Diabetes Care, Inc. (“Abbott”), in order to illuminate the state of the prior art, supplied upon request an affidavit to the U.S. Examiner stating that Read the remainder of this entry »
Update: The Hangover Part II – Tyson’s Tattoo
By Robert H. Bejcek II | Filed in Copyright, IP and Business, IP Litigation, Trademark
A trial date of February 21, 2012 has been set for the dispute between tattoo artist S. Victor Whitmill and Warner Bros concerning the use of a tattoo, created by Whitmill, in the movie The Hangover Part II. You’ll recall that the Courts refused to grant Whitmill a preliminary injunction to prevent the release of the movie. However, since then Warner Bros has gone on record in a brief to the Court stating that if the dispute is unable to be resolved before the DVD release date, which is scheduled for sometime in December 2011, the movie will be digitally altered to remove the allegedly infringing tattoo. If the use of the tattoo in the movie is found to infringe Whitmill’s copyright, this move will save Warner Bros from additional liability as well as deny Whitmill the chance for additional monies in the way of a larger award. Instead, Whitmill will have to rely solely on the use of the tattoo in theatric showings as well as on promotional marketing to determine damages. Since a private mediation session has already been scheduled for June 16, it’s likely that this case will be settled (confidentially) long before then.
Altair Engineering, Inc. v. LEDdynamics, Inc.
By Robert H. Bejcek II | Filed in CAFC, Claim Construction, IP Litigation, Patent, Prosecution HistoryThe case Altair Engineering, Inc. v. LEDdynamics, Inc. centered on the claim construction of Altair’s US Patent No. 7,049,761 (“the ‘761 patent”) which discloses a light tube that utilizes light emitting diodes (“LEDs”).[i] Specifically, the LEDs were “to serve as a replacement for the typical fluorescent tube lights commonly used in schools and offices.”[ii] Read the remainder of this entry »
Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc.
By Dominic A. Frisina JD, MA | Filed in Claim Construction, Doctrine of Equivalents, IP LitigationSiemens Medical Solutions USA, Inc. manufactures positron emission tomography (PET) medical imaging devices, and uses scintillation crystals known by their chemical name as cerium-activated lutetium oxyorthosilicate, i.e. LSO.[1] Saint-Gobain sold another kind of scintillation crystal (LYSO) to Philips Medical Systems, which manufactures competing PET scanners.[2] In April of 2007, Siemens sued Saint-Gobain for infringement of their U.S. Patent No. 4,958,080 (the ‘080 patent) which claimed a “detector comprising a scintillator composed of a transparent single crystal of cerium-activated lutetium oxyorthosilicate,” i.e. LSO.[3] According to Siemens, Saint-Gobain’s infringement is due to its manufacturing of cerium-doped lutetium yttrium orthosilicate (LYSO). Read the remainder of this entry »
Identifying Federal Trademark Goods and Services: A Cautionary Tale
By Robert H. Bejcek II | Filed in Identification of Goods and Services, IP and Business, IP Litigation, Trademark
Formulating an accurate identification of goods and services is a critical element of preparing a federal trademark application. Failure to do so, or failure to accurately restate the goods and services in Statements of Use, Declarations of Continued Use, and/or renewals can result in your registration being cancelled for fraud on the trademark Office. In 2003 the Trademark Trial and Appeals Board (TTAB) in Medinol v. Neuro Vasx, Inc. established a very low bar for finding fraud.[i] Later in 2009 the Federal Circuit in In re Bose Corp. raised the bar back to a more reasonable level, but the danger of cancellation remains.[ii] Read the remainder of this entry »
