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 »
Patent 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 »
Patent Applicant Denied Administrative Due Process
By Robert H. Bejcek II | Filed in Board of Patent Appeals and Interferences (BPAI), CAFC, Obviousness, Patent, Patent Prosecution, Prosecution HistoryMany laws are designed with the concept for fairness in mind. After all, the court of equity was a predecessor to our current legal system. Patent law is no different. Before the Court of Appeals for the Federal Circuit, the case In re Stepan Company centered on this issue and a patentee’s right to administrative due process.[1]
The Stepan Company was the assignee of a U.S.patent[2] which taught “polyol-based resin blends and the methods of using them to create closed-cell polyurethane and polyisocyanurate-based foam.”[3] Essentially this patent was used to manufacture thermal insulation installed in the walls of buildings.[4] Concluding a reexamination proceeding, the patent examiner invalidated the patent’s claims as anticipated under §102(b) or obvious under §103(a).[5] On appeal, the Board of Patent Appeals and Inferences affirmed the invalidation. 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 »
Historic Patent Reform Legislation Signed Into Law
By Robert H. Bejcek II | Filed in Patent, Patent Litigation, Patent ProsecutionAnyone who’s even remotely interested in patents, and even many who aren’t, have been watching this year as Congress has advanced patent reform legislation which would drastically change the United States patent law, aligning it more closely with foreign patenting offices. On September 8th, the Senate passed the Leahy-Smith America Invents Act by a margin of 89 to 9, and on September 16th President Obama signed the legislation into law. This new law will considerably alter patent prosecution and patent litigation. Some of the more important changes follow. Read the remainder of this entry »
Judgment of Noninfringement Rendered Since Defendant Did Not Infringe Each Step of Method Patent
By Robert H. Bejcek II | Filed in Patent, Patent LitigationIn McKesson Technologies Inc. v. Epic Systems Corporation, the plaintiff McKesson Technologies Inc. (“McKesson”) filed suit against Epic Systems Corp. (“Epic”) for patent infringement. The patent at issue, U.S. Patent No. 6,757,898 (“the ’898 patent”), is directed to “an electronic method of communication between healthcare providers and patients involving personalized web pages for doctors and their patients.” Specifically, Claim 1, which is representative of the asserted claims at issue, states: 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 »
Advanced Patent Searching: Techniques, Efficiencies & Validity
By Dominic A. Frisina JD, MA | Filed in Patent, Patent Licensing, Patent Prosecution, Patentable Subject MatterFrisina, LLCin collaboration with the Akron-Summit County Public Library will provide a FREE Advanced Patent Search program on June 15, 2011 at 6:30 PM.
This program is designed to build on the already popular Akron Summit County Library Patent Search Class for innovators, entrepreneurs and businesses. Frisina will present:
- Advanced patent searching techniques
- Patentability searching
- Freedom to Operate and validity searching
- Practical techniques for an efficient search
- Using free patent databases
Location: Akron-Summit County Public Library, 60 S. High Street – Meeting Room 2
Register NOW Seating is limited: Call 330-643-9075 or email stdiv@akronlibrary.org.
Attorney Frisina has been involved in innovation for nearly 15 years combined as a scientist and attorney. Spanning several sectors of industry, his technical and legal expertise includes small molecule drug candidates, fine chemicals, biomaterials, polymers, robotics, semiconductors, and biotechnology. Particularly, he has worked as a chemist in the combinatorial drug discovery industry, where he developed and patented parallel batch reactor technology. During that time he also worked in combinatorial instrument research and related chemical applications. Mr. Frisina also has significant hands-on scientific experience with photovoltaic, fuel cell, and materials technologies, and has drafted and prosecuted patent cases in each of these areas, as well as numerous others.
Mr. Frisina is also deeply involved in helping clients to build brands through obtaining and enforcing domestic and foreign trademarks. This includes preparation and prosecution of trademark applications, as well as opposition proceedings, infringement matters, and licensing
The firm adds value for innovators through its IP Owl Blog which provides short articles streamlining information to help them better digest IP issues – from the simple naming of their business to deciphering complex portfolio management issues.
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