Maryland Intellectual Property Law Blog : Maryland Intellectual Property Lawyer & Attorney : Brian Wm. Higgins : Serving Baltimore, Columbia, Frederick

The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following case(s), as published by Justia:

• STX, L.L.C. v. J. deBeer & Son, Inc., Case Number 1:2007cv01939, filed July 20, 2007 (okay, this was overlooked last week).

Plaintiff STX, LLC, a Baltimore-based lacrosse equipment manufacturer, has sued Defendant J. deBeer & Son, Inc., for allegedly infringing STX's U.S. Patent No. 5,651,744 by selling lacrosse products through its catalog to Maryland residents.  According to its complaint, STX is seeking a preliminary injunction, damages, and other relief

• Sandler Systems, Inc. v. Rothfeld, Case Number 1:2007cv02005 , filed July 27, 2007

Plaintiff Sandler Systems, Inc., a Stevenson, Maryland-based corporation, has sued Defendants David Rothfeld and Creative Sales + Management, Inc., for allegedly willfully infringing Plaintiff's copyrighted works under 17 U.S.C. 501 et seq. and for certain state law claims.  According to its complaint, Sandler Systems is seeking a permanent injunction and actual, statutory, and exemplary damages among other relief

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In Integra Lifesciences I, Ltd. v. Merck KGaA, No. 02 Civ. 1052, 1065 (Fed. Cir. 2007) (Rader, J., dissenting), the Court of Appeals for the Federal Circuit addressed the Food & Drug Administration (FDA) pharmaceutical research exemption (i.e., "safe harbor") provision under 35 U.S.C. 271(e)(1), which states that,

"It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention . . . solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products."

The research exception was intended to encourage the development of new drugs by allowing researchers to collect information for FDA submissions, such as Investigational New Drug applications, New Drug Applications, and Abbreviated New Drug Applications, without fear of liability to patent holders.

The research at issue in this case involved studies of the efficacy, mechanism of action, pharmacology, pharmacokinetics, and safety of three structurally related RGD peptides, included the following testing:

• αvβ3 receptor binding assay (efficacy);
• angiogenesis chick chorioallantoic membrane (CAM) assay (efficacy, mechanism of action, and pharmacokinetics);
• angio-matrigel tests (efficacy and mechanism of action);
• cell adhesion assay (efficacy);
• chemotaxis assay (efficacy and mechanism of action);
• chick embryo pharmacokinetics assay (pharmacokinetics);
• fluorescence-activated cell sorting (FACS) analysis (mechanism of action and efficacy); and
• rabbit pharmacokinetics assay (pharmacokinetics)
  

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In In re Omega S.A., watchmaker Omega appealed a decision of the Trademark Trial and Appeal Board (TTAB) sustaining PTO's refusal to register Omega’s trademark AQUA TERRA in Class 14 for "chronographs" unless Omega limited "chronographs" to "chronographs for use as watches." The PTO’s refusal was based on its contention that the term "chronographs" can refer not only to watches in Class 14, but also to time recording instruments in Class 9.

Omega declined to amend its application, arguing that it already has several registered trademarks in Class 14 for use with "watches and chronographs," and that the term "chronographs" includes timepieces such as watches, whether or not "chronographs" also is used for time recording instruments. During proceedings, Omega expresses concern as to the effect the amendment could have on its existing registrations. On appeal, the Federal Circuit requested additional briefing on this point.  

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Ever wonder how you protect a trademark, service mark, or trade name in Maryland?  According to the Maryland Office of the Secretary of State - Trademarks & Servicemarks web site,

"Any person who adopts and uses a mark in Maryland may file in the Office of the Secretary of State an application for registration of the mark. If the statutory requirements have been met, the Secretary of State will issue a certificate of registration. Before a decision is made to deny an application, the applicant is entitled to a hearing before the Secretary of State or the Secretary's designee." (emphasis added)

The statement says "may file," not "shall file."  Obviously, there is no requirement that a person or entity register a trademark or service mark in Maryland. 

The purpose and benefit of registering? Notice!

"The primary benefit of registering a trademark or service mark with the Secretary of State is to give public notice of a person's claim of ownership of the trademark or service mark. This will reduce the likelihood that another person will inadvertently choose a mark confusingly similar to the registered mark." (emphasis added)

A trademark or service mark must be in commercial use before it may be registered with the Secretary of State.  More about Maryland trademarks and service marks may be found here.  The Office's web site provides the forms and information to apply for registration.  Of course, registration in Maryland does not mean a mark is registered outside the state.  For federal protection, one must apply for registration from the U.S. Trademark Office.

Maryland trade names are applied for through the Maryland State Department of Assessments and Taxation (SDAT).  The SDAT web site provides a Maryland trade name application form for applying for trade name status in Maryland. 

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No sooner had I posted on this blog that the Senate had not voted a patent reform bill out of the Senate Judiciary Committee, the Committee, like the House Judiciary Committee a few days earlier, produced its own version of patent reform legislation for the full Senate to consider.  Based on a statement by Sen. Patrick Leahy, the Senate bill would:

• Reduce the incentives for patent litigation by making it harder for patent owners to show that another company has willfully infringed its patents (and consequently making it harder to receive an award of treble damages and possibly attorney’s fees);
  
  
• Establish regulatory procedures for re-evaluating patents after they are granted;
  
  
• Include limitations on the availability of jurisdictions where patent holders can file lawsuits by requiring suits to be filed where the plaintiffs or defendants are located, where the alleged infringement took place, or where the parties were incorporated or formed (this limitation could affect the number of filings in popular forums like the plaintiff-friendly Eastern District of Texas, which in 2006 surpassed the Central District of California as the hot-bed of patent litigation in the U.S., according to statistics provided by The Patent Troll Tracker).

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In Benitec Australia, Ltd. v. Nucleonics, Inc., the Federal Circuit affirmed a district court’s judgment dismissing Nucleonic’s declaratory judgment counterclaims against Benitec for lack of subject matter jurisdiction after the district court granted Benitec’s motion to dismiss its infringement claims without prejudice. In reaching its decision, the Federal Circuit evaluated the standard for declaratory judgment at two time periods: (1) at the time the declaratory judgment counterclaims were initially filed, and (2) at a later time after intervening events had affected the parties’ relationship.

With regard to the first time period, the Federal Circuit noted that at the time Nucleonics filed its counterclaims for declarations of invalidity and unenforceability, Benitec’s patent infringement claims were pending. Thus, because Nucleonics had been charged with infringement of Benitec’s U.S. Patent No. 6,573,099 (which is directed to RNA-based disease therapy), there existed a case or controversy adequate to support jurisdiction at that time.

With regard to the second time period, the Federal Circuit noted that it had previously rejected the argument that subsequent events cannot divest a trial court of jurisdiction. In this case, the district court and Federal Circuit considered a number of intervening events, including:  (1) Benitec had withdrawn its infringement claims, (2) Benitec had given Nucleonics a covenant not to sue, and (3) Nucleonics was not close to filing a New Drug Application (NDA) for its RNA drug products. 

Considering point (3), the Federal Circuit commented that the Supreme Court’s Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005) “read[] expansively the pharmaceutical research exception of § 271(e)(1)”: 

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          The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following case(s), as published by Justia:

• Coach & Courier, LLC v. Kent Island Coach & Courier, Case Number 1:2007cv01918, filed July 19, 2007.

Plaintiff Coach & Courier, LLC has sued Defendants Kent Island Coach & Courier, South County Coach & Courier, Cleveland Coach & Courier, Medell Ventures, Inc., Kenneth L. Medell and Terri Robinson for trademark infringement under the Lanham Act, 15 U.S.C. § 1051 et seq.  Crofton, Maryland-based Coach & Courier is seeking an injunction, damages, and other relief for alleged unauthorized use of the trademark and trade name "Coach & Courier" (see image).  The parties reportedly provide transportation for hire services in Maryland.

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          According to the U.S. Patent & Trademark Office (PTO) web site, the PTO has sent to the Office of Management and Budget (OMB) for review draft final guidance for use by patent examiners in determining if an invention is obvious in view of the U.S. Supreme Court’s decision in KSR v. Teleflex.  The PTO will reportedly make the final guidance document available on its web site after OMB concludes its review (a link to the guidelines will be posted on this web site when they become available).  Until the guidelines are finalized, the PTO will train its examiners on how to implement KSR.  Practitioners should expect to see more Office Actions containing rejections based on KSR in the immediate future.

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          The U.S. House of Representatives Judiciary Committee this week unanimously voted to move patent reform legislation out of committee and onto the floor of the House of Representatives, a move that makes the Patent Reform Act of 2007 closer to becoming law.  The Senate Judiciary Committee, however, is still evaluating similar legislation and has yet to vote a similar bill out of committee.  It's anyone's guess as to when a final bill will be sent to the President for his signature.

           Those who have followed patent reform legislation will be familiar with the current Judiciary Committee bill, which would, among other things, change the US patent system from one that awards priority of invention to the first person to file a patent application for an invention, regardless of whether someone else came up with the idea first.  The Judiciary Committee's bill retains reforms that would affect the course and outcome of future patent litigation matters in the US.

• Manager's Amendment for the Patent Reform Act of 2007

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          In PharmaStem Therapeutics, Inc. v. Viacell, Inc., No. 05 Civ. 1490 and 1551 (Fed. Cir. July 9, 2007) (Newman, J., dissenting), the Court of Appeals for the Federal Circuit (CAFC) affirmed a district court’s judgment that PharmaStem's evidence of direct infringement failed to show that six defendants had infringed the claims of PharmaStem's patents. Id., slip. op. at 5. At issue were two patents--U.S. Patent No. 5,004,681 and U.S. Patent No. 5,192,553--that are directed to compositions and methods of treating persons with compromised blood and immune systems using hematopoietic stem cells, particularly cells obtained from umbilical cord blood. To prove direct infringement, PharmaStem was required to adduce evidence that the defendants’ cord blood units contained a sufficient supply of stem cells to effect successful reconstitution of an adult. Id.

          To establish the sufficiency of the defendant's blood units, PharmaStem introduced at trial defendants' own advertising materials by way of expert opinion testimony. Upon defendants' motion for JMOL, the trial court excluded the expert's testimony, concluding that while PharmaStem's expert was "an accomplished stem cell biologist," she was not qualified as an expert in marketing or advertising and "her so-called analysis of the defendants’ marketing materials was well within the jury’s common knowledge, common sense and common experience." Id. at 6. The court then explained that PharmaStem had not attempted to prove by testing or by reference to data collected by the defendants that at least some of the cord blood samples preserved by the defendants satisfied the sufficiency requirement. Instead, the trial court noted, PharmaStem "adopted the strategy of trying to prove, principally through representations made by the defendants in their marketing materials and other documents, that all of the preserved cord blood samples infringed." Id. at 6-7.

          The CAFC agreed with the district court, stating that PharmaStem's expert's "testimony [was] unhelpful to the jury, and not an appropriate subject for expert evidence, because it consisted almost entirely of her quoting from the promotional information and other materials in which the defendants described their business operations for potential customers and investors, and drawing inferences from those materials." Id. at 17. The CAFC also recognized PharmaStem's failure to establish through experimental evidence that any of the preserved cord blood samples contained sufficient stem cells to reconstitute an adult, stating:

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          Petersburg, Virginia-based Star Scientific, whose published corporate mission is to “reduce toxins in tobacco so that adult consumers can have access to products that expose them to sharply reduced toxin levels,” sued R.J. Reynolds for patent infringement in the District Court for the District of Maryland in 2001. A bench trial on the issue of the enforceability of the asserted patents was held in 2005. Apparently put off by what it viewed as an excess delay in receiving the District Court’s decision, Star petitioned the Court of Appeals for the Federal Circuit (CAFC) seeking a writ of mandamus from the court that would order the Maryland District Court to issue its decision regarding unenforceability within 30 days. Star's petition was filed before June 7, 2007, which is the date the Maryland District Court issued an order stating that its decision would be posted on June 29, 2007.   Defendants/respondents R.J. Reynolds Tobacco Company (a North Carolina corporation) and R.J. Reynolds Tobacco Company (a New Jersey corporation) opposed Star’s petition. 

          In an Order signed June 25, 2007, Federal Circuit Court Judge Pauline Newman denied Star’s petition, stating that the company had not “met its burden in this case,” which, for a writ of mandamus, required Star to establish that there had been a “clear abuse of discretion or that the District Court has ‘obstinately refuse[d]’ to adjudicate the matter” (citing Will v. Calvert Fire Ins. Co., 437 U.S. 655, 666-67 (1978)). 

          Ironically, the same day the Federal Circuit issued its Order denying Star’s petition, the Maryland District Court issued its decision on enforceability, effectively mooting Star’s petition to the CAFC. The District Court found Star’s patents to be unenforceable on the basis of inequitable conduct by Star’s attorneys during prosecution of Star’s patents before the U.S. Patent & Trademark Office. Star responded forcefully to the decision.  In a June 27, 2007, press statement, it stated:

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          Many authorities and experienced litigators recognize that the discovery of electronic documents and information has become the centerpiece of every civil litigation. The reason for all the attention? In December 2006, the Federal Rules of Civil Procedure were amended to specifically require e-discovery in the conduct of civil litigation. Unfortunately, as Maryland District Court Magistrate Judge Paul W. Grimm pointed out during a recent LEXIS webinar, the new e-discovery rules are not self executing. To address that short-coming, the Federal District Court for the District of Maryland recently published what amounts to a user’s guide to e-discovery. Entitled Suggested Protocol for Discovery of Electronically Stored Information, the guide provides a comprehensive list of topics and issues that lawyers should consider before and during the initial meet-and-confer conference required under the e-discovery rules, as well as during the collection and production of electronically stored information (ESI) to opposing parties.

          The stated purpose of Maryland's Protocol is "to facilitate the just, speedy, and inexpensive conduct of discovery involving ESI in civil cases, and to promote, whenever possible, the resolution of disputes regarding the discovery of ESI without Court intervention.” Magistrate Judge Grimm is the lead proponent of the Protocol, which is characterized as a working model that has not yet been adopted by the Maryland District Court.

          Notably, the Protocol states that "If a party is not reasonably prepared for the Fed.R.Civ.P. 26(f) Conference of Parties in accordance with the terms of this Protocol, that factor may be used to support a motion for sanctions by the opposing party for the costs incurred in connection with that Conference." Judge Grimm commented that counsel seeking the District Court's intervention in e-discovery disputes will be in a better position to argue the merits of their motion to compel if they can establish that they tried to follow the Protocol but were rebuffed by opposing counsel.

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The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following case(s), as published by Justia:

• Implusive Music et al v. Firehouse Barbeque, Inc., Case Number 8:2007cv01781, filed July 9, 2007.

Plaintiffs Impulsive Music, Alamo Music Corporation, Brio Blues Music, Universal Studios, Inc., Stage Three Songs, Silver Fiddle, Center City Music, PAL-Park Music and M.L.E. Music, have sued Defendants Firehouse Barbeque, Inc. and Un Lee for copyright infringement under 17 U.S.C. § 101 et seq. The specific damages that the Plaintiffs are seeking were not available.

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          The first half of 2007 saw a small decline in the number of patents granted to Maryland inventors. U.S. Patent & Trademark Office statistics show that for the period January through June 2007, the PTO granted 993 patents naming at least one Maryland resident as an inventor or joint inventor (based on residence addresses supplied by patent applicants to the PTO).  The PTO had issued 1,038 patents to Maryland inventors for the same period in 2006.  Patents are issued, on average, about three years after the underlying patent applications are filed, so the number of patents issued in the first half of 2007 reflects patent activity in approximately 2004.

          The number of published applications naming at least one Maryland inventor (again based upon residency information) in the first half of 2007 was also slightly down from 2006 numbers.  According to the PTO, there were 1,495 patent applications naming at least one Maryland inventor published during the first half of 2007, compared to 1,511 patent applications published during the same period in 2006.

          Those figures are consistent with 2004 and 2005 numbers (which are the most recent compiled statistics based on geographic regions available from the PTO). Considering the top 10 Maryland organizations receiving patents in 2004 and 2005, all but one (i.e., Human Genome Sciences) saw the number of patents acquired slip in 2005 compared to 2004. Johns Hopkins University, for example, received 65 patents in 2005, down from 85 in 2004. Black & Decker saw its numbers drop to 43 patents received in 2005, down from 52 in 2004.  Individual Maryland inventors did not fare much better, receiving 183 patents in 2005, a nearly 20% drop from the 225 patents received in 2004.

Comments and notes:

• The number of patents issued and patent applications published are only two variables reflecting the level of innovation in Maryland.

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          According to the Copyright Office web site, the Office is reengineering many of its internal systems, including the system for registration and recordation.  The implementation of an online registration system as part of the reengineering process reportedly requires that the Office amend its implementing regulations governing the procedures by which the public will be able to submit, and the Office process, copyright registrations and recordations. 

          The Office announced the availability of interim rules that identify the principal changes and upgrades to the registration system, and also announced the proposed amendments to the regulations to accommodate online registration.  The Office has commenced Beta testing of the electronic online registration system, which went on-line July 9, 2007.  According to the Office, the Beta testing will be limited to selected participants until system testing is complete, at which time the Office will open the electronic registration system to the public.

Comments

• Once the Copyright Office's on-line registration and recordation system is fully operational, the government's three administrative bodies that govern IP--the U.S. Patent, Trademark, and Copyright Offices--will provide for further electronic filing of applications and forms over the Internet

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          The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following cases, as published by Justia:

• Bianchi et al v. Orendorff et al, Case Number: 1:2007cv01713, filed June 28, 2007. 

Plaintiffs Josephine Bianchi and Joesph Bianchi have sued Defendants Greg Orendorff and Colleen Orendorff for trademark infringement under 15 U.S.C. § 1114.   The Bianchi’s are reportedly seeking $300,000 in damages from the Orendorff's.

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