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

     In an earlier post this week--Seagate vs. Patent Reform Act of 2007--I included a link to R. David Donoghue's Chicago IP Litigation Blog and his post "Is the Patent Reform Act Stalled?"  David may have been onto something, as only a day later blogger Dennis Crouch reported in his post "Congressional Patent Reform is Dead; Long Live Adminstrative Patent Reform" that Congressional Republicans have asked Speaker Pelosi to put the brakes on patent reform legislation. In their letter to Pelosi (D-CA) dated August 30, 2007, available here, Representatives Boenner (R-OH) and Blunt (R-MO) asked for the reprieve to allow additional consensus building "so that all U.S. companies benefit from reforming the patent system rather than advantaging one business model over another." 

Comments:

• The introduced Senate and House versions of patent reform legislation are: S.1145 and H.R.1908, respectively
  


• A search of the Internet revealed Patent Reform Acts of 2005, 2006, and 2007; perhaps we should start looking forward to the 2008 or 2009 versions
  


• The Pelosi letter was copied to Representatives Conyers (D-MI), L. Smith (R-TX), Berman (D-CA), and Coble (R-NC), all members of the House Judiciary Committee (Subcommittee on Courts, the Internet, and Intellectual Property)

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Summary: The PTO must consider “relevant rebuttal evidence” submitted by patent applicants to overcome a prima facie case of obviousness. Such evidence must  be in the record. Cite: In Re Sullivan, No. 2006, Civ. 1507 (Fed. Cir. 2007).

     At issue in this appeal from the PTO's Board of Patent Appeals and Interferences, was joint inventor Sullivan’s and Russell’s U.S. patent application Serial No. 08/405,454, which is directed to an antivenom composition. The application had been finally rejected by the PTO as being obvious under 35 U.S.C. § 103(a) over the inventors’ own prior art publication in view of a publication by Coulter, a decision that was affirmed by the Board in two PTO appeals. During those appeals, the Board concluded that “the [antivenom] composition taught by the combination of Sullivan and Coulter would have been expected by a person of ordinary skill in the art at the time the invention was made to neutralize the lethality of the venom of a rattlesnake” (the underlined portion was added during prosecution).

     On appeal to the Court of Appeals for the Federal Circuit (CAFC), the Federal Circuit found that the Board’s obviousness conclusion was not unreasonable, in that one skilled in the art of snake venom could consider that a fragment of a whole antibody that neutralizes one type of venom (i.e., the prior art) might be used to neutralize the venom of another species (citing from KSR Int’l Co. v. Teleflex Inc.: “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”).  However, the Federal Circuit also found that “the claimed composition cannot be held to have been obvious if competent evidence rebuts the prima facie case of obviousness.” The PTO (the Board, in this case) must consider any “relevant rebuttal evidence” when an applicant puts forth such evidence in response to an obvious rejection (in this case three declarations containing evidence of unexpected result from use of the claimed composition, how the prior art taught away from the composition, and how a long-felt need existed for a new antivenom composition).

     Conclusion: the Board failed to give any weight to rebuttal evidence of record regarding the nonobviousness of the invention. Vacated and remanded to the Board to consider the evidence.

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Summary:  Don't get too comfortable with Seagate's "objective recklessness" standard for determining willfulness in patent litigation: the Patent Reform Act of 2007 could change everything.

     35 U.S.C. § 284, enacted in 1952, provides that a court "may increase damages up to three times the amount found or assessed" in the case of willful patent infringement. In 1983, the Federal Circuit established the standard for evaluating willfulness: 

“Where . . . a potential infringer has actual notice of another’s patent rights, he has an affirmative duty to exercise due care to determine whether or not he is infringing. Such an affirmative duty includes, inter alia, the duty to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity.”

Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380, 1389-90 (Fed. Cir. 1983)(emphasis added).  Thus, an accused infringer could establish that its continued accused activities were done in good faith if it reasonably relied on advice from counsel. The duty of care standard survived until just recently, when the Federal Circuit overruled the standard and held that:

"Proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness." 

In re Seagate Technology, LLC, Civ. No. 830 (Fed. Cir. 2007) (en banc) (Newman, J., Garjarsa, J., concurring).  Under Seagate, a patentee must show by clear and convincing evidence "that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent."  Once the threshold objective standard is satisfied, the patentee "must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer." According to the Federal Circuit, the state of mind of the accused infringer is not relevant to this objective inquiry.

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     Idling behind a yellow school bus early this morning, I spotted a continuing trend among the dozen teenagers waiting at my neighborhood bus stop:  about half were sporting those ubiquitous white earphone nibs attached to pocket-sized MP3 players. I couldn't help thinking of all of the other Maryland students who would be packing into dorm rooms, classrooms, and on-line chat rooms this week--the first week of school for many in Maryland--where they would reflect on a summer's worth of music downloads and new music sites discovered on the Internet. That thought peaked my curiosity, so I went in search of the latest information about music downloading to see what others are saying about how the music downloading phenomena has impacted copyright laws (and vice versa) in the U.S. 

     I found what I was looking for at Mark Cooper's blog at the Stanford Law School Center for Internet and Society.  Last week, Mark posted the following interesting summary about music downloading:

"Less than a decade after the advent of file sharing, sales figures indicate that the recording industry sold more singles than albums and unsigned artists sold more singles than record labels. Thus, the digital communications revolution has transformed the creation and distribution of music to the benefit of both consumers and artists."

Mark's entire research article can be found at "Digital Downloading of Music: A Big Pay-Off for Consumers and Artists in the Digital Broadband Era" (it's only 7 pages long, with several revealing historical time-series charts; definitely worth a closer read).

     So consumers and artist are benefiting from the availability of digital music on the Internet.  Not a big surprise.  To see what the record industry had to say about that, I visited the Recording Industry Association of America (RIAA) web site (the RIAA is the trade group that represents the U.S. recording industry).  RIAA has apparently kicked off the new school year by sending out its seventh round of pre-litigation letters to universities across the U.S. alleging unlawful music downloads on university networks (58 universities were targeted in this round of letters; click here to see if your university is among those reportedly receiving pre-litigation notice).  RIAA's web site states the following about the letters:

"Each pre-litigation settlement letter informs the school of a forthcoming copyright infringement suit against one of its students or personnel and requests that university administrators forward that letter to the appropriate network user."

     The reason for the letters?  According to RIAA's web site,

"[a] survey by Student Monitor from last year found that more than half of college students download music and movies illegally.  According to market research firm NPD, college students alone accounted for more than 1.3 billion illegal music downloads in 2006."  

     I wonder who sponsored the Student Monitor and NPD research firms to arrive at those figures?  In any case, to get a balanced perspective, I visited Eric Bangeman's blog post entitled "Digital Freedom Campaign to organize students against RIAA abuse," posted last April, which summarizes and frames the music downloading issues from another view point.

     Finally, I visited the University of Maryland web site to see what's happening at a local level.  On July 26, 2007, the University issued an announcement entitled Ruckus Digital Music and Entertainment Network Now Available at the University of Maryland.  The Ruckus arrangement is apparently Maryland's attempt to "address[] illegal peer-to-peer file sharing" by University students.  The service is not free, of course.  If you're a student at Maryland and have used the new music downloading service, send me your comments concerning whether your believe it has or will curtail illegal digital music sharing over campus networks.

     So there you have it:  a brief spattering of news about music downloading and copyright issues.  Note: in all fairness to students, who may begrudge being singled out in this post, they are obviously not the only group that downloads music and/or shares music files 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 case(s), as published by Justia:

• Thirty Eight Street, Inc. v. State Line LC, Case Number 1:2007cv02210, filed August 20, 2007

According to court papers filed August 20, Plaintiffs Thirty Eight Street, Inc., and Vantage Hospitality Group, Inc. (formerly Best Value Inn Brand Membership, Inc.) are Florida entities that  allegedly own the marks BEST VALUE INN, BEST VALUE (right), and AMERICAS BEST VALUE INN BY VANTAGE.  Defendant State Line, LC, is reportedly a Hagerstown, Maryland-based entity.  Defendant Bharat Patel is allegedly a Maryland resident and owns State Line LC.  The filed Complaint alleges that Defendants infringed the asserted marks under 15 U.S.C. § 1114; violated the false advertising provisions of the Lanham Act, 15 U.S.C. § 1125(a); contributorily and/or vicariously infringed the marks; and violated several Maryland state statutes and common laws (e.g., Maryland Unfair or Deceptive Trade Practices Statute, unfair competition).  Plaintiffs are seeking an injunction, destruction of advertising materials, and an award of monetary damages, among other requested relief. 

• Young Again Products, Inc. v. Young Again Rejuvenation Clinic, LLC, Case Number 8:2007cv02254, filed August 24, 2007

Plaintiff Young Again Products, Inc., a Maryland company that describes itself as being "in the business of production and sale of health and nutritional supplements," has sued Young Again Rejuvenation Clinic, LLC, which is reportedly a New Jersey company operating the site youngagainclinic.com, for allegedly "engaged in the unauthorized use of the Young Again™ Mark by utilizing the Mark in its company name, in its website’s uniform resource locator (“URL”) (also referred to as the domain name) and/or on its website to offer its services and sell related supplement products, including hormone therapies" in violation of 15 U.S.C. §1125(a) (Lanham Act), dilution of a famous mark in violation of 15 U.S.C. §1125(c), and unfair competition in violation of Maryland's common law.  Young Again Products is seeking a declatory judgment enjoining Young Again Rejuvenation Clinic, LLC, from using the Young Again mark, monetary damages, and other relief.

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Summary:  New rules will curb the practice of filing multiple continuation applications at the PTO, force inventors and their patent counsel to be selective in how they claim inventions, and potentially increase the cost of obtaining patents.  Final Rule:  72 FR 46716 (Aug. 21, 2007)

     For those of you who have frequented this and other blogs the last two days hoping to learn more about the PTO's extensive new rules promulgated August 21, 2007, I have unwelcome news:  it will take time to dissect and analyze the 129-page rule and the PTO's 109-slide "summary" (??!!) of the same.  In the meantime, the PTO has provided plenty of useful information about the so-called "Claims and Continuation Practice Rule" on its web site, enough to keep those interested busy reading for weeks.

     The official rules are entitled "Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications."  Yesterday, the PTO held a special webcast to present the rules to the public.  After an introduction by Margaret J.A. Peterlin (Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the PTO), Robert W. Bahr, Esq. (Sr. Patent Counsel at the PTO) led a lengthy presentation and Q&A session covering the highlights of the new requirements, which become effective November 1, 2007.  Here are some of the major points presented during the webcast.

• The new rules apply to new applications and applications entering national stage filed on/after November 1, 2007
  
• The new rules are intended to improve quality and efficiency of prosecution, with a goal of ensuring the U.S. patent system is "the best in the world"
  
• The new rules are designed to "encourage applicants to use greater clarity and precision in describing the scope of their inventions"
  
• The new rules will force applicants to submit "focused claims," and, if more claims are submitted, the burden of searching and analyzing those claims shifts to the applicant
  
• Applicants will be allowed to file up to 5 independent claims and 25 total claims (i.e., the 5/25 limit) in an application
  
• Applicants will be allowed to file up to 15 independent/75 total claims (i.e., 15/75 limit) per invention without justification or an Examination Support Document (ESD)
  
• The 15/75 limit applies to an initial and two continuation or continuation-in-part applications, plus one Request for Continued Examination (RCE) application 
  
• An applicant may file additional claims above the 5/25 or 15/75 limits, but must submit an ESD, which must be submitted before a first office action on the merits (FAOM) 
  
• For commonly owned applications having at least one patentably indistinct claim, the PTO will treat each application as having the total number of claims present for purposes of determining whether each application exceeds the 5/25 limit
  
• An ESD must include
  • A preexamination search statement,
  • A list of references deemed most closely related to the subject matter of the claims,
  • An identification of all claim limits that are disclosed in each reference,
  • A detailed explanation that particular points out how each of the independent claims is patentable over references, and
  • A showing of where each limitation has 35 U.S.C. sec. 112 support in the specification.
  
  
• Applicants must file a supplemental ESD if amended claims are not covered by the original ESD analysis, or if applicant files an IDS with new reference closely related to the claims
  
• ESD practice affects patent term adjustment calculation
  
• Existing applications that have not received a FAOM before November 1, 2007, and that have more than 5/25 claims, will require either an ESD, a suggested restriction requirement (SRR), or an amendment that reduces the number of claims to 5/25
  

Comments: 

• No sooner had the ink dried on the new rules, then an inventor with pending applications (Dr. Tafas) challenged the new rules by filing a lawsuit against the PTO in the E.D. Virginia (see Peter Zura's blog post here)
  
  
• The new rules may have the goal of increasing efficiency, but part of that efficiency is obviously the result of shifting much of the analysis of the patentability of claims to applicants who submit more than 5/25 claims in an application, and by curtailing what had been an applicant's right to file multiple continuation applications
  
  
• Preparing Examination Support Documents (ESD) will obviously add to the costs applicants pay to obtain patents (to add insult to injury, the PTO announced yesterday new higher government fees associated with obtaining patents; see Final Rule "Revision of Patent Fees for Fiscal Year 2007", which will become effective September 30, 2007)

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     In an earlier post, the proposed new 35 U.S.C. § 103(a), set forth in the Patent Reform Act of 2007, was summarized.  To illustrate how an obviousness analysis might be approached under the new § 103(a), assume I “invent or discover” a new invention on Day 1 in the U.S., reduce the invention to practice on Day 60, file a provisional patent application in the PTO on Day 80 (without any claims), and file a nonprovisional application on Day 250 (claiming the invention).  Under this scenario, Day 80 could be my “effective filing date” even though the provisional application did not include any claims:

“The ‘effective filing date of a claimed invention' is--(1) the filing date of the patent or the application for patent containing the claim to the invention; or `(2) if the patent or application for patent is entitled to a right of priority of any other application under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c), the filing date of the earliest such application in which the claimed invention is disclosed in the manner provided by the first paragraph of section 112.”   See proposed new § 100(h).

     However, if the invention is not adequately disclosed in the provisional application, my “effective filing date” could be Day 250. 

Comments:

• Clearly the proposed new § 103(a) statutory framework encourages me to rush to the Patent Office to file a patent application as soon as possible after my invention/discovery on Day 1.
  
  
• It wouldn't be too much of a stretch to say that many organizational patent departments operate in a somewhat leisurely manner (or carefully and calculating, depending on your perspective) when it comes to processing invention disclosures.  That's understandable, given that under the first-to-invent system currently in place in the U.S., there is no real urgency when it comes to submitting a patent application to the PTO (absent the need to protect the invention for foreign filing purposes, or if there is a current infringer in the market knocking off your invention).  Invention disclosures will obviously need to be handled in a more expeditious manner under the first-to-file system.

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     The first seven months of 2007 saw an increase in the number of federal trademarks registered to Maryland entities and/or individuals, compared to the same period in 2006. U.S. Patent & Trademark Office (PTO) searchable records show that for the period January through July 2007, the PTO registered 27 trademarks to Marylanders (based on a search of "owner address" records using TESS). The PTO registered 24 marks to Marylanders for the same period in 2006. 

     In terms of filed applications, the PTO received 65 applications for trademarks from Maryland entities and individuals for the first seven months of 2007, compared to 35 applications received during the same period in 2006. 

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Summary: The Federal Circuit clarifies the scope of the waiver of attorney-client privilege and work product protection that results when an accused patent infringer asserts an advice of counsel defense to a charge of willful infringement. Case:  In Re Seagate Technology, LLC, Civ. No. 830 (Fed. Cir. 2007) (en banc) (Newman, J., Garjarsa, J., concurring).

     Convolve, Inc., and MIT (“Convolve”) sued Seagate, alleging willful infringement of U.S. Patent Nos. 4,916,635, 5,638,267, and  6,314,473. Prior to the lawsuit, Seagate had obtained from outside counsel three opinion letters covering infringement, validity, and enforceability of those patents. Seagate notified Convolve of its intent to rely upon the three opinions in defending itself against willful infringement.  It then disclosed its outside counsel’s work product and made him available for deposition. Convolve then moved to compel discovery of any communications and work product of Seagate’s other counsel, including its trial counsel. The S.D.N.Y. sided with Convolve, concluding that Seagate waived the attorney-client privilege for all communications between it and any counsel, including opinion, trial, and in-house counsel, concerning the subject matter of the opinion letters. 

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          The doctrine of obviousness has been called the “cornerstone of American patent law.” That could explain why the Supreme Court’s KSR v. Teleflex decision, which arguably tightened the doctrine in a way that could make it increasingly harder for inventors to obtain patents in the U.S., has resonated so loudly over the last several weeks. On the heels of KSR, however, is another possible shake up of the doctrine, this time emanating from the Legislative Branch in the name of Patent Reform. While it may be too early to ascertain whether the Patent Reform Act of 2007 will make the prospects of obtaining patents in the U.S. more uncertain, it is clear that it will affect the way inventions are analyzed under the doctrine of obviousness.

          Traditionally, the question of whether an invention was obvious under 35 U.S.C. § 103(a) involved considering the four “Graham factors”: (1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness. Graham v. John Deere, 383 U.S. 1 (1966). However, under the proposed new § 103(a), as shown in the table below (juxtaposed with the current version of the law and showing proposed changes), the Graham factors may need to be applied in a different manner in the future.

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Below is a list of recent trade secret, patent, trademark, and copyright news, announcements, and other information of some interest:

Trade Secrets:

• The new Intellectual Property Section of the Maryland State Bar Association (a new web site) is hosting a seminar and Webinar entitled Theft of Intellectual Property, Trade Secrets and Proprietary Information: Forensic Traces to Make Cases on Friday, September 28, 2007, from 8:00 – 10:00 a.m. at the University of Maryland School of Law, Room 107.

Patents:

• The PTO has proposed new rules to improve patent quality and reduce pendency during prosecution:  see the Notice of Proposed Rulemaking in the Federal Register for details, or the PTO's announcement for a summary

Trademarks/Trade Names:

• The PTO has finalized new rules affecting Trademark Trial and Appeal Board rules:  see the Final Rule in the Federal Register for details
• Useful form:  registration application for a Maryland Trademark or Servicemark
• Useful form:  application for Maryland Trade Name
  

Copyrights:

• The launch of a new Internet-based electronic search system for copyright registrations and recordations is still scheduled for roll-out in "Mid August" according to a Copyright Office announcement

General:

• A newly-formed entity in Maryland called the Center for New Technology Enterprise will be opening its virtual doors soon.  Headed by veteran serial entrepreneur and CEO Fred Provorney, the Center will provide a comprehensive trans-disciplinary program for facilitating technology commercialization and fostering collaboration among universities, research institutions, governmental research facilities and other individuals and entities, whether public or private.  The Center should be well received, especially in Maryland, with its large number of start-up biotechnology and other high technology companies, major University research centers, and several Government laboratories and research organizations.  Check back here for more information about this venture. 

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Summary:  Although teasing about things to come, the Court of Appeals for the Federal Circuit (CAFC) adverted to, but then sidestepped, the question of whether two separate entities can jointly infringe a patent.

      If you're a patent practitioner, this issue has likely come across your radar screen at some point.  Say a business performs steps A and B of a patented process, and another company performs steps C and D.  Neither company would appear to be a direct infringer of a patent claim reciting steps A, B, C, and D.  And as long as no one is directly infringing the claim by practicing all steps A through D, neither company should be held liable for contributory or induced infringement of the claimed process either.  That's where the theory of "joint" or "divided" patent infringement liability comes into play.

     In PharmaStem Therapeutics, Inc. v. Viacell, Inc., No. 05 Civ. 1490 and 1551 (Fed. Cir. July 9, 2007) (Newman, J., dissenting), the CAFC acknowledged that the parties and the district court discussed the issue of joint infringement in the context of determining whether there was infringing conduct sufficient to serve as a predicate for a finding of contributory infringement.  Under that theory, the court said, "two related parties are both deemed liable for direct infringement of a method patent when each performs some steps of the claimed method."  However, while recognizing that the viability and scope of the joint theory of liability has been the subject of considerable debate, the CAFC said the issue was not squarely raised on appeal such that it could address the merits of the theory, leaving the liability "loophole" in tact. 

      So what about the tease mentioned above?  The CAFC pointed out that the joint liability issue has been directly appealed in another case--BMC Resources, Inc. v. Paymentech, L.P., No. 2006-1503--currently pending before the CAFC.  Perhaps, then, the bar will have some clarity soon.

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          The practice by which companies buy keywords from search engines to rank their web sites high when those keywords are used in searches is common.  However, the law is unsettled as to whether that practice constitutes trademark infringement when the purchased keywords are someone else's registered mark.  In some jurisdictions, including Maryland's federal District Court, this may be an issue of first impression. [1]  Maryland's court, however, may have the chance to address the issue if the case Young Again Products, Inc. v. Vitamins Home [2] is adjudicated.  The case involves Vitamins Home's alleged "engage[ment] in the unauthorized use of the Young Again™ Mark by utilizing the Mark in pay-for-placement and pay-for-rank search engine advertising to direct Internet customers to its on-line nutritional supplement store."

           A sampling of other jurisdiction's decisions may reveal how Maryland's federal District Court may decide the issue today [3]:  Government Employees Insur. Co. (GEICO)  v. Google, Inc., 330 F.Supp.2d 700 (E.D. Va. 2004) (finding Google's AdWords program a "use in commerce" under the Lanham Act);  GEICO  v. Google, Inc., 414 F.3d 400 (2d Cir. 2005) (finding that a paid-for advertisement that itself did not mention a mark used as the keyword search term either in the title or the text of the advertisement was not likely to cause confusion); 800-JR Cigar, Inc. v. GoTo.com, Inc. 437 F.Supp.2d 273 (D.N.J. 2006) (finding GoTo's conduct was a "use in commerce," but the issue of likelihood of confusion was not suitable for summary judgment because of disputed facts); Rescuecom Corp. v. Google, Inc. 456 F.Supp.2d 393 (N.D.N.Y. 2006) (granting motion to dismiss on the basis that Google's sale of other's trademarks as keywords was not a "use in commerce," and concluding that there must be an allegation of trademark use in the first instance to sustain a cause of action for trademark infringement); J.G. Wentworth SSC Ltd. v. Settlement Funding LLC, 2007 U.S. Dist. LEXIS 288 (E.D. Pa. 2007) (rejecting infringement contentions based on theory of "initial interest confusion").  This is only a partial listing of cases.

Comments and references:

• [1]  Brief Lexis search 
  
  
• [2]  Young Again Products, Inc. v. Vitamins Home, No. 07 Civ. 2073 (D. Md. filed Aug. 3, 2007)
  
  
• [3]  See Allison McDade, Use of Competitors' Trademarks as Keywords: Corporate Considerations, 2007 ABA IP Law Conference (2007) for a recent comprehensive analysis of the pay-for-click issue and case law cites.
  
  
• Thanks to attorney David Weslow at Sutherland Asbill & Brennan for providing information for this blog post

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Summary:  A recent survey asked corporations "Overall, has your company made money from the patent system?"  Pharma and biotech companies responded with a resounding "Yes."

In a survey conducted August 7, 2007, University of Missouri School of Law Associate Professor and Patently-O blawger Dennis Crouch asked companies whether they had made money from the patent system.  His published results showed that:

"On average, pharmaceutical companies see patents as a profit center while software companies see patents as an overall loser. (At 95%CI, Software & EE results each differ significantly from Pharm results)."

The survey results are based on responses from 131 corporate employees who claim to be "highly involved with their company patents."  See the Overall, has your company made money from the patent system? survey for details and graphical results. 

Comments:

• Although the survey was admittedly non-scientific, the responses and trends are consistent with anecdotal evidence that I am familiar with:  in general, chemical, pharmaceutical and biotechnology companies see value in their patent portfolios more so than, say, software companies (especially those with financial services software patents).
  
  
• The explanation for the survey results?  It largely depends on whom you ask.  Bio and pharma companies invest significant sums of money to develop a single drug or biologic candidate that may or may not receive market approval.  They want to recoup that investment, and the exclusivity of a patent grant represents a means to achieve that goal. 
  
  
• This survey should come as no surprise (okay, maybe a little surprise) to a majority of the estimated 300 Maryland companies operating in the biotechnology and pharmaceutical sectors of the economy. 
  
  
• FYI:  Maryland, has the fourth largest cluster of biotechnology companies among states in the U.S. (Source: Ernst & Young, Beyond Borders, Global Biotechnology Report 2006).  Many of them consistently rank among the top entities in Maryland receiving patents from the PTO each year (see Patenting By Geographic Region: Maryland, 2005).

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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:

• Archstone Consulting LLC v. Archstone Portfolio Solutions, LLC, Case Number 1:2007cv02070, filed Aug. 3, 2007

According to its Complaint, Plaintiff Archstone Consulting LLC, is a Delaware company that provides business and financial management services under its mark ARCHSTONE CONSULTING.  It alleges that Defendant Archstone Portfolio Solutions, LLC, is a Lutherville, MD-based company that reportedly provides institutional and individual investment consulting services under the name ARCHSTONE PORTFOLIO SOLUTIONS.  It further alleges that the ARCHSTONE PORTFOLIO SOLUTIONS name infringes its ARCHSTONE CONSULTING mark in violation of 15 U.S.C. 1114(1)(a).  Its Complaint includes claims of unfair competition under 15 U.S.C. 1125(a), and infringement and unfair competition under Maryland common law.

• Young Again Products, Inc. v. Vitamins Home, Case Number 1:2007cv02073, filed Aug. 3, 2007

Plaintiff Young Again Products, Inc., a Maryland company that describes itself as being "in the business of production and sale of health and nutritional supplements," has sued Vitamins Home, an Israeli company with a place of business in Texas, for allegedly "engag[ing] in the unauthorized use of the Young Again™ Mark by utilizing the Mark in pay-for-placement and pay- for-rank search engine advertising to direct Internet customers to its on-line nutritional supplement store," in violation of 15 U.S.C. sec. 1051. Other claims include dilution of a famous mark under 15 U.S.C. 1125(c), and common law unfair competition. Young Again Products is seeking a declaratory judgment enjoining Vitamins Home from using the Young Again mark, and other relief. 

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As reported last month, the first half of 2007 saw a small decline in the number of patents granted to Maryland inventors compared to the previous year. U.S. Patent & Trademark Office (PTO) records 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. 

Data available for the month of July 2007 continue that downward trend.  In July 2007, the PTO granted 170 patents naming at least one Maryland resident as an inventor or joint inventor.  The PTO had issued 180 patents to Maryland inventors for the same period in 2006.

The number of published patent applications naming at least one Maryland inventor in July 2007 was also down, continuing a trend seen in the first half of 2007 (compared to 2006). According to the PTO, 232 patent applications naming at least one Maryland inventor were published in July 2007, compared to 242 patent applications published during the same period in 2006.

See related post here.

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The Register of Copyrights, Marybeth Peters, must have her hands full these days.  As the Office's fifteenth Register, and only the second woman to hold the position, she is overseeing a "reengineering" of many of the Copyright Office's electronic systems, including those that serve the public.  The stated goal of the reengineering program, which started under previous Registers, is to increase the availability of services online and make Office records more promptly available via the Internet.  Those objectives will be implemented by the program's two biggest changes:

• A new copyright records search system, available this month, which will reportedly allow users to electronically access more than 20 million digital records of registrations and recorded documents from 1978 to the present; and
  

• A new online copyright registration portal, available soon, which will provide an alternative to the current paper method of registering new works.

If any of the beta users of these computer systems would like to share their initial thoughts about the new systems, please send them to this author. 

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Summary:  Federal Circuit affirms judgment declaring D.C.'s Prescription Drug Excessive Pricing Act of 2005 preempted by federal patent laws and enjoining its enforcement.

In Biotechnology Industry Organization v. District of Columbia, No. 2006 Civ. 1593 (Fed. Cir. 2007), the Federal Circuit affirmed the District Court for the District of Columbia's judgment in favor of the Plaintiffs declaring the District’s Prescription Drug Excessive Pricing Act of 2005 preempted by the federal patent laws and enjoining its enforcement.  The Plaintiffs' complaint centered on the following provision of DC's law:

"It shall be unlawful for any drug manufacturer or licensee thereof, excluding a point of sale retail seller, to sell or supply for sale or impose minimum resale requirements for a patented prescription drug that results in the prescription drug being sold in the District for an excessive price. *** A prima facie case of excessive pricing shall be established where the wholesale price of a patented prescription drug in the District is over 30% higher than the comparable price in any high income country in which the product is protected by patents or other exclusive marketing rights."

Plaintiff Pharmaceutical Research and Manufacturers of America ("PhRMA") filed suit in the District Court for the District of Columbia, alleging that the Act was invalid in light of the Commerce Clause of the Constitution and it was preempted by the federal patent laws. Plaintiff Biotechnology Industry Organization ("BIO"), which includes as its members nearly 60 Maryland biotechnology companies, filed a similar suit, which was consolidated with PhRMA's.

On appeal, the Federal Circuit stated:

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Although the Senate and House versions of the Patent Reform Act of 2007 (S.1145 and H.R.1908, respectfully) may not find their way into a compromise bill that lands on the President's desk in 2007, the bills provide a glimpse into what the final legislation may look like.  For example, the new law will apparently contain substantial changes to section 102--Conditions for Patentability; Novelty--in order to implement the much-debated "first to file" system of granting patents.

Not everything will change, however.  A new section 102(a)(1)(A) of the law, which may look like the identical versions introduced in the Senate and House, could include some familiar provisions:

"(a) A patent for a claimed invention may not be obtained if--(1) the claimed invention was patented, described in a printed publication, or in public use or on sale--(A) more than one year before the effective filing date of the claimed invention"

That provision looks like the tried and true absolute novelty bar that patent practitioners are accustomed to (note the familiar one-year grace period).

Section 102(a)(1)(B) of the law, however, could be completely new:

"(a) A patent for a claimed invention may not be obtained if--(1) the claimed invention was patented, described in a printed publication, or in public use or on sale--(B) one year or less before the effective filing date of the claimed invention, other than through disclosures made by the inventor or a joint inventor or by others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor"

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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:

• Global Barbeque, LLC v. Rub, LLC, Case Number 1:2007cv02021, filed July 27, 2007

New York City-based Global Barbeque, LLC, and Rub BBQ Restaurant # 1 (the RUB BBQ restaurant) have sued Michael Marx (alleged owner of Baltimore's Rub Barbeque restaurant) and RUB, LLC, for alleged trademark infringement, dilution, and state law claims arising out of the use of the word RUB in connection with its retail food services.  Plaintiffs are seeking, among other relief, an injunction, an order barring use of the word RUB in connection with Defendants' web site URL, an accounting of profits, and compensatory and punitive damages.

• Tarpo Music Publishing v. Lifestyle, LLC, Case Number 1:2007cv02029, filed July 30, 2007 

Plaintiffs Tarpo Music Publishing, EMI April Music Inc., Notting Dale Songs, Inc., Controversy Music, Basement Boys Music, Inc., C-Water Publishing, Inc., WB Music Corp., Webo Girl Publishing, Inc., EMI Waterford Music, Inc., Jobete Music Co., Inc. and Rodsongs have sued Defendants Lifestyle, LLC, Leonard Clarke and Gyeong M. Cho for alleged copyright infringement based on "public performances of copyrighted musical compositions" at Baltimore's Red Maple bar, which is reportedly operated and managed by Defendants (see complaint).  Listed compositions include Ain't No Mountain High Enough, among five others alleged to be infringed. 

• Plastic Safety Systems, Inc. v. Road Safety, LLC, Case Number 1:2007cv02068, filed August 2, 2007

Cleveland, OH-based Plastic Safety Systems, Inc., has sued Glen Burnie, MD-based Road Safety, LLC and Millersville, MD-based Reliable Contracting Company, Inc., for allegedly infringing Plastic Safety's U.S. Patent No. 5,234,280, which is directed to traffic "channeling" devices in the form of large drums (see image).  According to its complaint, Defendants allegedly used or induced the use of infringing drums along Rt. 50 in Annapolis. 

• Young Again Products, Inc. v. JMS Partners Enterprises, Ltd., Case Number 1:2007cv02072, filed August 3, 2007

Plaintiff Young Again Products, Inc., a Maryland company that describes itself as being "in the business of production and sale of health and nutritional supplements," has sued JMS Partners Enterprises, Ltd., for allegedly "engag[ing] in the unauthorized use of the Young Again™ Mark by selling products displaying the Mark and by using the Mark on its website to sell its products" in violation of 28 U.S.C. 1338.  Other claims include unfair competition under 15 U.S.C. 1125(a) (Lanham Act), and dilution of a famous mark under 15 U.S.C. 1125(c).  Young Again Products is seeking a declatory judgment enjoining JMS from using the Young Again mark, and other relief.

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If, like 99.9 percent of the world, you eagerly fast-forward through the previews and warnings on your DVDs to get to the main feature, you may never have given much attention to the following criminal copyright infringement warning under the FBI’s anti-piracy logo:

"Warning: The unauthorized reproduction or distribution of this copyrighted work is illegal. Criminal copyright infringement, including infringement without monetary gain, is investigated by the FBI and is punishable by up to 5 years in federal prison and a fine of $250,000."

Despite those warnings, and similar warnings on other copyrighted works, it comes as no surprise that piracy of media and other commercial goods continues to cause significant losses to artists, corporations, and other parts of the U.S. economy each year, with consumers paying the price through higher retail sales prices. 

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According to the University of Baltimore School of Law web site, staff from the U.S. Patent and Trademark Office (PTO) will provide free training on Tuesday, August 7, 2007, to inventors, would-be inventors, entrepreneurs, law firms, research firms and similarly interested parties in searching for U.S. patents and trademarks.  The training, conducting in cooperation with the Law School's Law Library, will teach how to use the PTO web site to search patents and trademarks, and how to access the PubWEST database, which is the same search tool used by PTO patent examiners.  Registration and continental breakfast are to begin at 8 a.m., followed by a training program from 9 a.m.-4 p.m.

Contact information:  Joanne Dugan; (410) 837-4373; patentlibrary@ubalt.edu.

Comments:

• UB's Law Library is one of two Patent and Trademark Depository Libraries (PTDL) in Maryland, and the most recent to be so designated.  The other PTDL is located in the Engineering and Physical Sciences Library in College Park, MD

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