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

     Peter Zura suggested in his article "R.I.P. Patent Reform" (271 Patent Blog) that the Senate will not take action on the Patent Reform Act of 2007, S. 1145, this year. His prediction is based on comments by Matthew Sandgren, counsel to Sen. Orrin Hatch (R-Utah), that were presented at a speech in Washington, D.C. in early November. Peter noted that the biggest sticking points preventing a full Senate vote today are the second window of post-grant review and apportionment of damages provisions. The FDANews Drug Daily Bulletin for Nov. 19, posted a similar summary of Sandgren's comments. The Intellectual Property Owners Association reportedly expects the Senate will consider patent reform in February 2008. 

     The BNA Daily Report for Executives, Nov. 7 and 16, 2007 (subscription required), and other sources suggest that the following stakeholders have been or are still opposed to portions of the Patent Reform Act, and many may continue to yield as much influence as possible to win over Senators: the venture capital industry (at least 30 members who sent Senators a letter earlier in November); Innovation Alliance; American Bar Association's Intellectual Property Law Section; AFL-CIO; Paul R. Michel, Chief Judge of the U.S. Court of Appeals for the Federal Circuit; The Patent Officials Professional Association (the union representing patent examiners); Coalition for 21st Century Patent Reform, whose members include the American Intellectual Property Law Association, as well as companies from the manufacturing, information technology, consumer products, energy, financial services, medical products, pharmaceutical, and biotechnology industries.

     Of course, there are many in favor of the current bill, and would love to see an up vote sooner rather than later. Certain technology companies strongly back patent reform legislation because of provisions they see as leveling the playing field in lawsuits brought by non-practicing entities and so-called "patent trolls."

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Osiris Clinical Study Shows Promise for Osteoarthritis Pain Sufferers

     Columbia, MD-based Osiris Therapeutics Inc. announced yesterday a positive one-year interim result in the evaluation of Chondrogen, a preparation of adult stem cells formulated for direct injection into the knee.

     Data from the one-year Phase I/II double-blind, controlled study of 55 patients evaluating the safety and exploratory effectiveness of Chondrogen in patients undergoing surgery to remove a torn meniscus, showed improvement in joint condition that correlated with a clinically and statistically significant improvement in pain in patients with osteoarthritis (OA) who received Chondrogen as compared to those treated with the control, hyaluronic acid (HA).  See full press statement.

     Osiris's investment in clinical trials would not be feasible without patents protecting its core technology. Osiris owns several patents relating to the use of adult stem cells, including its base patent U.S. Pat. No. 5,486,359, entitled "Human Mesenchymal Stem Cells" (1996), which claims "An isolated, homogeneous population of human mesenchymal stem cells which can differentiate into cells of more than one connective tissue type."  Other Orisis patents include U.S. Pat. No. 6,835,377, entitled "Osteoarthritis Cartilage Regeneration" (2004), which claims "A method for regenerating articular cartilage defects in a host in need thereof, comprising administering to said host cultured human mesenchymal stem cells, said human mesenchymal stem cells having a fibroblastic morphology."

     See related articles:  Maryland Daily Record, Baltimore Business Journal

• Email This
• Print
• Comments
• Trackbacks
• Share Link

     Last week, there was one IP-related case filed in the the U.S. District Court for the District of Maryland (source: Justia), this one captioned Union of Orthodox Jewish Congregations of America v. The Wilder Spice Company, No. 1:2007cv03122 (D. Md. 2007) (filed Nov. 21, 2007).

     Plaintiff Union of Orthodox Jewish Congregations of America is a New York not-for-profit corporation with its principal place of business in New York City. The Orthodox Union provides kosher product certifications for products prepared according to special Jewish dietary laws. On its website, Orthodox Union states that the word kosher means "proper or acceptable," and the term originates from "kosher laws [that] have their origin in the Bible, and are detailed in the Talmud and the other codes of Jewish traditions. They have been applied through the centuries to ever-changing situations, and these rulings, both ancient and modern, govern OU Kosher certification." The Orthodox Union is the alleged owner of the OU mark, which has reportedly been used in commerce since 1925 on food-related products as an indicator that such products have been certified as kosher.

     Defendant Wilder Spice Company is a Baltimore, Maryland-based company that, according to court papers, sells spice products in the U.S. under branded and private labels through retail, foodservice, and industrial channels. Orthodox Union alleges that Wilder forged a Letter of Certification that falsely represented that the Orthodox Union had certified Wilder products as kosher, and that several of Wilder's products have been sold bearing the OU mark. It is claiming federal and state trademark infringement under the Lanham Act (15 U.S.C. § 1114(1)), false designation of origin (15 U.S.C. § 1125(a)), dilution of its allegedly famous mark (11 U.S.C. § 1125(c)), and common law unfair competition and trademark infringement. Orthodox Union is seeking a preliminary and permanent injunction, an accounting, and monetary damages.

     David Butler and Jason Scherr of Bingham McCutchen LLP (Washington, DC) filed the complaint on behalf of Orthodox Union.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Summary:  Congress has been busy targeting copyright infringers this summer and fall, introducing three bills that would make prosecution of copyright law violators easier, make the attempt to infringe another's copyrighted work a criminal act, and place new burdens on colleges to police music file downloaders.

• The Intellectual Property Enhanced Criminal Enforcement Act of 2007

H.R. 3155-IH was introduced to the House of Representatives on July 24, 2007, by Rep. Steve Chabot (R-OH) (see related post here). The bill would make the attempt to commit copyright infringement a crime, just as much as the actual completed crime itself. On Aug 10, 2007, the bill was referred to the House Judiciary Committee, Subcommittee on Crime, Terrorism, and Homeland Security.

• The Intellectual Property Enforcement Act of 2007

S.2317 (also here) was introduced in the Senate on November 7, 2007, by Sen. Patrick Leahy (D-VT) (co-sponsored by Sen. John Cornyn (R-TX)). Sec. 2 of the Act would grant the Attorney General power to commence a civil action against any person who engages in conduct constituting an offense under section 506 of the Copyright Act (related to criminal copyright infringement). Sec. 506 currently requires a showing of willful copyright infringement. In contrast, the burden of proof in a civil action under the new law would be by a preponderance of the evidence, which presumably would make it easier to find liability.

Sec. 14 of the Act would add civil and criminal forfeiture, destruction, and restitution provisions to 18 U.S.C. 113.

In his statement about the so-called PIRATE ACT, Sen. Leahy said:

"This legislation is a simple bill that would give the Department of Justice the authority to prosecute copyright violations as civil wrongs. The PIRATE Act has passed the Senate on three separate occasions; this should be the Congress in which it becomes law."

Status: Senate Judiciary Committee hearing, November 7, 2007.

• College Opportunity and Affordability Act of 2007

H.R.4137 was introduced in the House on November 9, 2007, by Rep. George Miller (D-CA) (co-sponsored by Ruben Hinojosa (D-TX)). Sec. 487 of the Act would amend 20 U.S.C. 1092(a)(1) to include a new provision entitled "Institutional Policies and Sanctions Related to Copyright Infringement," which would include an annual disclosure requirement by educational institutions that

• Explicitly informs students that unauthorized distribution of copyrighted material, including unauthorized peer-to-peer file sharing, may subject the students to civil and criminal liabilities, 
• Provides a summary of the penalties for violation of Federal copyright laws, 
• Provides a description of the institution's policies with respect to unauthorized peer-to-peer file sharing, including disciplinary actions that are taken against students who engage in unauthorized distribution of copyrighted materials using the institution's information technology system, and 
• Provides a description of actions that the institution takes to prevent and detect unauthorized distribution of copyrighted material on the institution's information technology system.

Sec. 494 of the Act, entitled "Campus-Based Digital Theft Prevention," would require colleges to:

• Make publicly available to their students and employees, the policies and procedures related to the illegal downloading and distribution of copyrighted materials required to be disclosed under section 485(a)(1)(P); and
• Develop a plan for offering alternatives to illegal downloading or peer-to-peer distribution of intellectual property as well as a plan to explore technology-based deterrents to prevent such illegal activity.

Status of bill: Nov 15, 2007: House Education and Labor: Ordered to be Reported (Amended) by the Yeas and Nays: 45 - 0 (GovTrack).

     Below is the University of Maryland's open letter to the University Community on illegal file sharing over University networks:

     "The university is greatly concerned about the potential effects of illegal file sharing on our information technology networking infrastructure and on the personal liability of our students. This letter summarizes actions the university will take over the next few days to protect our community.

     "Effective Monday, October 8, 2007, the university will block use of two peer-to-peer (P2P) file sharing programs on its network -- Ares and LimeWire. Recognizing the accelerating demands on bandwidth from educational commitments of greater priority, we are unable to justify supporting P2P programs that are instrumental in the sharing of music and movies in violation of copyright law. In the competitive allocation of computing resources, the university may not responsibly support activity that places students in serious legal and financial jeopardy. To do otherwise would also compromise a fundamental social value: respect and acknowledgment of the creative achievements of others.

     "In addition to blocking Ares and LimeWire, the university will expand enforcement of university network rules against facilitating illegal file sharing. One example is the campus DC++ hub, which has been featured recently in The Diamondback. The operators of DC++ hubs will be offered an opportunity to demonstrate that their network usage conforms to the University of Maryland Policy on Acceptable Use of Information Technology Resources and the Student Guidelines for Network Acceptable Use. Should a specific operator’s network usage not be shown to be in conformance, that operator will be asked to bring the usage into compliance. Failure to do so will subject the operator to administrative action, including revocation of access to Internet resources through the university network system and/or referral to the Office of Student Conduct.

     "We regret the inconvenience that these actions will cause for those using the university network services and file sharing software legally and responsibly. However, we must implement these measures to protect our community from the effects of illegal file sharing.

Jeffrey C. Huskamp
Vice President and CIO"

     Peggy Noon, scholarly communication librarian and special assistant to the provost for copyright administration at North Carolina State University, equates the College Opportunity and Affordability Act of 2007 to Shooting Fish in a Barrel, and questions why it has become higher education's role to correct student's illegal file sharing behavior:

     "Although it is inarguably part of the university's role to urge their students to comply with the law, behave in ethical manners, and teach that by example, we are only their teachers.

     "We are not their parents and we are not the police. We had no role in instilling or molding their characters or their ethical or religious belief system. In fact, we didn't even teach them the computer skills necessary to accomplish P2P sharing. They came to us with these behaviors and skills fully set and continually reinforced by their peers.

     "So when did we become responsible (in a legal and money sense) for the students P2P file sharing? If a student uses dormitory phones to conduct drug deals or extortion, is the university responsible? Should phone access be terminated? What if our students steal cable TV service" Should Congress pass a bill that withholds federal funding from our schools until the cable TV companies are financially satisfied? Since when did higher education become responsible for the profit margin of the entertainment industry?"

• Email This
• Print
• Comments
• Trackbacks
• Share Link

     In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, __ F.3d ___ (4th Cir. Nov. 13, 2007), the Court of Appeals for the Fourth Circuit affirmed a district court judgment that Nevada-based Haute Diggity Dog, LLC did not infringe Paris-based Louis Vuitton Malletier S.A.'s famous LOUIS VUITTON trademark by selling small imitations of handbags labeled "Chewy Vuiton" and that mimic LVM's LOUIS VUITTON handbags. In doing so, the Court found that, while the "Chewy Vuiton" dog toys undisputedly evoke LVM handbags of similar shape, design, and color, and use "CV" in lieu of the LV mark, and use other symbols and colors imitating LVM's Multicolor and Cherry designs, the "Chewy Vuiton" dog toys are successful parodies of LVM handbags and the LVM marks and trade dress used in connection with the marketing and sale of those handbags.

     LVM commenced an action against Haute Diggity Dog in 2002, alleging trademark infringement under 15 U.S.C. § 1114(1)(a), trademark dilution under 15 U.S.C. § 1125(c), copyright infringement under 17 U.S.C. § 501, and related statutory and common law violations. To prove trademark infringement, LVM had to establish (1) that it owns a valid and protectable mark; (2) that Haute Diggity Dog used a "reproduction, counterfeit, copy, or colorable imitation" of that mark in commerce and without LVM’s consent; and (3) that Haute Diggity Dog’s use was likely to cause confusion. To determine whether the "Chewy Vuiton" product line created a likelihood of confusion, the Fourth Circuit considered the nonexclusive Pizzeria Uno factors (1) the strength or distinctiveness of the plaintiff’s mark; (2) the similarity of the two marks; (3) the similarity of the goods or services the marks identify; (4) the similarity of the facilities the two parties use in their businesses; (5) the similarity of the advertising used by the two parties; (6) the defendant’s intent; and (7) actual confusion.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

     According to U.S. Patent & Trademark Office statistics (hat tip to Steven Aftergood for gathering the statistics every year), the number of secrecy orders in effect at the end of Fiscal Year 2007 (ending September 30, 2007) reached a 12-year high, at 5,002. Secrecy orders are issued by the government when inventions submitted to the Patent Office have national security implications. Inventions falling into this category are first spotted by the Patent Office during the initial intake and scanning of patent applications, which involves a keyword search for sensitive words that can lead to a full review by a government agency (the keywords are, I believe, classified, but you can easily guess some of the words that might trigger a full review). A secrecy order means the PTO cannot issue a patent for the invention covered by the order until the order is lifted (inventors are also prohibited from disclosing the invention). Below are some of the statistics for FY '07 (parenthetical values reflect change relative to FY '06):

• Total Secrecy Orders in Effect: 5,002
• New Secrecy Orders Imposed: 128 (+19%)
  • ARMY: 22
  • NAVY: 28
  • AF: 45
  • NSA: 21
• Secrecy Orders Rescinded: 68 (-16%)
• "John Doe" Secrecy Orders: 53 (+83%)

     These statistics are seen as being relevant to Maryland because the counties surrounding Washington, D.C., are home to many government agencies and government contractors that are likely involved in patent activity that may result in secrecy orders. In fact, if you look at Patent Office statistics, many of the agencies/contractors in this area are high on the list of the number of patents issued each year in Maryland (see Rank Ordered Listing of Organizations Receiving 5 or More Utility Patents During the Period Originating From MARYLAND). Johns Hopkins University, which topped the list in 2006, operates the Applied Physics Laboratory (Howard County), a major government defense contractor. Third on the list is the Navy, which operates the Naval Research Lab (Prince George's County). The Army, which operates the Army Research Lab and biodefense research agencies in Frederick, MD, is sixth on the list. Northrop Grumman and the National Security Agency (NSA) (both Anne Arundel County) are also high on the list. And, of course, there are over 300 biotechnology companies in Maryland (mostly Montgomery County), some of which may be involved in technologies that involve national security issues.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Summary: Patentee’s “incorporation by reference” language falls short of requirements, ends up invalidating its own patent

     In Zenon Environmental, Inc., v. United States Filter Corp., No. 2006cv1266, 1267 (Fed. Cir. Nov. 7, 2007) (Newman, J., dissenting), the Federal Circuit reversed a district court’s judgment that Zenon’s U.S. Pat. 6,620,319 patent is not invalid as anticipated by U.S. Pat. No. 5,639,373, which is an ancestor of the ’319 patent. In doing so, the Federal Circuit found that the ‘319 patent does not adequately incorporate by reference the subject matter of its ancestor patents, thus breaking the chain of continuity that would otherwise remove the earlier family patents as prior art.

     35 U.S.C. § 120, which governs entitlement to an earlier filing date in the United States, provides that:

An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States . . . which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application[.]

 

• Email This
• Print
• Comments
• Trackbacks
• Share Link

     According to a Copyright Office statement, under the 1909 copyright law, works copyrighted in the United States before January 1, 1978, were subject to a renewal system in which the term of copyright was divided into two consecutive 28-year terms. To secure the renewal protection, the claimant had to file a renewal registration within strict time limits. However, since January 1, 2006, all applications for renewal have necessarily related to works which, due to automatic renewal, are already in their renewal terms, making impossible any renewal in the 28th year.

     Consequently, the Copyright Office issued a notice of proposed rulemaking to amend its regulations to account for these facts and to clarify certain renewal requirements (72 FR 16306). The Copyright Office received no opposition to its proposal, so it issued a final rule incorporating the proposed revisions to 37 CFR 202.17.

Comments:

• Any applications for registration of claims to the renewal term must be filed using the newly revised forms. The previously used forms are obsolete, and the new forms must be used to file renewal claims (see Form RE, Form RE/CON, and Form RE/ADDENDUM). 
  
  
• New rule: 72 FR 61801

• Email This
• Print
• Comments
• Trackbacks
• Share Link

A man walked into a bar with his alligator and asked the bartender, "Do you serve lawyers here?".  "Sure do," replied the bartender.  "Good," said the man. "Give me a beer, and my 'gator will have a lawyer." 

The patent attorney turns away from his window, the invention in his hand, and exclaims to the inventor: "Death ray my ass! It hardly even slows them down!" 

Lawyers and computers have both been proliferating since 1970. Unfortunately, lawyers, unlike computers, have not gotten twice as smart and half as expensive every 18 months.

Source: link.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

     A week ago, Judge Cacheris of the District Court for the Eastern District of Virginia, preliminarily enjoined the U.S. Patent & Trademark Office (PTO) from implementing new PTO rules that would have restricted the number of continuations and continuation-in-part applications that can be filed in a patent family, as well as the number of claims permitted in any given application. The rules caused a great deal of tension among stakeholders, hype, unecessary CIP filings, constant predictions about injunctions, non-stop bloggings, and, of course, litigation, and all for good reason. So how did we get here, and where do we stand today? Read on... 

     The PTO had planned to implement new rules on November 1, 2007. As we now know, the rules caused nothing short of an avalanche of protest from the day the Notice of Proposed Rulemaking was published in the Federal Register, with nearly everyone finding something unpalatable in the rules. SmithKline Beecham Corporation (doing business as GlaxoSmithKline (“GSK”)), stepped up and sued the PTO, seeking both a preliminary injunction and a permanent injunction to prevent the new rules from going into effect. It would be fair to say that a rallying cry in support of GSK swept the patent world. 

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Summary:  As reported in September, the first eight months of 2007 saw a decline in the number of patents granted to Maryland inventors compared to the previous year. That trend continued into September and October.

     U.S. Patent & Trademark Office (PTO) records show that for the period January through October 2006, the PTO granted 1,799 patents naming at least one Maryland resident as an inventor or joint inventor (based on residence addresses supplied by patent applicants to the PTO). However, the PTO only issued 1,658 patents to Maryland inventors for the same period in 2007, an eight percent decline over 2006 numbers.

     For the month of October 2007, the PTO granted 192 patents naming at least one Maryland resident as an inventor or joint inventor. The PTO had issued 207 patents to Maryland inventors in October 2006, a 7% difference.

     The number of published patent applications naming at least one Maryland inventor in October 2007 was also down, continuing a trend seen in the first eight months of 2007 (compared to 2006). According to the PTO, 249 patent applications naming at least one Maryland inventor were published in October 2007, compared to 252 patent applications published during the same period in 2006, just a 1-percent difference (the overall trend for the year--ten months--shows barely a two-percent decline over the same period in 2006).

Comments:

• See related posts for June, July, and August (sorry, no September data)
  
  
• As I've stated before, an eight percent decline in the number of patents issued to Maryland inventors is not insignificant and clearly suggests a decline in innovation; however, it would be incorrect to conclude that the number of issued patents (or published patent applications) is the best indicator of the level of innovation in Maryland, as many other variables also correlate with innovation.  There may also be certain conditions affecting the number of patents being issued by the PTO today compared to last year, including the availability of PTO Examiners.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

This is from Martek Biosciences's (Columbia, MD) website:

"Martek Biosciences Corporation (NASDAQ: MATK) today announced that a judge in the United States District Court in Wilmington, Delaware, has ruled on various post-trial motions and will enter a permanent injunction in Martek's favor against the defendants in the patent infringement suit brought by Martek against Lonza, Ltd., Nutrinova Inc. and Nutrinova Nutrition Specialties & Food Ingredients GmbH. The suit involves Lonza's U.S. sale and use of a fatty acid product currently marketed under the brand name Lonza DHA for use in functional foods and dietary supplements and does not involve Martek's core infant formula patents.

"The judge upheld the October 2006 jury verdict that the defendants infringed all of the asserted claims of U.S. Patent Nos. 5,340,594 and 6,410,281 (the "'281 Patent") and that these patents were valid. The judge indicated that he will grant a permanent injunction against Lonza with respect to those two patents. The judge also upheld the jury verdict that Lonza had acted willfully in its infringement of the '281 Patent. Regarding the third patent involved in the case, U.S. Patent No. 6,451,567 (the "'567 Patent"), the judge reversed the jury verdict and found that there was insufficient evidence to show that the claims of this patent are enforceable against the defendants. Martek does not believe that this decision will have an adverse effect on the strength of the permanent injunction to be issued by the Court.

• Email This
• Print
• Comments (2)
• Trackbacks (1)
• Share Link