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

     Guilford Pharmaceuticals, Inc., was a well established Baltimore biotech/pharma company when it was acquired in 2005 by Minnesota-based MGI Pharma, Inc., in a deal reported to be worth about $177.5 million (announcement). After that acquisition, Guilford was renamed MGI GP, Inc., a wholly-owned subsidiary, to which patents being issued to the former Guilford employees in Baltimore were then assigned. Three recent MGI GP patents identify Maryland inventors: U.S. 7,307,080 ("Compounds, methods and pharmaceutical compositions for treating cellular damage, such as neural or cardiovascular tissue damage"); U.S. 7,268,138 ("Compounds, methods and pharmaceutical compositions for inhibiting PARP"); U.S. 7,247,641 ("Compounds, derivatives, compositions, preparation and uses"). Last week, it was announced that Japan's Eisai Co. was acquiring MGI Pharma for about $3.9 billion (announcement). Eisai's presence in the U.S.--Eisai Corporation of North America--is based in Woodcliff Lake, NJ.

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

     An IP360 email notice last week commented about a pending Central District of California case--Applied Medical Resources Corp. v. U.S. Surgical Corp., No. 03-cv-01267--in which the court (Judge Carney, in this case) reconsidered a defendant's summary judgment motion in view of In Re Seagate Technology, LLC, 83 USPQ2d 1 (Fed. Cir. 2007) (en banc) (Newman, J., Garjarsa, J., concurring). Upon reviewing the motion under the Seagate standard, Judge Carney again denied the defendant's motion, deciding to allow the issue of willful patent infringement to be heard by a jury despite the higher burden on the patentee to establish willfulness under Seagate.

     One of the interesting aspects of Judge Carney’s decision is that the jury will consider willfulness at the same time it considers evidence of infringement liability because “some of the same evidence that supports of finding of infringement supports of a finding of willfulness.” To illustrate, Judge Carney noted that a jury may use evidence regarding whether the structure of an accused product is equivalent to a claimed element in the patent-in-suit “not only to decide whether infringement occurred but whether the structures are so similar that there was an objectively high likelihood of infringement (the first prong of the willfulness analysis).”

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

     Below is a summary of the two IP-related cases filed in the the U.S. District Court for the District of Maryland last week (source: Justia). Both lawsuits involve allegations of trademark infringement.

• Sage Dining Services, Inc. v. Morrison Management Specialists, Inc., No. 1:2007cv03247, filed Dec. 4, 2007 

     SAGE Dining, a Delaware entity based in Towson, MD, is "one of the premier providers of dining services and gourmet catering to private schools, colleges, and corporations in the United States" (SAGE reportedly stands for "setting a good example"). Morrison Mgmt. Specialists, an Atlanta, GA, entity, is "the nation's only specialist dedicated exclusively to healthcare and senior dining food services."

     SAGE owns the federally-registered THE SPICE OF LIFE, SAGE, and SAGE DINING SERVICES service marks. It contends that Morrison has used the mark THE SPICE OF LIFE in commerce in an infringing manner that creates a likelihood of confusion, its actions amount to unfair competiton, and it is liable for infringement under Maryland common law.

     Steven Hollman and Robert Wolinsky of Hogan & Hartson (Washington, D.C.) filed the complaing on behalf of SAGE. 

• American Mensa, Ltd. v. Inpharmatica, LTD and Biofocus DPI, LTD, No., No. 1:2007cv03283, filed Dec. 6, 2007

     Plaintiff American Mensa is a New York limited liability company based in Arlington, TX (aside: does TX recognize the "Ltd." designation as short-hand for LLC?). Mensa claims to own several federally-registered trademarks for MENSA that are used in connection with various goods and services. Mensa, of course, is a membership organization open to "persons who have attained a score within the top two percent of the general population on approved intelligence tests."

     Defendant Inpharmatica, Ltd. is a UK entity with a London address. According to a search, the company is related to defendant BioFocus DPI (they share the same URL, for example). BioFocus, which is also a UK entity, provides drug discovery services.

     Mensa and Inpharmatica are battling before the PTO Trademark Trial and Appeal Board in an opposition proceeding involving Inpharmatica's ADMENSA trademark application, which Inpharmatica filed in 2004.

     Mensa alleges in its complaint that it has used its mark in connection with the dissemination of biological information and research. It contends that Inpharmatica has traded on the goodwill established by Mensa in the MENSA mark. It states that Inpharmatica has allegedly continued to use the ADMENSA mark in commerce despite the opposition proceedings, which caused Mensa to file the present lawsuit.  In its complaint, Mensa is alleging trademark infringement, unfair competition based on false association/sponsorship, dilution of the MENSA mark, and common law trademark infringement.

      In case you're wondering, Mensa is asserting personal jurisdiction in Maryland based on statements Inpharmatica made during the opposition regarding the geographical use of its mark in the U.S. (it apparently included Maryland in its contentions of geographical use). Personal jurisdiction over BioFocus is based on alleged contacts by BioFocus with Cystic Fibrosis Foundation Therapeutics, Inc., which is a Bethesda, MD, entity (its URL has an .edu domain). BioFocus allegedly has sold ADMENSA software in Maryland.

     Michelle Marcus of Venable LLP (Washington, D.C.) filed the complaint on behalf of Mensa.

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

     A few weeks ago I posted "Congress and Copyrights: A Busy Legislative Year," in which I summarized three Congressional bills targeting copyright infringement/infringers:

• The Intellectual Property Enhanced Criminal Enforcement Act of 2007 (H.R. 3155-IH),
  
  
• The Intellectual Property Enforcement Act of 2007 (S.2317), and
  
  
• The College Opportunity and Affordability Act of 2007 (H.R.4137). 

     Last week, Congress was at it again, with the introduction of yet more legislation amending the Copyright Act, as summarized below.

• Prioritizing Resources and Organization for Intellectual Property ("PRO IP") Act of 2007

H.R.4279 was introduced in the House on December 5, 2007, by Rep. John Conyers (D-MI). The bill would, among other things, amend 17 U.S.C. § 410 by adding a new paragraph (c)(1): "A certificate of registration satisfies the requirements of section 411 and section 412 regardless of any inaccurate information contained in the certificate, unless (A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and (B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration." 

The bill would also amend § 504 as follows:

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

     The District Court for the District of Columbia dismissed a lawsuit today brought by Gregory Aharonian and others against Carlos Gutierrez, Secretary of Commerce, in April 2007 after Margaret J.A. Peterlin was sworn in as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (USPTO).

     Aharonian's complaint asserted that Peterlin's appointment was improper because Peterlin "is not a citizen of the United States who has a professional background and experience in patent or trademark law,” citing 35 U.S.C. § 3(b).

     Judge James Robertson found that the text and the legislative history of the statute does not evince congressional intent required to establish a private cause of action – that is, intent to create both a private right and a private remedy. Robertson went on to say that there must be a presumption in this case that decisions involving high level policymaking personnel are left primarily to the executive. "In such a situation," he said, "one would expect Congress to speak in precise terms if it intended the courts to monitor the minimal qualifications for agency officers. Here, Congress has given only the broadest of instructions – that the Deputy Director should have 'a professional background and experience in patent or trademark law.' ”

     Because the statute is silent as to the terms "professional background" and "experience," the Court was not compelled to evaluate whether the Deputy Under Secretary/Deputy Director has or needs a law degree, whether the appointee took law school courses in intellectual property, whether the individual has a certification to practice before the USPTO, whether the appointee has law firm experience, and, if so, how many years of such experience. Noting that if Congress had intended the "extraordinary situation in which judicial review would reach to the very qualifications of agency officers for their policymaking positions, its statute would not be drawn 'in such broad terms that . . . there is no law to apply.'” Citing Citizens to Preserve Overton Park v. Volpe, 401 U.S. 402, 410 (1971).

     Link to Memorandum Opinion.

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

     Of the many IP cases summarized on the Maryland IP Law blog recently, two have garnered the most attention from site visitors: Technology Patents LLC v. Deutsche Telekom, which I summarized in November, and Nacre v. Silynx Communications, which I discussed in October. I can understand why the Technology Patents case has received attention: the patent infringement allegations involve popular text messaging technology, and the number of defendants that have been sued (131) makes the lawsuit one of the largest ever filed in the District Court for the District of Maryland.

     It is not as apparent, however, why the Nacre v. Silynx case has received the attention that it has. Perhaps it is the subject matter of the lawsuit, which, according to Nacre's complaint involves “two-way radios and wireless communicators for use in combat, in battlefield conditions, in military, military special forces, and law enforcement activities.” This would seem to be a huge market today.

     Or perhaps it is the competitiveness between the parties, both of which claim on their respective websites to be the "world's leader" in communications equipment that incorporates sophisticated noise canceling/noise protection technology. Nacre sells to the U.S. and foreign governments. Rockville, MD-based Silynx Communications states on its website that its headsets are used by the U.S. Special Operations Command (USSOCOM), U.S. Army, USMC and the world’s elite Special Forces.

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

Summary:  Number of applications down, but registrations up 41% over 2006 numbers

The first eleven 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 November 2007, the PTO registered 69 federal trademarks to Marylanders (based on a search of "owner address" records using TESS). The PTO registered 49 federal trademarks to Marylanders for the same period in 2006 (a 41% difference).

In November, the PTO registered 15 trademarks for Maryland entities/individuals, including "Everything Matters" to DLA Piper US LLP (a Maryland limited liability partnership), which the firm displays on its website (top right):

 

In terms of filed applications, the PTO received 79 applications for trademarks from Maryland entities and individuals for the first eleven months of 2007, compared to 83 applications received during the same period in 2006 (a 5% decrease).

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

     Below is a summary of the four IP-related cases filed in the the U.S. District Court for the District of Maryland last week (source: Justia). They involve a patent infringement case involving prostate cancer, a trademark infringement case involving rock climbing walls, a copyright infringement case involving Bob Marley's music, and a franchisor-franchisee trademark dispute.

• Lonza Group AG v. Northwest Biotherapeutics, Inc., No. 8:2007cv03177, filed Nov. 27, 2007

     Switzerland-based Lonza Group AG is reportedly the exclusive sub-licensee of U.S. Patent No. 5,122,464 ("Method for dominant selection in eucaryotic cells"), U.S. Patent No. 5,770,359 ("Recombinant DNA sequences, vectors containing them and method for the use thereof"), and U.S. Patent No. 5,827,739 ("Recombinant DNA sequences, vectors containing them and method for the use thereof"). It is reportedly the owner of U.S. Patent No. 5,591,639 ("Recombinant DNA expression vectors"), U.S. Patent No. 5,658,759 ("Recombinant DNA expression vectors"), U.S. Patent No. 5,879,936 ("Recombinant DNA methods, vectors and host cells"), U.S. Patent No. 5,891,693 ("Recombinant DNA methods vectors and host cells"), and U.S. Patent No. 5,981,216 ("Transformed myeloma cell-line and a process for the expression of a gene coding for a eukaryotic polypeptide employing same").

     Defendant Northwest Biotherapeutics is headquartered in Bethesda, MD. According to Lonza's complaint, Northwest has been conducting Phase II/III clinical trials involving its DCVax prostate product, which Lonza believes uses Lonza's patented GS expression technology. It is asserting patent infringement, conversion, and unjust enrichment.

     See previous post here concerning an injunction against Lonza recently issued by the District Court for the District of Maryland. 

     Nixon Peabody's (Washington, D.C.) Robert Fletcher and colleagues filed the complaint on behalf of Lonza.

• Pyramide USA, Inc. v. Meissner et al., No. 1:2007cv03198 , filed Nov. 26, 2007

     This case was brought by Frederick, MD-based Pyramide USA, Inc., which sells modular fiberglass climbing wall systems. In its complaint, Pyramide contends that it is the owner of the federally registered AQUACLIMB trademark, which it uses in connection with climbing walls installed poolside. Richard K. Meissner and HI5 Climb, LLC allegedly sell poolside climbing walls under the name AQUACLEAR. Mr. Meissner is apparently the owner of U.S. Patent No. 6,872,167, which is directed to "Artificial rock climbing arrangement adapted for water environment."

     Pyramide is alleging trademark and trade dress infringement, tortious interference with contractual and business relationships and prospective business relationships, unfair competition, and market endangerment. It is seeking a declaratory judgment of noninfringement and invalidity of the '168 patent. 

     Pyramide's "market endangerment" claim is particularly interesting. Pyramide contends that defendants' installation of poolside climbing walls creates a risk of injury (because defendants' products are allegedly "unsafe, untested, and unapproved") where none previously existed in the market, and thus creates the potential for foreclosure of the market to pool side climbing walls. This, in turn, according to Pyramide, endangers its reputation (by confusion of its products with defendants' products), and has allegedly exposed Pyramide to potential liability risks.

     Joseph Zito of ZITO TLP (Washington, D.C.) filed the complaint on behalf of Pyramide.

• Odnil Music Limited et al v. 132 Dock Street Corporation et al, No. 1:2007cv03203, filed Nov. 27, 2007

     This copyright infringement case was brought by Odnil Music and Fifty-Six Hope Road Music, alleged owners of rights in certain Bob Marley and Vincent Ford music compositions (e.g., "Is This Love," "No Woman, No Cry"), against 132 Dock Street, which owns Annapolis' Armadillo's, for alleged unauthorized public performances of the compositions. Plaintiffs are seeking statutory damages, costs, and legal fees.

• Maid to Perfection Corp, v. Vernet et al, No. 1:2007cv03175, filed Nov. 27, 2007

     Plaintiff MTP is a Maryland corporation based in Hagerstown, which allegedly owns the MAID TO PERFECTION service mark. Defendant Vernet is allegedly a Maryland resident. Defendant Maid to Perfection of Washington, DC, is allegedly a DC corporation controller by Vernet. In its complaint, MTP contends that defendants entered into and then breached a franchise agreement, have infringed and diluted the aforementioned service mark, have unfairly competed against MTP, and have falsely advertised their association with MTP. Nixon Peabody's John Bramlette and Andrew Zappia filed the complaint on behalf of MTP.

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