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

     Thank you for visiting the Maryland IP Law Blog; I appreciate all the traffic, posted comments, and frequent emails.  While you're here, please visit the revised "About" page, which was updated to contain more concise biographical information. Let me know what you think about the changes.

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• Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., No. 2007-1448 (Fed. Cir., argued March 7, 2008; opinion August 25, 2008)

     Petersburg, Virginia-based Star Scientific, Inc., sued R.J. Reynolds Tobacco Co. for infringement of U.S. Patent Nos. 6,202,649 and 6,425,401 in the U.S. 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. On June 25, 2007, 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. Thereafter, Star characterized the decision as “stunning and totally without support in the record,” and concluded that “the opinion ignores significant portions of the record, distorts others, and spins a tale that is unrecognizable to those who attended the trial.” The Federal Circuit reversed.

Background

     In August 1998, Star's Jonnie Williams, the named inventor, engaged Delmendo of Sughrue to prosecute a patent application on a tobacco curing process aimed at lowering TSNA levels. Delmendo was sent a letter on August 28, 1998, by Star consultant Dr. Harold Burton in which Burton wrote that Chinese tobacco products contain very low TSNA levels, probably due to radiant heating. Delmendo testified that he spoke with Burton, analyzed the letter, and ultimately concluded that neither it nor its content was material to the contemplated patent application.

     Delmendo later filed a provisional patent application for Williams disclosing that some nations, including China, still utilize radiant heat curing, and stating "It has been determined that [the radiant heat] process as applied to tobacco grown in the United States yields tobacco products with high levels of TSNA." Exactly one year later, Delmendo filed a non-provisional application that deleted the statement that radiant heat curing of U.S.-grown tobacco produced "high levels of TSNA." Instead, the application disclosed: "I have discovered that it is possible to somewhat reduce the TSNA levels by not venting combustive exhaust gases into the curing apparatus or barn."

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• Hillcrest Laboratories, Inc. v. Nintendo Co., Ltd. et al

     Hillcrest Labs sued Nintendo of America (based in Redmond, WA, Nintendo Ltd. is based in Kyoto, Japan), maker of the widely-popular "Wii" (TM), for patent infringement on August 20, 2008, in the US District Court for the District of Maryland one day after its U.S. Patent 7,414,611 issued (three other US patents being asserted are 7,139,983, 7,158,118, 7,262,760). Rockville, MD-based Hillcrest alleges that Nintendo's "Wii" video game machines and remote controllers directly, contributorily, induce, and willfully infringe its patents. Hillcrest also filed a separate patent infringement action with the US International Trade Commission.

     Claim 1 of the '611 patent recites:

1. A system comprising: means for generating, from a first sensor, a first output associated with motion of a handheld device; means for detecting, by a second sensor, acceleration of said handheld device and outputting at least one second output; and means for processing said first output and said at least one second output, said processing means including: means for determining an orientation in which said handheld device is held using said at least one second output; and means for compensating said first output based on said determined orientation by performing a two-dimensional rotational transform on said first output to generate an output which is substantially independent of said orientation.

     Hillcrest is seeking monetary damages from Nintendo Japan and Nintendo of America, and a permanent injunction. In a published statement, Hillcrest states that since 2001 it "has pioneered technology that allows consumers to interact with digital media on television using motion-control and pointing techniques. The company holds 29 patents in this area worldwide, and has filled for more than 100 related patents."

     The Washington, DC, office of Finnegan Henderson filed the complaint on behalf of Hillcrest.

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     According to statistics compiled by Kyle Fleming at the Patent Appeal Tracker Blog using PACER data, there were 241 patent litigation cases filed in July 2008 in 50 different judicial districts. That's 14 fewer lawsuits than in June 2008. The Eastern District of Texas led the way with 25 filings, followed by Central District of California (21), Northern District of California (19), District of New Jersey (17), and District of Delaware (16). The US District Court for the District of Maryland was tied for 24th with just two new filings in July.

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     Maryland's SafeNet announced earlier this month that it had been hired by CCTV, the national television network of the People's Republic of China, to secure from copyright infringement CCTV's live and on-demand online video footage of the 2008 Summer Olympic Games. SafeNet, which has 43 patents and 31 patent applications currently pending, is employing digital rights management (DRM) software to prevent video from being distributed and viewed by anyone except those who are authorized. According to the company's announcement, SafeNet's technology was given a trial and evaluated during the CCTV.com broadcasts of the 2008 European Cup soccer tournament earlier in 2008.

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• Senate Passes Bill to Fix Administrative Law Judge Status

Reacting to revelations that several PTO Administrative Law Judges may have been appointed to their positions without proper authority, the Senate introduced and then passed S.3295 on July 22, 2008. The legislation, if enacted, would allows the Secretary of Commerce, in his or her discretion, to deem the appointment of an administrative patent or trademark judge who, before the date of the enactment of the legislation, held office pursuant to an appointment by the Director, to take effect on the date on which the Director initially appointed the administrative patent or trademark judge.  The bill, introduced by Sen. Patrick Leahy, Chairman, Senate Judiciary Committee, would also provide those ALJs a statutory defense if someone were to challenge their initial appointment.

• Enforcement of Intellectual Property Rights Act of 2008

On July 24, 2008, Senators Leahy, Specter, Bayh, Voinovich, Feinstein, and Cornyn introduced S. 3325 Enforcement of Intellectual Property Rights Act of 2008. Among other things, the legislation would authorize the U.S. Attorney General to commence a civil action against any person who engages in conduct constituting a criminal offense under the copyright laws, 17 U.S.C. § 506, upon proof of such conduct by a preponderance of the evidence (compared to the much high criminal standard, the preponderance standard is estimated to result in more enforcement of copyright laws). A person found liable may be subject to a civil penalty under section 504 which shall be in an amount equal to the amount which would be awarded under 18 U.S.C. 3663(a)(1)(B) (i.e., the amount of the loss sustained by each victim as a result of the offense, considering the financial resources of the defendant) and restitution to the copyright owner aggrieved by the conduct.

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     Even in soft economic times, companies continue to protect their intellectual property assets. According to statistics available from Justia.com, 63 complaints alleging liability under patent, copyright, and/or trademark laws were filed in the U.S. District Court for the District of Maryland during the period January 1 through July 31, 2008 (those complaints named approximately 80 defendants, some several times).  For the same period in 2007, just 52 complaints were filed (but close to 100 named defendants). That's a 21% increase in the number of filings in 2008.

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