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

     35 U.S.C. § 156(d)(1) requires the submission of a patent term extension (PTE) application within 60 days from the date the patentee obtains permission from the FDA to commercially market or use a drug product that is the subject of a new drug application (NDA). This provision was enacted because FDA review of NDAs may take years after a patent covering the drug that is the subject of the NDA has issued by the PTO.

     On June 23, 2008, the U.S. House of Representatives passed by voice vote H.R. 6344, which had been introduced the same day by Rep. Delahunt (D-MA), and is similar to a provision included in the House version of the Patent Reform Act of 2007. The current bill is entitled "To provide emergency authority to delay or toll judicial proceedings in United States district and circuit courts, and for other purposes." Sec. 4 states:

"The Director may accept an application under this section that is filed not later than three business days after the expiration of the 60-day period provided in subsection (d)(1) if the applicant files a petition, not later than five business days after the expiration of that 60-day period, showing, to the satisfaction of the Director, that the delay in filing the application was unintentional."

     The bill would retroactively cover Massachusetts-based The Medicines Company, which filed a PTE application for U.S. Patent No. 5,196,404 on the 62d day after FDA approved its NDA for ANGIOMAX, an anticoagulant.

     Status: Received in the Senate and read twice and referred to the Committee on the Judiciary.

     Hat tip to the Anticipate This! Patent and Trademark Law Blog.

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    Eric Lane, a patent attorney at Luce, Forward, Hamilton & Scripps in the firm's Intellectual Property and Climate Change & Clean Technologies practice groups, publishes the Green Patent Blog. This relatively new website is dedicated to discussing and analyzing intellectual property issues relating to clean technologies and renewable energy. Mr. Lane's timing couldn't be better, given the media and consumer product industries' hightened interest in all things green.

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     U.S. Patent & Trademark Office (PTO) records show that for the period January through June 2008, the PTO received 28 trademark applications from Maryland resident or entities (based on a search of "owner address" records using TESS). That number is a 55% decline in the number of applications received for the same period in 2007 (62), but only a 3% decline over 2006 numbers (29).

     The number of registrations to Maryland individuals or entities in the first half of 2008 was down compared to last year. According to the PTO, 23 registrations were effective during the period January through June 2008, which is a 4% decline in the number of registrations for the same period in 2007 (24 registrations), but is the same number of registrations in 2006 (23).

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     U.S. Patent & Trademark Office (PTO) records show that for the period January through June 2008, the PTO granted 986 patents naming at least one Maryland resident as an inventor or joint inventor (based on residence addresses supplied by patent applicants to the PTO). That is a 1% decline in the number of patents issued to Maryland inventors for the same period in 2007 (993), and a 5% decline over 2006 numbers (1,038).

     The number of published patent applications naming at least one Maryland inventor in the first half of 2008 was up compared to last year. According to the PTO, 1,579 patent applications naming at least one Maryland inventor were published during the period January through June 2008, which is a 6% increase in the number of patent applications published for the same period in 2007 (1,495 patent applications), and a 5% increase over 2006 numbers (1,511).

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     Last September, the Copyright Office issued an announcement that it had begun beta testing of its web-based registration system, which was part of a new "electronic Copyright Office" (eCO) program (see Copyright Office Announces Electronic Registration Testing). Beginning July 1, 2008, the Copyright Office will offer its online registration system to the public.  Instruction for making claims to copyrighted works may be found here.

     According to a recent Copyright Office announcement, online registration through the eCO is the preferred way to register basic claims for literary works; visual arts works; performing arts works, including motion pictures; sound recordings; and single serials. Advantages of online filing include a lower filing fee; the fastest processing time; online status tracking of your claim; secure payment by credit or debit card, electronic check, or Copyright Office deposit account; and the ability to upload certain categories of deposits directly into eCO as electronic files.

     To register a claim electronically, go to the Copyright Office website at www.copyright.gov and click on the eCO logo shown above.

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     Hat tip to the Womble Carlyle Trade Secret Blog for publishing interesting statistics about trade secret lawsuits filed in the US. In its post a few weeks ago, the Womble bloggers reported the results of their search of the Westlaw federal database (federal district, appeals and Supreme Court cases) for the term "trade secrets," which returned 905 cases for 2007. That was a 20% increase over the number of published cases in 2006 (754 cases), and a 231% increase since 1997 (273 cases). Check out their post for cautionary notes relating to the results. The bloggers' conclusion: "it would be hard to deny that something's going on."

     Womble's research also found that there were 79 cases reported in 2007 relating to the federal Computer Fraud & Abuse Act, which was a 46% increase over 2006 (54 cases), and a 780% increase over 1997 (1 case).

     Out of curiosity, I searched Lexis' "MD Federal & State Cases, Combined" database for "trade secrets" and found 7 reported cases in 2007, compared to 14 in 2006 (not all of which are actual trade secret cases):

• Phoenix Renovation Corp. v. Rodriguez, 2007 U.S. App. LEXIS 29253 (4th Cir. 2007) (unpublished)
  
  
• GO Computer, Inc. v. Microsoft Corp., 508 F.3d 170; 2007 U.S. App. LEXIS 26722 (4th Cir. 2007)
  
  
• Darden v. Peters, 488 F.3d 277; 2007 U.S. App. LEXIS 12115 (4th Cir. 2007), cert. denied, 2008 U.S. LEXIS 2125 (2008)
  
  
• DRC, Inc. v. Custer Battles, LLC, 2007 U.S. App. LEXIS 11518 (4th Cir. 2007) (unpublished)
  
  
• NaturaLawn of Am., Inc. v. West Group, LLC, 484 F. Supp. 2d 392; 2007 U.S. Dist. LEXIS 29774 (4th Cir. 2007)
  
  
• Tobacco Tech., Inc. v. Taiga Int'l N.V., 2007 U.S. Dist. LEXIS 13083 (D. Md. 2007)
  
  
• Conaway v. Deane, 401 Md. 219; 2007 Md. LEXIS 575 (Md. 2007)

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     The Maryland State Bar Association - Intellectual Property Section is co-sponsoring a rountable discussion this Wednesday concerning IP licensing issues. The "IP Licensing Issues from an In-House Perspective: A Roundtable Discussion" event is being presented shortly after registration beginning at 8:00 AM. The event is being co-hosted by Offit Kurman, in their Maple Lawn, MD, office, which is not too far from I-95 and even closer to MD-29.

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     Below are summaries of recent IP-related lawsuits filed in the the U.S. District Court for the District of Maryland in 2008 (source: Justia).

• Magnus v. Association of Pet Dog Trainers, No. 8:2008cv00850; filed April 4, 2008; assigned to J. Williams

   Plaintiff Vicki Lynn Magnus, a Waldorf, MD, resident, filed this declaratory judgment action against the Association of Pet Dog Trainers (APDT), a New Jersey company based in Greenville, SC. APDT allegedly owns the registered mark for its acronym name. According to her complaint, Magnus, a former member of APDT, created an Internet message board on December 1, 2003, "for discussion of issues of common interest" among other APDT members. Claiming the board was protected under the doctrine of fair use (copyright), the Lanham Act (trademark), and free speech under the First Amendment, Magnus received a cease and desist letter from APDT in 2006. When she objected, her membership was allegedly terminated "without cause." About the same time, APDT sent a "take down" letter to the Internet Service Provider and host of the message board, which complied with the request. Magnus is seeking relief in the form of a declaration that her use of the APDT acronym is lawful, noninfringing, and qualifies as a fair use.

• Nutramax Laboratories, Inc. v. Theodosakis, No. 1:2008cv00879, filed April 7, 2008; assigned to J. Blake

     Nutramax is a Maryland company based in Edgewood, MD. Defendants are Jason Theodosakis, M.D., and Supplement Testing Institute, Inc. (STI), which allegedly sell nutritional supplements, including those allegedly covered by U.S. Patent No. 6,797,289, for “Use of anabolic agents, anti-catabolic agents, antioxidant agents, and analgesics for protection, treatment and repair of connective tissues in humans and animals.” Claim 1 of the ‘289 patent covers a “synergistic combination of an aminosugar and avocado/soybean unsponifiables [ASU].” Nutramax sells Cosamin® ASU and Avoca ASU® under the '289 patent. This is the second lawsuit filed this year by Nutramax in which it asserts the '289 patent (see here).

• National Fallen Firefighters Foundation v. TWL Corp., No. 1:2008cv00896, April 9, 2008; assigned to J. Davis

      This trademark infringement lawsuit involves the mark EVERYONE GOES HOME owned by NFFF, and defendants use of EVERYBODY GOES HOME in connection with a training simulation program.

• Bill Me Later, Inc. v. MODASolutions Corp., No. 1:2008cv00897, filed April 9, 2008; assigned to J. Blake

     This trademark infringement, trademark dilution, and unfair competition lawsuit involves the mark BILL ME LATER, allegedly owned by plaintiff, who is seeking monetary damages, and attorney's fee, among other relief, from Canada-based MODASolutions.

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     By an overwhelming majority, the House of Representatives on May 8, 2008, passed, by roll call vote, H.R. 4279, the "Prioritizing Resources and Organization for Intellectual Property (Pro-IP) Act of 2008." According to govtracks, the vote was held under a suspension of the rules to cut debate short and pass the bill (a move that needed a two-thirds majority). The totals were 408 Ayes, 11 Nays, 12 Present/Not Voting. The Pro-IP Act has the stated purpose "To enhance remedies for violations of intellectual property laws."

          Here's how Maryland's delegation voted:

• MD-1      Gilchrest, Wayne [R]:  No Vote     
• MD-2      Ruppersberger, C.A. [D]:  Aye
• MD-3      Sarbanes, John [D]:  Aye 
• MD-4      Wynn, Albert [D]:  Aye      
• MD-5      Hoyer, Steny [D]:  Aye
• MD-6      Bartlett, Roscoe [R]:  Aye
• MD-7      Cummings, Elijah [D]:  Aye 
• MD-8      Van Hollen, Christopher [D]:  Aye

     For more coverage of the legislation discussed previously on this website, click here. For coverage by others, see, for example, Counterfeit Chic ("Name is Destiny: Thumbs Up on Pro-IP Act"). 

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     Below are summaries of recent IP-related lawsuits filed in the the U.S. District Court for the District of Maryland in 2008 (source: Justia).

• Emerson Electric Co. v. John Does 1-10, No. 1:2008cv00734; filed March 20, 2008; assigned to J. Blake

     Plaintiff Emerson Electric, a Missouri company, states "This is a Complaint for an injunction, damages, and other appropriate relief to prevent unknown Defendants from engaging in a widespread fraudulent internet scheme that involves the infringement and misappropriation of Plaintiff’s trademarks. In this scheme, Defendants have impersonated Emerson and its chairman David N. Farr in emails and on internet job boards to trick unsuspecting internet users into believing they have obtained jobs with Emerson. In their supposed capacity as Emerson employees, these victims have – on instruction from Defendants – unwittingly cashed fraudulent United States Postal Service money orders or certified checks on behalf of Defendants. Defendants’ scam has caused Emerson irreparable harm, damaged its reputation, damaged its [EMERSON] mark, caused confusion in the marketplace as to the origin of the job offers and Emerson’s role in the scam, and caused Emerson to incur significant expenses and utilize significant resources in an effort to halt the scammers and stop the fraud."

     Plaintiff alleges trademark infringement under the Lanham Act (15 U.S.C. § 1114), false designation of origin under the Lanham Act (15 U.S.C. § 1125(a)), unfair competition/false advertising under the Lanham Act (15 U.S.C. § 1125(a)), Maryland common law unfair competition against all defendants.

• VTran Media Technologies, LLC v. Antietam Cable Television, Inc., No. 1:2008cv00739; filed March 21, 2008; assigned to J. Garbis

• Almo Music Corporation et al v. Three Pols, LLC, No. 1:2008cv00747; filed March 25, 2008; assigned to J. Motz 

     This copyright infringement case was filed by plaintiffs Almo Music Corporation, Mighty Underdog Music, Sony/ATV Tunes LLC, Odnil Music Limited, Fifty-Six Hope Road Music Limited, Get Jet Music, Inc., Cherry Lane Music Publishing Co., Inc. and Dimensional Music of 1091 against defendants Three Pols, LLC, Joshua E. Gursky and Grant R. Gursky.  

• Broadcast Music, Inc. et al v. Carullo Steele, Inc., No. 1:2008cv00824; filed April 2, 2008; assigned to J. Bennett

     This copyright infringement case was brought by plaintiff Broadcast Music, Inc. (BMI), the licensee of copyrighted works owned by co-plaintiffs EMI Blackwood Music, Inc., House of Cash, Inc., Songs of Universal, Inc., EMI Virgin Songs, Inc., Elijah Blue Music, Unichappell Music, Inc., ABKCO Music, Inc., EMI Algree Music Corp., Wayne Hodge, Sony/ATV Songs, LLC, Leon E. Brooks, III and Ronnie Gene Dunn.

     Plaintiffs allege that defendants Carullo Steele, Inc., owner/operator of Freddies Bel Air (Bel Air, MD), and Stephen J. Carullo, Jr., an alleged officer of Carullo Steele, Inc., publicly performed copyrighted works owned/licensed by plaintiffs.

     Max Stadfeld of Offit Kurman, P.A. (Owings Mills, MD) filed the complaint on behalf of the plaintiffs.

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     The US Patent & Trademark Office (USPTO), the European Patent Office (EPO), and the Japan Patent Office (JPO) agreed on a common patent application format (CAF), which is shown below.

     The USPTO states that its rules and procedure are consistent with the CAF, and that while some of the requirements of the CAF go beyond what the USPTO requires, the USPTO will accept an application in the CAF. It is noteworthy that the CAF does not include U.S.-specific requirements and optional content, including (1) cross-reference to related applications, (2) a statement regarding federally sponsored research or development, and (3) the names of the parties to a joint research agreement. Items (1), (2), and (3) may still need to be included in an application that otherwise follows the CAF.

     The EPO is planning to implement the CAF in the beginning of 2009 (paper, PDF and XML format will be accepted). The JPO is preparing for the introduction of the CAF in early 2009, except that the sequence listing is a separate part of the description, and that the request contains the number of the figure of the drawings which the applicant suggests should accompany the abstract are scheduled to be introduced in 2011.

ACCEPTABLE COMMON APPLICATION FORMAT FOR PATENT APPLICATIONS 

Description

Title of Invention

Technical Field

Background Art

Summary of Invention

Technical Problem

Solution to Problem

Advantageous Effects of Invention

Brief Description of Drawings

Description of Embodiments

Examples

Industrial Applicability

Reference Signs List

Reference to Deposited Biological Material

Sequence Listing Free Text

Citation List

Patent Literature

Non Patent Literature

Claims

Abstract

Drawings

Sequence Listing

Notes:

• Link to the PTO notice
• Link to the MPEP showing the current acceptable application format

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     Below are links to and highlights of recently published blog posts discussing current events relating to the Patent Reform Act of 2007 (s.1145). It appears from all accounts that Sen. Arlen Specter (R-Pa.), ranking minority member of the Senate Judiciary Committee, and his Republican caucus, may block pending patent reform legislation until there is a "fair and equitable treatment" on the confirmation of federal judges, and resolution of provisions concerning apportionment of damages for patent infringement.

• Patent Bill Hits Impass in the Senate, Wall Street Journal (April 18, 2008)

     Gret Hitt, noting that Patent Reform efforts appear to be stalled in the Senate due to an impass over provisions in S. 1145, quotes Sen. Leahy, Chairman of the Judiciary Committee, as saying, "This was a missed opportunity."

• S.1145: "Not dead, but on ice", IPBIZ (April 17, 2008)

     Quoting a Reuters report, Lawrence Ebert points out that Barack Obama and his patent advisor, Mark Lemley, favor patent reforms, while U.S. trade unions oppose the bill.

• US Patent Reform Stalls as Senate Negotiations Break Down, IP Watch (April 15, 2008)

      Describes how Sen. Leahy's plan to bring s.1145 to a vote was derailed when he failed to agree on several provisions with the panel’s ranking member, Sen. Arlen Specter.

• Cracks Forming in the Passage of Patent Reform Act, 271 Patent Blog (April 9, 2008)

     Peter Zura, one of the first to blog that Sen. Specter was pulling his support for s.1145, quoted a report stating that the Senator "cannot join" his colleagues "on some parts of the bill," citing apportionment of damages as a "principle sticking point."

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• IP Forum Webinar Announcement: "DELAWARE: Epicenter for U.S. IP Dispute Resolution"
  
       This from a soon-to-be released announcement from my law firm, Blank Rome:  "Join a knowledgeable team from Blank Rome on April 30, 2008 for an in-depth look at the Top 5 Things You Need Know when litigating a patent case in the U.S. District of Delaware Court. Learn why today’s most significant IP matters are being litigated in this jurisdiction from a panel of experts who know how Delaware’s unique rules and procedures work.  J.C. Boggs, Keeto Sabharwal, Steve Caponi, Charles Wolfe, Dale Dubé and Vincent Poppiti will examine several key cases and lead an interactive discussion over the web.  Date: April 30, 2008; time: 1030 to 1200 EDST US."   
  
  
• Rockville, MD-based Nabi Biopharmaceuticals announced on April 3, 2008, that it had settled a patent lawsuit it had filed against Ohio-based Roxane Laboratories over its drug product PhosLo(r). According to a Nabi statement, Nabi had filed the lawsuit on September 27, 2005, under the Hatch-Waxman Act in response to a Paragraph IV Certification letter submitted by Roxane to Nabi concerning Roxane's filing of an Abbreviated New Drug Application (ANDA) with the U.S. Food and Drug Administration to market a generic version of PhosLo GelCaps.  Nabi sold its PhosLo drug product to Fresenius USA Manufacturing, Inc. in 2006. 
  
  
• The Baltimore Business Journal announced Wednesday that Sarah Djamshidi, a University of Maryland business development official, was named Executive Director of the Chesapeake Innovation Center, which is an Annapolis-based incubator that assists startups developing homeland security technologies.
  
  
• Conference announcement: "Copyright Monopoly: Playing the Innovation Game"

     This from the Center for Intellectual Property, University of Maryland University College (UMUC):  "Since 2001, the Center for Intellectual Property (CIP) has provided premier conferences focusing on the intersection of copyright, technological innovation, and higher education. In its Eighth Annual Symposium, the CIP continues its tradition of convening a rich conversation on copyright policy that includes voices from higher education, business and industry, law, policy, government, and nonprofit sectors, and that also spans the spectrum of opinion and perspective."  8th Annual Symposium, May 28-30, 2008, in Metro Washington, D.C.

• Kevin O'Keefe at LEXBLOG provided a State of the AmLaw 200 blogosphere, March 2008, a few weeks ago, in which he noted that over 25% of the AmLaw 200 law firms (53) now have blogs. The Maryland Intellectual Property Law Blog (a "non law firm branded" blog) is counted among the total. According to Kevin's statistics, there were only 39 blogs being published by the AmLaw 200 in August 2007.

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    The table below identifies the top 10 states having the most copyright, trademark, and patent lawsuits filed in their respective U.S. district courts during the first quarter of 2008 (source Justia.com). The numbers show that California had the most filings, followed by, in order, Texas, New York, Illinois, Florida, Pennsylvania, North Carolina, New Jersey, Ohio, and Michigan.  The table shows Maryland's ranking: 24th overall, but 15th for trademark and copyright filings. 

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     U.S. Patent & Trademark Office (PTO) records show that for the period January through March 2008, the PTO received 15 trademark applications from Maryland resident or entities (based on a search of "owner address" records using TESS). That number is a 38% decline in the number of applications received for the same period in 2007 (24), and a 6% decline over 2006 numbers (16).

     The number of registrations to Maryland individuals or entities in the first quarter of 2008 was down compared to last year. According to the PTO, 8 registrations were effective during the period January through March 2008, which is a 43% decline in the number of registrations for the same period in 2007 (14 registrations), and an 11% decline over 2006 numbers (9).

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• #20: Staggs v. West, No. 8:2008cv00728; filed March 20, 2008; assigned to J. Messitte

     Dayna D. Staggs, III, a Prince Georges County, MD, resident and music recording artist who, as reported by On the Record, reportedly performs and produces under the alias D'Mystro, filed this copyright infringement lawsuit against singer Kanye West ("one of the worlds biggest Hip Hop Rap artist[s]") and co-defendants Roc-A-Fella Records, LLC, Good Music Carter Administration, Shawn Carter Records, LLC, and Broadcast Music Inc. (BMI) (representing individually several defendants), for allegedly using Staggs' 1984 sound recording and composition entitled "Volume of Good Life." In particular, Staggs alleges that,

"Kanye West didn't obtain a license to use 'Volume of Good life' which has repeated melody's and uncleared vocal samples and compositional parts of sound recording with drum elements, including (45) lyrics from the original volume of good life."

     According to the complaint, the Recording Industry Association of America (RIAA) "reports that the Kayne West 'Good Life' master with mixed parts of 'Volume of Good Life' was a tremendous success, selling millions. Attaining multi-platinum status selling more then [sic] 5 million units." The Complaint goes on to allege that,

"The vulgar, sexual and racially-charged nature of the infringing master work is directly counter to Dayna D. Staggs long established public persona, utterly inconsistent with the musician, artist clean image , [sic] And harms the reputation of the Dayna D. Staggs Copyrighted Rock/Pop master work clean titled 'Volume of Good Life.'"

     Count I of the Complaint alleges copyright infringement, contributory infringement, and unfair competition in violation of the Lanham Act.  Plaintiff is seeking monetary damages, "impoundments."

     The Complaint appears to have been filed by Mr. Staggs pro se as CEO of Dayna Paryss Entertainment.

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     U.S. Patent & Trademark Office (PTO) records show that for the period January through March 2008, the PTO granted 468 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, that is a 7% decline in the number of patents issued to Maryland inventors for the same period in 2007 (502), and a 4% decline over 2006 numbers (485).

     The number of published patent applications naming at least one Maryland inventor in the first quarter of 2008 was up compared to last year. According to the PTO, 857 patent applications naming at least one Maryland inventor were published during the period January through March 2008, which is an 11% increase in the number of patent applications published for the same period in 2007 (773 patent applications), and a 15% increase over 2006 numbers (743).

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     On April 18, 2008, the University of Maryland School of Law Intellectual Property Law and Business Law Programs, and the Journal of Business & Technology Law, will host a panel discussion entitled "The New Private Ordering of Intellectual Property: The Emergence of Contracts as the Drivers of Intellectual Property Rights." The panel will address the renewed U.S. Supreme Court interest in patent cases, and the increasing importance of better defining contracts to govern patent rights among parties to the agreement. Speakers include: Jonathan Klein-Evans (IP Counsel, MedImmune), Thomas Woolston (CEO, MercExchange), Gregory Castanias (Partner, Jones Day), Jeffrey Wang (Partner, Wang, Hartmann, Gibbs & Cauley, PLC), F. Scott Kieff (Professor of Law, Washington University in St. Louis), and Andrew Beckerman Rodau (Professor of Law, Suffolk University Law School).

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

     Update: Petersburg, Virginia-based Star Scientific, Inc., sued R.J. Reynolds Tobacco Co. for patent infringement 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.” 

     On appeal, the Federal Circuit (Michel, Dyk, Schall) heard lengthy arguments on March 7, 2008, concerning the District Court’s judgment, which centered on the actions of five lawyers in four different law firms and how they acted in view of their knowledge of a key prior art memorandum—the Burton letter—which discusses features of the invention claimed in Star’s patents, and which was communicated to the inventor prior to his filing his first patent application.

   During the oral argument, the Federal Circuit Judges framed the inequitable conduct issue as follows:

“The issue here we’ve been discussing is intent. Is it possible to find the requisite level of intent without implicating the attorneys? In other words, assume for the moment that one were to come to the conclusion that the attorneys in this case, starting with the Sughrue firm through the Banner firm through the Crowell firm, acted in good faith, does that take away necessarily the determination of intent that is needed to support inequitable conduct?”

     Inequitable conduct--also referred to as fraud on the Patent Office--is often plead as a defense in patent infringement lawsuits. Typically, the defense involves allegations that individuals involved in prosecuting a patent application intentionally misrepresented information provided to the PTO by making false or misleading statements, or withheld material prior art from the PTO by not disclosing closely-related, or "material" publications or test data. Allegations of inequitable conduct by prosecuting attorneys, who are usually not parties to the case in which the allegations are raised, are viewed with interest, not only because allegations of inequitable conduct in court papers are often publicized in the media, but also because a finding of inequitable conduct by members of the patent bar can result in suspension. 35 U.S.C. § 32.

     Perhaps that is why Carter Phillips, lead counsel for Star Scientific, argued the issues on appeal as involving lawyer reputations:

“The District Court analyzed this case as if there was a rather substantial conspiracy among four quite reputable law firms [Sughrue, Mion, Banner & Witcoff, Paul Hastings, and Crowell]. And in making that determination, it was very critical to [the Judge’s] analysis that he says, and this is the quarantine portion of the analysis, and this is the linchpin of the District Court’s analysis: it is the isolation of the Banner firm—that’s the recipient [of the prosecution files]—the isolation of the Banner firm from predecessor counsel was part of an intentional effort to avoid tainting the Banner firm with Delmendo’s [Sughrue's] knowledge, with whatever concerns he may have had about this particular letter, the Burton letter. And then subsequently, the District Judge also says, the Court finds that if Star had not prevented contact between Delmendo and Rivard, Delmendo would have communicated his knowledge and information [to the Banner firm]. So that this entire analysis, predicated on the assumption that there is somehow a nefarious conspiracy going on here, is complete fabrication. There is no evidence that supports it. And yet it is the critical element for the District Court to finding intent.”

     At the conclusion of the argument, Judge Michel, in a somewhat unusual move but one underscoring the importance of this case, ordered the parties to submit additional briefs to clear up exactly what each of the lawyers who knew about the Burton letter said and did, and where that evidence is found in the record:

“Requesting from both counsel letter briefs not exceeding 10 pages on the factual guts of particularly with regarding to the position and activities of Delmendo and the others who’ve been mentioned here so we can trace the chain of what did each of these people say and where do we find it in the record. Because obviously great interest on our our part in understanding exactly what the evidence was so we can compare the evidence, the actual words of testimony, with  the findings that the District Judge made, which explicitly or implicitly have to rest on those bits of testimony.”

 

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• Nacre AS v. Silynx Communications, Inc., No. 07-cv-02676, filed Oct. 2, 2007.

     Update:  Rockville, MD-based Silynx Communications and Norway's Nacre AS have been facing off on all fronts in their battle to gain control of the U.S. military tactical hearing protection and communications headset market, including the intellectual property front. In September 2007, Nacre, which owns the QUIETPRO trademark, filed a trademark opposition proceeding against Silynx's QUIETOPS mark before the U.S. Trademark Trial and Appeal Board. That proceeding was stayed when, in October 2007, Nacre filed a trademark and patent infringement lawsuit against Silynx in the U.S. District Court for the District of Maryland, which is pending (additional counsel for Nacre just recently motioned for pro hac admission to the Maryland court). In January 2008, Silynx lost its protest of an award from the Dept. of the Navy to Nacre to acquire a quantity of combat radio headsets from the company.

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     On March 12, 2008, Senate Judiciary Committee Chairman Patrick Leahy (D-VT) issued a press release outlining possible amendments to S.1145, the Patent Reform Act of 2007. As stated in the press release:

"Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.), Committee Member Orrin Hatch (R-Utah), and Ranking Member Arlen Specter (R-Pa.), have been working for months with a bipartisan coalition of senators in preparation of floor consideration of the Patent Reform Act, which would make the first reforms to the country's patent laws in more than 50 years. The Judiciary Committee passed the legislation last July, and Leahy, Hatch and Specter have held dozens of meetings and briefings in the months since, listening to concerns from stakeholders, and working to address the concerns of the wide cross-section of interested parties."

     Apparently, at least some of the Judiciary Committee members and other Senators have been "urging consideration of the legislation in the full Senate for months, and Majority Leader Harry Reid (D-Nev.) has signaled the chamber could take up the bill in April."

     The major proposed amendments to the bill are summarized below and contained in detail here (zip file):

• “Best Mode” – eliminates ‘best mode’ as a ground for invalidating a patent, but maintains it as a requirement to obtain a patent
  
  
• Ex Parte Provision – restores third party ex-parte reexamination
  
  
• Federal Circuit Judges – ensures that any Federal Circuit judge who does not reside within a 50-mile radius of Washington, DC, must use the chambers of an existing courthouse in the district where they reside
  
  
• Interference – provides technical amendment to allow for appeal to the Federal Circuit of USPTO board interference decisions commenced prior to the date of the Act; and amends the bill to delete interference-related provisions and replace with new derivation-related provisions
  
  
• Interlocutory Appeals – limits interlocutory appeals of claim construction orders to those for which the District Court determines there is a reasonable basis for disagreement and the appeal may advance the ultimate termination of the litigation
  
  
• Marking Provision – deletes the marking provision in the bill and maintains the current law
  
  
• “Objective Recklessness” – codifies the Federal Circuit court’s ruling in Seagate, holding that infringement is only willful if the infringer acts with objective recklessness of the patent
  
  
• Patent and Trademark Board Judges – ensures that the appointment of patent and trademark judges is consistent with the Appointments Clause
  
  
• Patent Board Judges – technical amendment to clarify that the Patent Board’s duties include the conduction of derivation proceedings
  
  
• Post-Grant Review – provides technical amendment to delete a redundancy in sec. 338 as created in S. 1145; corrects an inconsistency between S 337 (1) and (2), to preclude requesting or maintaining a post-grant review proceeding after a final decision in litigation on the same patent, based on any issue that was raised or could have been raised, in the litigation; defines “final decision” in the estoppel provision; and provides for technical amendment to delete a redundancy
  
  
• Severability – establishes a severability clause in the bill 
   

    Several sources have reported in the last few weeks that proponents of the bill may not have the required votes to invoke the Cloture Rule, which limits the amount of debate on the floor prior to a vote (thereby blocking any filibuster).

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     In 2007, the World Intellectual Property Organization (WIPO) saw almost 40,000 trademark applications, a 9.5% increase from 2006. This included an 18.8% increase in filings from U.S. applicants. Nevertheless, according to United Nations trademark agency statistics, the U.S. ranks third behind Germany and France in the filing of international trademark applications. Alain Lapter, a trademark attorney at Blank Rome, surmises that one reason the U.S. lags behind is that it remains the largest consumer economy in the world, and U.S. trademark holders may be content with spending their resources building their brands at home rather than seeking protection overseas. In contrast, although Germany is a considerable economy, German business owners may have a greater desire to seek protection in other countries within the European Union where geographic proximity and the free movement of goods and services under the First Pillar of the European Community may be incentives to filing international applications.

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• #16: Wolsey v. Tactical Medical Solutions, LLC, No. 1:2008cv00546; filed February 28, 2008; assigned to J. Quarles

    

     Plaintiffs Henry Garnet Wolsey and Althea Wolsey are residents of the United Kingdom, and the inventors of U.S. Patent No. 6,067,803 for “Cooling Pouch,” which they describe as being used for cool storage of vials containing medicine. Plaintiffs’ sell in the U.S. the Frio Wallet, a flat foldable storage device with pockets similar to FIG. 1 from the ‘803 patent.

     Plaintiffs allege that Tactical Medical Solutions, Inc., and Tactical Medical Solutions, LLC, both reportedly South Carolina entities, have infringed the ‘803 patent by selling the “I.V. Evaporative Cooling System” (IVECS™) to the U.S. Army Medical Research & Material Command, which is a Command organization headquartered at Ft. Dietrich, MD. Plaintiffs are seeking an injunction and unspecified monetary relief.

     Daniel Chemers and Sherry Flax of Saul Ewing (Baltimore) filed the complaint on behalf of the Plaintiffs.

• #17: Simon Sys., Inc. v. Corel Corp., No. 8:2008cv00568; filed March 3, 2008; assigned to J. Messitte

     Rockville, Maryland's Simon Systems, Inc., sued Corel Corp., which is based in Ontario, Canada, for infringement of SSI’s U.S. Patent No. 5,559,562, entitled “MPEG Editor Method and Apparatus.” SSI alleges that Corel has sold in Maryland, MPEG editing equipment that infringes the ‘562 patent, and further alleges that such sales were willful and deliberate. Damages are estimated at “well in excess of $1,500,000.”

     Daniel Ward of Ward & Ward, PLLC, filed the complaint on behalf of SSI.

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Today's lawsuit summaries involve patent and trademark issues (source: Justia). 

• #13: Pennzoil-Quaker State Co. v. Anton Schmidt, Jr., No. 8:08cv00430; filed February 15, 2008; assigned to J. Chasanow

     Pennzoil-Quaker State, a Delaware company based in Houston, TX, contends that it is owner of the PENNZOIL logo and related marks (used in commerce for the sale and promotion of lubricants and other petroleum-based products). Defendant Schmidt allegedly does business as and is the owner of Auto Lube, Inc., in Laurel, MD. According to the complaint, Pennzoil and Schmidt entered into a purchase and licenses agreement which provided for the display of the PENNZOIL mark and signs in Defendant’s Auto Lube facility. Pennzoil contends that Schmidt breached the agreement, and is now infringing the mark and logo. 

     Matthew Kirtland and Rena Scheinkman of Fulbright & Jaworski (Washington, DC) filed the complaint on behalf of Pennzoil.

• #14: United States Olympic Committee v. Olympic Supply, Inc., No. 8:08cv00496; filed February 25, 2008; assigned to J. Chasanow

     The USOC is a federally chartered corporation based in Colorado Springs, CO. Under the Olympic Sports Act, the USOC was granted the exclusive right to use the OLYMPIC marks in the United States (including OLYMPIC, OLYMPIAD, the five interlocking rings symbol, and others), and is the owner of the federally-registerd OLYMPIC mark.

     USOC’s complaint states that Defendant Olympic Supply, Inc. (d/b/a Olympic News), is a Maryland entity based in Capitol Heights, MD. The identities of Defendants Does 1-10 are unknown. Defendants are accused of using the OLYMPIC mark as part of a retail trade name despite demands by the USOC to cease and desist such action, in violation of the Olympic and Amateur Sports Act.

     Kevin Arthur and Ezra Gollogly of Kramon & Graham (Baltimore) filed the complaint on behalf of the USOC.

• #15: Nutramax Labs., Inc. v. Genesis Today, Inc., No. 1:2008cv00520; filed February 26, 2008; assigned to J. Davis

     Readers of this website may recall that Nutramax Laboratories is an Edgewood, MD, entity that “researches, develops, manufactures, markets, distributes, sells, and has sold, nutritional supplement products across the United States.” Its complaint alleges that it is the owner of U.S. Patent No. 6,797,289 for “Use of anabolic agents, anti-catabolic agents, antioxidant agents, and analgesics for protection, treatment and repair of connective tissues in humans and animals.” Claim 1 of the ‘289 patent covers a “synergistic combination of an aminosugar and avocado/soybean unsponifiables [ASU].” Glucosamine is an aminosugar. Nutramax alleges that it has sold Cosamin® ASU and Avoca ASU®.

     Defendant Genesis Today, Inc., a Texas corporation, and Defendant Swanson Health Products, Inc., a North Dakota corporation, are accused of infringing the ‘289 patent by selling “4JointHealth” (Genesis) and “Joint Formula w/Hyaluronic Acid” (Swanson), containing the claimed ingredients, and thereby directly competing with Nutramax’s products. Nutramax is seeking an injunction and unspecified monetary relief.

     Robert Bowie and Joshua Glikin of Bowie & Jensen, LLC (Towson) filed the complaint on behalf of Nutramax.

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     Not too long ago, I noticed that Google® Patents was including an "RSS" feed link on some of its hit lists. I started using this feature to track what others are saying in new patent applications about specific pharmaceutical drugs, medical diseases, or a specific patent number (a client's patent, for instance). Here's how it works. 

     If I'm interested in tracking, say, a specific kind of cancer, I can search Google® Patents using that search term. At the bottom of the results page is a link that looks like the following:

"Stay up to date on these results using the patents RSS feed on cancer"

     I then cut and past the link into my RSS feed reader software. Whenever Google® Patents adds a new patent application that contains the search term ("cancer," in this example), my feed reader will grab the text of the application (or a portion thereof) and display it in my reader along with a link to the actual patent application on Google® Patents. 

     This saves me the time of having to manually enter the search every few days or whenever I need to know what others are discussing in patent applications about my topic of interest. This is especially useful when I want to track what others are saying about a client's patent portfolio, or a specific generic drug formulation that I might be researching, or whatever.

     You can do the same thing in Google® Web, if you want to broaden the scope of your search to include the entire Internet.

     "RSS" (stands for "Really Simple Syndication"). Click here for a summary of how RSS works (Wikipedia discussion).

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     The National Football League (NFL) has campaigned against large-group events that show the Super Bowl on TVs wider than 55 inches, citing federal copyright laws. That policy impacts churches that hold Super Bowl parties (the NFL only makes an exception to its policy for large-scale viewings at sports bars).

     Currently, the copyright law makes exceptions to copyright exclusivity for certain types of "fair uses," reproduction by libraries and archives, transfers of particular copies or phonorecords, certain performances and displays, secondary transmissions, and ephemeral recordings. See 17 U.S.C. 107-112. However, broadcasts of the big game by churches are not exempted.

     Enter Arlen Specter (R-PA), who introduced S. 2591 on February 4, 2008 (the Super Bowl was February 3, 2008), in the Senate “to provide an exemption from exclusive rights in copyright for certain nonprofit organizations to display live football games, and for other purposes.” The bill is quite simple:

`(C) communication by an entity defined under section 3121(w)(3)(A) or (B) of the Internal Revenue Code of 1986 [i.e., church-controlled organization] of a transmission or retransmission embodying a performance of a professional football contest intended to be received by the general public, originated by a radio or television broadcast station licensed as such by the Federal Communications Commission, or if an audiovisual transmission, by a cable system or satellite radio, if--

`(i) no direct charge is made to see or hear the transmission or retransmission;

`(ii) during the communication no money is accepted or received by the organization; and

`(iii) the transmission or retransmission is not further retransmitted by the establishment where the transmission or retransmission is received.'."

The bill was referred to the Senate Judiciary Committee on February 4, 2008.

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Below are the 10 most recent popular Google® searches that resulted in hits on this website. Leading the hit parade are two patent and trademark infringement lawsuits in Maryland: Technology Patents v. Deutsche Telekom (for more about this lawsuit, click here, here, here, and here), and Nacre v. Silynx (QUIETPRO) (here and here).

1. "Technology Patents LLC"
2. "Silynx"
3. "technology patents llc"
4. "Technology Patents LLC v. Deutsche Telekom AG"
5. "maryland ip blog blank rome"
6. "quietpro"
7. "district court of maryland sms" *
8. "maryland IP blog"
9. "Gerry Kennedy lonza"
10. "blog on intellectual property law"

* The Technology Patents lawsuit involves SMS technology

I'll have more about the Technology Patents lawsuit soon.

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