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

     The following cases are reported as being filed in the U.S. District Court for the District of Maryland in June 2010 (source: Justia.com):

• Patent docket:

   

  • WhitServe LLC v. Benesch Friedlander Coplan & Aranoff LLP, Brinks Hofer Gilson & Lione, PC, Dinsmore & Shohl LLP, Edwards Angell Palmer & Dodge LLP, EMC Corp, General Electric Co., Intel Corp., Kusner & Jaffe, Mueting, Raasch & Gebhardt, PA and Wilmer Cutler Pickering Hale and Dorr LLP, No. 8:2010cv01639 (filed June 18, 2010) 

     

  • Genzyme Corporation v. Sandoz, Inc., No. 1:2010cv01715 (filed June 25, 2010)
     

• Trademark docket:

   

  • B Line, Inc. v. Outrageous Outlet, Yossef Benzakan and David Azoulin, No. 1:2010cv01670 (filed June 22, 2010)
     
• Copyright docket:

   

  • Broadcast Music, Inc , EMI Blackwood Music Inc. and Still on Top Publishing Corp. v. Orange Ball, Inc. and Ho S. Chang, No. 1:2010cv01560 (filed June 14, 2010)
     
  • 88 LLC v. RC Matrice LLC and Rene Mitchell, No. 8:2010cv01607 (filed June 16, 2010)
     
  • Micro Focus(US), Inc. v. Ashley Furniture Industries, Inc., No. 8:2010cv01623 (filed June 17, 2010)
     
  • Micro Focus(US), Inc. v. Ashley Furniture Industries, Inc., No. 8:2010cv01624 (filed June 17, 2010)
     
  • Jonathan Hanson v. Here Publishing, Inc. and Here Media, Inc., No. 1:2010cv01712 (filed June 25, 2010)

 

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Are you an author with questions about finding a reputable literary agent?  Do you have concerns about protecting the copyrights created in conjunction with your written works?  Are you eager to get published but wary of the business decisions involved in protecting and exploiting your intellectual property?  Join the Maryland Lawyers for the Arts and CityLit Project, in partnership with Creative Alliance, for a "Legal Clinic for Writers," during which many of those and other questions may be addressed.  Speakers scheduled to attend include Cynthia Sanders, Esq. and agent Laura Strachan of the Strachan Literary Agency.

Saturday, August 21, 2010
1:30-3:30pm
Creative Alliance
3134 Eastern Avenue
Baltimore, MD 21224

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     On a per capita basis, Maryland inventors received just about as many patents in the first half of 2010 as inventors in states like Illinois and Texas, but the number of patent lawsuits filed in Maryland trailed far behind the number of lawsuits initiated in those and other jurisdictions.  The states with the highest number of patent cases filed in the first half of 2010 are shown in the table below.  In Maryland, only ten law suits were filed in the U.S. District Courts for the District of Maryland (Greenbelt and Baltimore divisions combined) between January 1st and June 30, 2010.  That number is far below the number of patent-related cases brought in judicial jurisdictions like California, Texas, and Illinois, which consistently rank as some of the most prolific states for patent litigation.

 

Source: Justia.com and PACER; data are for Jan. 1, 2010, through Jun. 30, 2010.

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     U.S. Patent & Trademark Office (PTO) records show that for the one year period ending June 30, 2010, the PTO granted 2,136 patents on which at least one inventor was identified as a Maryland resident. That is an 8% increase in the number of patents issued to Maryland inventors for the previous one year ending June 30, 2009 (1,983), and a 9% increase over the one year ending June 30, 2008 (1,956).

      PTO records show that for the one year period ending June 30, 2010, the PTO published 3,127 patent applications on which at least one inventor was identified as a Maryland resident. That is a 1% decrease in the number of patent applications published to Maryland inventors for the previous one year ending June 30, 2009 (3,172), but a 2% increase over the year ending June 30, 2008 (3,076).

 

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• Bilski et al. v. Kappos, slip op., No. 08-964, 561 U.S. ____ (Jun. 28, 2010)

In Bilski v. Kappos, the Supreme Court affirmed the U.S. Court of Appeals for the Federal Circuit's decision, holding that claims describing “a series of steps instructing how to hedge risk” and their associated mathematical formula are not eligible for patent protection under 35 U.S.C. § 101 (link to opinion).  But in an opinion reminiscent of KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Court found the Federal Circuit’s doctrine to be too rigid and not in line with Congressional direction under the Constitution or the Court’s precedent.  The Court demoted the Federal Circuit's "machine-or-transformation" test from the sole test for business method patent eligibility to a “useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101,” and more importantly, found that a “categorical exclusion of business method patents” does not exist. In short, the Court echoed its policy that patents that belong in the public domain will not be tolerated, while true innovation should be rewarded with patent protection.

Continue Reading...

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   The following cases are reported as being filed in the U.S. District Court for the District of Maryland in May 2010 (source: Justia.com):

• Patent dockets:
  
  • Genzyme Corporation v. Watson Laboratories, Inc., No. 1:2010cv01323 (filed May 24, 2010); this Hatch-Waxman patent infringement lawsuit was brought by Genzyme after Watson sought Food and Drug Administration (FDA) approval to market in the US a generic version of the company's Renvela(R) drug product (sevelamer carbonate).  According to FDA information, Genzyme, based in Cambridge, MA, is the New Drug Applicant for this reference listed drug, which covers oral suspensions and tablet forms.  Renvela is indicated for "phosphate binding," and, according to Genzyme's website, is a "first-line monotherapy for controlling serum phosphorus in patients with Chronic Kidney Disease (CKD) — on dialysis without calcium or metal accumulation."  Genzyme's patent exclusivity reportedly extends until September 16, 2014.  
     
  • MIH International, LLC v. Weber Orthopedic, Inc., No. 8:2010cv01127 (filed May 5, 2010)
  
   
• Trademark dockets:
  
  • Gifford's Dairy, Inc. v. Gifford's Holdings, LLC, Gifford's Ice Cream & Candy Company, Inc., and Deal Metrics, LLC., No. 1:2010cv01294 (filed May 20, 2010); Gifford's Ice Cream & Candy Co., based in Silver Spring, MD, calls itself Washington, DC's oldest ice cream company (with retail stores in Baltimore, Bethesda, Chevy Chase, and Rockville, MD, and downtown DC).  Gifford's Dairy, based in Skowhegan, ME, is the owner of the registered trademarks GIFFORD'S and GIFFORD'S ICE CREAM FAMILY OWNED THE ICE CREAM STAND ICE CREAM

• Copyright dockets:
  • Advanced Education Systems, LLC d/b/a TrainingPro v. MTI Services Corporation d/b/a Mortgage Training Institute, No. 1:2010cv01253 (filed May 18, 2010)

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     The Maryland Bar Association annual meeting in Ocean City, MD, June 9-12, 2010, includes seminars focusing on IP and related issues, including those covering social networking law:  "Handshakes to Tweeting" (June 10), "Social Media and the Law - A Look at Legal Issues in Social Networking" (June 10) .   

     The 2010 University of Maryland University College Center for Intellectual Property  (CIP) Symposium will be held June 22-24, 2010, in Washington, DC.  The focus of the symposium is "Sustaining Culture in Copyright."  Keynote speakers include Peter Jaszi, Professor of Law, American University Washington College of Law, who will speak about fair use, and William Patry, Senior Copyright Counsel at Google, Inc. (and publisher of his own personal blogs, including The Patry Copyright Blog), who will speak about his recent book entitled "Moral Panics & Copyright Wars."

    

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• American Mensa, Ltd. v. Inpharmatica, Ltd. et al., No. 07-3283 (D. Md filed Dec. 6, 2007); assigned to J. Quarles

     In American Mensa v. Inpharmatic, the U.S. District Court for the District of Maryland, on a motion to vacate, issued an order (July 29, 2009) vacating its earlier final judgment that the MENSA trademark was not famous, finding good cause to do so.

     Previously, the U.S. district court had found that the MENSA trademark was not a household name like marks that have earned dilution protection, such as Hershey’s, Nike, Visa, and American Express. The court had concluded that American Mensa could not prevail on a dilution claim against the defendants under the 2006 Trademark Dilution Revision Act (TDRA).  

     In its motion to vacate, American Mensa argued that recent opinions by other U.S. district courts considering the dilution question under TDRA differed from the Maryland decision. No other court, American Mensa said, has relied on 75% national recognition as a benchmark to help find that a mark is not famous. Other courts have instead rejected challenges to fame where nationwide recognition rates have been as low as 39%. American Mensa noted that due to its efforts over the last 50 years, evidence showed that MENSA has grown from an essentially unknown term to a U.S. trademark known to 55% of all adults, and also 72% of adults with college education, 83% with post-graduate education, and 85% with incomes over $100,000. American Mensa further argued that the mark is a well-known designation of verified high intelligence, and corporations seek American Mensa’s permission to associate MENSA with goods and services.

     Defendants reportedly agreed to abandon their federal trademark application for ADMENSA and refrain from all future use of its trademark in any form on any goods or services, including drug discovery software and services.

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     Today the U.S. Patent and Trademark Office (USPTO) announced it will pilot a program to accelerate the examination of certain “green” technology patent applications. Under the pilot program, patent applications meeting certain criteria will be accelerated in order to "further the development and deployment of green technology, create green jobs, and promote U.S. competitiveness," a USPTO press release said. Pending patent applications in green technologies will be eligible to be accorded special status and given expedited examination, which will have the effect of reducing the time it takes to patent these technologies by an average of one year, the USPTO said. The press release stated that earlier patenting of green technologies enables inventors to secure funding, create businesses, and bring vital green technologies into use much sooner. 

     Green technologies are defined as those patent applications pertaining to environmental quality, energy conservation, development of renewable energy resources, or greenhouse gas emission reduction.

     Under the pilot program, patent applications are normally taken up for examination in the order that they are filed. The average pendency time for applications in green technology areas is approximately 30 months to a first office action and 40 months to a final decision. Under the pilot program, for the first 3,000 applications related to green technologies in which a proper petition is filed, the USPTO will examine the applications on an accelerated basis (i.e., 12 months to a final decision).

     Critics have complained that green patents mean higher prices for these newest pollution-reducing technologies due to licensing fees sought by patentees, fees that effectively put the technology out of reach of companies and countries that can’t pay the premiums.  The result is that companies and countries that need the most pollution abatement will look to older, less efficient technologies because they are less expensive than state of the art technologies being patented today.

     Federal Register Notice: 74 FR 64666

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• Please visit the Maryland IP Jobs page for a list of Intellectual Property jobs in Maryland (if you would like to have an IP-related job in Maryland listed on this website--for free--please send me the information)
   
• Invotex Group's Michele Riley will be co-presenting a WEBINAR to the MD Bar Association - IP Section titled "Removing the Mystery: Damages in Intellectual Property Disputes" on Thursday, September 10, 2009 from 8:30 to 9:30 a.m.  For more information, click here. 
   
• A reader pointed out that in the case of Dayna Staggs v. Kanye West, No. 8:2008cv00728 (filed March 20, 2008), the U.S. District Court for the District of Maryland granted in part and denied without prejudice in part Defendant The Island Def Jam Music Group, a division of Universal Music Group's motion to dismiss (memorandum opinion; entered August 17, 2009).  In doing so, the Court, reviewing Plaintiff's copyright infringement claim, found "it it is by no means clear that Staggs would be able to establish that the Universal Defendants had access to his Song ["Volume of the Good Life"], [but] for purposes of the Motion to Dismiss, since Staggs has alleged that [Kanye] West had access to it through his MySpace page, and since the Universal Defendants could conceivably have had access through West, the Court finds that this element is satisfied." Notwithstanding, the Court also found that, "as a matter of law, there is no substantial similarity between the songs ["Volume of the Good Life" and West's "Good Life"]."

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     U.S. Patent & Trademark Office (PTO) records show that for the year ending June 30, 2008, the PTO granted 1,983 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 represents a 1% increase in the number of patents issued to Maryland inventors for the previous year ending June 30, 2008 (1,956), but a 4% decline over the year ending June 30, 2007 (2,071).

 

 

 

 

 

      The number of published patent applications naming at least one Maryland inventor during the year ending June 30, 2009, was up 3% compared to the previous two years. According to the PTO, 3,172 patent applications naming at least one Maryland inventor were published during the year ending June 30, 2009, compared to 3,076 patent applications published in the year ending June 30, 2008, and 3,066 applications published in the year ending June 30, 2007.

 

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     If you're looking for a registered patent attorney (or patent agent) in Maryland near you, visit this website, which provides a map showing the location of registered patent attorneys and agents in Maryland based on address information supplied to the U.S. Patent & Trademark Office's Office of Enrollment, and their names and addresses.  Rolling over the pointing tabs on the map brings up the practitioner's name and contact information. A snapshot of the map is shown below.  Hat tip to Ryan Durham for providing the app and the link.

 

 

 

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     In their forthcoming Berkeley Technology Law Journal article (alternative link), visiting University of Maryland Associate Professor of Law Davida Isaacs and University of Kentucky Assistant Professor of National Security Robert Farley discuss the Military and State Secret Privilege and its negative impact on innovation, the discovery process, and government procurement.  As previously noted on this blog, the counties surrounding Washington, D.C., are home to many government contractors, possibly triggering use of the privilege.

     In the article, Isaacs and Farley review the Federal Circuit's Crater Corp. v. Lucent Techs., 423 F.3d 1260 (Fed. Cir. 2005), cert. denied, 547 U.S. 1218 (2006), case in some depth, suggesting that there are some troubling constitutional issues regarding the assertion of the privilege, and arguing that widespread use of the privilege could have a significant negative effect on military innovation and procurement.  On the former point, where the information involved constitutes “trade secrets”, the authors point out that effective quashing of litigation through invocation of the privilege arguably amounts to an unconstitutional taking. On the latter, the authors note that loose use of privilege endangers the intellectual property rights of companies interested in doing business with the military, and in particular of small companies that cannot depend either on their connections with the Pentagon or on an expectation of repeat business for protection. (This is particularly problematic given the stated interest of the Pentagon in pursuing non-traditional defense contractors for innovative technologies.)

     The Military and State Secrets Privilege has been receiving an enormous amount of attention lately, write Isaacs and Farley.  As the article also notes, just a few months ago Congress proposed legislation that is meant to rein in the Government’s use of the privilege, or at least encourage independent judicial consideration of the privilege’s application. But, the authors argue, particularly with regard to the use of intellectual property, this legislation still does not go far enough in ameliorating the negative effects described above.

 

• Cite:  D. Isaacs and R. Farley, Privilege-Wise and Patent (and Trade Secret)-Foolish?: How the Courts’ Misapplication of the Military and State Secrets Privilege Violates the Constitution and Endangers National Security; 23 Berkeley Tech. L.J. __ (2009) (forthcoming).

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• UPDATE: American Mensa, Ltd. v. Inpharmatica, Ltd. et al., No. 07-3283 (D. Md filed Dec. 6, 2007); assigned to J. Quarles

     As previously reported on this website, the U.S. District Court for the District of Maryland granted in part and denied in part Defendants' motion for summary judgment in the case of American Mensa v. Inpharmatica. In doing so, the court found in favor of Mensa on Defendants' motion for summary judgment of no trademark infringement or unfair competition because genuine issues of fact remained, but granted Defendants' motion for summary judgment of no trademark dilution because there was no evidence that Mensa's mark is famous. Now, after trial, a jury has returned its verdict form, finding in favor of the Defendants including, among other things, a finding that “Defendant’s use of the 'Admensa' and 'ADMEnsa' [marks] was not likely to cause confusion, or cause mistake, or to deceive about the affiliation, connection, or association of the Defendants with American Mensa as to the origin, sponsorship, or approval of their goods or services by American Mensa.” Judgment was entered by Judge Quarles on May 5, 2009.

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• UPDATE: Star Scientific vs. R.J. Reynolds Tobacco Co.

     Next Monday, Petersburg, Virginia-based Star Scientific, Inc. and R.J. Reynolds Tobacco Co. will resume their battle over allegations of RJR's infringement of Star's U.S. Patent Nos. 6,202,649 and 6,425,401, as the parties open the first of five days of their jury trial in the courtroom of the Honorable Marvin Garbis of the U.S. District Court for the District of Maryland. Star's lawsuit has a long history, including a bench trial on the issue of the enforceability of the asserted patents in 2005. On June 25, 2007, Judge Garbis found Star’s patents to be unenforceable on the basis of inequitable conduct by Star’s attorneys during prosecution of the patents before the U.S. Patent & Trademark Office. On appeal, the U.S. Court of Appeals for the Federal Circuit (Judges Michel, Dyk, and Schall) reversed, and now the case is back before the trial court. Start time: 10:00 am, May 18.

Related posts:  Inequitable Conduct, Conspiracy Theory

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• Many of you have inquired about the status of the Nacre v. Silynx Communications matter, which was filed in the U.S. District Court for the District of Maryland on October 2, 2007.  I am not surprised by the interest, since this case has garnered more attention by visitors to the Maryland Intellectual Property Law blog than any other reported case.  What is known about the settlement, which is not much, is that the parties settled their dispute (see Nacre press release).  As is often the case with such matters, the terms of the settlement are confidential.  Nacre's website states that the settlement provides for the dismissal with prejudice of all claims and counterclaims filed by the parties, and without any finding or admission of liability or wrongdoing by any party, and it grants to Rockville, MD-based Silynx a license to certain Nacre intellectual property, including the two Nacre patents-at-issue (link, link).

• The Intellectual Property Section of the Maryland Bar Association posted the following events on its on-line calendar: 
  
  
  • Monday March 23, 2009 12:00 AM:  LES Licensing Seminars
     
  • Wednesday March 25, 2009 8:30 AM:  Could the In re Bilski decision eliminate business method patents?  

Please support the IP Section and attend one of these or other upcoming events.  If you missed an event, the IP Section website contains links to audio files of previous events that are free to download.

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     Data available from Justia.com shows that the number of copyright lawsuits filed in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2008 (40; see table below comparing Districts) was higher than the number initiated in 2007 (30). The number of defendants named in those lawsuits was also higher year over year (about 120 defendants in 2008 compared to about 60 in 2007).

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     In its 2009 Policy Platform for Technology and Biotechnology published earlier this month, the Technology Council of Maryland (TCM) called for funding and targeted legislation for the state's technology and biotechnology industries, but also urged incentives, financing, tax credits and intellectual property legislation "that will spur the potential for making Maryland a leader in clean and green technology."  The TCM is Maryland's largest technology trade association (500+ members). 

     Does Maryland need incentives to encourage the development of clean and green technologies? If the number of clean energy patents issued to Marylanders is any indication, the answer is yes.  According to U.S. Patent Office data, there were only 11 patents issued in 2008 naming at least one Maryland resident as an inventor that disclosed "fuel cell" (down from 17 in 2007), 11 patents to Maryland inventors that disclosed "hybrid", "electric," and "vehicle" in 2008 (up from 7 in 2007), and only one patent to Maryland inventors that disclosed "wind power" in 2008 (half as many as the 2 patents issued in 2007). Although that snapshot view is far from a scientific and robust analysis, it seems that Maryland trails other states in clean technology innovation (Michigan, for example, received a total of 29 clean energy patents in the 3Q 2008 alone, and New York received 21 in 3Q 2008, according to data published by the Clean Energy Patent Growth Index).

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     The table below shows how Maryland ranked among other U.S. District Courts in terms of the number of lawsuits that were filed raising patent issues in 2008 (source Justia.com). Table values are based on the number of complaints filed in 2008.  As shown, 31 patent lawsuits were initiated in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2008, which is nearly a 30% increase over the number of patent lawsuits initiated in Maryland in 2007. In terms of the number of parties involved in those lawsuits, there were more parties named in patent lawsuits in 2007 compared to 2008, due to one patent infringement lawsuit initiated in 2007 that involved over a hundred defendants. 
 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

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     U.S. Patent & Trademark Office (PTO) records show that for 2008, the PTO granted 1,942 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 (1,963), and an 8% decline over 2006 numbers (2,116).

 

 

     The number of published patent applications naming at least one Maryland inventor in 2008 was up compared to last year. According to the PTO, 3,187 patent applications naming at least one Maryland inventor were published during 2008, which is a 7% increase in the number of patent applications published in 2007 (2,992 patent applications), and a 3% increase over 2006 numbers (3,082).

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     U.S. Patent & Trademark Office (PTO) records show that in 2008, the PTO received 68 trademark applications from Maryland resident or entities (based on a search of "owner address" records using Trademark Electronic Search System, TESS, database). That number is a 20% decline in the number of applications received in 2007 (85), and a 22% decline over 2006 numbers (87).

 

 

     The number of registrations to Maryland individuals or entities in 2008 was also down compared to last year. According to the PTO, 53 registrations were effective in 2008 (as of December 31, 2008), which is a 36% decline in the number of registrations in 2007 (83 registrations), but is one more than the number of registrations in 2006 (52).

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     Hat tip to Philip Brooks for noting the upcoming Bio/Pharmaceutical Summit on Intellectual Asset Management Strategies to be held in Baltimore, MD, on January 20-21, 2009.  The Summit's organizer, The Center for Business Intelligence (CBI), plans a two-day, CLE-available conference that includes workshops covering the Hatch-Waxman Act, the MMA, the USPTO and expectations for patent reform, and conference presentations covering antitrust law and LCM, the expected implications of the EC Pharma Inquiry on Industry, tips for assessing your patent portfolio to assign value and identify risks and opportunities, and many others.

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Calling for Copyright Reform

• "Given where we are on the patent reform debate, is it time to move patent reform off the table and work on copyright reform?" That is the question posed by Kristie Prinz at the Silicon Valley IP Licensing Law Blog.

No More Committee on Intellectual Property

• "House Judiciary Committee Chairman John Conyers (D-MI) will abolish the Subcommittee on Courts, the Internet, and Intellectual Property in the new Congress and instead keep intellectual property issues at the full committee level, a Judiciary aide told Congress Daily today." (source: Congressional Daily)

District Court Clarifies How PTO Should Compute Patent Terms

• Wyeth v. Dudas, No. 07-1492 (D.D.C. 2008): on September 30, 2008, the U.S. District Court for the District of Columbia issued a decision concerning 35 U.S.C. § 154, the procedure the U.S. Patent and Trademark Office (PTO) uses to calculates a patent's term.  Sec. 154 states that a patent grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains certain specific references to an earlier filed application or applications, from the date on which the earliest such application was filed. The 20-year term may be adjusted by the PTO to account for certain delays during prosecution. The Wyeth decision means that the PTO must alter its methods for adjusting patent terms, especially where prosecution lasts longer than three years as measured from the filing date. For a detailed analysis of Wyeth, see Down a Rabbit Hole: Court Slaps Down Patent Office’s ‘Explanation’ of PTA Rules (Patent Baristas).

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• In Re Bilski (Fed. Cir.; October 30, 2008)

     In In Re Bilski, the Court of Appeals for the Federal Circuit in Washington, DC, sitting en banc, considered the issue of whether certain so-called business methods and other “processes” are eligible for patent protection. Less than a day after the court’s eagerly-anticipated decision, general and legal news media outlets proclaimed the end of patent protection for software-related business methods, and shortly thereafter business associations called for patent reform legislation to expand the Patent Act’s scope to reestablish protections for software inventions. It may take days and perhaps weeks for the debate to subside over exactly how far the Bilski court swung the pendulum away from the pro-patent apex. What is clear, however, is that Bilski did not do away with business methods and general software process patents entirely, although it did tighten the patent eligibility standard for inventions involving processes.

     Section 101 of the Patent Act identifies four categories of patent-eligible subject matter: processes, machines, manufactures, and compositions of matter. The patent claims at issue in Bilski involved a computerized process, specifically a method of hedging risk in the field of commodities trading. 

     Drawing extensively from the Supreme Court’s holding and analysis in Diamond v. Diehr, 450 U.S. 175 (1981) and Gottschalk v. Benson, 409 U.S. 63, 67 (1972), the Federal Circuit recognized that “the question before us then is whether Applicants' claim recites a fundamental principle [i.e., "laws of nature, natural phenomena, and abstract ideas"] and, if so, whether it would pre-empt substantially all uses of that fundamental principle if allowed.” The definitive test, the court said, involves a determination of whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself.

     A claimed process, the court said, is patent-eligible under § 101 if:  (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.

Continue Reading...

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Copyright

• On October 13, 2008, President Bush signed into law P.L. 110-403, the Enforcement of Intellectual Property Rights Act of 2008 (also known as the Prioritizing Resources and Organization for Intellectual Property Act or PRO-IP Act). The law creates a cabinet-level position entitled “Intellectual Property Enforcement Coordinator”, a.k.a. the Copyright Czar, who will “report directly to the president and Congress regarding domestic international intellectual property enforcement programs.” The Czar will have the responsibility of implementing a nationwide plan to combat piracy (sources: Wired; Counterfeit Chic; GovTracks; Copyright Office)
   
• For more information about the new enforcement law, visit these previous posts:  link1, link2, link3
   
• Minnesota U.S. District Court Judge Michael Davis overturned a $222,000 judgment against Jammie Thomas, mother of three, after finding he erroneously instructed jurors prior to deliberations that they could find copyright infringement on the basis that Thomas made copyrighted music recordings available on a popular file sharing network.  Davis’ decision means that the Recording Industry Association of America’s (RIAA) copyright infringement litigation campaign, now totaling over 30,000 lawsuits, has never been successful at trial (source: Wired)
   
• The RIAA reportedly labeled a Texas Tech college student "vexatious" after she refused to pay music record labels $7,400 for allegedly infringing 37 songs on a popular file sharing network (source: Wired)
   
• The Copyright Office announced a new rulemaking under the provisions of the Digital Millennium Copyright Act (DMCA) concerning the authority of the Librarian of Congress to exempt certain classes of works from the prohibition against circumvention of technological measures that control access to copyrighted works (17 U.S.C. 1201(a)(1)(c)). The purpose of the rulemaking is to determine whether there are particular classes of works as to which users are, or are likely to be, adversely affected in their ability to make noninfringing uses due to the prohibition on circumvention (source: Copyright Office)

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     The top 20 law blogs focusing on intellectual property issues, based on “weekly” rankings compiled by Blawgsearch (Justia.com), are shown below. The Maryland Intellectual Property Law Blog is ranked 11th (out of a total 183 blogs in the IP category).

 

Rank	Blawg	Publisher
1	IP Thinktank	Duncan Bucknell
2	Patent Troll Tracker	Rick Frenkel
3	IPBiz	Lawrence B. Ebert
4	Eastern District of Texas Federal Court Practice	Michael C. Smith
5	Chicago IP Litigation Blog	R. David Donoghue
6	Los Angeles Intellectual Property Trademark Attorney Blog	Milord A. Keshishian
7	Copywrite	D. Keith Henning
8	43(B)log	Rebecca Tushnet
9	Seattle Trademark Lawyer	Michael Atkins
10	Patently-O	Dennis Crouch
11	Maryland Intellectual Property Law Blog	Brian Wm. Higgins
12	Philip Brooks' Patent Infringement Updates	Philip Brooks
13	Patent Docs	McDonnell Boehnen Hulbert & Berghoff
14	Patent Arcade	Ross Dannenberg
15	ANTICIPATETHIS.com	Jake Ward
16	I/P Updates	William F. Heinze
17	The TTABlog	John L. Welch
18	IPKat	Gibson, Pearce, Phillips, and Fhima
19	Trade Secrets Blog	Press Millen and Todd Sullivan
20	Recording Industry vs The People	Ray Beckerman

 Notes:

• Blawgsearch ranks legal blogs using daily, weekly, monthly, and “all time” traffic and search statistics.
• The list above does not include two blogs ranked by Blawgsearch in the IP category that focus on technology, marketing, and business law rather than IP law.
• Downloadable table: click here

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     On September 10, 2008, Senator Ben Cardin (D-MD) added his support to S. 3325, the Enforcement of Intellectual Property Rights Act of 2008, one day before the Senate Judiciary ordered the bill "to be reported with amendments favorably." Cardin joins eight other co-sponsors of the legislation (Senators Leahy, Bayh, Cornyn, Hatch, Voinovich, Specter, Feinstein, and Whitehouse). Next stop for the bill in consideration by the entire Senate (once placed on the Senate Calendar).

• Enforcement of copyright laws

     S.3325, introduced July 24, 2008, 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.

• Enforcement of trademark laws

     S. 3325 would enhance remedies for trademark violations. Section 35(b) of the Trademark Act of 1946 (15 U.S.C. 1117(b)) would require a court, in assessing damages for any violation of section 32(1)(a) of the Act, or or in a case involving use of a counterfeit mark or designation, to enter judgment for three times profits or damages, whichever amount is greater, together with attorney’s fee, unless the court finds extenuating circumstances. Treble damages and attorney's fees are authorized where the violation consists of:

(1) intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services; or

(2) providing goods or services necessary to the commission of a violation specified in paragraph (1), with the intent that the recipient of the goods or services would put the goods or services to use in committing the violation.

     The court may also award prejudgment interest beginning on the date of the service of the claimant’s pleadings and ending on the date entry of judgment is made.

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     Below is a Wordle based on the last several months worth of posts on this website.  A Wordle is a “word cloud” generated from text in which greater prominence is given to words that appear more frequently in the source text.  In the Wordle below, one can see that the words "patent," "Maryland," "district," "court," and "judge" have found their way into the posts on this website more frequently than other words.

     Jonathan Feinberg of IBM Research is credited for providing the on-line Wordle tool.

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• 2008 Maryland trademark filings and registrations continue to trail 2007 numbers:

• Wake County, North Carolina, Superior Court Judge Donald Stephens ruled September 3, 2008, that two Chinese companies and a former Serenex employee must pay Serenex $57.5 million for damages. Serenex brought the action against the companies and former employee alleging corporate espionage and stolen trade secrets. [Womble Carlyle Trade Secret Blog]
   
• No. of IP-related lawsuits filed in the U.S. District Court for the District of Maryland in August 2008: 9
   
• Top states in Technology and Science, according to Milken Institute (with 2004 rankings):

1) Massachusetts (1)
2) Maryland (4)
3) Colorado (3)
4) California (2)
5) Washington (6)
6) Virginia (5)
7) Connecticut (10)
8) Utah (9)
9) New Hampshire (12)
10) Rhode Island (11)

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     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.

     Below is a ranked list of recent Internet search terms that pointed to this weblog: 

• quietpro
• joint infringement
• grimm maryland e-discovery
• intellectual property attorney
• Nacre QuietPro
• lindy bowman
• Maryland Federal Court Magistrate Discovery
• nacre lawsuit
• QuietOps
• inadvertent disclosure
• tactical medical solutions
• maryland trade secret law
• Maryland Uniform Trade Secrets Act
• inadvertent disclosure emails
• guilford pharmaceuticals
• Sheppard Legal Citations Statistical…
• gore st gobain

 

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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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     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"). 

Continue Reading...

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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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     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). The first summary involves a discovery matter relating to a patent lawsuit filed in the E.D. Texas.

• #8:  Candela Corporation v. Palomar Medical Technologies, Inc., No. 8:2008cv00268, filed January 31, 2008; assigned to J. Williams

     This lawsuit was filed in and is pending in the U.S. District Court for the Eastern District of Texas (No. 9-06-cv-277RHC). It involves patents covering treatment of wrinkles in the skin using radiation-emitting devices (U.S. 5,810,801; 6,120,497; and 6,659,999). 

     The case is before the U.S. District Court for the District of Maryland to enforce a subpoena duces tecum issued from the Maryland court to Dr. Hema Sundaram, ordering her to permit production, inspection, and copying of specified documents sought by patentee Candela. Candela's theory of infringement is that Palomar has induced physicians and others to use the accused devices, and it now seeks information from 16 physicians about how they operated the accused devices, and whether communications from Palomar to those physicians indicated how the accused devices should be operated for wrinkle treatment. That type of evidence is classic inducement evidence that patentees typically seek. 

     Candela's motion recognizes a number of privacy issues involved in seeking production of medical-related documents from physicians in patent infringement cases. Objecting to the subpoena, Dr. Sundaram's counsel stated that the protective order in place was insufficient to protect medical records or patient information in view of the Health Insurance Portability and Accountability Act (HIPAA). Patent counsel need to be aware of HIPAA's requirements because redactions alone may not be in compliance unless they remove all "individually identifiable health information."

• #9:  Green v. Conagra Foods, Inc., No. 1:2008cv00296, filed February 4, 2008, assigned to J. Quarles

     Green, a Michigan resident, alleges ownership of U.S. Patent No. 5,315,083, which is directed to a microwave cooking utensil as shown in the patent (see below). Green sued ConAgra, which is reportedly a Nebraska company, in Maryland because ConAgra sold infringing utensils in Maryland, according to the complaint.

• #10:  The Lindy Bowman Company v. Jeanmarie Creations, LLC, No. 1:2008cv00313, filed February 5, 2008, assigned to J. Quarles

      This trademark infringement, false designation of origin, unfair competition, and passing off case involves Elkridge, MD-based The Lindy Bowman Company, and defendants Jeanmarie Creations and Walgreens. Plaintiff alleges ownership and use of GIFT WRAP IN A SNAP mark for pre-packaged gift wrap kits. Plaintiff is seeking an injunction, an accounting, and unspecified monetary relief.

• #11:  EO Mfg., Inc. v. Ridge Tool Co., No. 1:2008cv00311, filed February 5, 2008; assigned to J. Bennett

     This patent infringement case involves EO Mfg., an Illinois company and the assignee of U.S. Patent No. 7,096,764, which is directed to a pipe wrench. Defendant Ridge Tool is an Ohio company. Jurisdiction is predicated on allegations of defendant's sale of allegedly infringing products in Maryland.

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     U.S. Patent & Trademark Office (PTO) searchable records show that for the period January through December 2007, the PTO registered 83 federal trademarks to Marylanders (based on a search of "owner address" records using TESS). The PTO registered 57 trademarks to Marylanders for the same period in 2006 (a 46% difference), and 38 trademarks in 2005 (a 118% difference).

     Some of the more notable or interesting marks registered in 2007 include Registration 3291904 for ORIOLES (filed Oct. 20, 2005), Registration 3214009 for DLA PIPER, Registration 3217622 for RAVENS, Registration 3359033 for SOME THINGS.....ARE JUST TOO GOOD TO WAIT FOR (owner: Maryland 3D Ultrasound; what else!), Registration 3338092 for FESTIVUS MAXIMUS, and Registration 3300301 for CHESAPEAKE BAY WEEK (owner: Maryland Public Broadcasting Commission).

     In terms of applications, Marylanders submitted 85 trademark applications to the PTO in 2007, which is the same number submitted in 2006, but ten more than the 75 applications submitted in 2005.

 

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     If you are interested in learning the nuts-and-bolts of trying a patent case, join Maryland U.S. District Court Judges Marvin J. Garbis and André M. Davis, other judges, and a large faculty of litigators, in Scottsdale, AZ, on February 28-29, 2008, for Trial of a Patent Case. The live course, which will also be webcasted, is part of the 15th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner. Judges Garbis and Davis presided over a combined four patent lawsuits filed in the U.S. District Court for the District of Maryland in 2007. They also have a perspective on Maryland's comprehensive e-discovery protocol, which other jurisdictions have adopted. George F. Pappas, who is representing Microsoft in the Technology Patents lawsuit pending in the U.S. District Court for the District Maryland, will co-chair the program with Judge Garbis. 

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     A search of Google© on February 4, 2008 (Monday) using the search terms "patent reform" and the date limiter "last 24 hours" returned "about 13,400" hits.  That compares to 15,400 hits for the entire previous week (same search terms, but using the date limiter "last week").  The 24-hour statistic is interesting, because the time period included Super Bowl Sunday when, presumably, even the most staunch advocates for and against patent reform took time off to watch the big game. Today, a search for "patent reform" and "last 24 hours" returned 14,600 hits. Clearly, reporting about patent reform efforts has increased on the Internet. This may be due to the fact that this week and next are considered by many to be the home stretch before the Senate votes on its current version of S.1145, the Patent Reform Act of 2007.

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     The following Notice concerning patent reform was posted on the USPTO website today. Clearly, the Bush Administration is concerned about a potential vote on the Senate's version of the Patent Reform Act of 2007 (S.1145), which was placed on the Senate Calendar in late January. In a letter to Sen. Leahy, dated today, Nathaniel Wienecke, Assistant Secretary of Commerce for Legislative and Intergovernmental Affairs, writes:

"The Administration continues to oppose Section 4, "Right of the Inventor to Obtain Damages." Consequently, we continue to oppose S. 1145 - in its entirety - unless Section 4 is significantly revised, as we believe the resulting harm to a reasonably well-functioning U.S. intellectual property system would outweigh all the bill's useful reforms.

* * *

"Downstream litigation costs can be minimized through patent clarity - offered through such early elucidation mechanisms as applicant quality submissions and post-grant procedures. Flexibility in assessing damages ensures that results can be tailored, avoiding a "one-size-fits-all" approach that pleases no one."

     The entire Notice, which involves a media call tomorrow, is after the jump...

Continue Reading...

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     I received a Tec Stretch Ear Warmer over the recent holiday season, just in time for last week's cold spell. Made by Baltimore-based 180s, the Tec Stretch product combines ear warmer and headphones in one simple device, so you can listen to your MP3 player and protect your ears from the cold at the same time. In addition to patents covering the ear warmer product, 180s has a portfolio containing over 50 utility and design patents covering a wide range of sports-related apparel and accessories. And it is not afraid to assert those patents: the company has filed no less than eight patent infringement lawsuits in just the last fours years. 

     Which leads me to today's lawsuit summary (source: Justia). 

• #5: 180s, Inc. et al v Gordini U.S.A., Inc., No. 1:2008cv00177, filed January 22, 2008

This patent and trade dress infringement lawsuit involves plaintiffs 180s, Inc. and 180s, LLC (reportedly the licensee of 180s' patents) and defendant Gordini U.S.A., Inc., a Vermont company based in Essex Junction, VT, which, according to its website, develops and manufactures cold weather apparel and accessories. The patents at issue are utility patent 6,978,483 and design patent D545,001; the trademark at issue is Registration No. 3,089,225 for the design shown below. 180s contends that Gordini's Lobz® earmuff product and packaging are similar to 180s' ear warmer product. In its complaint, 180s alleges patent infringement of the '483 and '001 patents, federal trade dress infringement of the '225 registration, and common law trade dress infringement. The company is seeking an injunction, undisclosed monetary damages, and a finding of willful infringement.

Cooley Godward Kronish LLP filed the complaint on behalf of 180s.

     Whether it is successful or not in this lawsuit, this case highlights how different forms of intellectual property protection--utility patents, design patents, and trade dress--can all be used in combination to protect various aspects of a single good or service.

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     Granted, this post isn't directly related to the subject matter of this blog, but since the worldwide headquarters for Discovery Communications is in Silver Spring, MD, and a lot of visitors to this blog are scientists, engineers, and other professionals, I thought I'd pass this along. The Discovery Channel is looking for hosts for "its next long running hit series" called "Hidden Cities." According to a release, show producers are searching for "talented individuals who have a strong background" in any of the following areas: science, engineering, urban water/power/transportation, wilderness survival, do-it-yourself, and animal science. If you've ever watched Danny Forster on Build it Bigger (formerly Extreme Engineering) on Discovery, then you have a sense of what producers are probably looking for. There are several audition tapes on YouTube; this one seems to have the highest "Views" count. 

    

     And, no, I already have a day job.

     FYI, Discovery owns a bunch of patents, including U.S. Patent No. 7,298,851, which is directed to "A method for encrypting, sending and receiving electronic books upon demand."

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• IPO Predicts Senate May Attempt to Pass Patent Reform Bill in February

According to the Intellectual Property Owners Association website earlier this week, the "IPO believes Sen. Patrick Leahy (D-VT) will attempt to pass a revised version of S. 1145 [the Patent Reform Act of 2007] in the Senate in February. Major amendments likely will not be available more than a few days in advance of Senate consideration. It is unclear whether the Senate has the votes to pass a bill. If the Senate does pass a bill, it likely will be sent to the House for swift passage by the House without amendments, eliminating the need for a Senate-House conference." 

See this earlier post that discusses some of the obstacles to major patent reform.

• Chart Compares Senate and House Versions

Thanks to lawyer Mark Walters over at the Washington State Patent Law blog for pointing out a useful side-by-side comparison of the House and Senate versions of patent reform legislation currently pending in Congress. The comparison, in the form of a chart, was apparently put together by Foley Hoag last year (so it does not benefit from the Senate's recent Judiciary Committee report) and is available from the Licensing Executive Society website.

• Patent reform comparisons on this blog

     For coverage and comparisons of the patent reform legislation on this blog, see the following previous Patent Reform Act posts: Part 8: Attorney misconduct; Part 7: Submission of prior art search reports; Part 5: 35 U.S.C. § 103(a) (Part II); Part 4: 35 U.S.C. § 103(a) (Part I); Part 3: 35 U.S.C. § 102(a).

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     Below are summaries of the first four IP-related lawsuits filed in the the U.S. District Court for the District of Maryland in 2008 (source: Justia). These lawsuits involve allegations of patent, copyright, and trademark infringement, misappropriation of trade secrets, defamation, and a host of other state law claims. We begin with an interesting case involving Maryland's business trade/company name statute.

• #1:  Nationwide Handyman, LLC v. Nationwide Handyman & Remodeling, Inc., No. 1:2008cv00019, filed Jan. 3, 2008

    This lawsuit pits two Maryland entities and their owners against each other. Plaintiff Nationwide Handyman, LLC alleges ownership of the federally-registered NATIONWIDE HANDYMAN trademark, the same being registered with the State of Maryland as a corporate name. Plaintiff contends that Defendant Nationwide Handyman & Remodeling, Inc., led by principal Joe Butts, violated Maryland Code Annotated § 1-504, which states the following (source: Michie's Legal Resources):

"An entity name must be distinguishable upon the records of the Department [of Assessments and Taxation] from:

(1) The entity name of an entity organized or authorized to transact business in the State;

(2) An entity name reserved or registered under this subtitle; and

(3) The disclosed assumed name adopted by a foreign entity authorized to transact business in this State."

     Plaintiff further alleges that Defendant violated Maryland Code Annotated § 13-301, which defines unfair or deceptive trade practices in Maryland as "false, falsely disparaging, or misleading oral or written statement, visual description, or other representation of any kind which has the capacity, tendency, or effect of deceiving or misleading consumers." Other allegations include violations of the Lanham Act. Plaintiff is seeking an injunction and monetary damages.

     This case highlights one advantage of registering a company name in Maryland: § 1-504 is available as a cause of action to those who register their business name. Thus, companies should register their business name in addition to registering their trademarks with the U.S. Patent & Trademark Office and the Maryland Secretary of State.

     Shawn Whittaker of The Law Offices of Shawn C. Whittaker PC filed the Complaint on behalf of the Plaintiff.

     Three more cases after the jump...

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     Maryland tops the nation in research and development spending at universities, government laboratories, and other private entities and institutions, so it should come as no suprise that Maryland has lots of intellectual property that is available for commercialization. The Maryland Technology Development Corporation (TEDCO), a Maryland State government corporation, is tasked with the responsibility of trying to transfer all of that technology into the private sector in Maryland and elsewhere. 

    

     Enter Invenio-IP®, a database developed by the University of Maryland through a grant from TEDCO.  Invenio is a free, web-based, searchable access point containing patented and non-patented technologies available for commercialization. The database includes not only technologies developed by Maryland entities and institutions, but those developed outside the state (for now, only Virginia and DC):

• Avanti Therapeutics
• College of William and Mary
• Georgetown University
• Johns Hopkins Applied Physics Lab (Laurel, MD)
• Johns Hopkins University (MD)
• US Army Medical Research & Materiel Command
• University of Maryland Baltimore County
• University of Maryland Biotechnology Institute
• University of Maryland, Baltimore
• University of Maryland, College Park
  

     Don't expect to find only state of the art technologies in the Invenio database. I ran a search for "drug" and was presented with 291 technologies, some of which was patented several years ago. The web interface is not the best I have seen, but it gets you the information quickly. One nice feature is that you can set up an alert that will ping you when technologies matching your keywords are added to the database.

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     Several sources (see 271 Blog, for example) are reporting that another obstacle facing patent reform was overcome yesterday when the Senate Judiciary Committee reported on S. 1145, the Patent Reform Act of 2007. According to the Intellectual Property Owners Association (IPO), the "106-page draft report explains in depth the provisions of the bill as approved by the Senate on July 19, 2007, but does not contain any new or compromise provisions."

     So, will patent reform actually happen this year, as some predict? Gene Quinn over at the PLI Blog notes that "patent legislation usually has a gestation period of between 2 to 3 years, and given that Congress began working seriously on some form of patent reform in 2005 the timing is right." On the other hand, industry associations, individuals, and other stakeholders have been pulling Congressional ears in different directions as long as patent reform legislation has been around, so I'm not sure that we'll see significant patent reforms, especially when you consider that several contentious provisions are still present in the Senate bill. However, it seems likely that at least some reforms will be seen this year, as long as Congress doesn't wait too long and get distracted by the election cycle, and some of those anticipated "compromise provisions" make their way into the legislation before the Senate votes.

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     In 2007, the major music recording companies, led by the Recording Industry Association of America (RIAA), filed more copyright lawsuits in the U.S. District Court for the District of Maryland than any other group or individual. RIAA accounted for 16 of the 30 copyright lawsuits filed last year (53%). In 2006, RIAA accounted for an estimated 22 of 54 copyright lawsuits (41%). All of the RIAA lawsuits involved individual defendants accused of illegally downloading or sharing copyrighted music. The 30 copyright lawsuits involved a total of 168 plaintiffs (64 unique entities/individuals). Of those 168 plaintiffs, 85 were RIAA members, including the following:

• Sony BMG Music Entertainment (plaintiff in all 16 of the RIAA lawsuits);
• UMG Recordings (plaintiff in 14 of the RIAA lawsuits)
• Arista Records (plaintiff in 12 lawsuits)
• BMG Music (12 lawsuits)
• Virgin Records America (9)
• Capitol Records (9)
• Warner Brothers Records (8)
• Interscope Records (8)

     Twelve U.S. District Court Judges presided over the 30 copyright lawsuits in 2007: Bennett (3), Blake (2), Chasanow (1), Cullinane (1), Davis (4), Dorr (1), Garbis (2), Legg (2), Messitte (6), Quarles (2), Titus (3), and Williams (3). All 6 of Judge Messitte's cases involved RIAA lawsuits (in 2006, Judge Messitte presided over an estimated 21 of the 22 RIAA lawsuits).

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     If you're in the D.C.-Maryland-Virginia area and would like to learn more about managing patent infringement litigation, don't forget about the 2008 Advanced Patent Law Institute being held in Alexandria, Virginia, starting today, January 10, 2008. My colleague, Keeto Sabharwal, a partner in Blank Rome’s Washington, DC, office, will be discussing the law of induced patent infringement tomorrow.  The session will include advice on how to effectively litigate a claim of active inducement from both the plaintiff’s and the defendant’s perspectives, and it will offer a discussion of the most recent federal circuit case law addressing the issue. Here is a link to the course for more information.

     Update:  The presentation mentioned above was switched in the schedule and presented this morning. If you're interested in a copy of the presentation materials, please email me.

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     Thirty-four plaintiffs filed 39 trademark infringement lawsuits in the District Court for the District of Maryland in 2007 (see a list of the lawsuits and the parties involved after the jump). The 39 lawsuits involved 63 defendants (individuals and entities).  By comparison, in 2006, 37 patent infringement lawsuits were filed in Maryland. 

     Topping the list of companies filing the most trademark infringement lawsuits in Maryland in 2007 were Nutramax Laboratories, Inc., the Edgewood, MD, company that specializes in nutritional supplements (4 lawsuits), and Young Again Products, Inc.,the Maryland company that describes itself as being "in the business of production and sale of health and nutritional supplements" (3 lawsuits). Nutramax also topped the list of companies filing the most patent infringement lawsuits in Maryland in 2007 (see related post here).

     The 39 lawsuits filed last year were assigned to 11 Maryland District Court Judges: Bennett (3), Blake (2), Chasanow (1), Davis (4), Garbis (3), Legg (4), Motz (5), Nickerson (1), Quarles (5), Titus (1), and Williams (4).

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    Twenty-six plaintiffs filed 24 patent infringement lawsuits in the District Court for the District of Maryland in 2007 (see a list of the lawsuits and the parties involved after the jump). The 24 lawsuits involved 181 defendants (individuals and entities) from all over the world. If you don't count the Technology Patents LLC v. Deutsche Telekom AG case, which involved 131 defendants, the total number of defendants sued in Maryland in 2007 was 50.

     One notable change in 2007 compared to 2006 is the apparent increase in the number of patent infringement lawsuits involving life-sciences technologies (e.g., pharmaceuticals, biologics, and medical devices).

     In 2006, 21 plaintiffs filed 23 patent infringement lawsuits in Maryland involving 25 defendants. Thus, while the total number of patent infringement lawsuits in 2007 increased only slightly over 2006 figures, the total number of defendants sued in 2007 compared to 2006 increased significantly. Several factors could push the number of lawsuits even higher in 2008, including a rise in biotechnology litigation, which could involve the 300+ biotechnology companies that call Maryland home, and changes in laws brought about by patent reform legislation, which if enacted could close off certain jurisdictions outside Maryland to plaintiffs that might then consider Maryland as an alternative venue.

     Topping the list of companies filing the most patent infringement lawsuits in Maryland in 2007 were Nutramax Laboratories, Inc., the Edgewood, MD, company that specializes in nutritional supplements, and Israel's Teva Pharmaceutical Industries, Inc. (with its Teva Pharmaceuticals USA, Inc., subsidiary), both of which filed two patent infringement lawsuits in Maryland last year.

     The 24 lawsuits filed last year were assigned fairly evenly among Maryland's District Court Judges: Bennett (2), Blake (3), Chasanow (4), Davis (1), Garbis (3), Legg (1), Motz (2), Nickerson (3), Quarles (1), Titus (1), and Williams (3). 

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     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.

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     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).”

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     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.

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     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:

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     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.

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     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.

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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).

 

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     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.

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     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."

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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

 

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     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.

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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?"

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     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.

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     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.

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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[.]

 

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     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

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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.

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     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. 

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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.

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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.

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     Below is a summary of the IP-related cases filed in the the U.S. District Court for the District of Maryland during the week beginning October 11, 2007 (source: Justia). This time, two patent cases and a trademark case make up the week's docket:

• American Silver LLC v. General Resonance LLC, No. 07 Civ 02807, filed Oct. 15, 2007

     Plaintiffs are American Silver LLC and its subsidiary American Biotech Labs LLC, both Utah companies. ABL owns U.S. Patent No. 7,135,195 and several other patents directed to silver products used in the life sciences field.

     Defendant General Resonance LLC is a Nevada company with its corporate headquarters located in Havre de Grace, MD. Defendants Juliana Brooks and Mark Mortenson are reportedly residents of Maryland. Ms. Brooks is allegedly the Senior Managing Director of General Resonance. Mr. Mortenson is allegedly a lawyer licensed to practice in Virginia and registered to practice before the PTO. According to court papers, Mr. Mortenson acts as General Resonance's general counsel.

     Plaintiffs seek to quiet title to the ownership interests of an invention and related patent applications, including PCT/US05/047699. Other counts in the complaint include fraud, misrepresentation, breach of fiduciary duty, fraud by concealment, constructive fraud, breach of contract, conversion, misappropriation of scientific ideas, negligent misrepresentation, tortious interference, legal malpractice, and civil conspiracy.

     George Ritchie of Venable filed the complaint on behalf of the plaintiffs. 

• Raymond Geddes & Company, Inc. v. J. Rousek Toy Co. Inc.,No. 07 Civ 02818, filed Oct. 16, 2007

     On October 11th, Raymond Geddes & Co., Inc. a Maryland company with its headquarters in Baltimore, MD, sued Los Angeles, CA-based Nakajima USA, Inc. for alleged infringement of its U.S. Patent No. 6,158,871, which is directed to an "Illuminated Ball-Point Pen" (advertisement). Infringement allegations were based on Nakajima's sale of the Hello Kitty light up pen. (Related post).

     In the present case, Raymond Geddes has sued J. Rousek Toy Co., a Bishop, CA company apparently doing business as Giggletime Toy Co.  In this matter, however, Raymond Geddes is asserting its U.S. Des. Patent No. 550,772, which is directed to a design for an "eraser cap for a writing instrument."

     Infringement allegations in the complaint are based on Rousek's sale of an eraser cap advertised as the "Extendo" cap. 

     Sterne Kessler's Tracy-Gener Durkin filed the complaint on behalf of Raymond Geddes.

• Nutramax Laboratories, Inc. v. Newton-Everett, L.L.C.,  No. 07 Civ 02833, filed Oct. 18, 2007

     This is a false advertising action under the Lanham Act against Newton-Everett, which Nutramax Labs alleges manufactures, markets, and sells a joint health supplement for cats and dogs called COSEFLEX that competes directly with Nutramax's COSEQUIN. Nutramax is a Maryland corporation based in Edgewood, MD, and claims to have "started the glucosamine/chondroitin sulfate revolution." Newton-Everett is a Scottsdale, AZ company (jurisdiction is predicated on website sales in the Maryland forum).  The single count in the complaint is for violation of Sec. 43(a) of the Lanham Act (false advertising).

     Robert Bowie of Bowie & Jensen LLC filed the complaint on behalf of Nutramax.

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New PTO Rules

Patent practitioners and others are keenly aware of the looming effective date for the new "claims and continuation" practice rules (November 1st, in case you forgot). Here are what people are saying about the pending rules.

• Peter Weissman at Blank Rome suggests that "[i]t may be prudent to describe patentably “distinct” subject matter in separate applications rather than combining common subject matter in a single application. This could support an argument that the claims are truly patentably distinct"
  
  
• Dr. Charles F. Louis, Vice Chancellor for Research, University of California, Riverside said in testimony before the Senate Judiciary Committe "any rules promulgated by the U.S. Patent and Trademark Office that make it more burdensome and expensive for universities to obtain patents on their inventions, such as the new claims and continuation rules, would be detrimental to university technology transfer." (Source: IPWatchdog)
  
  
• Hal Wegman at Foley notes that "[i]f cloture is voted by the Senate on patent reform and ultimately patent reform includes the House-passed version on delegation of rulemaking authority, whatever happens in the near term on Continuation Rules will be superseded by the new law. Yet, the great bulk of the focus of the patent community is on the sideshow in Alexandria." (Source: PatentHawk)
  
  
• That "sideshow" includes GlaxoSmithKline's Motion for Temporary Restraining Order and Preliminary Injunction to halt implementation of the new PTO rules. A hearing on GSK's motion is set for October 31, 2007.

Favorable Patent Lawsuit Forums

Move over Eastern District of Texas, more and more other districts are being eyed as the place to file patent lawsuits, especially since patent reform will make it harder to go forum shopping. Take the Western District of Wisconsin, for example, mention of which continues to be linked with terms like "speedy justice."  The Wisconsin court boasts a filing-to-trial time of 11.3 months, which compares to a pokey 12 months at the Eastern District of Virginia (the average, in case you're wondering, is about 22 months, so says Dewey Ballentine co-authors last year in an IPToday article).

Patent Reform

It's no secret that the bio industry is against patent reform. At last week's 2007 Mid-Atlantic Bio Conference, held in Bethesda, MD, a representative from the Biotechnology Industry Organization (BIO) made the organization's views plainly clear in a presentation about patent reform legislation. Saying that bio was being thrown in front of the bus to save the IT industry, BIO urged member organizations to call their Senators to fight passage of the legislation.

Tired of Trademark Oppositions? Call Your Senator

In an opinion issued last week relating to a lawsuit against the PTO, the Fourth Circuit Court of Appeals overturned an Eastern District of Virginia decision, effectively sanctioning the practice used by Montana Congressmen of using the political appropriations process to halt the registration of the trademark THE LAST BEST PLACE, which was being sought by a Nevada company. Hopefully, I'll have more on this later (here's a preview: "Senate approves ‘Last Best' measure").

 

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Summary:  Seeking only minimal recognition for his Baltimore Ravens logo design, Baltimore amateur artist ends up seeking certiori from the Supreme Court in his copyright infringement case, winds up with no damages award

 

 

 

 

 

    

    

     So how much is an NFL franchise team logo worth? Just ask Frederick Bouchat, who sued the Baltimore Ravens and the National Football League Properties (NFLP) over their use and licensing of a logo that closely resembled a drawing Bouchat faxed the Ravens back in 1995. All Bouchat asked in return was a letter of recognition and an autographed helmet, a small reward from a team and League making millions in revenues at the time.

     After a lengthy bifurcated copyright infringement trial, the District Court for the District of Maryland found that the Ravens had infringed Bouchat's copyrighted work. The Court of Appeals for the Fourth Circuit affirmed the trial court decision. His damage award, however, was zero (and he's still waiting for his recognition letter and autographed helmet). Bouchat then sued the NFL's licensees, and won again. However, he was not so lucky when it came to seeking damages.

     Under 17 U.S.C. § 504(a)(1), a copyright owner may seek actual damages plus any additional profits of the infringer. Under 17 U.S.C. § 504(c)(1), an award of statutory damages may be made "in a sum of not less than $750 or more than $30,000."

     In this case, Bouchat had little actual damages (he was not making any products using the logo himself), so he sought profits from the Ravens and dozens of NFLP licensees who were selling myriad items containing the "Flying B" logo. The jury found that defendants' income from products containing the Flying B were attributed completely to factors other than the artwork itself, and therefore did not award Bouchat any damages. Moreover, Bouchat was not entitled to an award of statutory damages because he had not registered his copyrighted work before the Ravens' and licensees' infringing conduct began:

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     Below is a summary of the IP-related cases filed in the the U.S. District Court for the District of Maryland during the week beginning October 11, 2007 (source: Justia). This time, two patent cases make up the week's docket:

• Raymond Geddes & Company, Inc. v. Nakajima USA, Inc., No. 07 Civ 02771, filed Oct. 11, 2007.

     Raymond Geddes & Co., Inc. is a Maryland company with its headquarters in Baltimore, MD.  It alleges that Los Angeles, CA-based Nakajima USA, Inc. has infringed its U.S. Patent No. 6,158,871, which is directed to an "Illuminated Ball-Point Pen" (advertisement), by making, using, and/or offering to sell the Hello Kitty light up pen.  Sterne Kessler's Tracy-Gener Durkin filed the complaint on behalf of Raymond Geddes.

• Simon Systems, Inc. v. Corel Corporation, No. 07 Civ 02765, filed Oct. 12, 2007.

     Rockville, MD-based Simon Systems, Inc., filed this patent infringement suit against Delaware entity Corel Corporation (which allegedly has a regular place of business in Annapolis, MD, for purposes of asserting personal jurisdiction). The patent at issue is U.S. 5,559,562, which is entitled "MPEG Editor Method and Apparatus." SSI's complaint includes a bare allegation that Corel has infringed the patent by its "manufacture, use and/or sale of MPEG editing equipment."  Ward & Ward's Daniel Ward of Washington, DC filed the complaint on behalf of Simon Systems.

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Summary:  Patent Reform Act of 2007 would require courts to forward the identify of registered patent practitioners to the Patent Office if practitioners' conduct is linked to an act of inequitable conduct.

     It's not everyday that patent agents and attorneys registered to practice before the U.S. Patent & Trademark Office are found to have committed inequitable conduct by a court of law, despite the fact that inequitable conduct is "indiscriminately pled in nearly every case" as a defense to patent infringement (AIPLA Reports 2007). Nevertheless, patent reformers in Congress have proposed new provisions to the Patent Act, as shown below, which require the Patent Office to consider "appropriate disciplinary action" under 35 U.S.C. § 32 where inequitable conduct is attributed to a registered patent attorney:

"ATTORNEY MISCONDUCT- Upon a finding of inequitable conduct, if there is evidence that the conduct is attributable to a person or persons authorized to practice before the Office, the court shall refer the matter to the Office for appropriate disciplinary action under section 32, and shall order the parties to preserve and make available to the Office any materials that may be relevant to the determination under section 32."

That excerpt is from Section 12 of the Patent Reform Act of 2007, H.R. 1908.

     In case you're a patent practitioner and haven't read section 32 since your patent bar exam days, it says:

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Summary:  The U.S. Patent Office issues guidance and revisions to its "claims and continuations" practice rules.

• Revised rule permits filing "one more" continuing application on or after Nov. 1, 2007, without a petition or showing, in certain circumstances.
  
  
• For certain CIP applications, depending upon filing date and issuance or not of a first office action on the merits (FAOM), the requirement of 37 C.F.R. 1.78(d)(3) than applicant identify the claim or claims in the CIP for which the subject matter is disclosed in the manner provided by 35 U.S.C. § 112, first paragraph, in the prior-filed application is either waived or postponed until Feb. 1, 2008 (a three-month compliance deadline extension).
  
  
• Disclosing the identify of other pending or patented applications is not required for certain applications filed before Nov. 1, 2007, depending on the filing dates and priority filing dates for the other applications. Disclosure is not required for applications filed on or after Nov. 1, 2007, in limited enumerated circumstances.

     The complete requirements are found in the guidance document "Clarification of the Transitional Provisional Relating to Continuing Applications and Applications Containing Patentably Indistrinct Claims," which is available here.

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     Below is a summary of the IP-related cases filed in the the U.S. District Court for the District of Maryland during the week beginning October 1, 2007 (source: Justia), beginning with an IP NIMBY case: 

• Invenergy Wind North America LLC v. John Doe Numbers 1 Through 10, 07civ02643, filed Oct. 1, 2007. 

     According to the complaint, this case arises from an email that plaintiff Invenergy, a Delaware entity based out of Chicago, alleges that opponents to its proposed Moresville Energy wind turbine energy project sent to landowners and leaseholders of land Invenergy needs for its project. The complained of email, which included Invenergy's logos and trademarks, was allegedly designed to look like it originated from Invenergy itself. The complaint includes claims of trademark and copyright infringement, trademark dilution, tortious interference, and libel.

     Although the planned facility is to be located in Delaware County, New York, Maryland was chosen as the venue for the litigation, apparently because the permit applicant for the wind energy facility is Rockville, MD-based Moresville Energy LLC (a wholly-owned subsidiary of Invenergy), and because the email was allegedly sent by ten unidentified "John Does" (or "Jane Does") over networks owned by Hughes Network Systems , LLC, which is a Germantown, MD-based company.

     Thelen Reid's DC office filed the complaint, which did not identify local Maryland counsel.

     In the "old days," someone with a NIMBY (not in my backyard) issue would simply lie in front of a bulldozer, chain themselves to a Redwood, maneuver a boat in front of a fishing vessel, organize a protest rally, or file a lawsuit against the federal or state agency that issued a permit for a project they disagreed with (or all of the above). Apparently, if the above complaint is true, surreptitious emailing can now be added to the list of protest tactics.

     Three more interesting cases after the jump...

Continue Reading...

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     There is so much IP news to talk about these days, it's hard to keep up.  Although a lot of what's going on in the IP world and online blogosphere only indirectly affects Marylanders, it is nontheless still interesting, informative, and often very useful to IP practitioners in this state. So, here is a brief roundup, as it were:

Patent Troll Tracker: the anonymous, often-attacked blogger who runs the Troll Tracker (who are you?!) has an interesting post today called "Patent Troll Sues Fish & Richardson," which describes how a BigLaw lawyer can get into hot water when bitten by the invention bug (I'll be adding Troll Tracker to the blogroll on this blog soon; always an interesting read).

Patently-O: popular, prolific, and not anonymous blogger Dennis Crouch over at long-running Patently-O posted some comments from patent practitioners yesterday, which he collectively entitled "Rule Changes Triage: Dealing with already pending claims prior to November 1." I've already put some of those informative comments to good use.

Recording Industry vs. The People: The good people running the Recording Industry vs. The People blog posted "Jammie Thomas to Appeal!!!" yesterday. For those not following the Record Industry Association of America (RIAA) legal blitz (23,000 sued/threatened so far), Ms. Thomas' case was the first to make it through to a trial verdict (she lost), and so the case was watched by many in the industry. See my related post here. The blog is run by veterans Ty Rogers and Ray Beckerman over at Vandenberg & Feliu, LLP.

Copyright Office:  The Copyright Office (not the blog) issued an announcement yesterday that should appeal to those thirsty for copyright news. Entitled "Copyright Office Announces Customized Email Subscription Services," it describes an optional email-based news source. Subscribe here. Let's just hope that service is more timely than the announcement, which is shown with an October 2, 2007, date, but my feedreader didn't pick it up (i.e., it wasn't posted on-line) until October 8, 2007.

The Big Lead: Okay, so this site, which I warn you is at times a bit, how should I say this?-salacious, is not an IP blog, but a colleague turned me on to this increasingly-popular sports blog run by two anonymous, self-described "twenty-somethings," and it serves to make a point. As blogs and blogging in general become more and more popular (replacing traditional web sites in many cases), I'm betting that law firms and lawyers, including IP practitioners, will increadingly view this as an opportunity to market a niche practice area, one devoted to legal issues affecting blogs and bloggers. Such a practice area would involve specialty IP issues--copyrights, trademarks, domain disputes, and (to a lesser extent) patents--as well as general areas of the law, like corporate, first amendment, defamation, privacy, and employment law, to name a few.  Hmm, that gives me an idea...

     I'll be back later this week (hopefully, tomorrow) with coverage of last week's flurry of new litigation cases filed in the Federal District Court here in Maryland (all trademark cases). Plus, I have some new patent filing statistics for Maryland.

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     During the floor debate in Congress over H.R.1908, the Patent Reform Act of 2007, on September 7, 2007, Maryland’s 6th District Representative, Roscoe G. Bartlett, a Republican, rose to criticize last-minute efforts by colleagues whom he contends pushed amendments to the proposed legislation through the House of Representatives.  Apparently, those amendments found their way into the legislation in the late evening hours the night before the full House vote (no doubt by overworked staffers). Dr. Bartlett knows a few things about patents: a scientist himself, one of only three in the House of Representatives, he is the named inventor or co-inventor on several U.S. patents, including those listed below. Of the eight Maryland Representatives in Congress, Bartlett was the only one to vote against passage of H.R.1908 (see related post here). For those interested, the amendments to H.R. 1908 may be viewed here (then scroll down to the 1:33 pm entry).

Comments: Rep. Bartlett’s floor comment are found in the Congressional Record Sep. 7, 2007, as reproduced at Govtrack.us To see complete vote results concerning H.R.1908, click on Final Vote Results for Roll Call 863 The see the resolution that was approved by an earlier vote, click on House Report 110-319 Click on the Patent Reform Act link to the right for more on this topic

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     The following interesting and informative blawgs, which focus on patent issues, were added to the blog roll (see "Blogs" at right):

Chicago IP Litigation Blog

Delaware IP Law Blog

E.D. Tex. Fed. Court Practice Blog

I/P Updates Blog

Orange Book Blog

PHOSITA Patent Blawg

Patent Baristas Blog

Patent Docs Blog

Patent Infringement Updates

The Patent Prospector

Patently-O

Promote the Progress

The Invent Blog

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     The first nine 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 September 2007, the PTO registered 45 federal trademarks to Marylanders (based on a search of "owner address" records using TESS). The PTO registered 35 federal trademarks to Marylanders for the same period in 2006 (a 29% difference). 


     

      In terms of filed applications, the PTO received 71 applications for trademarks from Maryland entities and individuals for the first nine months of 2007, compared to 65 applications received during the same period in 2006 (a 9% increase).

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     The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following cases, as published by Justia:

• Moulin Rouge, S.A. v. Moulin Rouge Caterers, Inc. et al, 07 civ 02482 (D. Md. 2007), filed Sep. 18, 2007.

According to court papers, Plaintiff Moulin Rouge, S.A., is a Belgian corporation having its principal place of business in Paris, France. It owns the famous French trademark MOULIN ROUGE, which, in English, means "red windmill."  The mark has allegedly been in use in France continuously since 1889 when the famous Parisian cabaret first opened (first use in commerce in the U.S. since 1981). Moulin Rouge reportedly owns several U.S. trademark registrations covering live music stage shows and theater productions.  Defendants are Gaithersburg, MD-based Moulin Rouge Caterers and its owner Mohammad Taghi Yahyavi. Moulin Rouge, S.A., which is represented by Robert Bowie, Jr. of BOWIE & JENSEN LLC, is alleging trademark dilution, infringement, and unfair competition.

• Allegis Group, Inc. v. Bizet Human Asset Management, 07 civ 02497 (D. Md. 2007), filed Sep. 18, 2007.  

In court papers, Plaintiff Hanover, MD-based Allegis Group, Inc., which provide human capital services, alleges it has used the mark "PEOPLE. SERVICE. PERFORMANCE" in commerce before Pittsburgh, PA-based Bizet Human Asset Management began using  its federal trademark "PEOPLE.  PROCESS.  PERFORMANCE."  When Bizet allegedly failed to cease using its trademark on its website, despite canceling its registration, Allegis sued for infringement under 15 U.S.C. § 1051.  Allegis Group is represented by Sherry Flax of Saul Ewing LLP.

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Summary:  Maryland residents are latest targets of record industry lawsuits aimed at stopping digital music file sharing

     Last week, the Recording Industry Association of America (RIAA) sent 403 pre-litigation settlement letters to 22 universities, including the University of Maryland - College Park, alleging illegal copying and distribution of RIAA-member copyrighted sound (music) recordings. In addition to the letters, the RIAA filed 24 copyright infringement lawsuits against previous recipients of pre-litigation letters who allegedly ignored "settlement opportunities." According to an RIAA statement, the lawsuits were filed in federal courts against students, including students reportedly attending the University of Maryland. As shown below, two of the lawsuits were filed in the District Court for the District of Maryland by Matthew J. Oppenheim, Esq., RIAA's lawyer (and a Maryland resident himself, according to public property records).

     One of Mr. Oppenheim's lawsuits, BMG Music et al v. Norwood, 07cv02480 (D. Md. 2007), was served on Sarah Norwood, a St. Leonard, MD (Calvert County), resident (according to RIAA's complaint).  The suit is predicated solely on a claim that on April 28, 2007, Ms. Norwood distributed 377 audio files over the Gnutella peer-to-peer network from a computer having the IP address 69.251.74.83 (which is a Comcast.net IP address: click here to see for yourself).

     The Record Industry vs The People blog describes what happens during RIAA-initiated litigation, which could best be described as somewhat heavy handed. Here's how the authors of the blog describe the "settlement opportunities":

Continue Reading...

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     The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following case(s), as published by Justia:

• Stertil B.V. et al v. Automotive Lifts & Machinery Corp., Case Number 1:2007cv02411, filed September 12, 2007
  
  According to court papers, Plaintiffs Stertil B.V. (The Netherlands) and Stevensville, Maryland-based Stertil-Koni, Inc., have sued Defendant Automotive Lifts & Machinery Corp. (ALM) for direct and/or indirect infringement of U.S. Patent No. 6,315,079. The '079 patent is directed to heavy vehicle lifting devices.

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Summary: The House version of the Patent Reform Act of 2007 would bar submission of search reports prepared by non-U.S. citizens.

     H.R.1908, the Patent Reform Act of 2007, was introduced in the House of Representatives on April 18, 2007. As proposed, the Bill did not include Section 12, entitled "Additional Information," which made its way into the legislation when the House debated, and eventually passed, H.R.1908 on September 7, 2007. The table below, left column (after the jump), shows the original language of the provision, which would add a new Sec. 123 to Title 35 U.S.C. and grant the PTO authority to require prior art search reports. House Report 110-314 describes the measure as follows:

"The USPTO has discussed the need for some sort of examination support document [ESD] or applicant quality submission to improve the examination process. It may include a thorough search of the art in the field of the invention and in related fields in which one skilled in the art pertaining to the invention would expect to find information applicable to the invention. It is also expected that the information discovered by the search that is material to the patentability of the claimed invention be disclosed to the USPTO along with an analysis of how the information relates to the claimed invention and how the claimed invention is distinguished over the prior art information."

Continue Reading...

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     Yesterday, Part 1 of this post identified issues of potential concern regarding the impacts of the new U.S. Patent & Trademark Office (PTO) rules on the number of continuation, continuation-in-part (CIP), and Request for Continued Examination (RCE) applications being prosecuted at the PTO for an invention. Below are some suggestions for dealing with the rule's limitations on the number of claims permitted in those patent applications, as suggested by Peter Weissman, a Partner at Blank Rome LLP.  In particular, patent applicants and their representatives should:

• Carefully consider all claims in an application to ensure they add benefit to the application;
  
  
• Review pending unexamined applications that exceed the 5/25 number of claims limitation in preparation to limit the number of claims or conduct a search prior to receiving a notification from the PTO; 
  
  
• Be mindful of disclosed but unclaimed embodiments in the specification;
  
  
• Consider conducting a search prior to filing an application, because a search could be used for the combined purpose of accelerating examination in one application and requesting additional claims beyond the allotted 5/25 limit in another application. But remember that these procedures could have a substantial negative impact on the scope of claims.

Comments:

• Click here for part 1 of this post
  
  
• Final Rule:  "Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications" 72 FR 46716 (Aug. 21, 2007)
  
  
• Thanks to Peter Weissman for granting permission to use his article"Patent Prosecution Considerations under the New U.S. Patent & Trademark Office Rules," which may be found here

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     Although there are 45 days remaining before the new U.S. Patent & Trademark Office (PTO) patent rules take effect November 1, 2007, the number of visitors to this blog looking for information about the rules suggests that patent applicants and their representatives are actively looking for the best ways to comply with the rules today. That’s not a bad idea, considering how the new rules will substantially limit how patent applications are prosecuted at the PTO, and may require applicants to modify their patent filing strategies for both prospective as well as pending patent applications. According to Peter Weissman, a Partner at Blank Rome LLP, applicants should begin considering strategies for complying with the new rules.  In particular, Peter says, given the limited number of continuations, continuation-in-part (CIP), and Request for Continued Examination (RCE) applications allowed under the new rules, applicants should:

• Consider relying more on interviews with Examiners, particularly personal interviews, which tend to substantially advance prosecution and reduce the need for filing continuations and RCEs;
  
  
• Carefully review all claims, including dependent claims, after a first action on the merits (FAOM) to ensure that the case is in condition for an appeal; all “formal” matters should be resolved at that stage as well;

Continue Reading...

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     The Copyright Office issued an announcement that it is conducting beta testing of its web-based registration system, which will be part of the new "electronic Copyright Office" (eCO). According to the announcement, participants in eCO beta testing will file basic registration claims at a reduced fee established for electronic filings (i.e., $35, which is $10 less expensive than the current paper filing fee). Individuals prepared to register at least one basic claim that would like to be considered for participation in eCO beta testing can complete and submit a short request form available here. Reportedly, groups of beta testers will be selected from requests received periodically throughout the duration of the beta testing. The announcement does not state how long beta testing will last.

Comments:

• The U.S. Patent & Trademark Office already provides for electronic filing of patent and trademark applications, as well as electronic filing of assignment documents

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     The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following case(s), as published by Justia:

• Extra Space Storage, LLC v. Maisel-Hollins Development Co. et al , Case Number 1:2007cv02351, filed September 5, 2007

According to court papers filed September 5, 2007, Plaintiff Extra Space Storage, LLC, a Delaware entity based in Salt Lake City, Utah, sued Maryland-based Defendants Maisel-Hollins Development Co., Extra Space Management Co. LLC, Annapolis Self Storage Limited Partnership LLP, Silver Spring Extra Space LLC, Annapolis Extra Space LLC, and Post Management Co., for alleged trademark infringement under 15 U.S.C. § 1114.  The mark at issue is Plaintiff's federally-registered mark "Extra Space Storage" (the image above shows the mark used in commerce on Plaintiff's web site).

Plaintiff notes in its complaint that the State of Maryland issued a registration for the trademark "Extra Space Self Storage" to Defendant Maisel-Hollins Development Co.  Maryland's trademark records show that the mark was first used in Maryland in 1985; the mark has a registration date of June 15, 2007.  Plaintiff is seeking to cancel this registration in Maryland, among other requested relief.

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     With so much talk about climate change, it's good to see that Congress, including a few notable Presidential candidates, is pursuing meaningful technology-based legislation that tackles at least some of the complex issues associated with global warming. In January of this year, Senator Joe Lieberman introduced S.280, the Climate Stewardship and Innovation Act of 2007, which was quickly co-sponsored by 11 Senators, including Presidential candidates Hillary Clinton, Barack Obama, and John McCain.  The bill was referred to the Committee on Environment and Public Works, which held a hearing in July.

     Of particular interest is Section 318 of the Act, entitled "Patent Study," which calls for the Director of the Patent and Trademark Office, in consultation with representatives of interested parties in the private sector, to conduct a study to determine the extent to which changes to the United States patent system are necessary to increase the flow of climate change-related technologies. The Study is suppose to address:

(1) the balance between the protection of the inventor and the disclosure of information;

(2) the role of patents in innovation within the covered sectors;

(3) the extent to which patents facilitate increased investments in climate change research and development;

(4) the international deployment of United States developed climate change related technologies on the United States patent system;

(5) ways to leverage databases as innovation tools;

(6) best practices for collaborative standard setting; and

(7) any other issues the Director deems appropriate.

     It's not clear what is meant by "increas[ing] the flow of climate change-related technologies," but the language suggests that one goal of the Study is to find ways to make obtaining patents less of a burden and faster to get, which would, presumably, encourage innovation (or at least not stymie innovation).  To get a sense of the number of climate change-related patents already issued, I did a quick search of the PTO on-line database for patents issued with the term "global warming" and came up with the following trend:

 

Continue Reading...

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     The Port of Baltimore is the destination for approximately 40 million tons of bulk and container cargo each year, making the Port one of the busiest in the nation. Its popularity is the result of geography: two-thirds of the U.S. population lives within an overnight drive of Baltimore. With all that cargo coming into Baltimore, the Port is an obvious entry point for counterfeit goods that infringe federally-registered U.S. trademarks.

     The Department of Homeland Security plays a role in preventing infringing goods from entering U.S. markets by enforcing “parallel imports” regulations. According to Customs Directive No. 2310-008A, it is the policy of the U.S. Customs and Border Protection (part of DHS) to exclude from entry into the U.S., detain, and/or seize, violative trademarked goods. Under its intellectual property rights (IPR) enforcement regime, CBP may detain goods at ports where there is a “reasonable suspicion” that the goods bear marks which violate a federally registered trademark. The detaining Customs officers are tasked with assessing whether marks are counterfeit or confusingly similar to U.S. registered marks, making them the first line defenders against infringement originating at the borders. See Addressing Parallel Imports Goods Under U.S. Laws for more information about this subject (used by permission).

Notes:

• Thanks to Dave Weslow, co-author of the linked article, for the idea for this post

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     The table below shows how Maryland was represented on the House floor during yesterday's vote on passage of H.R.1908, the Patent Reform Act of 2007. 

Gilchrest (R-MD 1st)	For
Ruppersburger (D-MD 2d)	For
Sarbanes (D-MD 3d)	For
Wynn (D-MD 4th)	For
Hoyer (D-MD 5th)	For
Bartlett (R-MD 6th)	Against
Cummings (D-MD 7th)	For
Van Hollen (D-MD 8th)	For

Comments:

• To see how other legislators voted, click on Final Vote Results for Roll Call 863
  
  
• The see the resolution that was approved by an earlier vote, click on House Report 110-319
  
  
• Click on the Patent Reform Act link to the right for more on this topic

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     The House of Representatives today voted to pass H.R.1908, which is entitled the "Patent Reform Act of 2007."  The final vote, covered live by C-SPAN this afternoon, was 220 in favor of passage, 175 against. The House Report 110-319 can be found here, and includes several Amendments not included in the introduced version of the bill.

Comments:

• Attention now turns to the Senate to see if patent reform will finally see passage in Congress after three years of debate
  
  
• To illustrate how divisive patent reform has become, one Representative called H.R.1908 the "Steal America's Inventions Act" during the debate

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     The table below shows how Maryland ranks among other states in terms of the number of lawsuits filed in federal district courts that raise patent, trademark, and/or copyright issues.  The table values are for the last twenty months.

Notes:

• Rankings are based on number of complaints filed between January 1, 2006, and August 31, 2007, and include cases filed in the District of Columbia.  States with multiple jurisdictions/divisions are combined.  Complete table available (please email me a request).
  
  
• Source: Justia.com.

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     As reported last month, the first seven month of 2007 saw a decline in the number of patents granted to Maryland inventors compared to the previous year. That trend continued into August. U.S. Patent & Trademark Office (PTO) records show that for the period January through August 2006, the PTO granted 1,425 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 1,313 patents to Maryland inventors for the same period in 2007, an eight percent decline over 2006 numbers. 

      

     For the month of August 2007, the PTO granted 150 patents naming at least one Maryland resident as an inventor or joint inventor. The PTO had issued 207 patents to Maryland inventors in August 2006, a 28% difference.

     The number of published patent applications naming at least one Maryland inventor in August 2007 was also down, continuing a trend seen in the first seven months of 2007 (compared to 2006). According to the PTO, 296 patent applications naming at least one Maryland inventor were published in August 2007, compared to 307 patent applications published during the same period in 2006, a four-percent difference.

Comments:

• See related posts for June and July.
  
  
• Although an eight percent decline in the number of patents issued to Maryland inventors is not insignificant and clearly suggests a decline in innovation, 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.

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

Comments:

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


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


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

 

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The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following case(s), as published by Justia:

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

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

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

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

 

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

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

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

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

Comments: 

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

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

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

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

     It would appear, then, that, subject to the exceptions under proposed new section § 102(b) (see related post), any prior art available between Day 1 and Day 80 (or Day 250, as the case may be) could be used in an obviousness analysis by the PTO to reject my claims.  In other words, under the new first-to-file system, I would not be able to swear behind prior art using evidence of an earlier conception and reduction to practice.  Eligible prior art available between Day 1 and Day 80 (or Day 250) could include patents, printed publications, public uses, and sales of inventions. See new § 102(a).

 

Comments:

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

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

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

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

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

     In response, Seagate filed a petition for writ of mandamus with the Federal Circuit, which was granted. After ordering en banc review, the Federal Circuit ordered the S.D.N.Y. to reconsider its order compelling discovery.  In doing so, the Federal Circuit overruled its earlier decision in Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (1983), and clarified the scope of the waiver of attorney-client privilege and work product protection that results when an accused patent infringer asserts an advice of counsel defense to a charge of willful infringement. The court’s opinion addressed three significant issues: the standard for awarding enhanced damages, the scope of the waiver of trial counsel-client privileged communications, and the scope of the waiver of trial counsel’s work product. Continue Reading...

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

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

 

Continue Reading...

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

 

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

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

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

Comments:

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

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As reported last month, the first half of 2007 saw a small decline in the number of patents granted to Maryland inventors compared to the previous year. U.S. Patent & Trademark Office (PTO) records show that for the period January through June 2007, the PTO granted 993 patents naming at least one Maryland resident as an inventor or joint inventor (based on residence addresses supplied by patent applicants to the PTO).  The PTO had issued 1,038 patents to Maryland inventors for the same period in 2006. 

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

 

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

See related post here.

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