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

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

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

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

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

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

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

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

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     U.S. Patent & Trademark Office (PTO) records show that for the period January through June 2008, the PTO 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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• Nacre AS v. Silynx Communications, Inc., No. 07-cv-02676, filed Oct. 2, 2007; assigned to J. Williams.

     Plaintiff Nacre AS is a Norwegian company that alleges ownership of U.S. registered trademark QUIETPRO, as well as U.S. Patent No. 7,039,195 (“Ear Terminal”) and U.S. Patent No. 6,567,524 (“Noise Protection Verification Device”). In September 2007, Nacre filed a trademark opposition proceeding against Rockville, MD-based Silynx Communications' QUIETOPS mark before the U.S. Trademark Trial and Appeal Board. That proceeding was stayed when, in October 2007, Nacre filed the above lawsuit against Silynx and its CEO, Gil Limonchik, alleging trademark and patent infringement. On June 12, 2008, the infringement allegations against Limonchik were dismissed without prejudice. Memorandum and Opinion (June 12, 2008). Limonchik, who according to court papers was a former Nacre consultant, had filed a motion to dismiss with prejudice under Rule 12(b)(6) (failure to state a claim).

     In granting the motion as to Count I (trademark infringement), Judge Williams stated that in order for a trademark claim against a corporate officer to survive a Rule 12(b)(6) motion, a plaintiff must allege, in addition to a corporation's infringing activity, that the individual corporate officer played an active role in the infringing activity. In this case, Judge Williams found Nacre's complaint failed to state factual allegations to indicate what actions Limonchik had taken in an individual capacity to infringe upon the QUIETPRO (R) mark. The only relevant allegations in Nacre's complaint, Judge Williams said, were "Defendant have and are infringing the rights of Nacre in QUIETPRO (R) under 15 U.S.C. 1125 and the common law" and "Defendants' infringement of Nacre's rights in QUIETPRO (R) is and has been willful."  Neither of those statements mentioned what specific role Limonchik played in the infringement, Williams found.      

     In granting the motion as to Counts II and III (patent infringement), Judge Williams found Nacre's complaint failed to allege facts sufficient to preclude dismissal of these counts. No part of the complaint, he wrote, offered facts to justify piercing the corporate veil, to demonstrate Limonchik's specific intent or action to induce infringement or facts to support contributory infringement liability.

     Nacre's case is not completely lost, however. Judge Williams' dismissal was made, as noted above, without prejudice as to Nacre's right to amend its complaint to add more factual allegations:

"Plaintiff has walked a fine line in drafting the complaint. It is possible to conjecture facts which would support Defendant Limonchik's liability in this case. However, the law requires a plaintiff to allege enough facts to put the defendant on notice of the claims and the grounds for those claims. Here, Plaintiff has not stated clear grounds for the claims alleged in the complaint."

     Judge Williams noted that "[Limonchik] has not offered any evidence that he would be prejudiced by an amendment [of the complaint], that an amendment would be futile, or that Plaintiff engaged in undue delay. * * * Defendant asks for dismissal with prejudice solely on the grounds that Plaintiff has failed to allege sufficient facts."

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     In Victor Stanley, Inc. v. Creative Pipe, Inc., No. 06-2662 (D. Md. May 29, 2008), U.S. Chief Magistrate Judge Grimm describes the proper means for asserting that documents are protected or immune from discovery because of the attorney-client privilege or attorney work product doctrine. Judge Grimm's explanation comes at the end of his opinion in Victor Stanley, published two weeks ago.

The Issue

     Because a party responding to a Rule 34 request for the production of discovery is entitled to refuse to produce documents if they are privileged or work product protected, Judge Grimm pointed out that the Federal Rules of Civil Procedure require that when doing so, the responding party must “describe the nature of the documents, communications, or tangible things not produced or disclosed--and do so in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the claim.” The most common way to do this, he wrote, is by using a privilege log, which identifies

1. Each document withheld,
2. Information regarding the nature of the privilege/protection claimed,
3. The name of the person making/receiving the communication,
4. The date and place of the communication, and
5. The document’s general subject matter.

What Really Happens?

     In actuality, Judge Grimm, who in his position as Magistrate referees all kinds of discovery disputes, found that lawyers infrequently provide all the basic information called for in a privilege log, and if they do, it is usually so cryptic that the log falls far short of its intended goal of providing sufficient information to the reviewing court to enable a determination to be made regarding the appropriateness of the privilege/protection asserted without resorting to extrinsic evidence or in camera review of the documents themselves. Few judges, he said, find that the privilege log is ever sufficient to make the discrete fact-findings needed to determine whether a privilege/protection was properly asserted and not waived.

What Should Lawyers Be Doing? 

     According to Judge Grimm, parties should be wary of filing a response to a Rule 34 document production request that asserts privilege/protection as a basis for refusing to make requested production without having a factual basis to support each element of each privilege/protection claimed for each document withheld, because doing so is a sanctionable violation.

     Insuring that a privilege or protection claim is properly asserted in the first instance and maintained thereafter involves a several step process, Judge Grimm wrote.

(1)  First, pursuant to FRCP 26(b) (5), the party asserting privilege/protection must do so with particularity for each document, or category of documents, for which privilege/protection is claimed.

(2)  After that, if the requesting party challenges the sufficiency of the assertion of privilege/protection, the asserting party may no longer rest on the privilege log, but bears the burden of establishing an evidentiary basis–by affidavit, deposition transcript, or other evidence– for each element of each privilege/protection claimed for each document or category of document. A failure to do so warrants a ruling that the documents must be produced because of the failure of the asserting party to meet its burden.

(3)  If the asserting party makes this showing, and the requesting party still contests the assertion of privilege/protection, then the dispute is ready to submit to the court, which, after looking at the evidentiary support offered by the asserting party, can either rule on the merits of the claim or order that the disputed documents be produced for in camera inspection.

Result

     In Victor Stanley, Judge Grimm said that had he not ruled that Defendant's 165 inadvertently produced documents waived the privilege/protection status of the documents, then the effect of a failure by the Defendants to comply with the court’s order regarding the proper manner in which to assert privilege/protection would have warranted an order to produce the materials for failure to carry the burden of demonstrating the existence of the privilege/protection claimed. 

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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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     Employees of Maryland companies with R&D, manufacturing, and other  capabilities located outside the US may be tempted to collaborate with their counterparts located abroad. It's important to remember, however, that exporting technology information outside the US is highly regulated by several US agencies.

     If the exportation of technology information to overseas colleagues (or to anyone else) is for the sole purpose of filing a patent application outside the US, a license to export that information must first be obtained from the U.S. Patent & Trademark Office (PTO). 35 U.S.C. § 184 provides the legal basis for that requirement:

"Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181 of this title [Patent Secrecy Act] without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued. The license may be granted retroactively where an application has been filed abroad through error and without deceptive intent and the application does not disclose an invention within the scope of section 181 [i.e, secrecy] of this title."

     The term "application" includes patent applications and any modifications, amendments, or supplements thereto, or divisions thereof.

     For information concerning the consequences of failing to comply with the requirements set forth above, continue reading...

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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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    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 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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• #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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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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     The following lawsuit filed in the U.S. District Court for the District of Maryland pits brand and generic drug makers (source: Justia).

• #7: Forest Laboratories, Inc. v. Lupin Pharmaceuticals, Inc., No. 1:2008cv00239, filed January 28, 2008; assigned to J. Legg

     This Hatch-Waxman lawsuit involves Namenda® (memantine HCl). According to the complaint, plaintiff Forest Labs., Inc., a Delaware corporation based in New York, is the exclusive licensee of Orange Book-listed U.S. Patent No. 5,061,703. Plaintiff Forest Labs. Holdings, Ltd., is an Irish company based in Bermuda; plaintiffs Merz Pharma GmbH & Co. KGaA and Merz Pharma GmbH are German companies.

     Also according to the complaint, defendant Lupin Pharmaceuticals, Inc., a Virginia company based in Baltimore, MD, is the wholly-owned subsidiary and agent of Lupin Ltd., an Indian company based in Mumbai. Lupin Ltd. allegedly submitted, through its agent Lupin Pharma, an Abbreviated New Drug Application No. 90-051 to the FDA for approval to market generic Namenda®. It sent Forest the required notice of its ANDA submission on December 14, 2007.

     Plaintiff is asserting infringement of the ‘703 patent, and is seeking to enjoin Lupin from marketing its generic formulation before expiration of the '703 patent.

     Interestingly, plaintiffs also filed a concurrent lawsuit in the District Court for the District of Columbia because they claim not to be able to determine with certainty which one of Lupin, Inc., or Lupin Ltd. was the actual filer of the ANDA. This move was in anticipation of a jurisdictional challenge by Lupin (see related post here).

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     David Donoghue at the Chicago IP Lit. Blog reports today about a discovery matter in a Northern District of Illinois patent case: Se-Kure Controls, Inc. v. Diam USA, Inc., No. 06 C 4857, 2008 WL 169029 (N.D. Ill. Jan. 17, 2008) (Cox, Mag. J.). According to David, Magistrate Judge Cox "granted in part a motion to compel discovery regarding defendant’s advice of counsel defense. The Court ordered defendants to product a technical witness that provided opinion counsel information because opinion counsel was unable to remember the substance of conversations between the two. The Court also ordered production of communications between opinion counsel and trial counsel related to the patent in suit. These communications were within the scope of defendant’s waiver, even though a deposition of trial counsel would not have been allowed." 

     This opinion is one of many to be published post-Seagate, and further illustrates the extent to which courts will allow discovery once the opinion of counsel defense is raised by defendants in patent litigation matters. Click here for summaries of other post-Seagate cases.

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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 year ago, West Chester, OH-based Contech Stormwater Solutions sued Mount Airy, MD-based BaySaver Technologies, Inc. and AccuBid Excavation, Inc., for allegedly infringing its U.S. Patents Nos. 5,707,527 and 6,027,639 (see related post here). After finding in favor of defendants on the question of liability, the U.S. District Court for the District of Maryland considered defendants’ business tort, and patent invalidity and unenforceability counterclaims in connection with the parties’ summary judgment motions.

Rule 37(c)(1) Sanctions

     At the outset, the court limited defendants’ use of certain evidence as a sanction under Rule 37(c)(1), “because [defendants] failed timely to disclose prior art or the underlying basis for their invalidity claims, and because they failed to demonstrate causation and damages on their business tort claims.” In particular, the court found that,

"[Defendants] did not provide a claim chart or any reasoned analysis showing where in the prior art each element of each allegedly invalid claim is located. Defendants merely attached alleged prior art references to their Opposition without any explanation of why any claim of the asserted patents is invalid over the referenced prior art. Without more, [defendants] have quite simply failed to produce specific facts showing that there is a genuine issue for trial, especially under a clear and convincing standard."

     Without evidence to support the counterclaims, the court granted plaintiff’s summary judgment motion.

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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.