Maryland Intellectual Property Law Blog

Copyright Reform?, House IP Committee Nixed, Patent Terms Extended

higgins@blankrome.com (Brian Wm. Higgins) — Sat, 15 Nov 2008 17:00:00 -0500

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).

Patent Reform Act of 2008: News, Commentary, and Analysis

higgins@blankrome.com (Brian Wm. Higgins) — Thu, 13 Nov 2008 20:39:14 -0500

Seven weeks after Senator Jon Kyl (R-AZ) introduced S.3600, the Patent Reform Act of 2008, on September 25, 2008 (source: GovTracks), the reaction has been predictable, with stakeholders on the pro- and anti-reform sides making their views known. The Advanced Medical Technology Association (AdvaMed) said “improving and modernizing the patent system is clearly important to all sectors of the U.S. economy and we applaud Sen. Kyl and his staff for their leadership and inclusive approach to developing this legislation.” The Biotechnology Industry Organization’s (BIO) President and CEO Jim Greenwood immediately praised Kyl’s legislation, stating that "BIO appreciates the efforts of Senator Kyl and his staff to address the concerns of many stakeholders with the patent reform legislation currently pending in the Senate, and commends him for introducing the Patent Reform Act of 2008 (source: IPWatchdog).

How will other stakeholders react? If past efforts are any indication, technology companies like Blackberry-maker RIM, which reportedly spent hundreds of thousands of dollars lobbying Congress on legislation including patent reform in 2007, may take the same stance with the 2008 legislation, as will Microsoft, Google, and other tech companies, which formed the Coalition for Patent Fairness and fought big pharmaceutical companies to keep portions of the existing patent system in tact during the battle over the 2007 patent reform effort.

Bloggers have weighed in on the new legislation, too. “There is practically zero chance that this bill will pass in the current [110^th Congress] session” (source: Peter Zura at the 271blog). Ex-AIPLA executive director Michael Kirk agrees. "Even if the Democrats get to 60 seats in the Senate, I would not count on the legislation being passed,” Kirk said in an exclusive interview with IAM (source: IAM Blog).

Court Clarifies Patent Eligibility Standard for Inventions Involving Process Steps

higgins@blankrome.com (Brian Wm. Higgins) — Fri, 31 Oct 2008 21:29:24 -0500

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.

Thus, a claimed process involving a fundamental principle that uses a particular machine or apparatus would not pre-empt uses of the principle that do not also use the specified machine or apparatus in the manner claimed, and therefore would be potentially protectable under the patent laws. And, a claimed process that transforms a particular article to a specified different state or thing by applying a fundamental principle would not pre-empt the use of the principle to transform any other article, to transform the same article but in a manner not covered by the claim, or to do anything other than transform the specified article, and therefore would also be potentially protectable under the patent laws.

The court recognized two corollaries to the machine-or-transformation test. First, a mere field-of-use limitation added to a process claim is generally insufficient to render an otherwise ineligible process claim patent-eligible. Also, “insignificant postsolution activity” will not convert an unpatentable principle into a patentable process (e.g., recording bids in an auction without citing the manner of recording may be “extra-solution activity”). The court also noted that the inquiry into whether a claim is eligible under § 101 does not involve whether the claim is also novel and not obvious under §§ 102 and 103, and also eligibility is not defeated by an individual step or limitation that by itself would be ineligible, one must look at the claim as a whole.

But what exactly does “machine or apparatus” and “transform” mean in the context of the two-part machine-or-transformation inquiry? Because the claims at issue in Bilski did not limit any process step to any specific machine or apparatus, the court did not elaborate as to the factual evidence important in determining whether a process claim is sufficiently tied to a machine or apparatus.

Transformative process steps

The court did, however, considered in detail the “transformative” step. A claimed process is patent-eligible, the court said, if it transforms an article into a different state or thing. This transformation must be central to the purpose of the claimed process. Physical transformation of physical objects or substances is patent-eligible subject matter. The transformation of raw data stored in a computer into a particular visual depiction of a physical object on a display is sufficient to render that more narrowly-claimed process patent-eligible (even if the underlying physical object being displayed is not transformed). On the other hand, a data gathering step added to a claim does not convert an algorithm into a patent-eligible process. Also, purely mathematical optimization algorithms are also not patent-eligible. Moreover, Bilski’s claimed transactions involving the exchange of legal rights is not drawn to patent-eligible subject matter.

State Street

Finally, with regard to the court’s earlier State Street decision, in which it announced the "useful, concrete, and tangible result" test relied upon extensively by the courts and the PTO to determine patent eligibility, the decision has been criticized as causing a flood of patent applications upon the PTO for a wide variety of non-technological inventions involving such things as processes for calculating indices, conducting arbitration, tax-planning, and performing legal methods. In Bilski, the court said that in many instances, the “useful, concrete, and tangible result” test may provide useful indications of whether a claim is drawn to a fundamental principle or a practical application of such a principle, however, the inquiry is insufficient to determine whether a claim is patent-eligible under § 101. Moreover, the test was “never intended to supplant the Supreme Court's test.” This holding has many believing that State Street was overturned, when in fact it was not. The court said that those portions of State Street that relied solely on the “useful, concrete, and tangible result” test should not longer be relied upon.

Copyright News: PRO-IP law, RIAA setback, DMCA rulemaking

higgins@blankrome.com (Brian Wm. Higgins) — Wed, 22 Oct 2008 09:27:34 -0500

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)

MD IP Law Blog Joins Top-Ranked Blawgs

higgins@blankrome.com (Brian Wm. Higgins) — Sun, 28 Sep 2008 12:24:02 -0500

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

Man & Machine, Inc. v. Apple, Inc.

higgins@blankrome.com (Brian Wm. Higgins) — Sun, 21 Sep 2008 21:20:00 -0500

Man & Machine, Inc. v. Apple, Inc., No. 8:2008cv02453 (D. Md filed Sep. 18, 2008); assigned to J. Williams

Man & Machine, Inc. (M&M), a Maryland company based in Landover, MD, owns the federally registered MIGHTY MOUSE trademark, which, according to Trademark Office records, was first used in commerce in 2004 (in connection with M&M's medical and industrial and hygienic waterproof computer mice products).

In its Complaint, M&M contends that Apple's Mighty Mouse product infringes M&M's trademark, that Apple purchased the keyword "Mighty Mouse" from various Internet search engines to drive search engine traffice to Apple's website, and that Apple received an invalid license from CBS Operations for use of CBS's MIGHTY MOUSE trademark, which is allegedly the subject of a pending trademark application for computer mice, and is also the subject of a trademark opposition (CBS Corporation allegedly owns the mark MIGHTY MOUSE for use in connection with toys and children's apparel).

Copyright Workshop Series Announced; Information Theft on the Rise

higgins@blankrome.com (Brian Wm. Higgins) — Sat, 20 Sep 2008 22:27:45 -0500

Univ. of Maryland University Center's Center for Intellectual Property announces its 2008-2009 asynchronous online workshop series. Courses include "Copyright Law and Integrated Access to Digital Course Materials," "Section 108," and "Fair Use and Balance in Copyright: The Best Practices Model," among others.
KROLL's Global Fraud Report, release earlier this week, concludes that the average company loss due to fraud increased by 22%, based on input from 890 senior executives worldwide. The fastest growing type of fraud was information theft (27%: up from 22%), which KROLL attributes to, among other things, high staff turnover or weak internal controls.

Cardin Adds Support to Intellectual Property Enforcement Bill

higgins@blankrome.com (Brian Wm. Higgins) — Fri, 12 Sep 2008 19:08:34 -0500

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.

Pinkberry v. Yogiberry

higgins@blankrome.com (Brian Wm. Higgins) — Wed, 10 Sep 2008 21:28:05 -0500

Pinkberry, Inc. v. Yogiberry, Inc., No. 8:2008cv02355 (D. Md. filed Sep. 9, 2008); assigned to J. Titus

California-based Pinkberry, Inc. is a wildly popular upscale frozen yogurt restaurant with stores in New York and California. In its complaint against Olney, MD-based Yogiberry, Inc., Pinkberry characterizes its product line as "frozen yogurt with optional toppings that include fresh fruit, cereals and nuts, as well as smoothies and shaved ice under the distinctive Pinkberry branding in a unique, cafe-style restaurant setting." Comparing its branding success to "the way that Apple Computers revolutionized the computer industry," Pinkberry asserts that it has revolutionized the yogurt business by offering a product selection and consumer experience that are uniquely Pinkberry. It cites Time, Fortune, Los Angeles Times, New York Times, and Reuters, as well as blogs, as evidence of its unique stature in the industry.

Pinkberry contends that Yogiberry's business "deliberately imitates Pinkberry's highly distinctive branding and trade dress." It contends that the use of the YOGIBERRY mark infringes the registered PINKBERRY mark, service marks, and trade name, in a confusingly similar manner to sell goods that unfairly compete with Pinkberry's, and it further contends that Yogiberry has misappropriated Pinkberry's trade dress. Pinkberry is seeking an injunction, monetary damages, and forfeiture of signage.

Reed Smith's Mark Wasserman (Falls Church, VA) filed the complaint on behalf of Pinkberry.

Maryland IP Law Blog Wordle

higgins@blankrome.com (Brian Wm. Higgins) — Mon, 08 Sep 2008 21:34:18 -0500

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.

Trademark Applications, IP Lawsuit Filings, and Technology Spending in Maryland

higgins@blankrome.com (Brian Wm. Higgins) — Thu, 04 Sep 2008 22:52:10 -0500

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)

Recent Popular Searches for Maryland IP Law Info

higgins@blankrome.com (Brian Wm. Higgins) — Sun, 31 Aug 2008 05:50:19 -0500

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:

Conspiracy Theory Fails to Convince Federal Circuit

higgins@blankrome.com (Brian Wm. Higgins) — Mon, 25 Aug 2008 21:07:46 -0500

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

Petersburg, Virginia-based Star Scientific, Inc., sued R.J. Reynolds Tobacco Co. for infringement of U.S. Patent Nos. 6,202,649 and 6,425,401 in the U.S. District Court for the District of Maryland in 2001. A bench trial on the issue of the enforceability of the asserted patents was held in 2005. On June 25, 2007, the District Court found Star’s patents to be unenforceable on the basis of inequitable conduct by Star’s attorneys during prosecution of Star’s patents before the U.S. Patent & Trademark Office. Thereafter, Star characterized the decision as “stunning and totally without support in the record,” and concluded that “the opinion ignores significant portions of the record, distorts others, and spins a tale that is unrecognizable to those who attended the trial.” The Federal Circuit reversed.

Background

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

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

Shortly thereafter, Williams and Star terminate Sughrue's engagement and hired Banner & Witcoff. Rivard and Hoscheit from Banner met with Delmendo to discuss the transfer of files and the status of pending applications. Paul Perito, a partner of the law firm Paul, Hastings, who became the chairman of Star, tapped Scott Flicker from Paul Hastings to facilitate the transfer of files from Sughrue to Banner. Upon receiving the files, Rivard searched them for prior art but did not notice the Burton letter. Rivard filed an Information Disclosure Statement ("IDS") discussing and distinguishing certain prior art, but did not include the Burton letter. Rivard filed a continuation with an IDS listing many of the same references as his earlier IDS, but also did not include the Burton letter.

In June 2002, while waiting for the continuation application to issue as a patent, Rivard became aware of the Burton letter and other data when Star's trial counsel, Crowell & Moring ("Crowell"), informed him that RJR had raised those documents in litigation. Rivard's initial reaction was that they should be disclosed out of an abundance of caution. Several Crowell attorneys exchanged e-mails amongst themselves discussing whether they thought the Burton letter was required to be disclosed to the PTO; however, the letter was never disclosed to the PTO.

Analysis

In reaching its decision, the Federal Circuit said,

The need to strictly enforce the burden of proof and elevated standard of proof in the inequitable conduct context is paramount because the penalty for inequitable conduct is so severe, the loss of the entire patent even where every claim clearly meets every requirement of patentability. Just as it is inequitable to permit a patentee who obtained his patent through deliberate misrepresentations or omissions of material information to enforce the patent against others, it is also inequitable to strike down an entire patent where the patentee only committed minor missteps or acted with minimal culpability or in good faith. As a result, courts must ensure that an accused infringer asserting inequitable conduct has met his burden on materiality and deceptive intent with clear and convincing evidence before exercising its discretion on whether to render a patent unenforceable.

Deceptive Intent Prong

The Federal Circuit found that the District Court's finding of deceptive intent as to both patents-in-suit was based primarily on its acceptance of RJR's theory that Williams and Star conspired to deliberately prevent Delmendo and his colleagues at the Sughrue firm from disclosing the Burton letter to the PTO by replacing them with the Banner firm and purposely keeping the Banner firm ignorant of the Burton letter. The Federal Circuit held that this "quarantine" theory was not supported by clear and convincing evidence, in that RJR's evidence had a major gap—RJR failed to elicit any testimony or submit any other evidence indicating that Star knew what the Burton letter said prior to replacing the Sughrue firm.

Materiality Prong

The Federal Circuit found that an interrogatory response, which Star disclosed to the PTO, contained the critical information that the prior art had achieved low to insignificant levels of TSNA, and that the information contained in the Burton letter would therefore have been cumulative during prosecution by the time the Banner lawyers were made aware of the letter in June 2002.

Read Part 1 of this post.

Hillcrest Labs Sues Nintendo and Its Wii Video Game

higgins@blankrome.com (Brian Wm. Higgins) — Sun, 24 Aug 2008 21:28:59 -0500

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

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

Claim 1 of the '611 patent recites:

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

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

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

Patent Lawsuit Filings Down in July 2008

higgins@blankrome.com (Brian Wm. Higgins) — Wed, 13 Aug 2008 21:04:20 -0500

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.

Maryland's SafeNet Patented Technology Secures Beijing Olympic Coverage

higgins@blankrome.com (Brian Wm. Higgins) — Mon, 11 Aug 2008 21:59:06 -0500

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.

Senate Passes Legislation Impacting IP Laws

higgins@blankrome.com (Brian Wm. Higgins) — Wed, 06 Aug 2008 05:00:00 -0500

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.

Number of IP Lawsuits Increases in Maryland

higgins@blankrome.com (Brian Wm. Higgins) — Tue, 05 Aug 2008 21:05:33 -0500

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.

Federal Circuit Considers Whether Justiciable Case or Controversy Exists in Hatch-Waxman Case

higgins@blankrome.com (Brian Wm. Higgins) — Sat, 26 Jul 2008 11:02:20 -0500

Merck & Co. Inc. v. Apotex Inc., No. 2007-1362 (Fed. Cir. July 16, 2008) (non-precedential)

     In this appeal, the Federal Circuit affirmed and vacated a decision by the U.S. District Court for the District of Delaware (J. Sleet) in favor of Plaintiff-Appellee Merck & Co., Inc. (“Merck”).

     Merck obtained approval from the FDA to market the drug FOSOMAX®. It sued Apotex for patent infringement when Apotex filed an Abbreviated New Drug Application (“ANDA”) seeking FDA approval to commercialize a generic version of FOSOMAX®. Apotex counterclaimed for a declaratory judgment of patent invalidity and noninfringement.

     Following discovery, Merck granted Apotex a covenant not to sue for infringement of all patents-in-suit, and moved to dismiss all claims and counterclaims on the grounds that the case no longer presented an Article III case or controversy. Apotex then moved to amend its counterclaims to add a claim for a violation of the Sherman Antitrust Act, 15 U.S.C. § 2. The district court denied Apotex’s motion to amend its counterclaims, and granted Merck’s motion to dismiss all claims and counterclaims for lack of Article III jurisdiction.

     On appeal, the Federal Circuit affirmed the district court’s denial of Apotex’s motion to add an antitrust counterclaim, and vacated the district court’s decision regarding infringement and invalidity as moot and remanded with instructions to dismiss the claims as moot. In reaching those decisions, the Federal Circuit stated that a justiciable Article III controversy may continue to exist between a patentee drug company and an ANDA filer in the context of the Hatch-Waxman Act even after the patentee drug company has granted the Paragraph IV ANDA filer a covenant not to sue. Caraco Pharm. Labs., Ltd. v. Forest Labs., Inc., 527 F.3d 1278, 1296-97 (Fed. Cir. 2008). However, in this case, two events after oral argument on appeal rendered the infringement and validity claims moot:

The FDA decided to treat the statutory automatic 30-month stay on Apotex’s ANDA as dissolved once the district court dismissed the case; thus Apotex's ANDA could be approved; and

Teva, which filed the first ANDA against FOSOMAX®, began marketing its generic FOSOMAX® on or about February 6, 2008, so Apotex no longer suffered a delay in entering the market that is traceable to Merck and redressible by a court judgment.