Number of Patents Issued to Marylanders Inches Up

Posted on July 9, 2009 by Brian Wm. Higgins

     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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Number of Patents Issued to Marylanders Continues Downward Trend

Posted on January 3, 2009 by Brian Wm. Higgins

     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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Federal Trademark Trends in Maryland: 2008 Summary

Posted on January 2, 2009 by Brian Wm. Higgins

     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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Maryland IP Law Blog Wordle

Posted on September 8, 2008 by Brian Wm. Higgins

     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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Federal Trademark Trends in Maryland: First Half 2008

Posted on July 3, 2008 by Brian Wm. Higgins

     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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Number of Patents Issued to Marylanders Continues Recent Trends

Posted on July 2, 2008 by Brian Wm. Higgins

     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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Grimm's Guide to Asserting Attorney-Client Privilege

Posted on June 12, 2008 by Brian Wm. Higgins

     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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Patent Litigation in Maryland: 2007 Trends

Posted on January 3, 2008 by Brian Wm. Higgins

    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). 

  • Nutramax Laboratories, Inc. v. Platinum Performance, Inc.
  • Lonza Group AG v. Northwest Biotherapeutics, Inc.
  • F.O.B. Instruments, LTD. v. Maxi-Aids, Inc. et al
  • Technology Patents LLC v. Deutsche Telekom AG et al
  • Soundview Publications, Inc. et al v. Nutramax Laboratories, Inc.
  • Raymond Geddes & Company, Inc. v. J. Rousek Toy Co. Inc.
  • American Silver LLC et al v. General Resonance LLC et al
  • Simon Systems, Inc. v. Corel Corporation
  • Raymond Geddes & Company, Inc. v. Nakajima USA, Inc.
  • Nacre AS v. Silynx Communications, Inc. et al
  • Stertil B.V. et al v. Automotive Lifts & Machinery Corp.
  • Plastic Safety Systems, Inc. v. Road Safety, LLC et al
  • STX, L.L.C. v. J. deBeer & Son, Inc.
  • Introsan Dental Products, Inc. v. Dentsply Tulsa Dental et al
  • Pulse Medical Instruments, Inc. v. Drug Impairment Detection Services, LLC
  • Breckenridge Pharmaceutical, Inc. v. Cornerstone Biopharma, Inc. et al
  • 180S, Inc. et al v. E&B Giftware, LLC
  • Wright Manufacturing, Inc. v. Cub Cadet LLC et al
  • Nutramax Laboratories, Inc. v. Healthy Directions, LLC et al
  • Shire LLC v. Colony Pharmaceuticals, Inc. et al
  • Wyeth v. Lupin Ltd. et al
  • Contech Stormwater Solutions Inc. v. Baysaver Technologies, Inc. et al
  • Teva Pharmaceuticals Industries Ltd. et al v. Lupin Limited et al
  • Teva Pharmaceutical Industries Ltd. et al v Hetero Drugs Ltd.
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Opinion Issued as "Not Available for Publication" Adds Uncertainty to Status of Environmental Technology Patent

Posted on October 8, 2007 by Brian Wm. Higgins

Summary: A judicial opinion involving environmental-related patents that was issued as “not available for publication” limits what could be an important decision by the Federal District Court for the District of Maryland


     I have to admit that I was eager to post a summary of Judge Catherine Blake’s memorandum opinion in the matter of Contech Stormwater Solutions, Inc. v. BaySaver Technologies, Inc. and AccuBid Excavation, Inc., No. 07 Civ. 358 (D. Md. Sep. 26, 2007). After all, the opinion is at the crossroads of patent law and environmental technologies, two of my favorite topics (check out my bio, and you’ll understand).

     After summarizing the case, however, it became apparent that the Contech opinion concerns an issue of importance beyond just the merits of the two environmental-related patents-at-suit: the opinion was issued as “not available for publication,” meaning it has limited authority in the District Court for the District of Maryland where it originated, as well as in other Fourth Circuit courts (and possibly in the Federal Circuit), despite Rule 32.1 of the Federal Rules of Appellate Procedure which says:

“ A court may not prohibit or restrict the citation of federal judicial opinions, orders, judgments, or other written dispositions that have been: (i) designated as “unpublished,” “not for publication,” “non-precedential,” “not precedent,” or the like; and (ii) issued on or after January 1, 2007.”

     Paul Mark Sandler opined earlier this year in Raising the Bar: "Citing Unpublished Opinions,” The Daily Record, May 4, 2007, that:

“The new rule [32.1] will bring a measure of uniformity to the federal courts of appeals. Although federal circuit courts will still be able to give varying precedential weight to unpublished opinions, they can no longer prohibit lawyers from citing them. Thus, Rule 32.1 will effectively overturn local appellate rules in the Second, Seventh, Ninth, and Federal Circuits, where the citation of unpublished opinions is currently banned outright.”

     Paul’s comment is correct: courts will give varying precedential weight to unpublished opinions, even though under Rule 32.1 they won’t be able to outright ban them in, for example, the Fourth Circuit and Federal Circuit (which handles all patent appeals). Thus, while Rule 32.1 apparently removes the bar to citation to unpublished opinions, it does nothing to lessen what amounts to a stigma associated with those opinions, especially in the court that issued the opinions. The result of the "not available for publication" designation in this case is that lawyers will be reluctant to cite to the memorandum opinion to support their arguments in other cases.

     Issuing the Contech opinion as “not approved for publication” does not make sense. The opinion contains a detailed claim construction that, in one instance, is diametrically opposed to another district court’s claim construction (i.e., the District Court for the District of Oregon) regarding the term “siphoning,” which leaves one of the two patents-in-suit in the Contech case in a state of flux. That patent, described below, was issued in 1998 and has already seen litigation twice. It’s possible that it will see the inside of more courtrooms before the patent expires, so providing a precedential opinion today, which others can rely upon without hesitation, just makes sense.

The Lawsuit

     The lawsuit began in February 2007 when 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, which are directed to an “Apparatus and Method for Treating Stormwater” and a “Self-Cleaning Siphon-Actuated Radial Flow Filter Basket,” respectively. At the summary judgment stage, the Maryland District Court granted defendants’ motion for summary judgment, finding that BaySaver Technologies’ BaySaver™ stormwater filtration units do not infringe the two patents. In doing so, the court refused to adopt the Oregon District Court’s construction of the term “siphoning,” choosing instead to adopt its own construction of the term.  

     In particular, the court construed the term “siphoning” in the clause “siphoning treated water from the drainage space under gravity into the treated water outlet conduit” according to the patentee’s chosen definition:  “[the specification] makes it clear that the patentee is defining ‘siphoning’ to describe a process by which water is emptied from a drainage space by traveling through a tube or pipe running from the liquid in the drainage space to a lower level outside the vessel so that atmospheric pressure forces the liquid through the tube.” That interpretation of the disclosure is contrary to the ordinary meaning of the term as understood by one skilled in the art, the court acknowledged, since it excludes the flow of water over an intermediate elevation. The BaySaver device, the court found, “does create a true siphon effect as the term is ordinarily understood by those skilled in the art.”

     The Oregon court had come to a different construction in Stormwater Management, Inc v. Cds Technologies, Inc., No. 3:04 Civ 414 (D. Ore. 2004):

“[O]ne of ordinary skill in the art of hydraulics would understand ‘siphoning’ to mean ‘a closed conduit that rises above the hydraulic grade line and in which the pressure at some point is below atmospheric.’ Standard Handbook for Civil Engineers (3d ed.). The ['527] patent does not expressly redefine the term "siphoning," nor does the patent redefine that term by implication by using the term 'throughout the entire patent specification, in a manner consistent with only a single meaning.' Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1271 (Fed. Cir. 2001). Rather, the patent's use of the term 'siphoning' is consistent with that term's ordinary meaning as understood by one of ordinary skill in the art. Accordingly, the court finds 'siphoning,' as used in the '527 patent, means: 'a closed conduit that rises above the hydraulic grade line and in which the pressure at some point is below atmospheric.' Ordered by Judge Michael W. Mosman. (dls, ) (Entered: 05/11/2005).”

     In reviewing the Oregon District Court opinion, the Maryland District Court stated “because the ‘527 patent specification and preferred embodiment do not teach of an induced hydraulic flow over an intermediate elevation, and would thus be excluded by such a definition, it would be improper to adopt this construction of the term ‘siphoning.’”

Comments:

  • The other patent-at-issue was also found not to be infringed by the BaySaver device

  • The Oregon case settled after summary judgment briefs were filed and served, so the Oregon court's claim construction was apparently never appealed to the Federal Circuit

  • In a statement on its website, Baysaver’s President stated confidently, “This is a real victory for the environment, our customers and everyone else in this industry because BayFilter offers superior performance and a better value. Our customers now have a choice – they don’t have to buy filters from Contech”.
  • Patent cases are of course regularly appealed to the Federal Circuit, which reviews claim construction opinions at summary judgment without deference (or plenary review) and, therefore, would not necessarily care whether a district court’s claim construction is "published" or not; however, if this case is not appealed, other cases (and other lawyers) could be reluctant to rely on the Contech opinion given its current unpublished status.

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Recording Industry Follows Through on Threats to Sue

Posted on September 27, 2007 by Brian Wm. Higgins

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":

"After getting the name and address of the person who paid for the internet access account, they then send him or her a letter demanding a "settlement".

Their settlement is usually for $3750, non-negotiable, and contains numerous one-sided and unusual provisions, such as a representation that peer to peer file sharing of copyrighted music is a copyright infringement (a representation that is far too broad, undoubtedly there are 'sharing' behaviors with digital files, as there are with cd's, that are not copyright infringements). Even certain innocuous provisions, worded in a way to make them obligations of the defendant but not the RIAA, are deemed 'non-negotiable'. At bottom, the settlement is cold comfort to the defendant, because it does not speak for the other potential plaintiffs -- the owners of the copyrighted work, or the other record companies not represented by the RIAA litigation fund. That this omission is significant is illustrated by the new wave of copyright enforcement actions by music publishers against guitar tablature sites. There is nothing to prevent them from suing the individuals who have settled with the RIAA over the sound recording rights.

The newest wrinkle in the RIAA's pre-litigation settlement strategy is to encourage "early settlements" prior to commencement of a litigation. The RIAA has even set up a web site where people can go to make these settlements. The RIAA has stated that the settlements will be for a $1000 or more less than otherwise. However the first such settlement we have heard of is for $3500, which is only $250 less. We have heard of $3000 settlements being "offered" to college students. The RIAA has opened this initiative on two fronts, (1) the ISP's, and (2) colleges and universities. Some colleges have cooperated, forwarding the RIAA letters to the students, some have not. It remains to be seen how the ISP's will react.

     The other Maryland lawsuit initiated by the RIAA and Mr. Oppenheim is captioned Warner Bros. Records et al v. Nwosu, 07cv02479 (D. Md. 2007), which pits RIAA members against Ms. Nnenna Nwosu, who, according to RIAA's complaint, is a College Park resident.

     What continues to intrique many who follow the RIAA's legal blitz, which has reportedly targeted close to 23,000 individuals over the last four years, is how unresponsive downloaders are to the industry's threats on the one hand, and how slow (reluctant?) the recording industry is to create a new paradigm for generating revenues from its copyrighted sound recordings in the face of continued file sharing on the other.  Kevin Robillard's recent article entitled "University Network Still the Wild, Wild West," published in the University of Maryland's The Diamondback, is reflective of the attitudes among college students: they remain devotees of illegal file sharing, many of whom say it's unlikely they will ever purchase legal copies of music. What does that say about the relationship the RIAA's litigation arm has created with one of the music industry's largest consumer groups?

Comments:

  • See Prof. Mike O'Donnell's (University of Chicago) comment here on the assumptions made by the RIAA about IP addresses being associated with a particular defendant.  Another related post can be found at p2pnet.
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Rankings Show Maryland Running Near Middle of Pack

Posted on September 7, 2007 by Brian Wm. Higgins

     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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Maryland IP Litigation Cases for the Week of August 20, 2007

Posted on August 27, 2007 by Brian Wm. Higgins

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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Pharma, Biotech See Value In Patents, But Software? Not So Much

Posted on August 14, 2007 by Brian Wm. Higgins

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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Bifurcated Patent Trials, Expected Delays, and Press Statements

Posted on July 17, 2007 by Brian Wm. Higgins

          Petersburg, Virginia-based Star Scientific, whose published corporate mission is to “reduce toxins in tobacco so that adult consumers can have access to products that expose them to sharply reduced toxin levels,” sued R.J. Reynolds for patent infringement in the 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. Apparently put off by what it viewed as an excess delay in receiving the District Court’s decision, Star petitioned the Court of Appeals for the Federal Circuit (CAFC) seeking a writ of mandamus from the court that would order the Maryland District Court to issue its decision regarding unenforceability within 30 days. Star's petition was filed before June 7, 2007, which is the date the Maryland District Court issued an order stating that its decision would be posted on June 29, 2007.   Defendants/respondents R.J. Reynolds Tobacco Company (a North Carolina corporation) and R.J. Reynolds Tobacco Company (a New Jersey corporation) opposed Star’s petition. 

          In an Order signed June 25, 2007, Federal Circuit Court Judge Pauline Newman denied Star’s petition, stating that the company had not “met its burden in this case,” which, for a writ of mandamus, required Star to establish that there had been a “clear abuse of discretion or that the District Court has ‘obstinately refuse[d]’ to adjudicate the matter” (citing Will v. Calvert Fire Ins. Co., 437 U.S. 655, 666-67 (1978)). 

          Ironically, the same day the Federal Circuit issued its Order denying Star’s petition, the Maryland District Court issued its decision on enforceability, effectively mooting Star’s petition to the CAFC. 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. Star responded forcefully to the decision.  In a June 27, 2007, press statement, it stated:

“The company is disappointed and frankly outraged by the U.S. District Court's ruling yesterday…. The Court's conclusion that highly respected and experienced senior attorneys at four national law firms were involved in an alleged plot to deceive the Patent Office is stunning and totally without support in the record. The opinion ignores significant portions of the record, distorts others, and spins a tale that is unrecognizable to those who attended the trial. … We welcome the opportunity to present the record in this case to objective decision-makers on the Federal Circuit.”

Comments and Notes:

  • Star’s frustration over a two-year delay in receiving a decision regarding enforceability of its patents is understandable.  However, bifurcated trials nearly always take longer to reach finality.

  • It remains to be seen what effect Star’s press statement will have on its case-in-chief if the Federal Circuit remands the case back to the same Judge whose decision, in Star's view, ignored portions of the record, distorted portion of the record, and spun an unrecognizable tale.

  • This case underscores one of the many pre-filing decisions Plaintiffs must evaluate before bringing a lawsuit:  the speed with which a court adjudicates patent matters.
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Copyright Office: Online Registration of Works Coming Soon

Posted on July 12, 2007 by Brian Wm. Higgins

          According to the Copyright Office web site, the Office is reengineering many of its internal systems, including the system for registration and recordation.  The implementation of an online registration system as part of the reengineering process reportedly requires that the Office amend its implementing regulations governing the procedures by which the public will be able to submit, and the Office process, copyright registrations and recordations. 

          The Office announced the availability of interim rules that identify the principal changes and upgrades to the registration system, and also announced the proposed amendments to the regulations to accommodate online registration.  The Office has commenced Beta testing of the electronic online registration system, which went on-line July 9, 2007.  According to the Office, the Beta testing will be limited to selected participants until system testing is complete, at which time the Office will open the electronic registration system to the public.

Comments

  • Once the Copyright Office's on-line registration and recordation system is fully operational, the government's three administrative bodies that govern IP--the U.S. Patent, Trademark, and Copyright Offices--will provide for further electronic filing of applications and forms over the Internet
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About

Posted on September 1, 2006 by Brian Wm. Higgins

Brian Wm. Higgins, J.D., P.E.

 

I represent authors, artists, and educators, as well as engineers, doctors, scientists, small not-for-profit companies and multi-billion dollar international corporations. My law practice focuses on patent litigation and patent procurement in the life sciences sector (drugs, nutritional supplements, and medical devices), but I also provide patent, copyright, trademark, and trade secret counseling in the financial, telecommunications, automotive, environmental protection, and consumer electronics industries, to name a few. As a registered patent attorney and professional engineer, I help companies maximizing the value of their technology assets in the United States and around the world by strategically identifying and managing the business risks associated with procuring, maintaining, licensing, and enforcing intellectual property assets.

 

 

Education

 

J.D., University of Maryland School of Law

M.S., Johns Hopkins University, Whiting School of Engineering (environmental engineering)

B.S., Arizona State University (chemical engineering)

 

 

Admissions and Registrations

 

U.S. Court of Appeals for the Federal Circuit

U.S. District Court for the District of Maryland

U.S. Patent and Trademark Office

Maryland Court of Appeals

District of Columbia

Professional Engineer (P.E.)

 

 

Professional Career

 

Blank Rome, LLP: Attorney

Science Applications International Corporation: Engineer

Woodward-Clyde Consultants: Engineer

U.S. Army Center for Health Promotion and Preventive Medicine (CHPPM); Captain/Engineer

 

 

Community Service

 

In addition to blogging for this web site, I volunteer my time as an ad hoc peer reviewer for the Journal of Environmental Health (a National Environmental Health Association publication) and other association publications.

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