AIA: Post-Grant Review Intended to Curb Litigation

Posted on October 29, 2011 by Brian Wm. Higgins

          Nearly 30 years ago, Congress created the administrative reexamination process. It was intended to be used by the Patent Office to review the validity of already-issued patents on the request of either the patent holder or a third party challenger. It was expected that reexamination would serve as an effective and efficient alternative to often costly and protracted district court litigation.

          The initial reexamination statute had several limitations that later proved to make it a less viable alternative to litigation for evaluating patent validity than Congress intended, and changes to the system did little to put a dent in patent enforcement litigation. Indeed, the reexamination process became another litigation strategy by accused infringers.

          The AIA amends existing reexamination procedures and establishes a new post-grant review procedure.  The new procedures are expected to change the standard for instituting reexaminations and reviews, time limits, burdens of proof, and how discovery is taken. 

          Whether the new post-grant review procedure will in fact reduce patent litigation will be measured over time.  But what is clear is that the filing or institution of a post-grant review proceeding does not limit a patent owner’s ability to commence litigation to enforce his or her patent rights.
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AIA Goal: Reduce Patent Litigation

Posted on October 16, 2011 by Brian Wm. Higgins

          Designed to limit unnecessary and counterproductive litigation costs, the America Invents Act (AIA) was signed into law by President Obama on September 6, 2011, to the praises of many in industry.  The law changes how and where patent lawsuits can be filed, eliminates certain defenses to patent infringement allegations, and effectively eliminates certain private rights of action.  Even now, parties whose patent enforcement cases are pending in federal courts around the country or are about to be filed, are having to step back and rethink their litigation strategies. One of the goals of the AIA is to reduce the amount of litigation in the United States. 

Reducing Litigation Through Implementation of Post-Grant Review Proceedings

          Nearly 30 years ago, Congress created the administrative ‘‘reexamination’’ process. It was intended to be used by the Patent Office to review the validity of already-issued patents upon the request of either the patent holder or a third party challenger.  It was expected that reexamination would serve as an effective and efficient alternative to often costly and protracted district court litigation.  But the initial reexamination statute had several limitations that later proved to make it a less viable alternative to litigation for evaluating patent validity than Congress intended, and changes to the system did little to put a dent in patent enforcement litigation.  Indeed, the reexamination process became another litigation strategy used by accused infringers, often used as a delay tactic. 

          The AIA amends existing reexamination procedures and establishes a new post-grant review procedure. The new procedures are expected to change the standard for instituting reexaminations and reviews, time limits, burdens of proof, and how discovery is taken.  Whether the new post-grant review procedure will in fact reduce patent litigation will be measured over time. But what is clear is that the filing or institution of a post-grant review proceeding does not limit a patent owner’s ability to commence litigation to enforce his or her patent rights.
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Patent Reform Ushers in Higher Patent Fees

Posted on September 22, 2011 by Brian Wm. Higgins

          Yesterday, the U.S. Patent & Trademark Office (PTO) published a revised fee schedule, which reflects a 15% increase in many fees required to be paid by users of PTO patent-related services.  On and after September 26, 2011, the basic filing fee for a utility patent application, for example, will increase from $330 to $380.  Mandated by Section 11(i) of the America Invents Act of 2011 (AIA; H.R. 1249; Public Law 112-29), the so-called "surcharge" fees are intended to make the PTO more "efficient and productive" by allowing it to set its own fees and use all fees collected for agency operating purposes.  For more on the PTO's fee changes, see the public announcement here.

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Senate Inches Closer to Considering Patent Bill

Posted on August 4, 2011 by Brian Wm. Higgins

          On August 2, 2011, Harry Reid, along with several other senators, moved to bring to a close in the Senate any debate on the motion to proceed to calendar  H.R. 1249, the previously passed "Leahy-Smith America Invents Act" (originally the Patent Reform Act when its companion bill started out in the Senate).  According to the Congressional Record, on September 6, 2011, the Senate will proceed to vote on the motion to invoke cloture on the motion to proceed to Calendar No. 87, H.R. 1249. 

          A cloture motion cannot be voted until two days after it is proposed, and must be by way of a petition signed by 16 senators.  In the Reid motion, the following Democratic senators signed the motion:  Harry Reid (D-NV), Patrick J. Leahy (D-VT), Thomas R. Carper (D-DE), Joseph I. Lieberman (I-CT), Richard Blumenthal (D-CT), Charles E. Schumer (D-NY), Amy Klobuchar (D-MN), Robert Menendez (D-NJ), Jeanne Shaheen (D-NH), John F. Kerry (D-MA), Mark Udall (D-CO), Mark R. Warner (D-VA), Ben Nelson (D-NE), Jeff Bingaman (D-NM), Max Baucus (D-MT), Mark Begich (D-AK), Robert P. Casey, Jr. (D-PA). 

          Until H.R. 1249 is calendared, floor debate cannot occur on the merits of the patent reform bill previously passed by the House on June 23, 2011, by a vote of 304 Ayes, 117 Nays.  Patent reform legislation had previously received overwhelming support in the Senate, when Senators passed their own patent reform bill, S. 23, on March 8, 2011.  But that was before the acrimony surrounding the debt ceiling debate engulfed Congress the last few weeks. 

 
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Patent Reform Efforts Target "False Marking" Lawsuits and Tax Inventions

Posted on February 14, 2011 by Brian Wm. Higgins

H.R. 243 ("Patent Lawsuit Reform Act of 2011")

          Representative Robert Latta (R-OH) (right) introduced the Patent Lawsuit Reform Act of 2011 in the House of Representatives on January 7, 2011.  The bill was referred to the House Judiciary Committee, Subcommittee on Intellectual Property, Competition and the Internet, on February 7, 2011.

          Latta's measure is apparently aimed at curtailing the increase in the number of "false marking" lawsuits, which saw a sharp uptick in 2010.  False marking is governed by 35 U.S.C. 292, which states that "Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word "patent" or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words "patent applied for," "patent pending," or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public - Shall be fined not more than $500 for every such offense."

          Latta's bill would make the $500 fine apply to all of a defendant's falsely marked articles, rather than each article as a separate offense.  His bill would change the language of 292 to state "(b) A person who has suffered a competitive injury as a result of a violation of this section [35 USC 292] may bring a civil action in the appropriate district court of the United States against the person violating this section for recovery of not more than $500 in damages to compensate for the injury."

 

S.139 ("Equal Access to Tax Planning Act")

     Senator Max Baucus (D-MT) (right) introduced S.139, the Equal Access to Tax Planning Act of 2011, on January 25, 2011.  The bill was referred to the Senate Judiciary Committee the same day.  The text of the bill is apparently directed at preventing the patenting of any methods for reducing, avoiding, or deferring tax liabilities:  

"In General- For purposes of evaluating an invention under section 102 or 103 of title 35, United States Code, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art."

 

UPDATE: S.23 ("Patent Reform Act of 2011")

          The Senate's version of Patent Reform, S.23, was reported out of the Judiciary Committee with a few amendments, on February 3, 2011, and placed on the full Senate Legislative Calendar the same day. The date the bill will be debated by the entire Senate has apparently not been determined.

 

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Patent Lawsuits in Maryland: Results for First Half of 2010

Posted on July 13, 2010 by Brian Wm. Higgins

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


 

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

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Seagate's Progeny

Posted on February 2, 2008 by Brian Wm. Higgins

     As promised in my earlier post regarding In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), below is a summary of cases citing the much talked about Federal Circuit opinion. This survey includes opinions published on or before January 31, 2008, but is not inclusive.

  • Federal Circuit: "Under this [objectively high likelihood that its actions constituted infringement of a valid patent] standard, both legitimate defenses to infringement claims and credible invalidity arguments demonstrate the lack of an objectively high likelihood that a party took actions constituting infringement of a valid patent." The court did not elaborate on the meanings of "legitimate" and "credible". Black & Decker, Inc. v. Robert Bosch Tool Corp. (Fed. Cir. 2008)

  • E.D. New York: Motion to bifurcate liability and willfulness issues denied on several grounds, including the overlap of evidence between the two issues. Computer Assoc. Intl., Inc. v. Simple.com, Inc. (E.D.N.Y. 2007)

  • N.D. Illinois: "Because willfulness depends on an infringer's prelitigation conduct, in most circumstances, communications of trial counsel have little, if any, relevance. Thus, trial counsel opinions and work product of trial counsel are not subject to waiver, absent exceptional circumstances." Se-Kure Controls, Inc. v. Diam USA, Inc. (N.D. Ill. 2008)

  • N.D. Illinois: Knowledge of patentee's pending patent application at time of launching new product is not enough to demonstrate willfulness; determination generally is based on post-patent, rather than pre-patent conduct; failure to assert a noninfringement defense and reliance solely on an invalidity defense is not sufficient to establish defendant acted despite an objective likelihood of infringement. Trading Techs. Intl., Inc. v. eSpeed, Inc. (N.D. Ill. 2008)
  • N.D. Illinois: At the time Sandoz launched its product in the market, there was an appellate judicial opinion stating that the claims of the patents at issue were susceptible to invalidity and unenforceability challenges. Trial court said that “proves an objectively low likelihood that marketing a product that reads on those same claims would be infringing upon a valid patent.”  Abbott Labs. v. Sandoz, Inc. (N.D. Ill. 2007)

  • N.D. California: Summary judgment of no willful infringement by Ivax denied because of "ample evidence upon which a reasonable juror could base the conclusion that Ivax sold its Metformin ER product despite an objectively high likelihood that its actions constituted infringement of a valid patent." Depomed, Inc. v. Ivax Corp. (N.D. Cal. 2007)

  • C.D. California: Granting motion for reconsideration of post-trial rulings in view of In re Seagate because court’s instructions to jury were “drawn from a now-discredited line of authority”; noting that “absent a finding of willfulness, the Court’s award of enhanced damages cannot stand”; and “the award of attorney’s fees…cannot stand.” Broadcom Corp. v. Qualcomm Inc. (N.D. Cal. 2007)

  • D. Massachusetts: “In determining whether infringement was willful, a court should consider: (1) whether there was a bona fide disagreement regarding patent invalidity or infringement, (2) whether the infringer solicited or followed the advice of counsel, (3) whether there was continued infringement after notice of probable infringement was received, (4) whether there was a degree of similarity between the patented and accused devices, (5) whether the infringer took efforts to avoid infringement, and (6) whether the infringer was indemnified against infringement costs.” No citation given. Cohesive Technologies, Inc. v. Waters Corp. (D. Mass 2007)

  • W.D. Wisconsin: Evidence of defendant’s failure to seek advice of counsel prior to selling the accused devices, defendant’s effort to obtain a license from plaintiff’s predecessor, customer demand for a waterproof system, and letters from the patentee accusing defendant of infringement relate to the second prong of the willfulness test: what defendant knew or should have know with respect to a high likelihood of infringement. Franklin Elec. Co. v. Dover Corp. (W.D. Wis. 2007)

  • M.D. Pennsylvania: Defendant did not act “with an objectively high likelihood that its actions constituted infringement of a valid patent” when he read patent and attempted to design around claims. Rhino Assoc., LP v. Berg Mfg. and Sales Corp. (M.D. Pa. 2007)

  • E.D. Texas: Although defendant ultimately did not prove its invalidity defense by clear and convincing evidence, it received and relied upon opinion letters from outside counsel that concluded that the patents were invalid and not infringed by Defendant’s product, and it sent letters to plaintiff setting forth its position before litigation, which prompted Plaintiff to reexamine own patent. This was “hardly objectively unreasonable” as to whether there was a high likelihood of infringement. TGIP, Inc. v. AT&T Corp. (E.D. Tex. 2007)

  • See previous related posts about In re Seagate on this website:
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2008 Advanced Patent Law Institute

Posted on January 10, 2008 by Brian Wm. Higgins

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

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

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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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Nacre v. Silynx (or QuietPro v. QuietOps): Garnering Lots of Attention

Posted on December 5, 2007 by Brian Wm. Higgins

     Of the many IP cases summarized on the Maryland IP Law blog recently, two have garnered the most attention from site visitors: Technology Patents LLC v. Deutsche Telekom, which I summarized in November, and Nacre v. Silynx Communications, which I discussed in October. I can understand why the Technology Patents case has received attention: the patent infringement allegations involve popular text messaging technology, and the number of defendants that have been sued (131) makes the lawsuit one of the largest ever filed in the District Court for the District of Maryland.

     It is not as apparent, however, why the Nacre v. Silynx case has received the attention that it has. Perhaps it is the subject matter of the lawsuit, which, according to Nacre's complaint involves “two-way radios and wireless communicators for use in combat, in battlefield conditions, in military, military special forces, and law enforcement activities.” This would seem to be a huge market today.

     Or perhaps it is the competitiveness between the parties, both of which claim on their respective websites to be the "world's leader" in communications equipment that incorporates sophisticated noise canceling/noise protection technology. Nacre sells to the U.S. and foreign governments. Rockville, MD-based Silynx Communications states on its website that its headsets are used by the U.S. Special Operations Command (USSOCOM), U.S. Army, USMC and the world’s elite Special Forces.

     I'll track the docket and maybe learn other reasons why many are drawn to the case.

Update:

  • Silynx filed is answer to Nacre’s complaint on November 28, 2007. In it, Silynx makes the standard denials of Nacre’s allegations, affirmative defenses, and counterclaims (i.e., declaration of trademark and patent non-infringement, trademark and patent invalidity, and patent unenforceability).

  • Silynx also asserted a defense of “government contractor immunity” under 28 U.S.C. § 1498 (that statute has been used by private parties to establish that they cannot be held liable for infringement for any goods “used or manufactured by or for the United States”).

  • Silynx’s unenforceability allegation is based on claims that “those involved in patent prosecution failed to disclose to the U.S. Patent and Trademark Office at least one publication by one of the inventors entitled “Active Noise Reduction In An Ear Terminal” given on March 18, 1999 at the Technical University of Berlin as part of the 137th Regular Meeting of the Acoustical Society of America 2nd Convention of the European Acoustics Association: Forum Acousticum 99 integrating the 25th German Acoustics DAGA Conference.”

Comments:

  • Plaintiff Nacre AS is a Norwegian company that claims to own the U.S. registered trademark QUIETPRO, U.S. Patent No. 7,039,195 (“Ear Terminal”) and U.S. Patent No. 6,567,524 (“Noise Protection Verification Device”).

  • Silynx is reportedly seeking a federal trademark for its QUIETOPS mark

  • Nacre is represented by Andrew Kopsidas of DC's Fish & Richardson (with Gregory A. Madera, Ahmed J. Davis, Adam J. Kessel, and Charles Hieken admitted pro hac).

  • Silynx is represented by Paul J. Lambert of DC’s Bingham McCutchen (with Robert C. Bertin, Timothy A Molino, and Richard S. Taffet admitted pro hac)

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Around the Blogosphere

Posted on October 9, 2007 by Brian Wm. Higgins

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


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


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


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


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


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

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

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Maryland IP Litigation Cases for the Week of July 23, 2007

Posted on July 31, 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:

  • STX, L.L.C. v. J. deBeer & Son, Inc., Case Number 1:2007cv01939, filed July 20, 2007 (okay, this was overlooked last week).

Plaintiff STX, LLC, a Baltimore-based lacrosse equipment manufacturer, has sued Defendant J. deBeer & Son, Inc., for allegedly infringing STX's U.S. Patent No. 5,651,744 by selling lacrosse products through its catalog to Maryland residents.  According to its complaint, STX is seeking a preliminary injunction, damages, and other relief

  • Sandler Systems, Inc. v. Rothfeld, Case Number 1:2007cv02005 , filed July 27, 2007

Plaintiff Sandler Systems, Inc., a Stevenson, Maryland-based corporation, has sued Defendants David Rothfeld and Creative Sales + Management, Inc., for allegedly willfully infringing Plaintiff's copyrighted works under 17 U.S.C. 501 et seq. and for certain state law claims.  According to its complaint, Sandler Systems is seeking a permanent injunction and actual, statutory, and exemplary damages among other relief

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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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About

Posted on September 1, 2006 by Brian Wm. Higgins

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

Mr. Higgins is a partner and member of Blank Rome’s Intellectual Property Litigation practice group. He represents the interests of clients before federal district and appellate courts involving complex patent litigation matters, including matters involving pharmaceuticals, medical devices, software, telecommunications, and electronics. He provides strategic patent procurement, copyright, trademark, and trade secret counseling to clients in numerous industries, including the life sciences, financial, telecommunications, automotive, e-commerce, environmental protection, and consumer electronics industries, to name a few. Mr. Higgins also counsels clients in complex licensing arrangements with third parties, and represents clients in contract negotiations. Mr. Higgins has represented book authors, artists, songwriters, educators, engineers, surgeons, scientists, as well as small not-for-profit companies and multi-billion dollar international corporations. He is a registered patent attorney and a licensed Professional Engineer. Prior to entering private practice, Mr. Higgins worked as an engineer and consultant for the U.S. Army and two government contractors. 

 

Education

Mr. Higgins received his law degree (J.D.) from the University of Maryland School of Law, his Master of Science (M.S.) in Engineering from Johns Hopkins University, and his Bachelor of Science (B.S.) in Engineering from Arizona State University.

 

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.)

 

Representative Matters


• Represented a patent owner before the U.S. Court of Appeals for the Federal Circuit in a patent lawsuit involving mobile data collection devices

• Assisted generic drug manufacturers obtain patents and defend against patent and trademark infringement allegations brought by competitors

• Defended three Taiwan mobile telecommunications carriers in a patent suit before the U.S. District Court for the District of Maryland

• Assisted a national weather content service provider develop an extensive patent portfolio in the mobile telecommunications location-based services (LBS) market

• Helped a book author identify and clear copyright obstacles involving publication of photos of famous individuals in author’s memoir

• Counseled Internet e-commerce and content/service providers, helped protect their on-line businesses with patents and other forms of intellectual property

• Provided strategic patent, copyright, licensing, and government contract advise to a major university technology office regarding university’s event detection system

• Prepared patent applications for inventions involving emergency information reporting over public-switched and wireless telephony networks

• Helped individual inventor build new business from ground up, including procuring patent protection for novel pacing system, incorporating business structure, negotiating employment agreement terms, and developing strategies for enforcing patent rights against competitors

 

Professional Career

Blank Rome, LLP: Partner

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, Mr. Higgins provides pro bono services to the Maryland Lawyers for the Arts, and volunteers as an ad hoc peer reviewer for the Journal of Environmental Health, a National Environmental Health Association (NEHA) publication.

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