Philip Brooks' Patent Infringement Updates

Intellectual Property Will Become America's Main Source of Competitive Advantage in a 21st Century Global Economy

From BusinessWire on January 26, 2009:

Mark Blaxill and Ralph Eckardt, two experts on innovation and intellectual property strategy (IP), take that argument one step further: In a competitive global economy, IP rights are one of a company’s – indeed, a country’s – main source of competitive advantage.

Blaxill and Eckardt are the authors of the forthcoming book The Invisible Edge: Taking Your Strategy to the Next Level Using Intellectual Property (Portfolio, March 2009). Their latest white paper on innovation and intellectual property, “The Innovation Imperative”, argues that America’s most valuable asset is its innovation and IP reserves, and that these will likely become the main source of U.S. competitive and economic strength in the 21st Century. Importantly, the paper warns that these advantages are easily endangered by overzealous attempts to drive patent reform too far and misguided calls to weaken the rights of patent owners.

Back in the 1960s and 1970s, in the name of “competition,” regulators at the FTC forced some of America’s leading companies to open their patent portfolios to the world. According to Blaxill and Eckardt: “The result was a flood of goods from foreign companies – made with American know-how that was obtained essentially for free.”

• The emblematic case was the 1975 antitrust settlement with Xerox: The FTC consent decree forced Xerox to give away decades of innovations for free.
• The wholesale cooption and give-away of patent rights (nearly 50,000 patents) plunged American businesses into a competitiveness crisis – and exacerbated the nation’s economic woes – for more than a decade.
• Today’s “patent reform” movement risks another large-scale give-away of innovation assets just when America needs these resources most.

[The authors] recommend a national “innovation policy” that includes:

• Protecting the U.S. patent system and the renewable strategic reserves that it generates.

• Sustaining America’s terms of trade and defending the pricing of America’s invisible assets through regulation and legislation.

• Adapting the USPTO to the needs of the modern patent development process.

• Building talent locally through quality science and engineering education.

• Providing incentives for inventive talent to live and work in the U.S.

• Making science and engineering financially rewarding careers.

• Supporting returns on invisible asset investments.

I received a copy of the white paper in the mail from a former BCG colleague of the authors,  Bill Matassoni.  To receive your own copy of “The Innovation Imperative” white paper or The Invisible Edge: Taking Your Strategy to the Next Level Using Intellectual Property (Portfolio, March 2009) and supporting materials, or to schedule a conversation with one of the authors, please contact Adria Greenberg at Sommerfield Communications, Inc. (212) 255-8386 or adria@sommerfield.com. 

Daubert Motions: Keys To Offering & Defending Expert Opinions

National Constitution Center is hosting the above titled audio conference on February 18, 2009.  The speaker for the program is Clifton Hutchinson, a partner in the Dallas office of at K&L Gates, where he specializes in complex litigation and scientific expert issues, and is a frequent speaker and author on expert evidence and Daubert challenges.

The seminal case of Daubert, and a series of subsequent cases and revisions to Federal Rules of evidence have remade the law pertaining to expert testimony. But how and when do you effectively bring a challenge post-Daubert? How should you respond to a challenge of admissibility? Join us for a 60-minute audio conference where you and your colleagues will discover:

• An "expert" defined: Laws governing admissibility of testimony
• How to draft a Daubert motion: Keys to challenge expert witness testimony
• Strategies for protecting your expert from a Daubert challenge
• Expert disclosure: How to use Rules 26(f) and 26(a) to your advantage
• Key factors to consider when selecting an expert

PROGRAM HIGHLIGHTS

Tips For Effectively Presenting Daubert Motions

• Keys to expose opposing experts' lack of specialized knowledge
• Using the expert's deposition to set up your Daubert challenge
• Strategies you can use to attack the experts' theory
• Daubert factors: Evaluating the reliability of evidence

Challenging Daubert Motion: What Matters Most

• When should you challenge expert testimony?
• How to apply gatekeeping to technical & non-scientific experts
• Testing of the expert's theory: Emerging case law
• Key differences between general & specific causation

Tactics For Successfully Defending A Challenge

• Methods of circumventing Daubert: Lay witness testimony & more
• Tactics for selecting and preparing your experts for deposition
• The Daubert hearing: Practical considerations
• The use of non-testifying experts as a disclosure shield

More information and registration details are available here.

European Commission Attacks Practices That Prevent Competition From Generic Drugs

A December 1, 2008 article that appears at mediLexicon states, in part:

The European Commission's 426 page Interim Report on the Pharmaceutical Sector (the "Report") , which was released on 24 November, makes no specific allegations of anticompetitive behaviour against particular companies but sets out in considerable detail how originators and generic manufacturers inter-connect within a highly regulated commercial environment. Originators are companies that develop and sell new medicines whilst generic manufacturers lawfully produce and sell equivalent medicines once the originators' patents expire.

The Executive Summary of the Report outlines many practices by originators which the Commission characterised as "shocking" in its press conference. These include:

• Protecting their existing patents through a strategy of seeking additional secondary related patents, particularly nearer the time that the primary patent is due to expire. This practice of "patent clustering" is claimed to make it more difficult for competitors (including generic manufacturers) to develop innovative products.

• Resorting very readily to litigation with generic companies, despite the likelihood of losing the case. The Commission implies that this practice is seen by the originators as a valuable way of delaying the entry on the market of rival products from manufacturers.

• Settling litigation with some competing generic manufacturers on terms that might involve the transfer of alleged payments to the generic companies and which resulted in additional delays to the arrival of the generic manufacturers' products on the market.

• Creating average delays of 4 months or more in national procedures for the approval of generic medicines by raising every manner of potential objection to such applications.

If the Commission...has evidence that payments by originators to generic manufacturers were motivated by the sole purpose of preventing new products coming to market in a timely way, then such a practice could be vulnerable to challenge under EU competition law. The Commission's dawn raids in the pharmaceutical sector on 24 November may have been motivated by this issue of "reverse payments".

Read the full article and access a link to the full European Commission report here.

Litigating Willful Infringement in the Post-Seagate World

Landslide™ is the ABA Intellectual Property Section's new magazine forum for discussion of intellectual property issues. It offers analysis, news, and commentary about the law of patents, trademarks, copyright, trade secrets, and related subjects. It also keeps readers current on ABA-IPL news and events.

I just received the third print issue in the mail.  The online version of the magazine is available to section members.  A subscription is available to others.  The cover article of each issue is available to all.  For example, in issue 2 - "Egyptian Goddess v. Swisa: Retooling Design Patent Infringement" by Darrell G. Mottley and in issue 1 - "Virtual Worlds, Real World Issues" By Sean F. Kane and Benjamin T. Duranske.

The cover issue for issue 3 (not yet available online) is titled, "Litigating Willful Infringement in the Post-SeagateWorld" by William L. LaFuze and Michael A. Valek. In their article they offer three observations:

1. Seagate Substantively Raised the Bar for Winning on Willfulness;

2. Opinions of Counsel Remain an Effective Defense Against Willful Infringement; and
3. It is Still Possible to Win on Willful Infringement, Even Where an Advice of Counsel Defense Has Been Raised.

The article will ultimately be available here.

Epson Joins RPX Defensive Patent Aggregation Service

The following RPX press release will issue on Wednesday, January 28, 2009:

Epson Joins RPX Defensive Patent Aggregation Service
Digital Imaging Giant First RPX Member from Japan

TOKYO – January 28, 2008 - RPX Corporation, a defensive patent aggregator, today announced that Epson has joined the RPX Defensive Patent Aggregation service.

“IT companies like Epson have become very common targets for patent assertion from non-practicing entities and RPX addresses the industry’s need for a strong patent defense offering,” said Eran Zur, RPX president. “We expect that the RPX service will help Epson avoid substantial future litigation and licensing costs.”

RPX acquires patent rights and provides them as a defensive patent aggregation for an annual membership fee to reduce technology companies’ patent risks and costs created by non-practicing entities (NPEs).  NPEs acquire patents – as opposed to creating them through research and development – solely for the purpose of offensive licensing against operating companies. And since NPEs do not make or sell products or services, they are not subject to counter-assertions.

“Even with broad patent portfolios, many Japanese companies like Epson are at risk for assertion from NPEs,” said John Amster, RPX co-CEO. “That’s exactly why we created RPX – to help our members lower costs by buying patents and patent rights that would otherwise be threats to their businesses.”

Epson is the sixth member of the RPX Defensive Patent Aggregation service, joining IBM, Cisco and other large and small technology companies. The RPX service was introduced in November 2008.

About RPX Corporation
RPX Corporation is the first defensive patent aggregator. RPX acquires patent rights and provides them as a defensive patent aggregation for an annual membership fee to reduce technology companies’ patent risks and costs created by non-practicing entities (NPEs). The RPX Defensive Patent Aggregation does not require member involvement in acquisitions, and RPX will not enforce the patents it purchases. RPX management has been responsible for more than $2 billion in patent transactions. RPX is financed by Kleiner Perkins Caufield & Byers and Charles River Ventures.

24th Annual Intellectual Property Law Conference - April 1-4, 2009

This conference, held in Arlington, Virginia, "is recognized for its national and international scope and preeminent programming. It attracts IP practitioners from across the nation and around the world."

"The past year has seen critical developments in IP law. Its practitioners face new issues, new areas of practice, and a growing globalism, which places more demands than ever on their knowledge and skills."

Some selected program titles:

• The Patent Reform Movement – Where Is It Going and Will It Get There?
• The Role of Intellectual Property in Personalized Medicine
• Swearing-in Ceremony and Mock Appellate Argument at the U.S. Court of Appeals for the Federal Circuit
• Litigating Multi-Party, Multi-Patent Patent Cases: Challenges, Considerations and Solutions
• Cost Containment in a Corporation
• Earn Your Passport Stamp: Learn Best Practices for Using Arbitration in International IP Disputes (No Visa Required)
• Using Financial and Economic Analysis for IP Litigation, Licensing and Profit

More information and registration details are available here.

Renhcol Settles Patent Infringement Lawsuit with Pregame

The following is excerpted from a January 22, 2009 General Patent Corporation press release that appears at Business Wire:

General Patent Corporation (GPC), a leading patent licensing and patent enforcement firm, announced today on behalf of its client, Renhcol, Inc. − a wholly-owned subsidiary of Betbrokers PLC (LSE: BETB) − that Renhcol settled its patent infringement lawsuit against Pregame LLC of Las Vegas, NV.

A lawsuit against Pregame LLC and several other defendants was filed in October of 2008 in the Eastern District of Texas (2:08-cv-00388) for the infringement of Renhcol’s U.S. Patent No. 6,260,019 (the “Patent”). Ultimately, Pregame agreed to settle the lawsuit and license the Patent.

Renhcol, Inc. owns U.S. Patent No. 6,260,019 titled “Web-Based Prediction Marketplace.” The patented technology pertains to the on-line prediction of future events. This patent was the subject of a prior lawsuit, which resulted in all of the defendants licensing the ‘019 Patent.

Read the full release here.

Actavis UK Ltd v Novartis AG

Barrister Jane Lambert writes in her 500th post at her NIPC blog:

This was a claim by Actavis for the revocation of a Novartis's European patent for a preparation which released fluvastatin (a cholesterol inhibiting drug) gradually rather than in an immediate burst on grounds of obviousness and insufficiency. There was also a counterclaim by Novartis for infringement of its patent. Novartis conceded that the claims as granted could not be granted and applied for their amendment.   The claim and counterclaim came on before Mr Justice Warren and is reported at Actavis UK Ltd v Novartis AG [2009] EWHC 41 (Ch) (16 January 2009)

This case is important because it is one of the first cases since Conor Medsystems Inc v Angiotech Pharmaceuticals Inc amd others [2008] UKHL 49 (9 July 2008).  Mr Justice Warren reviewed that case and others such as Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd [1985] RPC 59 and Pozzoli SPA v BDMO SPA [2007] FSR 872 in determining the extent to which Conor had changed the law.

Comparing the teaching of the patent to the pleaded prior art and common general knowledge the judge found that the patent was obvious. The claim on insufficiency failed.    There was no dispute that the claimant's preparation would have infringed the defendant's patent had it been valid but in view of the finding of obviousness the counterclaim failed.

Read the full post here.

U.S. Court of Appeals Affirms ITC Bar on Imports of Infringing Ink Cartridges

From today's, January 20, 2009, WebWire:

On January 13, the U.S. Court of Appeals for the Federal Circuit in Washington D.C. affirmed the Final Determination and General Exclusion Order of the U.S. International Trade Commission ("ITC"). A General Exclusion Order that bars imports of infringing new and refilled cartridges was entered by the ITC in October 2007, after an ITC trial established widespread infringement of Epson’s cartridge patents by many foreign manufacturers, importers and U.S. distributors. The unsuccessful Appeal was filed by Ninestar Technologies Co, Ltd.of China, Ninestar’s U.S. subsidiaries and Dataproducts USA LLC (a division of Clover Technologies Group).

Epson will vigorously proceed with enforcement of its patents now that the validity and enforceability of its patents have again been ratified. A second ITC trial was conducted on Jan.14-16, 2009 in Washington D.C. to determine any financial penalties that may be assessed against Ninestar, Mipo America,Ltd. and Cana-Pacific Ribbons Inc. and their affiliates for alleged violations of the General Exclusion Order. The ITC has not yet determined any violations, but has the authority to assess substantial penalties up to $100,000 per day of violations or twice the commercial value of infringing imports.

Read the complete item here.

MedImmune and the Expanded Scope of Declaratory-Judgment Jurisdiction

Greg Wesner and Mike Keyes of K&L Gates LLP wrote the above-titled article in the Winter 2009 issue of the ABA's Intellectual Property Litigation newsletter.

In their discussion they state that prior to the MedImmune v. Genentech decision the owner of a trademark was able to send a potential infringer a demand letter "without triggering federal court declaratory-judgment jurisdiction, so long as the letter did not create a 'reasonable apprehension of suit.'”  This case -- for patent, not trademark infringement -- has changed a standard in place for over 20 years.

The Court in MedImmune v. Genentech, ruled that a patent licensee could sue its licensor to obtain a declaration that the licensed patent is invalid or otherwise unenforceable without first repudiating the license.  "The U.S. Supreme Court jettisoned the 'reasonable apprehension' declaratory-judgment standard in favor of a more lenient standard that looks to the 'totality of the circumstances' in order to determine if there is a 'concrete' dispute between the parties."

Read the full article to learn about the consequences for both patent and trademark litigation.  The newsletter is available to ABA Section of Litigation members here.

Intel, Microsoft, HP Sued for Alleged Patent Infringement

The following is excerpted from an item by Agam Shah with IDG News Service that appeared today, January 16, 2009, at Computerworld:

Xpoint sued IT giants including Intel, Dell, Hewlett-Packard and Microsoft for allegedly infringing on its data recovery patents.

The feature to quickly recover data in PCs and Windows is under attack. Data recovery firm Xpoint earlier this week sued IT giants including Intel, Dell, Hewlett-Packard and Microsoft for infringing on patents to quickly restore data in the event of corrupted hardware or software.

Xpoint is seeking unspecified monetary damages and injunctive relief from companies selling infringing products. The company owns two patents related to the data recovery: 7,024,581, which was issued in April 2006 and 7,430,686, which was issued in September 2008 by the US Patent and Trademark Office.

Microsoft was also accused by Xpoint of infringing on patents with the System Restore feature in Windows Vista Home and Vista Basic. Similarly, Xpoint said backup and recovery features in Windows Vista Enterprise, Vista Business and Vista Ultimate infringed on its patents. HP and Dell were also accused of infringing on patents in Backup & Recovery Manager and One Button Restore features respectively.

Read the full article here.

Annual Review of Intellectual Property Law Developments: 2006-2008

This new, annual publication from the ABA Section of Intellectual Property Law includes thoughtful and balanced treatment of the key legal developments in the courts, agencies, and legislatures' keeping you current in every area of IP law. The January 2009 debut volume reports on more than 300 of the top legal developments monitored by the Section's substantive committees from Winter 2006 to Fall 2008.

Organized into six parts (patents, trademarks, unfair competition, copyright, trade secrets, other IP), this book provides comprehensive coverage of:

• Proposed legislation and agency rules
• Recent Supreme Court patent cases, including Ebay, MedImmune, KSR, Quanta, Microsoft v. AT&T
• Recent Federal Circuit en banc decisions like In re Seagate and Egyptian Goddess
• Recent Federal Circuit decisions on business method patents including In re Bilski and In re Comiskey
• New PTO and TTAB rules
• Recent patent developments concerning standards setting organizations including Rambus and N-Data

Pre-order your copy here.

Brooks Consulting LLC Launches New Website

Today, January 14, 2009, Brooks Consulting LLC launched a new website.

We provide litigation and strategy consulting to small businesses, international conglomerates and law firms of every size. Not just consultants – we have run businesses. Our goal is to exceed client expectations by providing timely, cost-effective and high quality deliverables in everything we do.

Building on decades of experience in diverse industries and in critical roles, Brooks Consulting LLC’s staff brings both quantitative analysis and creative thinking to solving your problems. If you are seeking individuals who use their left brain and their right, you have reached your destination.

Brooks Consulting LLC is a management consulting firm co-founded in 1997 by Phil and Jan Brooks with decades of experience in management and management consulting. Brooks Consulting LLC offers complex litigation support services to law firms and their clients, and interim management and strategy consulting services to companies in transition – both fast growth and distressed.

We invite you to look around to learn more about the roles we have served in meeting our clients’ needs and how we might work with you.  We serve four primary roles: Consulting Expert, Expert Witness, Growth Strategy Advisor, and Investigator.

We hope you will visit the new site and, even more, that you will give us a call!

Patent Strategies for Foreign R&D; Work in China

On December 27, 2009, the Standing Committee of the National People's Congress passed the amendments to the Patent Act.  Tian Junfeng, an attorney with Unitalen Attorneys at Law, analyzed China's Patent Law and Foreign Trade Law and shares some insights in this article. China Business Weekly will run the article in several issues. Below is an excerpt from the first part of it which appeared in the January 12, 2009 issue of China Daily:

Numerous multinational companies, such as Microsoft, IBM, Lucent, Hewlett-Packard, Samsung, Philips, Motorola, Nokia, have established their R&D centers in China, respectively. Up to now, the number of foreign companies that have set up R & D centers in China has exceeded 1,000.

Most of these companies are ranked in the world top 500. They established their R&D centers in China in order to meet demands for localization of products, technologies and services, and to promote their enterprise image. They also want to sharpen their competitive edge in the local market by exploiting the rich human resources of technical professionals and taking advantage of the low capital costs. This has become an important part of their localization strategy.

Although these R&D centers are playing an ever-important role in technological innovation and making great achievements, they have encountered all sorts of problems in implementing their patent strategies so as to better protect their R&D achievements. One of the outstanding problems is how to transfer their technological breakthroughs abroad.

Regarding this issue, there are relevant provisions in China's Patent Law, the Foreign Trade Law and others.

Mr. Junfeng goes on to discuss the implications of Articles 8, 10 and 20 of the Patent Law on R&D.  See the full article here.

Pre-litigation Strategies: Patent Reexamination

The following excerpt is from an article by Robert E. Krebs and Hal J. Bohner that originally published in the Spring 2004 edition (Vol. 4, No. 1) of Thelen Reid's Intellectual Property and Trade Regulation Journal:

The costs of patent litigation – both in terms of time and money – have been well documented. For example, a patent lawsuit can require several years of concerted effort by company management and outside counsel to complete pretrial discovery and trial. Then, the trial may be followed by an appeal to the Federal Circuit Court of Appeals.

The costs and commercial uncertainty of patent litigation have been addressed by Congress in the "21st Century Dept. of Justice Appropriations Authorization Act of 2002." The Act amended a procedure, first created by Congress in 1980, for reexamination of patents in the U.S. Patent and Trademark Office (PTO). The reexamination procedure was expanded by Congress in 1999, when it provided for Inter Partes reexamination.

Ex Parte Reexamination

In an Ex Parte reexamination, either a challenger or patent holder may seek reexamination of a patent based on patents or printed publications. The requester files the request for reexamination and within three months the PTO determines whether a substantial new question of patentability exists. If so, the PTO orders reexamination of the patent. A determination that there is no substantial new question is final and non-appealable.

Inter Partes Reexamination

Inter Partes reexaminations are similar to Ex Parte proceedings in some ways. Both are initiated by a request for reexamination. Also, the only ground for seeking reexamination under either process is prior art consisting of patents or printed publications. Furthermore, at the outset, the PTO determines whether the request raises a substantial new question of patentability.

If the PTO determines that there is a substantial new question of patentability, an Inter Partes reexamination is ordered. Thereafter, just as in an Ex Parte proceeding, the third-party requester will be provided with a copy of Office Actions issued by the PTO. Also, just as in an Ex Parte proceeding, the third-party requester will be provided a copy of the patent owner's responses to Office Actions. However, unlike an Ex Parte proceeding, the third-party requester may reply to the Office Actions and to the patent owner's responses.

See the full article here.

Worlds.com Sues NCSoft for Infringing Key Virtual Worlds Patent

The following is excerpted from a General Patent Corporation press release that appeared today, January 9, 2009 at PR-inside:

General Patent Corporation (GPC), a leading patent licensing and enforcement firm, announced today that it filed a patent infringement lawsuit against NCSoft Corp. of Austin, TX on behalf of its client, Worlds.com, Inc. (Worlds).

The lawsuit (Case 6:08-cv-00508) was filed in the United States District Court for the Eastern District of Texas, Tyler Division.

Worlds.com, Inc. (OTC BB: WDDD), of Brookline, MA, owns US Patent No. 7,181,690 titled "System and Method for Enabling Users to Interact in a Virtual Space" (the "690 Patent). The Patent relates to computer architecture for a three-dimensional graphical multi-user interactive virtual world system. Such systems are utilized in Massive Multi-Player Online Games (MMORPG) of the type known as Graphical Multi-Dimension (GMUD) games, which provide a graphical representation of the player's character (avatar) wherein movement of the character in virtual space alters what the character views.

NCSoft Corp., a game developer with US offices in Austin, TX, is the purveyor of such games as City of Heroes, Guild Wars, Tabula Rasa, Lineage, and Lineage II, which have been identified in the complaint as infringing the Worlds' Patent.

Read the full press release here.

IP Holder Injects Itself Into Patent Lawsuit

Zusha Elinson writing on January 6, 2009 for The Recorder states:

There are usually two options in patent litigation: fight or settle.

But San Francisco's RPX Corp. has thrown a wild card into a case between patent-holding company Acacia Research Corp. and 20 defendants.

Acacia announced on Friday that a subsidiary called Light Valve Solutions reached a licensing agreement with RPX, a new company that buys and licenses patents for its paying members. The idea is to take "dangerous" patents off the street for its members' protection. RPX involved itself with the case by announcing that defendants who sign up with RPX get a license to the Acacia patent, letting them out of the suit.

"If they don't sign up with us, they're still being sued," said John Amster, who co-founded RPX this fall. 

Amster wouldn't discuss the cost of joining RPX, or whether defendants would have to commit to a certain term of membership. RPX has said that dues can vary widely based on the size and nature of a company, from $35,000 to nearly $5 million.

Read the full article here.

ITC Extends Initial Determination in Tessera DRAM ITC Action

The following is excerpted from a January 6, 2009 Tessera Technologies press release available at Business Wire:

Tessera Technologies, Inc. (NASDAQ: TSRA) announced that the Administrative Law Judge (ALJ) in the U.S. International Trade Commission (ITC) action brought by Tessera against certain DRAM manufacturers, Investigation No. 337-TA-630 (DRAM ITC action), has extended the deadline for issuing the Initial Determination in the action from January 14, 2009 to March 6, 2009. Judge Essex cited the Court’s current caseload and responsibilities in other investigations as the reasons for the rescheduled deadline. The date for issuance of the Final Determination (the target completion date) in this investigation has been extended from April 14, 2009 to July 6, 2009.

The respondents in the DRAM ITC action include A-Data Technology Co., Ltd., Acer, Inc., Centon Electronics, Inc., Elpida Memory, Inc., Kingston Technology Co., Inc., Nanya Technology Corporation, Powerchip Semiconductor Corp., Promos Technologies Inc., Ramaxel Technology Ltd., Smart Modular Technologies, Inc., and TwinMOS Technologies, Inc. Tessera is asserting infringement of three Tessera patents, U.S. Patent No. 5,663,106 (‘106), U.S. Patent No. 6,133,627 ('627), and U.S. Patent No. 5,679,977 (‘977) and is seeking an exclusion order barring import of infringing products that incorporate the patented technology.

LED Shareholder Derivative Suit Has an IP Twist

Eric Lane of the Green Patent Blog writes on January 4, 2009:

This is something I haven’t seen before:  a shareholder derivative action for patent infringement.

BaoLiang Wang (Plaintiff Wang) is a 22% shareholder of a small California LED sign maker called Sun LED Sign Supply Inc. (Sun).

Last month, Plaintiff Wang sued Sun, two of its directors, Xiao Ping Wang (Defendant Wang) and Wei Rong Fang, as well as JT LED USA (JT), Sunfire LED, LLC (Sunfire) and The LED, Inc. in federal court in Los Angeles, alleging patent infringement against all defendants and unfair competition against the two directors of Sun.

According to the complaint, while the application that issued as the ‘279 patent was pending, Defendant Wang assigned the application to Sun, “giving the exclusive right to [Sun] for a period of eight (8) years.”  The U.S. Patent & Trademark Office patent assignments database lists Sun as the assignee of the ‘279 patent.

Plaintiff Wang is asking the court to find defendants liable for patent infringement, to compensate him for his losses and to assess punitive damages on defendants for their alleged fraudulent acts.

So it’s a competing director type shareholder suit with an IP twist.  And because the inventor assigned away his rights, we have a situation in which the inventor is accused of infringing his own patent.

Read the full post here.

Supreme Court of Canada Redefines Law on Anticipation and Obviousness

Santosh Chari, a patent agent with Blakes, writes on November 20, 2008 at the firm's website:

On November 6, 2008, the Supreme Court released its decision in Apotex Inc. v. Sanofi-Synthelabo Canada Inc. The primary issue before the court was the validity of selection patents. In its decision, the court upheld the validity of such patents and also established new guidelines for assessing anticipation and obviousness of patent claims.

The test for obviousness also stems from the...Beloit decision, which stated that for a claim to be found obvious, a person skilled in the art and having common general knowledge must have come directly and without difficulty to the invention. In the present decision, the Supreme Court held that the Beloit test for obviousness has been interpreted too restrictively in Canada and that such definition needed to be re-examined in view of recent U.K. and U.S. law. In this analysis, the court referred to the recent KSR decision by the U.S. Supreme Court.

In its decision, the court has established a refined test for obviousness and determined that an obviousness inquiry should comprise the following four steps:

1. Identification of the relevant "person skilled in the art" and the common general knowledge that such person would have.

2. Construction of the claims in question to identify the inventive concept.

3. Identification of the differences between the construed claim and the prior art.

4. Determination of whether such differences would have been obvious to the person skilled in the art or whether they require a degree of inventiveness.

The above criteria are essentially similar to the Beloit test for obviousness. However, the court further clarified that in some instances, such as where an invention was arrived at after experimentation (as in the case in question), the last step may also involve an assessment of whether the invention was "obvious to try".

With regard to obviousness, the court has arguably lowered the threshold by introducing an "obvious to try" test for determining inventive step.

Read the full article here.