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September 2007
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Biomed. Patent Mgmt. Corp. v. State of California

The issue presented in this appeal is whether a State is entitled to assert its sovereign immunity under the Eleventh Amendment where the State intervened in an earlier, related action that was dismissed for improper venue. The district court concluded that a State was entitled to assert its Eleventh Amendment sovereign immunity in those circumstances and, accordingly, granted a motion to dismiss on that ground filed by Defendant-Appellee State of California, Department of Health Services (“DHS”). Plaintiff-Appellant, Biomedical Patent Management Corporation (“BPMC”), appeals that decision. Because we agree that DHS’s initial waiver of Eleventh Amendment sovereign immunity does not extend to this case or judicially estop DHS from asserting immunity in this case, we affirm.

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Paice LLC v. Toyota

Defendants Toyota Motor Corporation, Toyota Motor North America, Inc., and Toyota Motor Sales, U.S.A., Inc. (collectively, “Toyota”) appeal a judgment by the United States District Court for the Eastern District of Texas that Toyota infringed claims 11 and 39 of U.S. Patent No. 5,343,970 (“the ’970 patent”) owned by Paice LLC (“Paice”) under the doctrine of equivalents. Paice LLC v. Toyota Motors Corp., No. 2:04-CV-211 (E.D. Tex. Aug. 16, 2006). Paice cross-appeals the district court’s judgment that Toyota did not literally infringe claims 11 and 39 of the ’970 patent, claim 15 of the U.S. Patent No. 6,209,672 (“the ’672 patent”), and claims 1 and 2 of U.S. Patent No. 6,554,088 (“the ’088 patent”).1 Paice also appeals the district court’s imposition of an ongoing royalty arrangement that allows Toyota to continue practicing the invention of the ’970 patent in exchange for a set royalty payment. For the reasons explained below, we affirm-in-part, vacate-in-part, and remand for further proceedings.

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Immunocept, LLC v. Fulbright & Jaworksi, LLP

This is a legal malpractice case based on alleged errors in patent prosecution. Immunocept, L.L.C., Patrice Anne Lee, and James Reese Matson (collectively “Immunocept”) appeal the decision of the United States District Court for the Western District of Texas granting summary judgment in favor of Fulbright & Jaworski, L.L.P. (“Fulbright”) based on the following independent grounds: (1) the malpractice claim is barred by the statute of limitations and (2) the claim for damages is too speculative to be recovered under state law. Immunocept v. Fulbright & Jaworksi, LLP, No. A-05-CA-334, slip op. (W.D. Tex. Mar. 24, 2006) (“MSJ Order”). After Immunocept filed its opening brief, we ordered the parties to address whether there is “arising under” jurisdiction over the malpractice claim under 28 U.S.C. § 1338. Because the claim scope determination involved in the malpractice claim presents a substantial question of patent law, we conclude that jurisdiction is proper under § 1338. We further conclude that Immunocept’s malpractice claim is barred by the statute of limitations and, accordingly, affirm the district court’s decision.

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Int'l Gamco, Inc. v. Multimedia Games, Inc.

The United States District Court for the Southern District of California certified this case for an interlocutory appeal. International Gamco, Inc. (“Gamco”) possesses an “exclusive enterprise license” (an amalgam of an exclusive territorial license and an exclusive field of use license) and seeks on the basis of that license to sue Multimedia Games, Inc. (“Multimedia”). The trial court declined to dismiss the case and certified the question of licensee standing to this court. Because this court concludes that an exclusive enterprise licensee, like a field of use licensee, does not hold all substantial rights in the licensed patent within the licensed territory, this court reverses the district court’s denial of the defendant’s motion to dismiss.

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Air Measurement Techs., Inc. v. Akin Gump Strauss Hauer & Feld

This is a legal malpractice case between non-diverse parties based on alleged errors by counsel in patent prosecution and patent litigation. The case was filed in state court and then removed to federal court. Akin Gump Strauss Hauer & Feld, L.L.P. and Branscomb, P.C. (collectively “Akin Gump”) appeal the interlocutory decision of the United States District Court for the Western District of Texas denying their motion to remand Air Measurement Technologies, Inc., North-South Corporation, and Louis Herbert Stumberg’s (collectively “AMT’s”) lawsuit, which motion asserted want of subject matter jurisdiction under federal patent law, 28 U.S.C. § 1338. Air Measurement Techs., Inc. v. Akin Gump, No. SA-03-CA-0541 (W.D. Tex. Sept. 29, 2006). Because we conclude that the patent infringement question is a necessary element of AMT’s malpractice claim and raises a substantial, contested question of patent law that Congress intended for resolution in federal court, we affirm.

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In re Translogic Tech., Inc.

The United States Patent and Trademark Office's Board of Patent Appeals and Interferences ("Board") upheld the examiner's rejection of U.S. Patent No. 5,162,666 ("the '666 patent") in a reexamination proceeding, Appeal No. 2005-1050. Because the '666 patent would have been obvious at the time of invention, this court affirms.

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Schwarz Pharma, Inc. v. Paddock Labs., Inc.

Schwarz Pharma, Inc. and Schwarz Pharma AG (collectively, “Schwarz”) appeal from the order of the United States District Court for the District of Minnesota entering summary judgment of noninfringement of U.S. Patent 4,743,450 (“the ’450 patent”) in favor of Paddock Laboratories, Inc. (“Paddock”). Because the district court did not err in its conclusion that prosecution history estoppel bars resort to the doctrine of equivalents in this case, we affirm the entry of judgment of noninfringement.

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Allvoice Computing PLC v. Nuance Communications, Inc.

On summary judgment, the United States District Court for the Southern District of Texas held AllVoice Computing PLC's ("AllVoice's") U.S. Patent No. 5,799,273 ("the '273 patent") invalid because claims 60, 61, and 67 were indefinite under 35 U.S.C. § 112 ¶ 2 and because the patent specification did not disclose the best mode of practicing claim 73. Allvoice Computing PLC v. Nuance Commc'ns, Inc., H-02-4471 (S.D. Tex. Feb. 22, 2006). Thus, the district court did not decide whether Nuance Communications, Inc.’s ("Nuance’s") Dragon Naturally Speaking software infringes the '273 patent on voice recognition technology. Because the district court erred in applying both indefiniteness and best mode, this court reverses and remands.

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Abbott Labs. v. Torpharm

This appeal involves the parties’ ongoing dispute over the efforts of TorPharm, Inc., Apotex, Inc., and Apotex Corporation (collectively, “Apotex”) to market a generic version of Depakote®, an anti-seizure medication containing divalproex sodium patented, produced, and sold by Abbott Laboratories (“Abbott”). Apotex now appeals from a final judgment of the United States District Court for the Northern District of Illinois holding Apotex in contempt for violating an injunction barring it from commercially manufacturing, using, selling, offering to sell, or importing into the United States generic divalproex sodium infringing Abbott’s U.S. Patent Nos. 4,988,731 and 5,212,326 until their expiration. Abbott Labs. v. Apotex, Inc., 455 F. Supp. 2d 831, 841 (N.D. Ill. 2006) (“Abbott V”). The charged conduct was the filing of a repetitive Abbreviated New Drug Application (“ANDA”) with the Food and Drug Administration (“FDA”). We uphold the district court’s decision to entertain a contempt proceeding as well within its discretionary authority. However, because the district court erred in finding Apotex in contempt when the conduct at issue was not within the express terms of the injunction, we reverse the district court’s judgment of contempt.

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Nilssen v. Osram Sylvania, Inc.

Ole K. Nilssen and the Geo Foundation, Ltd. (collectively, “appellants”) appeal from the judgment of the United States District Court for the Northern District of Illinois in favor of Osram Sylvania, Inc. and Osram Sylvania Products, Inc. (collectively, “Osram”) holding fifteen patents issued to Nilssen and exclusively licensed to the Geo Foundation unenforceable for inequitable conduct. Because the district court did not abuse its discretion, we affirm the court’s entry of judgment of unenforceability.

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