Intellectual Property and Tech Law Reports

Somerset Pharms., Inc. v. Dudas

Somerset Pharmaceuticals, Incorporated (Somerset) appeals from an order by the United States District Court for the District of Delaware denying Somerset’s request for a preliminary injunction. See Somerset Pharms., Inc. v. Dudas, No. 07-279 (D. Del. Jun. 29, 2007). We dismiss Somerset’s request to compel the United States Patent and Trademark Office (PTO) to issue a decision as moot; otherwise we affirm.

Download the decision.

Monsanto Co. v. Syngenta Seeds, Inc.

On summary judgment, the United States District Court for the District of Delaware determined that Defendants-Appellees Syngenta Seeds, Inc.; Syngenta Biotechnology, Inc.; Garst Seeds Company; Golden Harvest Seeds, Inc.; Garwood Seed Co.; Golden Seed Co., LLC; Sokmer Bros. Seed Company; Thorp Seed Co. and JC Robinson Seeds, Inc., (collectively "Syngenta"), did not infringe the asserted claims of U.S. Patents Nos. 5,538,880 and 6,013,863 ("the Lundquist patents"). Monsanto Co. v. Syngenta Seeds, Inc., 431 F. Supp. 2d 482, 487 (D. Del. 2006). The trial court also held claims 1, 5 and 6 of U.S. Patent No. 4,940,835 ("the '835 patent") invalid under 35 U.S.C. § 112 for lack of enablement. Id. at 490. Finding no error, this court affirms.

Download the decision.

IpVenture, Inc. v. Prostar Computer, Inc.

IpVenture, Inc. owns and licenses patents on inventions related to the management of personal computer systems. The company is owned by Mr. Peter Tong and Mr. C. Douglass Thomas. On August 14, 2003 IpVenture sued two computer manufacturers, ProStar Computer, Inc. and Midern Computer, Inc. (together "Defendants"), charging them with infringement of United States Patent No. 6,216,235 (the '235 patent) entitled "Thermal and Power Management for Computer Systems," the joint invention of C. Douglass Thomas and his father, Alan E. Thomas.
Mr. C. Douglass Thomas had for several years been employed by the Hewlett-Packard Company as a patent attorney. The Defendants moved for dismissal on the ground that IpVenture did not have standing to sue because it did not own the entire interest in the '235 patent, based on Mr. Thomas' obligations under his employment contract with Hewlett-Packard. The district court agreed, and dismissed the suit without prejudice. IpVenture appeals the dismissal, and the Defendants cross-appeal for attorney fees. We conclude that the dismissal was in error, for Hewlett-Packard had no assignment of an interest in the patent, and had disclaimed any interest therein.

Download the decision.

In re Buszard

Patent applicants David Buszard, Matthew D. Phillips, Richard S. Rose and Stephen B. Falloon (together "Buszard") seek review of the decision of the Board of Patent Appeals and Interferences1 holding all of the claims in the patent application unpatentable on the ground of anticipation, 35 U.S.C. '102. We reverse the Board's decision as to anticipation and remand for completion of examination.

Download the decision.

CIAS, Inc. v. Alliance Gaming Corp.

CIAS, Inc. (formerly Currency Identification & Analysis Systems) filed a patent infringement suit against Alliance Gaming Corporation and its subsidiary Bally Gaming, Inc. (collectively Alliance). The patent in suit is United States Patent No. 5,283,422 (the '422 Patent), entitled "Information Transfer and Use, Particularly with Respect to Counterfeit Detection." Both CIAS and Alliance produce systems for the detection of counterfeit usage. The Alliance detection systems for tickets used in casino slot machines are known as the Slot Data System (SDS) and Slot Management System (SMS). CIAS charged that these systems infringe the '422 patent, literally or under the doctrine of equivalents. Alliance moved for summary judgment of non-infringement, on the ground that on the correct claim construction the Alliance systems do not infringe any claim of the '422 patent. The district court granted Alliance's motion, construing the relevant terms of the '422 claims in light of the accused systems. The court held that this mooted Alliance's counterclaim of unenforceability, and entered final judgment dismissing the suit in its entirety.

We conclude that although the district court erred in its construction of the term "comprised of," that error did not affect the construction of the substantive terms that support the judgment of non-infringement. That judgment is affirmed.

Download the decision.

Verizon Services Corp. v. Vonage Holdings Corp.

Appellants Vonage Holdings Corp. and Vonage America, Inc. (“Vonage”) appeal from the judgment of the United States District Court for the Eastern District of Virginia in favor of appellees Verizon Services Corp., Verizon Laboratories Inc., and Verizon Communications, Inc. (“Verizon”). The judgment awarded $58,000,000 in compensatory damages and a royalty of 5.5% on any future infringing sales, based on a jury verdict that Vonage infringed claims of U.S. Patent Nos. 6,282,574 (“’574 patent”), 6,104,711 (“’711 patent”) and 6,359,880 (“’880 patent”), and that those patents were not invalid as obvious. Vonage also appeals from the injunction entered by the district court barring Vonage from further infringing the asserted claims, including provisions that bar the use of certain methods and devices.

We hold that the district court did not err in its construction of disputed claim terms of the ’574 and ’711 patents. Therefore, we affirm the judgment of infringement with respect to those claims. However, we hold that the district court improperly construed one of the disputed terms in the ’880 patent, and accordingly vacate the judgment of infringement with respect to the ’880 patent and remand for a new trial.

We hold that the district court did not commit prejudicial reversible error in instructing the jury on the law of obviousness with respect to the ’574 and ’711 patents, and therefore affirm the judgment that the asserted claims of those patents would not have been obvious. However, in light of the error in the construction of the claims of the ’880 patent and the possibility of error in the jury instruction on obviousness, we remand to the district court to determine whether prejudicial error occurred with respect to the jury instructions that would affect the obviousness verdict with respect to the ’880 patent.

We vacate in its entirety the award of $58,000,000 in damages and the 5.5% royalty and remand to the district court for further proceedings. We affirm the injunction as to the ’574 and ’711 patents. We vacate the injunction insofar as it pertains to the ’880 patent.

Download the decision.