Intellectual Property and Tech Law Reports

Tafas v. Dudas

District Court finds the USPTO's rules governing the examination of patents to be an unauthorized extension of USPTO authority.

At issue are the United States Patent and Trademark Office’s changes to the rules governing the examination of patents. This case presents itself by virtue of cross-motions for summary judgment by Plaintiffs Smithkline Beecham Corporation d/b/a GlaxoSmithKline, et al., Plaintiff Triantafyllos Tafas, and Defendants Jon W. Dudas and the United States Patent and Trademark Office. Defendants also move to strike several exhibits filed by Tafas and certain amici curiae. For the reasons stated below, the Court will grant Plaintiffs’ Motions for Summary Judgment, deny Defendants’ Motion for Summary Judgment, and deny as moot Defendants’ Motion to Strike.

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Allan Block Corp. v. County Materials Corp.

To summarize, the award of damages is affirmed, and so is the denial of all other relief sought by Allan Block with the exception of the refusal to allow it to prove damages with regard to the two claims that the judge kept from the jury; as to those, the judgment is vacated and the case remanded for a trial on damages limited to those claims.

We trust, though, that we have provided enough guidance to enable this suit to be settled without further proceedings. The remaining stakes are small, and it is time the war between these pertinacious antagonists was brought to a peaceful end.

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Cytologix Corp. v. Ventana Med. Sys.

This is an appeal from a single judgment of the district court in two cases, both brought by CytoLogix Corp. against Ventana Medical Systems, Inc. One of the two district court cases, No. 01-10178, was a patent infringement action; the other, No. 01-12231, was an antitrust/misappropriation action. After two trials, both combining claims from each action, the district court entered final judgment on all claims. Although there was no formal order of consolidation before those trials, the district court later entered an order stating that, in actuality, the cases were consolidated for trial and ordering that they be consolidated, nunc pro tunc, as of the commencement of the first trial. CytoLogix then filed two identical notices of appeal from the consolidated judgment, one in this court and one in the Court
of Appeals for the Federal Circuit.

Ventana has now moved to dismiss the appeal to this court for lack of jurisdiction and has also sought sanctions under Rule 38 of the Federal Rules of Appellate Procedure. CytoLogix opposes dismissal and sanctions but concedes that its appeal of the disposition of its patent claims should be transferred to the
Federal Circuit. In the alternative, CytoLogix requests that the entire appeal be transferred to the Federal Circuit rather than dismissed. For the reasons discussed below, we dismiss the appeal
but deny sanctions.

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SmithKline Beecham Corporation, et al. v. Dudas

The Federal District Court for the Eastern District of Virginia granted a preliminary injunction yesterday against the USPTO suspending the implementation of the new rules that were to take effect November 1, 2007.

. . .

For the reasons stated above, the Court will: (1) grant GSK’s Motion for a Preliminary Injunction; (2) deny the PTO’s Motion to Strike Exhibit E of the Memorandum in Support of GSK’s Motion; (3) grant the Motion of Amicus Curiae AIPLA for Leave fo File its Brief in Support of GSK’s Motion; (4) grant HEXAS, The Roskamp Institute, and Tikvah’s Joint Motion in Support of Motion for Leave to File Amici Curiae Brief in Support of GSK’s Motion; and (5) grant the Motion of Amicus Curiae Elan Pharmaceutical Corp. for Leave to File its Brief in Support of GSK’s Motion.

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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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County Materials Corp. v. Allan Block Corp.

This case is one of those nonpatent patent cases that, as we explain more fully below, falls within the jurisdiction of the regional courts of appeals rather than the Federal Circuit. See 28 U.S.C. §§ 1295(a)(1), 1338; Holmes Group, Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826, 829-30 (2002) (applying well-pleaded-complaint rule to § 1338). Two companies, County Materials Corporation and Allan Block Corporation, entered into a production agreement (“the Agreement”) giving exclusive rights to County Materials to manufacture Allan Block’s patented concrete block; the issue is whether County Line was free to sell an allegedly non-infringing product, despite the presence of a covenant not to compete in the Agreement in which County Line promised not to sell competing products for 18 months if it stopped making Allan Block’s product. Following the termination of the Agreement, County Line decied not to wait for the full 18 months before jumping back into the market with a competing product. Allan Block threatened to sue, but County Line beat it to the courthouse with this suit for a declaratory judgment. County Line wanted the district court to declare that the covenant not to compete was unenforceable because it violated federal patent policy, essentially raising an anticipatory patent misuse defense to its planned breach of the Agreement. The district court granted summary judgment to Allan Block, finding no violation of federal patent policy or Minnesota law. We agree with the district court’s conclusions and affirm.

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Patent suit against Microsoft tossed

 

By Jeff St. Onge

 

Bloomberg News

Microsoft won its bid to have a patent-infringement lawsuit by creditors of defunct Internet service provider At Home thrown out.

The U.S. Court of Appeals for the Federal Circuit in Washington ruled Wednesday that a trust set up to pay At Home's creditors lacked authority to sue Microsoft over a patent they received in payment of bankruptcy claims.

The court ruled that U.S. patent law, not bankruptcy law, governs who has power to sue over patents transferred to help pay off a bankrupt company's debt.

Full story.

Broadcom Corp. v. Qualcomm Inc.

This appeal presents important questions regarding whether a patent holder’s deceptive conduct before a private standards-determining organization may be condemned under antitrust laws and, if so, what facts must be pled to survive a motion to dismiss. Broadcom Corporation (“Broadcom”) alleged that Qualcomm Inc. (“Qualcomm”), by its intentional deception of private standards-determining organizations and its predatory acquisition of a potential rival, has monopolized certain markets for cellular telephone technology and components, primarily in violation of Sections 1 and 2 of the Sherman Act and Sections 3 and 7 of the Clayton Act. The District Court dismissed the Complaint, and Broadcom appeals. For the reasons that follow, we conclude that Broadcom has stated claims for monopolization and attempted monopolization under § 2 of the Sherman Act – Claims 1 and 2 of the Complaint. We also conclude, however, that Broadcom lacks standing to assert a claim for unlawful monopoly maintenance in
a market in which it neither competes nor seeks to compete – Claim 7 – and that it has failed to allege an antitrust injury sufficient to state a claim under § 7 of the Clayton Act – Claim 8. We will, accordingly, affirm in part, reverse in part, and will order the reinstatement of Broadcom’s state and common-law
claims.

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Zila, Inc. v. Tinnell

Appellant James Tinnell developed a liquid solution to treat lesions caused by the herpes virus. He applied for a patent on the treatment and acquired a defunct corporation, now named Zila, as a vehicle for marketing and selling the product, now called Zilactin. Tinnell subsequently entered an agreement with Zila that assigned all rights in his invention to the company in return for royalty payments and company stock. The royalty payments provided for in this contract are the subject of the present dispute.

The contract at issue is unambiguous as to the duration of the royalties, and the parties agree on their intent at the time it was formed. All the evidence is thus in accord with a single interpretation — that Tinnell would relinquish all rights to Zilactin, patent or otherwise, and, in return, receive in perpetuity a five percent royalty on Zila’s sales of the invention. The difficulty in this case arises because Zila asserts, and the district court agreed, that the doctrine announced in Brulotte v. Thys, 379 U.S. 29 (1964), displaces, because of federal patent policy, the parties’ intent and renders the royalty obligation unenforceable, either entirely or upon the expiration of the first patent that issued on Tinnell’s invention. We confront, consequently, not simple questions of contract law but rather issues concerning the impact and bounds of Brulotte, in the context of an otherwise unremarkable case.

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Jennings v. Auto Meter Prods., Inc.

Plaintiff Douglas M. Jennings designed an aftermarket dashboard bezel—that is, a molded shape that fits over an automobile’s instrument panel. Hoping to make money from his design through manufacturing and selling his bezels in the auto parts aftermarket and to forestall copycats, Jennings applied to the U.S. Patent and Trademark Office (“PTO”) for a patent. As part of her review of Jennings’s application, the patent Examiner contacted defendants Auto Meter Products, Inc. (“Auto Meter”), Gauge Works, LLC (“Gauge Works”), and Gregory Day to inquire whether the bezel they were selling was on sale or publicly available before Jennings applied for his patent. Jennings believes that the defendants, in response to the Examiner’s inquiries, fraudulently misled her into believing that Jennings was not in fact the inventor of the bezel.

In addition to continuing to pursue his patent application, Jennings filed this action against the defendants under the Racketeer Influenced and Corrupt Organizations Act (“RICO”), 18 U.S.C. §§ 1962(a)-(d), as well as its Indiana counterpart, Ind. Code §§ 35-45-6-2. RICO fit the bill, in Jennings’s opinion, because the defendants were engaged in “the type of unfair competition that one would expect from a Mafia family or narcotics cartel.” His complaint alleged that the defendants had commandeered
the PTO through a pattern of racketeering activity by flooding it (via mail and wire transmissions) with false information in order to deny Jennings a patent and thereby “exploit the market for the bezel without compensating Jennings for use of his invention.” In addition to his federal and state RICO theories, Jennings asserted various grounds for recovery under Indiana state law, such as unauthorized control of his property, conversion, and fraud.

The defendants moved to dismiss on various grounds. They argued that the RICO counts failed to state a claim upon which relief could be granted, see FED. R. CIV. P. 12(b)(6), because Jennings had not adequately alleged a pattern of racketeering activity. They also maintained that the state-law claims were unripe, because Jennings’s patent application was still pending before the Board of Patent Appeals and Interferences (“BPAI”) at the time. Defendants also moved to disqualify Jennings’s attorney,
claiming that he was a necessary fact witness under Indiana Rule of Professional Conduct 3.7. A magistrate judge granted the defendants’ Rule 12(b)(6) motion, stayed the state-law claims, and granted the motion to disqualify Jennings’s attorney. After a joint motion by the parties, the court issued a final judgment dismissing all claims. For the following reasons, we affirm the dismissal of all claims. Because we have resolved Jennings’s appeal this way, we have no need to reach the attorney disqualification issue.

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