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Jacobs v. Nintendo of America, Inc. (Fed. Cir. May 28, 2004).
Jacobs owns a patent on a tilt sensitive controller. (U.S. Patent No. 5,059,958). In a prior suit over the same technology, Jacobs settled with Analog. Under the terms of the settlement agreement, Analog was given a full license to practice the patented technology.
In the present case, Jacobs sued Nintendo, asserting that Nintendo's "Kirby Tilt 'n Tumble" for Game Boy. Nintendo responded, and the lower court agreed, that Nintendo's actions fell under the settlement agreement, since the accelerometers for the game were purchased from Analog.
On appeal, the Federal Circuit (J. Bryson) affirmed the lower court's dismissal on summary judgment.
We agree with the district court that the clause granting Analog the right to sell its accelerometers for use in tilt-sensitive control boxes barred Jacobs from interfering with that right by prohibiting Analog’s customers from using the accelerometers for that authorized purpose by making, using, and selling control boxes incorporating Analog’s devices. That interpretation is in accordance with the basic contract law principle that a party may not assign a right, receive consideration for it, and then take steps that would render the right commercially worthless.Additionally, the Appellate Panel held that the "noninfringing use" doctrine did not apply.
The “noninfringing use” doctrine applies when a patentee or its licensee sells an article and the question is whether the sale carries with it a license to engage in conduct that would infringe the patent owner’s rights. In that setting, absent an express agreement between the parties, determining whether the sale conveys with it the implied right to use the article in an infringing manner may depend on whether there is any noninfringing use for the article. If there is no noninfringing use, it may be reasonable to infer that there has been “a relinquishment of the patent monopoly with respect to the article sold.” United States v. Univis Lens Co., 316 U.S. 241, 249 (1942) ... This case is quite different ... because the [settlement] agreement must be understood to authorize Analog to sell its accelerometers for [otherwise infringing] uses.
What's love but a coupling satisfaction predictor? Eharmony recently received a patent on its matchmaking methodology. (U.S. Patent No. 6,735,568).
Claim 1 of the patent deacribes a method with four steps:
(i) generating, from empirical data, a number of factors ... relevant to relationship satisfaction;(Related AP Story by Rachel Konrad).
(ii) approximating the satisfaction that a user ... has in the relationships that the user forms with others;
(iii) identifying ... candidates for a relationship with the user by [using] the approximated satisfaction and one or more of the factors; and
(iv) approximating the satisfaction that the user will have in a relationship with a particular candidate.
Pamela and Kevin Piston of Australia have patented this shape for a pastry. (U.S. Patent No. D467,404).
Kinzenbaw and Kinze Manufacturing v. Case Corporation and New Holland (Northern District of Iowa, May 20, 2004)
In a patent infringement suit over a seed planter, the Iowa District Court refused to disqualify Plaintiff Kinze's attorneys, Perkins Coie, even though Perkins also represented Defendant Case in other matters. Perkins' work for Case had not involved patent matters.
Kinze's original attorneys had been disqualified after working on patent matters for both Kinze and Case.
Arnold O. Beckman, inventor of the pH meter, died recently at age 104.
Beckman, a resident of Corona Del Mar, Calif., was born the son of a blacksmith on April 10, 1900 in Cullom, Ill., and became the friend of world leaders. Of all his scientific innovations, Beckman was perhaps best known for inventing the pH meter, an instrument that changed an industry and served as the foundation for the company that still bears his name. (Link)
in re Relafen Antitrust Litigation (D. Mass, May 12, 2004)
A Massachusetts district court has allowed (in-part) an end-payor class action suit against GlaxoSmithKline (GSK). (U.S. Patent No 4,420,639)
Background: In 2002 GSK's lawsuit against generic Relafen (an NSAID) manufactures ended in an invalidity opinion that was affirmed by the Federal Circuit.
In the present suit,
the plaintiffs claim that but for SmithKline’s wrongful filing of patent lawsuits, consumers could have begun purchasing nabumetone in a competitive market -- comprising both Relafen and its generic alternatives -- as early as September 1998. Because of the pending litigation, however, the generic alternatives did not become available until after the stay period terminated and SmithKline’s patent was invalidated.The court certified the following classes:
With respect to their antitrust and consumer protection claimsAll persons or entities who purchased Relafen or its generic alternatives in the states of Arizona, California, Massachusetts, or Vermont during the period of September 1, 1998 through June 30, 2003 for consumption by themselves, their families, members, employees, insureds, participants, or beneficiaries.and with respect to their unjust enrichment claimsAll persons or entities in the United States who purchased Relafen in the states of Arizona, California, Massachusetts, Tennessee, or Vermont during the period September 1, 1998 through June 30, 2003 for consumption by themselves, their families, members, employees, insureds, participants, or beneficiaries.Excluded from both classes were governmental entities; SmithKline and its officers, directors, management, employees, subsidiaries, and affiliates; persons or entities who purchased Relafen for purposes of resale; and persons or entities who purchased Relafen directly from SmithKline or its affiliates.
NYTimes is reporting that a chloesterol lowering drug will be sold over-the-counter in the UK beginning this summer.
Starting in July, a low dosage of the drug Zocor will be sold over the counter to people at moderate risk of heart disease, a number that could reach 5 million to 10 million. That group includes all men older than 55, as well as men over 45 and women over 55 who smoke, are overweight, have a family history of heart disease or come from the Indian subcontinent, all groups that are at higher risk than the general population.
Update 5/17/04: US drug makers are working with the FDA to get OTC approval.
A decision is months away, but approval by the Food and Drug Administration could significantly affect the nation's biggest public health problem, heart disease, and greatly expand sales in the top-selling drug category. (Article)
A little off topic: Survey results indicate that Attorneys have the third highest motor-vehicle accident rate of any occupation. The two groups with worse records are students and medical doctors. (Small Firm Business).
Autoliv's patented restraint system may help us make it out alive.
Drive Safely.
In re American Academy of Science Tech Center (Fed. Cir. May 13, 2004)
The Federal Circuit affirmed the Patent Board's rejection of several claims during reexamination.
The patent claims a priority date back to 1982 and describes distributing processing functionality among several computers:
user applications are run on the user stations, while the database resides on a dedicated database computer. Several user stations are networked to the database computer so that a user application running on a user station can store data to and retrieve data from the database residing on the database computer. The patent describes using a “data base simulator” to “enable[ ] an application program . . . at the user station to call for storage or retrieval of data from the data center as though it were calling for data from a data base resident at the user station . . . .”The Federal Circuit agreed that the broadest reasonable construction of the claim language allows prior art to read on the claims. Thus, the claims were properly held invalid.
Microchip Technology v. U.S. Philips and Philips Electronics N.A. (Fed. Cir. May 13, 2004)
Philips owns patents relating to a two-wire bus for communicating between integrated circuits (I2C). Microchip asserted that it did not infringe and that it was a licensee (by succession). The question before the Court was who determines whether there is an obligation to arbitrate.
Although the Federal Circuit generally follows local circuit law regarding non-patent issues, in this case the Court disagreed with prior 9th Circuit holdings. Instead, the Court held that under Supreme Court case law obligation to arbitrate is a threshold matter for the district court to determine. Thus, the Federal Circuit remanded for the District Court to determine whether Microchip was a successor party to the 1983 agreement before any issues may be referred to arbitration.
The appellate panel also found that the arbitration clause was not expired:
It is clear on the face of the 1983 agreement’s arbitration clause that the obligation to arbitrate survives expiration of the agreement’s other provisions. The arbitration clause specifically provides that “[a]ll disputes arising out of or in connection with the interpretation or execution of this Agreement during its life or thereafter” are subject to arbitration.Appellate Jurisdiction: The Court also held that an order compelling arbitration is appealable:
An order compelling arbitration is in effect a mandatory injunction. Denial of a mandatory injunction is ordinarily appealable under section 1292(a)(1). (Citations omitted)More info about the I2C technology is here:
Philips was the inventor of the Inter-IC or I²C-bus nearly 20 years ago, and it is now firmly established as the worldwide de-facto solution for embedded applications. It is used extensively in a variety of microcontroller-based professional, consumer and telecommunications applications as a control, diagnostic and power management bus. As a two-wire serial bus, its inherently simple operation was crucial to its emergence as the worldwide de-facto standard.
In re John Ngai and David Lin (Fed. Cir. May 13, 2004)
Ngai invented a new method for amplifying and normalizing RNA and submitted a patent application for his invention.
The Patent Board rejected Claim 19, which was drawn to a kit with printed instructions for performing the method. The Federal Circuit affirmed the Patent Board’s rejection of the claim.
All that the printed matter does is teach a new use for an existing product. As the Gulack court pointed out, “[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” Id. If we were to adopt Ngai’s position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product. This was not envisioned by Gulack. Ngai is entitled to patent his invention of a new RNA extraction method, and the claims covering that invention were properly allowed. He is not, however, entitled to patent a known product by simply attaching a set of instructions to that product.
Only a select few ex parte reexaminations are filed by patent owners. Often the technology at issue is of particular importance, and the owner hopes to ensure that the patent is valid before pursuing potential infringers.
3M recently filed for reexamination for several patents covering field flattening lenses used in wide screen television (TV) technology. (Nipper). This may be a reaction to the recent patent tussle between Fujitsu and Samsung.
Medtronic Vascular, Inc. v. CORDIS Corp. (3rd Cir. April 30, 2004)
Medtronic AVE alleged that Cordis infringed its coronary stent patents. In response, Cordis asserted that it held a license to the patents under a Settlement and License Agreement that it entered into with the parent corporation of Medtronic AVE to settle prior litigation.
Although the Agreement included an arbitration provision, the District Court held that the dispute was not arbitrable, and enjoined arbitration.
The 3rd Circuit panel vacated and remanded, finding that the the arbitration clause was applicable under New York law.
Intirtool, Ltd. (MASS-TEX) v. Texar Corp. (ToolPro) (Fed. Cir. May 10, 2004).
In this patent infringement case, the district court found that Intirtool’s patent was invalid for failure to satisfy the written description requirement. (U.S. Patent 5,022,253) Additionally, the district court concluded that damages accrued prior filing the lawsuit were barred by laches. The Federal Circuit reversed these rulings for either clear error or abuse of discretion.
The first dispute revolved around whether the preamble:
hand-held punch pliers for simultaneously punching and connecting overlapping sheet metalrestricted the claims to pliers that have a connecting functionality.
The Federal Circuit held that the preamble was not limiting in this case because the body of the claim was described in such exacting structural detail that deletion of the preamble would not affect the claim. (NOTE: The body of claim 1 is quite large for this type of technology, listing 60+ lines in the patent).
In terms of inequitable conduct and laches,
the district court based its conclusion that Intirtool had engaged in inequitable conduct on its view that Intirtool had, during the prosecution of the ’253 patent, “repeatedly stated, and indeed stressed, that the described tool simultaneously punched holes and connected ceiling grids, knowing that this assertion was false.”The Federal Circuit again disagreed with the district court – finding that the “connecting” references made by the patentee were “merely preamble features of the invention.”
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