Philip Brooks' Patent Infringement Updates

Cyclone Power Technologies Licenses Burn Everything Engine Systems for China Market

The following is excerpted from a December 17, 2009 item from The Auto Channel:

Cyclone Power Technologies Inc. has completed its License Agreement with Great Wall Alternative Power Systems Ltd. to advance the development and production of Cyclone’s Schoell Cycle heat-regenerative external combustion engines for the China market.

Under the terms of the License, Great Wall Alternative Power Systems (GWAPS) will develop in China a production prototype of Cyclone’s biomass-to-power generator system – a portable power plant capable of producing 10kW or more of electricity from the combustion of dry vegetative biomass. Pending completion of production prototyping for Cyclone’s Mark V engine in the United States, as well as successful implementation of the intellectual property protection systems in China designed by both GWAPS and Cyclone, GWAPS will also develop the larger 95hp Mark V engine for electric power production by late 2010.

GWAPS has agreed to pay Cyclone $125,000 in development fees, an additional $400,000 in licensing fees, and then on-going royalties from the sale of Cyclone engines for use in electric power production in China. Engine systems other than biomass-to-power and the Mark V for non-motive power applications would require added development and license fees. Additionally, GWAPS will invest capital to provide for legal and financial structuring, government outreach, and intellectual property protection, including retaining professional organizations to monitor and, if necessary, prosecute patent infringement cases in China. Cyclone has also retained legal counsel in China to audit the IP protocols that GWAPS establishes.

Read more here.

The Long-Term Value of Opinions of Counsel

The above-titled presentation by Scott W. Breedlove of Vinson & Elkins (co-authored by David J. Tobin) was given at The University of Texas School of Law's 14th Annual Advanced Patent Law Institute on October 29–30, 2009 in Austin, TX.  The following is excerpted from the presentation:

Opinions of counsel are not cheap. Is their potential benefit for future patent litigation still worth the cost? In many circumstances, particularly where willfulness and inducement theories are likely to play an important role, the answer is yes.

When it comes to willful patent infringement and induced infringement, the stakes are high. If lost profits and reasonable royalties were not enough, courts have the discretion to increase damage awards to a patentee up to three times upon a finding of willful infringement. And through inducement, a defendant can be liable for infringement even if the defendant does not itself practice the claim. Inducement claims, like joint-infringement theories, seem to be increasing in importance as the computer systems of multiple parties interact more and more in the internet age.

Many of the issues leading to the obsession with opinions of counsel have been resolved, but these opinions can still be the critical rebuttal to a plaintiff’s willfulness allegations when the accused infringer had meaningful knowledge of the patent prior to the lawsuit. For those accused of inducing infringement, an opinion of counsel can also be persuasive evidence to help prove lack of the requisite intent. Indeed, last year’s Broadcom decision suggests it can be a mistake not to obtain an opinion when it comes to inducement theories.

This paper explores factors that inform the value of opinions in litigation, including in the inducement context as illuminated by Broadcom, and suggests practical steps for using opinions effectively.

See the full presentation here.

General Patent Corporation Settles Patent Infringement Lawsuit with Audiovox

The following is excerpted from a December 14, 2009 GPC press release:

General Patent Corporation (GPC), a leading patent licensing and enforcement firm, announced today on behalf of its client, Advanced Video Technologies LLC (AVT), that it settled a patent infringement lawsuit between AVT and Audiovox Electronics Corporation (Audiovox) of Hauppauge, N.Y.

Advanced Video Technologies LLC owns U.S. Patent No. 5,781,788 (the “788 Patent”) titled “Full Duplex Single Chip Video Codec.”  In May of 2009, AVT filed a patent infringement lawsuit (Case No. 09 Civ. 04516) in U.S. District Court for the Southern District of New York against Audiovox Corporation and Audiovox Electronics Corporation. Audiovox agreed to settle the lawsuit and license AVT’s ‘788 Patent, after which the lawsuit was dismissed.

“We are pleased to extend a non-exclusive license under the AVT patent to Audiovox,” said Paul J. Lerner, GPC’s Sr. Vice President and General Counsel. “The ‘788 Patent is available for licensing on non-discriminatory terms to other manufacturers,” he added.

Audiovox is the second company to license the AVT patent as the result of a settlement of a patent infringement lawsuit. A third company, Electro Flip LLC of Henderson, Nev. – a company that was not the subject of litigation – licensed the ‘788 patent voluntarily.

Rule 11 in Australia

The following is excerpted from a December 3, 2009 article by Grant Fisher and Kellech Smith titled, "Indemnity costs awarded in unjustified threats of a patent infringement proceeding" from IP @ Blake Dawson:

The Federal Court of Australia recently determined that indemnity costs were payable by an exclusive licensee, who had been found to have made unjustified threats of patent infringement, in circumstances where a settlement offer had been made during the course of the litigation.

The Court’s judgment provides guidance on the making and acceptance of settlement offers, and in particular offers of compromise under the Federal Court Rules.

On 16 March 2009, in Uniline Australia Ltd v SBriggs Pty Ltd [2009] FCA 222 the Federal Court of Australia found SBriggs had made unjustified threats of patent infringement against Uniline.

Uniline had commenced the proceeding, seeking a declaration, injunction and damages for unjustified threats under section 128 of the Patents Act 1990 (Cth), after it received two letters of demand alleging it had infringed claim 13 of Australian Patent No. 706458. SBriggs cross-claimed for relief for patent infringement and Uniline filed a further cross-claim seeking the revocation of the patent.

Uniline relied on Order 23, rule 11(4) of the Federal Court Rules to assert that, as the applicant in the unjustified threats proceeding, it was entitled to an order for costs on a party and party basis...

Read the full article here.

Federal Circuit Expands Declaratory Judgment Jurisdiction

The following is excerpted from a December 14, 2009 Morgan Lewis Intellectual Property Lawflash:

On December 4, the Federal Circuit issued an opinion that could make it considerably easier for companies faced with implied threats from patent licensing entities to file a declaratory judgment (DJ) action. In Hewlett-Packard Co. v. Acceleron LLC, the nonpracticing patent owner (Acceleron) had approached Hewlett-Packard (HP) by sending a cautiously worded letter, bringing a particular patent to the “attention” of HP and requesting an “opportunity to discuss” the patent. The letter also specifically asked HP to agree that no case or controversy had been created, and thus no DJ action could be filed. HP asked Acceleron to enter into a “mutual standstill agreement,” pursuant to which neither party would file any legal action for 120 days. When Acceleron refused the offer, HP filed a DJ action in the U.S. District Court for the District of Delaware.

Read the full story here.

Apple Countersues Nokia

The following is excerpted from a December 11, 2009 Apple press release published at PR Newswire:

Responding to a lawsuit brought against the company by Nokia, Apple® today filed a countersuit claiming that Nokia is infringing 13 Apple patents.

"Other companies must compete with us by inventing their own technologies, not just by stealing ours," said Bruce Sewell, Apple's General Counsel and senior vice president.

Read the full press release here.

New ITC Cases Target Televisions, BlackBerries, Semiconductors

The following is excerpted from a December 4, 2009 post by Jenna Greene, Senior Reporter, at the BLT (Blog of LegalTimes):

It's been a busy week at the International Trade Commission, with four new, high-stakes intellectual property complaints filed in the last four days. Considering just 25 other cases have been filed all year, it's a quite a glut.

On Dec. 1, Samsung Electronics sued Sharp Electronics Corp. for infringing its patents related to liquid crystal display devices used in televisions. Fish & Richardson partner Ruffin Cordell filed the suit.

Also on Dec. 1, semiconductor maker Analog Devices Inc. filed suit at the ITC against Knowles Electronics of Itasca, Ill. and Mouser Electronics of Mansfield, Texas over surface mount MEMS microphones and products.

Next on the ITC docket is a case filed on Dec. 2 by Nebraska-based Prism Technologies against BlackBerry maker Research in Motion over authentication systems related to its handheld electronic devices and associated software.

Also on Dec. 2, Taiwan-based semiconductor maker Richtek Technology Corp. sued uPI Semiconductor Corp. of Taiwan; Advanced Micro Devices, Inc. of Sunnyvale, Calif.; Sapphire Technology Limited of Hong Kong; Diamond Multimedia, Inc. of Chatsworth, Calif.; and XFX Technology, Inc. of Ontario, Calif.. At issue: patent rights for DC DC controllers.

Read the full post here.

Patent Protection For Sale

The following is excerpted from a December 10, 2009 article by Lee Gomes of Forbes Magazine:

It's hardly surprising that many companies would rather pay to settle a patent claim than risk the exposure and expense of a trial. So patent claims have soared in recent years. Roughly 80% are entirely without merit.

That figure is a guess provided by John Amster, the 41-year-old chief executive of RPX. The entrepreneurial insight at the heart of the company is simplicity itself. Start a for-profit company that buys up patents and then charge other companies a yearly fee for being a client. In return for a set annual payment, which tops at $4.9 million for the biggest outfit, you're protected from being sued for any of the patents RPX holds.

Like most tech business plans that attract venture capitalists, it's all a matter of scale. Given enough clients, RPX can have the resources to take all problematic patents off the market.

Read the full article here.

Perrigo Confirms Filing for Generic Version of Clobex(R) Spray and Announcement of Lawsuit

The following is excerpted from a December 9, 2009 Perrigo press release published at PR Newswire:

Perrigo Company (Nasdaq: PRGO; TASE) today announced that it has filed an Abbreviated New Drug Application for Clobetasol Propionate Topical Spray, 0.05%, a generic form of Clobex® Spray.

Clobex® (clobetasol propionate) spray is indicated for the treatment of moderate to severe plaque psoriasis, and has estimated brand sales at retail of approximately $55 million annually.

Perrigo filed its ANDA for Clobetasol Topical Spray, 0.05%, containing a Paragraph IV certification with the U.S. Food & Drug Administration and notified Galderma Laboratories LP, the New Drug Application holder for Clobex® Spray, and Dermalogix Partners, Inc., the owner of the patent in suit, of its filing. On December 4, 2009, Galderma filed suit alleging patent infringement in the United States District Court for the Northern District of Texas to prevent Perrigo from proceeding with the commercialization of its product. This action formally initiates the process under the Hatch-Waxman Act.

Read the full press release here.

Europe Moves Toward European Patents and European Patent Court

The following is excerpted from a post by Dennis Crouch at his PatentlyO blog:

The European Union (EU) is working toward a major reform of its patent laws that would create a European Patent and a European Patent Court for handling patent infringement litigation. Although the European Patent Office (EPO) serves as the primary examining body for most patents being prosecuted in Europe, the actual issuance of patent rights as well infringement litigation are still handled country-by-country.

In a December 4, 2009 meeting, a unanimous EU Competitiveness Council adopted a set of conclusions supporting the new regime. Under the proposal, the new patent court would have exclusive jurisdiction over civil litigation related to EU and European patents. The new regime would likely require a revision of the European Patent Convention (EPC).

Read the full post here.

Pay-For-Delay Agreements Again Show How Pharma Abuses Patent Law To Harm Us All

The following is excerpted from a December 7, 2009 post by Mike Masnick at Techdirt:

We've discussed in the past how pharmaceutical patents actually tend to slow down the development of better healthcare solutions, and earlier this year, we mentioned how the EU was growing increasingly concerned about how patent holders were abusing their patents to try to prevent generic competitors from entering the market. Recently, US FTC officials have noticed the same thing and are trying to do something about it -- but are facing tremendous (well organized and well financed) pushback from pharmaceutical lobbyists (the kind who are able to get more than 40 Congressional reps, on both sides of the aisle, to repeat talking points into the Congressional record with no shame).

At issue is the fact that the big pharma firms are paying off generic drug makers to keep them from entering the market -- which in any other market would be a clear anti-competitive activity.

Read the full post and comments here.

Cephalon Files Patent Infringement Lawsuit Against Teva Pharmaceuticals

The following is from a December 3, 2009 Datamonitor Financial Deals Tracker item via COMTEX:

Cephalon, Inc. has filed a lawsuit in the US District Court in Delaware against Teva Pharmaceuticals USA, Inc., a subsidiary of Teva Pharmaceutical Industries, Ltd., for infringement of US patent numbers 7,132,570, 7,297,346 and RE37,516 for the Cephalon product Nuvigil(R) (Armodafinil) tablets [C-IV].

Cephalon is a US-based biopharmaceutical company, while Teva Pharmaceutical Industries is a Japan-based pharmaceutical company.

The lawsuit is based upon an Abbreviated new drug application (ANDA) filed by Teva seeking FDA approval for a generic equivalent of Armodafinil to be sold in the US. Teva alleges that the above Nuvigil patents are invalid, unenforceable and/or will not be infringed by Teva's manufacture, use or sale of the product described in its ANDA.

The State of Patent Damages Law After Lucent v. Gateway

On December 16, 2009, the Section of Intellectual Property Law of the ABA presents the above-titled Teleconference & Live Audio Webcast.

The Federal Circuit's recent decision in Lucent Technologies Inc. v. Gateway Inc. has put the patent damages reform debate in a new light.

In a decision by Chief Judge Michel, the Court vacated a half-billion dollar award against Microsoft, and used that opportunity to opine on the "entire market value" rule, as well as comment upon criticisms in Congress and elsewhere about the Court's prior precedent in this area.

This program will discuss the Lucent v. Gateway and other recent important decisions on patent damages from the perspective of both lawyer and expert. Our panel will analyze the current state of the law and where it might be (and should be) headed particularly in light of these decisions and proposed patent reform legislation.

Faculty

• Brendan Gardiner (Moderator), Caterpillar Inc.
• Gary Griswold, 3M Innovative Properties Company
• Kathleen (Kathi) Kedrowski, Navigant Consulting

More details and registration are available here.

General Patent Settles Lawsuit with HID Global over Smart Cards Patents

The following is excerpted from a November 30, 2009 General Patent press release:

General Patent Corporation (GPC), a leading patent licensing and enforcement firm, announced today on behalf of its client, Leighton Technologies LLC, that it has settled all pending lawsuits with HID Global Corporation (HID) of Irvine, Calif., and licensed Leighton’s patents to HID, a leading manufacturer of employee and student ID cards, driver’s licenses and transaction cards such as cashless payment, fare collection, vending and loyalty cards.

Leighton Technologies LLC owns several U.S. Patents that generally relate to the lamination process for RFID (or “contactless”) cards that use an embedded chip to enable secure financial payments and access to secure locations.

All parties to two lawsuits − HID Corporation, Indala Corporation and AccessID, Inc. v. Leighton Technologies LLC and General Patent Corporation which was filed in U.S. District Court for the Central District of California (CV-SACV05-513) and HID Global Corporation v. Keith R. Leighton which was filed in U.S. District Court for the Northern District of Ohio (1:07CV1972) – agreed to a settlement that included a license for HID Global for the Leighton patents.

“We are very pleased to reach an amicable agreement with HID Global and the other parties to these lawsuits, and to license the Leighton patents to HID,” said Paul Lerner, General Patent’s Sr. Vice President and General Counsel.

HID Global is the second transaction card OEM to license Leighton Technologies’ patents. General Patent granted a license for the Leighton patents to Oberthur Technologies of America Corporation in 2008.

OraSure Technologies Announces Settlement of Patent Infringement Lawsuit

The following is excerpted from an OraSure press release published by GlobeNewswire on November 19, 2009 and available at The Wall Street Journal's Market Watch:

OraSure Technologies, Inc. (OSUR) today announced the settlement of the patent infringement lawsuit filed against OraSure by Inverness Medical Innovations, Inc. (IMA) , Inverness Medical Switzerland GmbH and Church & Dwight, Co., Inc. (CHD) .

Under the settlement, OraSure has agreed to pay Inverness a sum of $3,000,000 in cash and Inverness has agreed to grant OraSure certain licenses to its lateral flow patents. In addition, each party has received distribution rights to certain products supplied by the other party.

Terms of the settlement are available here.

Athena Diagnostics Files Patent Infringement Suit Against Ambry Genetics

The following item was posted on November 19, 2009 by MassDevice staff:

The Worcester, Mass.-based Thermo Fisher Scientific subsidiary accuses Ambry Genetics Corp. of violating one of its diabetes test patents.
 
Athena Diagnostics Inc. accused a California-based molecular biology firm of infringing one of its patents for a diagnostic test for certain forms of diabetes.

The Worcester, Mass.-based subsidiary of Thermo Fisher Scientific Inc. (TMO) filed suit against Ambry Genetics Corp. Nov. 18 in the U.S. District Court for Massachusetts.

Athena alleges that Aliso Viejo, Calif.-based Ambry has been using technology developed by Correlagen Diagnostics Inc., with which Athena has an exclusive licensing deal to develop a test for maturity onset diabetes of the young, also known as MODY.

Athena alleges that the clinical trials performed by Ambry violate a 2004 exclusive licensing agreement it inked with Correlagen. The company requested a jury trial and asked the court to enjoin Ambry from any further tests involving the technology and to award damages.

A123 Systems Seeks to Recharge Battery Again

The following is excerpted from the "Defendants’ Third Unopposed Motion for Extension of Time to Respond to Plaintiffs’ Motion for Leave to File Second Amended Complaint" filed on November 16, 2009 in the Hydro-Quebec v. A123 Systems case:

Defendants A123 Systems, Inc., Black & Decker Corporation, Black & Decker (U.S.) Inc., and China BAK Battery Inc. hereby request a 76-day extension to January 31, 2010 to file their response to Plaintiffs’ Motion for Leave to File Second Amended Complaint (Dkt. No. 77). In support of this Motion, Defendants state that, although the parties were optimistic that this matter would be resolved by this time, the parties have not yet fully resolved this dispute. Defendants further state that the negotiations among the parties are complicated, involving many parties inside and outside the United States, but the parties are working diligently on a negotiated resolution and respectfully requests the Court’s indulgence of time to complete the process, which is aimed at a complete resolution of this lawsuit.

Thanks to the reader who provided me with a copy of the Motion.

Intellectual Property Issues in Business Transactions 2010

Practising Law Institute is hosting the above-titled seminar on January 21 - 22, 2010 at the PLI New York Center-New York, NY (with a follow-up seminar/live webcast on February 23 - 24, 2010 in San Francisco). The series is chaired by Steven I. Weisburd of Dickstein Shapiro and co-chaired by Eric A. Prager of K&L Gates.

Why You Should Attend

This program gives attendees the tools they need to assess intellectual property as a strategic asset, to consider opportunities to monetize it, and to structure business transactions so as to match business goals and avoid costly missteps.  Topics to be covered will include IP portfolio review and management, licensing, valuation, and enforcement.  The expert faculty will also review joint development, bankruptcy, tax and due diligence issues.  And as a special feature this year, we have added two panels covering the topics of due diligence and licensing from the perspectives of experts who will share their extensive experiences in the information technology, biotech and media/entertainment industries.

What You Will Learn

• How to identify the intellectual property a business should own
• How to monetize intellectual property assets
• Tips for licensing in and licensing out intellectual property
• How and when to enter strategic alliances and engage joint venture partners
• Key due diligence issues for buyers and sellers of intellectual property
• How to administer and finance an effective enforcement program
• Ethics issues arising in transactions related to intellectual property

More details and registration are available here.

Convergence Technologies Files Lawsuit Against Hewlett-Packard, Sapphire and Microloops

The following is excerpted from a November 16, 2009 Convergence press release published at PRNewswire-Asia:

Convergence Technologies (USA) LLC, of Reston Virginia, today announces that it has filed a lawsuit (Docket No. 1:09cv1256) in the Eastern District of Virginia against Hewlett-Packard, Sapphire Technology Limited (a Hong Kong company) and Taiwan Microloops Corporation (a Taiwanese registered company, herein referred to as Microloops) for the infringement, contributory infringement, and/or inducement to infringe upon its U.S. patent #7,422,053. Joseph J. Zito of ZITO tlp has been appointed as its lead litigator.

"With the recent Taiwan court's ruling and Microloops' predatory pricing practice, we have no choice but to now turn to the U.S. court for protection," said Dr. Steven H. Lee, Founding President & CEO of Convergence Technologies Limited. Dr. Lee further adds that "It is unfortunate that venture capital was scarce in Hong Kong, which gave other companies the opportunity to exploit our weakness, but we have the best vapor chamber technology in the world, and Joe Zito will help us ensure this technology reaches the market place.

"ZITO tlp has been given the mandate to engage in discussions with U.S.- based alleged infringers, many of whom may not even know they were using Microloops' parts because they are typically sold through another OEM, ODM or distributor. And, although lawsuits are currently only being brought against these three companies, Convergence maintains the right to take legal actions against other endusers at a later time. It is therefore important for the market to note that authorized sellers will be published on our website and authorized products will be labelled with our logo and the aforementioned patent number."

In 2008, Convergence had attempted to avoid the involvement of end users in this patent dispute by filing a patent infringement lawsuit against Microloops in Taiwan, despite Taiwan's limited protection for intellectual property. However, on September 7th of 2009, the Taiwan court sided with Microloops and dismissed Convergence's complaint based on its view that its Taiwan patent lacked novelty and inventiveness. This is despite the fact that Convergence's technology, in addition to being granted patents from around the world, including from the U.S., has also to-date been granted three patents in Taiwan. Vapor chamber is a relatively new cooling technology critical to the electronic industry, particularly the server and blade server markets. Convergence had discovered a unique condensate flow requirement in vapor chambers, and patented a Multiwick structure uniquely characterized by its spatially varying wicking power. It is this Multiwick structure that gives Convergence's vapour chambers its superior cooling capabilities.

Read the full press release here.

ITC Issues Final Determination in FormFactor's Wafer Probe Card ITC Action

The following is excerpted from a November 13, 2009 FormFactor press releaseavailable at Marketwire:

FormFactor, Inc. (NASDAQ: FORM) announced today The International Trade Commission (ITC) issued a final determination in the investigation of probe card manufacturers Phicom Corporation and Micronics Japan Company, Ltd., Investigation No. 337-TA-621. In the Final Determination, certain of FormFactor's asserted patent claims were found valid, but not infringed, and other asserted patent claims were found invalid.The ITC has terminated the investigation without issuing an exclusionary order against any products. The ITC released only a three-page notice and indicated that the full Final Determination would be issued later.

The Company will carefully evaluate the Final Determination when it becomes available and assess further proceedings, including any potential appeal to the U.S. Court of Appeals for the Federal Circuit, and the pending district court patent infringement litigations against Phicom and Micronics, which were stayed after initiation of the ITC investigation and include other FormFactor patents not at issue before the ITC. The company remains committed to protecting its intellectual property rights, and preventing the unauthorized use of its intellectual property.

FormFactor's advanced wafer probe card products and solutions are relied upon by its customers to increase their testing efficiency and enable their technology roadmaps. The Company believes the Final Determination will have no immediate business impact.

Read the full press release here.