San Diego Patent Attorney - San Diego Patent Lawyer

San Diego - Rembrandt Gaming Technologies of Arlington, Virginia has filed a patent infringement lawsuit against slot machine manufacturer WMS Gaming and four casino operators over allegations that a certain feature on the slot machines infringe the company's patent.

The patent infringement complaint, filed in the U.S. District Court for Nevada, has named WMS, Boyd Gaming Corp., Caesars Entertainment Operating Co., MGM Resorts International Operations Incorporated, and Penn National Gaming Inc. as defendants that have allegedly infringed on Rembrandt's "Electronic Second Spin Slot Machine" patent. According to the lawsuit, the machines reportedly have an automatic "re-spin" feature and include titles such as Dr. Jackpot, Dukes of Hazzard, Ghostbusters, Sex and the City, and Wheel of Fortune Triple Spin.

Rembrandt released a press saying that the patent at issue was granted in 2003 with New Mexico-based computer scientist Michael J. Dietz as the inventor.

"Michael Dietz used his imagination and technical skills to invent the slot machine hold and re-spin feature claimed in his patent. Very simply, the defendants used Mr. Dietz's invention for their profit and did not pay for their use," stated Rembrandt's chairman, Paul Schneck, in the press release.

In the lawsuit, Rembrandt submitted evidence of a WMS promotional video that was explaining the re-spin feature as: WMS Spinning Streak machines have fifteen reels spinning independently and when a winning symbol appears, it is held while the other reels re-spin. The announcer in the video exclaims, "Finally, a slot machine that holds on to the good stuff!"

Rembrandt IP Management, a patent enforcement company, and owner of the plaintiff Rembrandt Gaming Technologies, released the following statement regarding the lawsuit: "We work with owners of strong patents that have great market value, and we enforce these patents against major companies that may infringe upon them."

A spokesperson for WMS said the company could not comment on pending litigation.

San Diego - More than six years after San Diego based Callaway Golf became embroiled in a heated patent infringement battle with competitor Acushnet, the two companies have announced a joint settlement "of all pending litigation and disputes, including disputes beyond the golf ball suits between the parties."

The settlement did not involve either party paying the other money, however the agreement will allow both companies to manufacture and market golf ball and golf club components under patents owned by the other.

In February 2006, Callaway Golf filed a patent infringement complaint against Acushnet after the Fairhaven, Massachusetts-based company submitted a reexamination request of four Callaway golf ball patents with the United States Patent and Trademark Office. In the complaint, Callaway claimed that certain patents it had acquired from Spalding in a 2003 bankruptcy auction had been infringed by Acushnet's Pro V1 golf balls. After numerous legal filings, lawsuits, countersuits, rulings, and reversals, the court ruled in favor of Callaway in December 2007. However, that verdict was set aside by an appeals court, leading Callaway to request a new trial.

In 2011, Callaway suffered a major setback in the case when the Board of Patent Appeals declared that Acushnet's claims that the four patents were indeed invalid, a ruling that was eventually followed by a judgment in Acushnet's favor in a Delaware U.S. District Court. Furthermore, that ruling was appealed by Callaway just months before the two companies came to the out-of-court settlement.

The patents at issue involve breakthrough technology for producing multilayer, solid core golf balls. This type of premium golf ball, consisting of the solid core surrounded by a thin, hard mantle and soft-feeling cover made of urethane or a similar elastomer, is highly appealing to the very best golfers.

Callaway Golf Company, the world's largest manufacturer of golf clubs, markets and sells its equipment and accessories in more than seventy countries through golf retailers, sporting goods stores, mass merchants, directly online, and through its pre-owned and trade-in programs. Founded by Ely R. Callaway, Jr., Callaway Golf was initially made golf clubs that were hickory sticks, which were hickory shafts with a steel core.

San Diego - Just a few weeks after acquiring a large number of patents from a floundering America Online (AOL), Microsoft has announced that it will be transferring off most of those patents to Facebook.

Of the 925 patents Microsoft purchased from AOL for a reported $1.06 billion cash deal, it will be selling off or licensing 650 of those patents to social networking giant Facebook for $550 million in cash. Although through the purchase Facebook will have rights to use many of the patents it didn't purchase outright, Microsoft will retain the rights to many of the patents for offensive or defensive purposes.

Many companies look to purchase patents from flailing companies as a way to bolster their own patent portfolios for development purposes as well as for ammunition in patent infringement situations. This practice has become increasingly common in the high tech industry especially with many of these companies taking advantage of the high-revenue licensing deals these patents bring as well.

Shortly before the company is scheduled to go public, Facebook has been on somewhat of a spending spree, having reportedly purchased 750 patents from IBM. According to the company's S-1 filing, as of the end of last year, Facebook was the owner of 56 USPTO issued patents, 503 U.S. patent applications, and 149 patent applications filed in foreign countries, relating to social networking, web technologies and infrastructure, and related technologies.

The acquisition of these patents has helped Facebook tremendously in last month's patent attack by Yahoo. Facebook has managed to protect itself by counter-suing with a patent for every patent that Yahoo claims it has infringed. Rather than give up valuable shares just before its IPO, Facebook has refused to lay down and pay up like Google did in 2004. This would have indicated weakness and made investors nervous just before it goes public.

"Today's agreement with Microsoft represents a major acquisition for Facebook," stated a spokesperson for Facebook. "This is another significant step in our ongoing process of building an intellectual property portfolio to protect Facebook's interests over the long term."

Under the agreement, Microsoft will keep a license to every one of the patents it originally purchased from AOL: the 650 it sold to Facebook, ownership of the 275 patents it retained, and additionally the 350 patents AOL never sold. The Facebook transaction will allow Microsoft to recoup some of its costs from the AOL patent purchase, and also allow it to retain rights to the technology.

San Diego - Sequenom, a San Diego manufacturer of a variety of genetic tests, has acquired two pending patents from Helicos Biosciences Corp. The two companies reportedly entered into an Asset Purchase Agreement in which Sequenom purchased all rights, title and interest in Helicos' pending patents for Methods for Detecting Fetal Nucleic Acids and Diagnosing Fetal Abnormalities.

Sequenom paid Helicos $1.3 million for the acquisition of the purchased assets.

Helicos president and CEO Ivan Trifunovich, explained that the technology behind the patents is for sequencing applications in prenatal molecular diagnostics. Helicos is not currently competing in that market, however Sequenom is a market leader. The purchase of the pending patents will help strengthen Sequenom's foothold in arena for fetal abnormality testing.

"The Helicos patent estate continues to dominate several aspects of the next-generation sequencing field, and the company intends to continue vigorously defending its IP rights through licensing and patent enforcement strategies, including the ongoing lawsuit with Illumina, Life Technologies, and Pacific Biosciences," Trifunovich said in a statement.

Proceeds from the sale of the Helicos' pending patents will go towards funding its ongoing operations.

In recent years, Helicos has downsized its Cambridge, Massachusetts corporate office to under 7,000 square feet as of last September from 54,000 square feet the previous year. After failing to meet the minimum $50 million market value requirement, the company was taken off of the Nasdaq stock exchange in November 2010. Helicos has focused much of the blame for poor sales of its gene sequencing machines on the infringement of its patented technologies by competitors, leading to several legal battles.

Helicos reported a revenue loss of $1.2 million in 2011, from the previous year's revenue of $4.4 million.

Sequenom, however, has had a recent run of success, with much of that attributed to its new Materni T21 laboratory blood test to detect the fetal abnormality Down Syndrome as early as ten weeks into gestation. For the first quarter of 2012, the company reported it had billed for approximately 5,000 Materni T21 tests, and has subsequently increased its year-end goal to 40,000 billed tests, up from its original forecast of 25,000 billed tests. The test is not yet FDA-approved and has an out-of-pocket cost of $235 for the patient.

San Diego - The ongoing patent infringement battle between Yahoo! and Facebook continues to heat up. A couple of weeks ago, Yahoo filed a lawsuit against Facebook accusing the world's largest social media website of infringing on ten of its technology patents which include online advertising technology.

In a counterclaim filed just this week with the U.S. District Court, Northern District of California, Facebook is claiming that Yahoo is infringing on ten of its patents. The social media giant claims that Yahoo is infringing on its patents related to social networking, advertising, and privacy controls. As of recently, Facebook has been in many headlines including having just recently acquired 750 of IBM's patents and adding them to its expanding intellectual property portfolio.

When Facebook was hit with Yahoo's patent infringement lawsuit last month, a representative of Yahoo made a statement regarding the lawsuit saying, "As we have made clear from the outset, the unauthorized use of our patented technology is unacceptable and must be resolved appropriately," and "other leading companies license these technologies, and Facebook must do the same or change the way it operates." In light of Facebook's counterclaim, Yahoo stated that the complaint against it was ""without merit and nothing more than a cynical attempt to distract from the weakness of its defense." In recent week's Yahoo has seen its revenue decline and its shares fell 2.4 percent on Tuesday afternoon when the counterclaim was filed.

Yahoo and Facebook join a growing list of patent infringement related lawsuits including giants in the technology field such as Motorola Mobility Holdings Inc., Apple Inc., and Microsoft Corp. Facebook has claimed to be "irreparably harmed" by Yahoo's lawsuit and in the counterclaim filed this week it is seeking unspecified damages and a jury trial as well as the dismissal of Yahoo's lawsuit. A member of Facebook's general counsel stated, "While we are asserting patent claims of our own, we do so in response to Yahoo's short-sighted decision to attack one of its partners and prioritize litigation over innovation."

San Diego - In a unanimous decision by the United States Supreme Court, two medical patents for a test that could help doctors set drug doses for autoimmune afflictions like Crohn's disease, was thrown out, which could likely affect the profitability of personalized medicine. The patents were developed by San Diego-based Prometheus Laboratories, which was acquired last year by Switzerland's Nestle.

The Supreme Court judges made its decision that the medical tests were not available for patent protection because they determined that the patents were based on the laws of nature, which are unpatentable.

The patents at issue involve a method for monitoring a patient's blood to determine the best dosage for a drug, thiopurine, for doctors to treat gastrointestinal and non-gastrointestinal autoimmune illnesses. The test covered by the patent would determine the levels of the thiopurine or its metabolites (what is left after the liver metabolizes the drug) in the patient's red blood cells. Doctor's would then be able to use the data from the test to make adjustments to the amount of medicine needed for that patient.

Mayo Medical Laboratories, a unit of the Mayo Clinic, had originally used the test from Prometheus, however announced in 2004 that it was developing a similar test for the healthcare market. Prometheus sued Mayo Labs for patent infringement, but a federal judge invalidated the original patent. According to the federal judge, natural phenomenon cannot be patented, but that decision was overturned by the U.S. Court of Appeals for the Federal Circuit. Mayo Labs appealed that decision to the Supreme Court.

"The question before us is whether the claims do significantly more than simply describe these natural relations," wrote Justice Stephen Breyer in his opinion. "To put the matter more precisely, do the patent claims add enough to their statements of their correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural law? We believe the answer to this question is no," he added.

With advances from stem cell research, the field of personalized medicine has become quite promising in the United States, with biotech companies racing to find the best way to use a patient's genetic makeup to customize their healthcare and discover the most effective individualized treatments for cancer and other diseases. The High Court's recent decision has sent a chilling effect across the biotech industry, with its concern being that courts could misapply the decision as a broad requirement to invalidate any patent that uses the laws of nature as one of its bases.

San Diego - Natural Alternatives International, Inc., a formulator, manufacturer, and marketer of customized nutritional supplements, has settled a patent infringement dispute with BPI Sports and Image Sports. The lawsuit was settled with the companies entering into an agreement allowing for Natural Alternatives to provide BPI and Image with its patented CarnoSyn beta-alanine.

The terms of the settlement agreement indicate that BPI and Image will purchase CarnoSyn beta-alanine from Natural Alternatives' licensed distributor, Compound Solutions, Inc. (CSI) under a separate supply agreement. BPI and Image will also receive a license from Natural Alternatives to use its intellectual property for CarnoSyn beta-alanine. CarnoSyn beta-alanine is an amino acid used for strength training, aerobic and anaerobic endurance, and delays muscle fatigue so the athlete can train harder.

Also negotiated in the terms of the settlement agreement is Natural Alternatives' dismissal of two patent infringement cases filed in the U.S. District Court for the Southern District of Texas against BPI and Image for their alleged infringement of Natural Alternatives' U.S. Patent No. 8,067,381 entitled "Methods and compositions for increasing the anaerobic working capacity in tissues." Additionally, BPI and Image have agreed to drop a countersuit they filed against Natural Alternatives.

Natural Alternatives Chief Executive Office and Chairman of the Board, Mark A. LeDoux, stated, "NAI is pleased to amicably resolve its intellectual property dispute with BPI and Image. We look forward to partnering with these prominent brands who choose to respect NAI's extensive beta-alanine patent rights in return for a long-term business solution to exclusively use NAI's CarnoSyn beta-alanine in their products. NAI will continue to build its CarnoSyn brand and where necessary, enforce its beta-alanine intellectual property."

Founded in 1980, Natural Alternatives International is a leading formulator and manufacturer of customized nutritional supplements. The Company's comprehensive partnership approach to client servicing is unique within the industry combining clinical research, science-based formulation, advanced quality assurance testing methodologies, superior manufacturing and packaging capabilities, and broad marketing experience to create nutritional products that are formulated to address specific health conditions.

San Diego - In a patent infringement lawsuit filed in October 2009 in a Wisconsin district court, a jury came back with a unanimous verdict in favor of Incomm, finding Blackhawk Network liable for infringing an Incomm patent related to prepaid card transactions.

In its complaint, Incomm alleged that Blackhawk infringed its patent "by practicing, making, using, selling or offering for sale in this judicial district and elsewhere the inventions claimed in the patent-in-suit" by offering its gift-card mall program. At the time, the Incomm patent in question was still pending, but had received a notice of allowance with the United States Patent and Trademark Office (USPTO).

During litigation proceedings for the case, Blackhawk Network, a provider of prepaid products, attempted to have Incomm's patent invalidated with the USPTO to support its defense. Unable to prove the patent was invalid, Blackhawk has since removed the portions of the unused code found to infringe Incomm's patent. The modification will reportedly have no effect on how Blackhawk's business operates nor will it affect any Blackhawk customers.

The patent involved in the case is U.S. Patent No. 7,578,439 entitled "System and Method for Authorizing Stored Value Card Transactions." After the verdict was read, Incomm was awarded approximately $3.5 million in compensatory damages as a result of Blackhawk Network's repeated infringement of its patented computer system and method during the period from August 2009 to February 2012, with no further payments due as a result of Blackhawk's removal of the lines of code.

Blackhawk is reportedly considering appealing the jury's verdict.

Founded in 1992, Incomm has become an industry leader in the innovation, marketing, and distribution of store-value gift and prepaid products using its patented point-of-sale transaction technology and payment solutions. With over $15 billion in processed retail sales transactions for 2011, Incomm is the nation's largest provider of gift cards, prepaid wireless products, reloadable debit cards, digital music downloads, content, games, software and bill payment solutions.

Incomm partners with well-known consumer brands all over the world, providing approximately 250,000 retail locations the products and services in demand from their customers. The company is headquartered in Atlanta, Georgia with satellite offices in other states as well as around the world.

San Diego - San Diego-based life sciences company Sequenom has sued Aria Diagnostics for patent infringement alleging that the San Jose-based company infringed on its patent to detect abnormal chromosomes in utero.

First introduced to the public in October 2011, Sequenom's MaterniT21 prenatal blood test can detect a genetic chromosomal anomaly known as Trisomy 21, the most common cause for Down Syndrome. The test also has the capability to detect trisomies 18 and 13, which are often the cause of severe birth defects. Although it has not yet been approved by the U.S. Food and Drug Administration, the MaterniT21 test is close to 99% accurate in detecting the anomalies, according to Sequenom's website.

Following its patent infringement complaint filed in late January against Aria, Sequenom filed a motion for preliminary injunction to bar Aria from manufacturing, marketing, and distributing its new Harmony Prenatal Test. In the lawsuit, Sequenom contends that Aria's alleged infringement of its Patent No. 6,258,540 was "intentional, deliberate, and willful."

Founded in San Diego in 1994, Sequenom maintains that its Center for Molecular Medicine was the first to develop a noninvasive diagnostic laboratory test to screen for chromosomal aneuploidy in pregnant women. Aria's Harmony Prenatal Test was announced to the public in early February and is described as a new technology to efficiently analyze patients' blood samples with a noninvasive approach to cell-free DNA analysis in maternal blood to detect common trisomies linked to genetic disorders.

In addition to its patent infringement complaint against Aria, Sequenom has filed another complaint against genetic testing company Natera for allegedly infringing the same patent. The lawsuit accuses Natera's noninvasive paternity test, which analyzes fragments of fetal DNA in maternal plasma from a blood sample, of infringing the MaterniT21 patent and claims that Natera "knowingly encouraged others" to infringe when it licensed its test to paternity testing lab DNA Diagnostics Center.

In both lawsuits, Sequenom is requesting judgments that both companies willfully infringed the MaterniT21 patent and a permanent injunction that would stop the defendants from infringing the patented technology. Sequenom is also reportedly asking for monetary damages sufficient to compensate the company for the infringement, attorneys' fees, and for costs incurred because of the lawsuit, specifically "increased damages" that are "not less than three times the amount of actual damages awarded to Sequenom due to the companies' willful infringement."

San Diego - Qualcomm is scheduled to appear at a Markman hearing as a defendant in a patent infringement lawsuit brought against it by ParkerVision, Inc., a manufacturer and marketer of semiconductor technology solutions for wireless applications.

The Markman hearing, which is also known as a patent claim construction hearing, is scheduled for August 10, 2012. At the hearing, the judge will be asked to issued rulings regarding the language and interpretation of the ParkerVision patents that were allegedly infringed by Qualcomm. In patent infringement cases, Markman hearings are considered a critical event and in this case will define the patent rights for the technologies that ParkerVision has developed and has exclusive rights to.

The judge's rulings in the upcoming Markman hearings will influence and shape many aspects of the litigation. The jury trial for this patent infringement case is scheduled to begin in August, 2013.

"We are passionate about the technology that ParkerVision has developed, and we are committed to protecting our patented innovations from unauthorized use," stated ParkerVision Chairman and CEO, Jeffrey L. Parker. "We look forward to showing the court and jury how Qualcomm is using ParkerVision's technology despite the legal patent protections that we have expended a great deal of time and capital to secure. This firm timeline means that we will soon get our day in court."

Other recent developments in the lawsuit include the court's dismissal of Qualcomm's motion for injunctive relief. The court instead approved a protective order which both parties negotiated and agreed on. The protective order will allow ParkerVision's patent prosecution counsel to continue delivering legal advice and services to ParkerVision as long as they do not represent the company in the lawsuit or advise it regarding Qualcomm's alleged infringement.

These recent developments are a result of ParkerVision's July 2011 patent infringement complaint against Qualcomm on the grounds that Qualcomm's past and current chipset products infringe several ParkerVision patents related to radio-frequency receivers and the down-conversion of electromagnetic signals.

ParkerVision is reportedly seeking both monetary damages as well as a permanent injunction banning the production and sales of the Qualcomm infringing products.

San Diego - This week a court in San Diego ruled against CareFusion in its patent infringement lawsuit against Sigma International General Medical Apparatus, LLC. CareFusion, which is based in San Diego, failed to convince jurors that Sigma had infringed its patent for technology used in its intravenous infusion pumps.

In its case, CareFusion reportedly asked the jury to award it compensation of $171 million for lost profits on the sales of its competing infusion pumps, lost sales of related products and services, and a royalty on the remaining sales of the Sigma Spectrum pumps. Sigma International denied the claims at trial.

"I did not think that we were infringing," said Roger Hungerford, president of Medina, New York-based Sigma International, after the jury's verdict was read. "We try real hard to respect all competitors' intellectual property and if we think we might be infringing something, we would design around it."

The San Diego patent attorney representing CareFusion in the case had no immediate response to the verdict. CareFusion will most likely appeal the verdict in a higher court.

The patent at issue in the lawsuit involves technology for a force-sensor assembly for infusion pumps used in the health-care industry, according to court documents. Both CareFusion and Sigma International manufacture, market, and sell infusion pumps, which control the amount and rate of the flow of liquid nutrition and drugs administered to a patient via intravenous tubing.

The complaint was initially filed in a United States District Courthouse in February, 2010. In response to the claims alleging infringement of the patent, Sigma International responded by filing an answer to the claims and a motion for declaratory judgment of non-infringement and invalidity. After undergoing reexamination by the United States Patent and Trademark Office, the patent case was moved to a San Diego courthouse to be decided by a federal jury.

Founded as a spin-off of Cardinal Health in 2009, CareFusion manufacturers pumps and other products designed to reduce medication dispensing errors and prevent health care-associated infections. The company's product portfolio includes brands used by health care providers worldwide, including hospitals, ambulatory surgery centers, long-term care facilities, outpatient clinics, government health departments, and health insurance providers.

Upon news of the verdict, CareFusion's stock dropped as much as one percent on Wednesday's close of $24.92 on the New York Stock Exchange.

San Diego - At a hearing last week in San Diego, U.S. District Court Judge Michael Anello upheld a September verdict in a patent infringement lawsuit against NuVasive, Inc. and denied the company's request to grant it a new trial.

The patent infringement lawsuit, filed by Medtronic, Inc., resulted in a $101.2 million jury verdict against NuVasive over its infringement of spinal surgery patents. The large damages verdict is reportedly the eighteenth largest jury award in the United States for 2011, and the fourth-largest verdict for a patent infringement claim.

After the verdict was read, San Diego-based NuVasive claimed that it never infringed on the patents and that the evidence presented to the jury did not support its verdict. Rejecting NuVasive's attempts to invalidate one of the patents in question, the judge also denied Medtronic's request for a permanent injunction that would ban NuVasive from selling devices that were found to infringe its patents.

In addition, the judge upheld the jury's damage award of $660,000 to NuVasive for Medtronic's infringement of one of its patents. "We respectfully differ with some of the rulings and are in the process of assessing our options going forward," stated a patent attorney for Medtronic in an interview after the hearing.

The battle began in 2010 when Warsaw Orthopedic Inc., a division of the Minneapolis-based Medtronic, filed a complaint against NuVasive, accusing it of infringing three patents for surgical implants. One of the patents has the ability to be inserted translaterally between adjacent vertebrae in a plate and screw system for stabilizing vertebrae in the cervical spine, and contains a tissue retractor.

In the complaint, Medtronic maintained that as a result of NuVasive's infringement of its patents, the company had suffered a substantial loss of profits of over $200 million.

Patent lawyers for NuVasive contended that none of the company's spinal fusion products infringe the Medtronic patents. The attorneys added that the company's technology is a result of independent development that was first put on the market in 2003, and eventually "changed the face of spinal surgery." The defense also claimed that in 2003, Medtronic did not possess such technology.

No comment was available from NuVasive on the jury's verdict.

San Diego - Apple recently lost another major battle in a patent infringement lawsuit against Motorola Corp. when the United States International Trade Commission (ITC) ruled in favor of Motorola, saying that it did not infringe on three Apple patents.

In its patent infringement complaint, Apple contended that Motorola's Droid, Droid 2, Droid X, Cliq, BackFlip, Devour and Charm phones infringed on three of its patents, two of which are related to touch screen technology. The third patent allegedly infringed expires in 2013 and covers technology for components being added without the need for installation programs.

Apple's complaint, filed with the ITC in October 2010, was in response to the Illinois-based Motorola filing civil lawsuits and ITC complaints against Apple, targeting its iPhone, iPad, and MacBook technologies. Both companies are also currently wrapped up in several patent infringement disputes with other manufacturers of smartphones.

Details were not made available on the reasoning for the ITC ruling for Motorola and has yet to be reviewed by a six-person commission, which retains the power to overturn it. The decision is usually upheld by the commission, however it is not uncommon for it to make a change or changes.

It appears that this dispute is just one factor in Apple's efforts in a much larger strike to thwart Google's Android platform and the smartphone manufacturers running it. Apple is also embroiled in patent infringement lawsuits against HTC and Samsung over their alleged infringement of Apple technology in use of the Android operating system. Much of the ambition behind these lawsuits reportedly comes from late Apple Cofounder Steve Jobs, who was once quoted as saying he was planning to wage "thermonuclear war" against the Android platform, which he believed was stolen technology.

Regarding the ITC patent infringement complaints the tech world has waged against one another, these types of lawsuits tend to level the playing field for intellectual property disputes because they can be less costly. However, they can also take years to reach a conclusion. The filings with the ITC are simply administrative hearings which can be quickly resolved. Many technology giants are increasingly using this platform as a way to hit the competitor where it hurts the most, by attempting to stop the importation of infringing products.

No comments were available from Apple and Motorola regarding the latest dispute.

San Diego - Just days after reports swirled speculating that the Eastman Kodak Company will file for Chapter 11 bankruptcy protection, the pioneer of photo processing products has filed a lawsuit against Apple and HTC Corporation alleging patent infringement.

The complaint, filed with the United States International Trade Commission (ITC), involves certain Kodak patents related to digital imaging technology. According to the lawsuit, Kodak is alleging that certain Apple iPhones, iPads, and iPods, and certain HTC smartphones and tablets infringe Kodak patents that involve image transmitting technology. Also, Kodak claims that some HTC smartphones infringe a patent that covers technology for a method of previewing images, which is already the subject in another lawsuit against Apple. Furthermore, Kodak filed separate lawsuits against Apple and HTC in U.S. District Court for Western New York, on the same grounds of infringement.

In a statement from Kodak President and Chief Operating Officer Laura G. Quatela, she said, "Kodak is the leader in digital imaging innovation and we have invested hundreds of millions of dollars creating our pioneering patent portfolio. We've had numerous discussions with both companies in an attempt to resolve this issue, and we have not been able to reach a satisfactory agreement."

In order to raise the funds to prevent the flailing Rochester-based company from going under, Kodak has licensed its portfolio of patents related to digital imaging technology to more than thirty companies, including LG, Motorola, Samsung, and Nokia, to use in their mobile media device products. All of the companies pay royalties to Kodak for use of the technology covered in the patents.

In its patent infringement lawsuit against Apple and HTC, Kodak is asking the ITC for an exclusion order that would prohibit the importation of infringing devices, which includes cellular phones and wireless communication devices with digital cameras. In the U.S. District Court cases against Apple and HTC for the same alleged infringement, Kodak is seeking a permanent injunction to prevent further infringement from the two companies, as well as recovery of monetary damages.

"We remain open to negotiating a fair and amicable agreement with these companies, which has always been our preference and our practice with other licensees," stated Timothy M. Lynch, Kodak's Chief Intellectual Property Officer.

Perhaps a royalty-based licensing agreement will be in the works. In the increasingly litigious technology world, large companies must decide whether long, drawn out, expensive legal battles and possible import bans outweigh the cost of signing an agreement with a company and paying a fee to use its patented technology.

San Diego - This month, the U.S. Supreme Court heard oral arguments for a lawsuit between Prometheus Laboratories and Mayo Collaborative Services. The Court's decision could define the patentability of natural phenomena in the realm of diagnostic testing.

Prometheus alleged infringement of two patents used in a medical test that Mayo licensed, then independently offered based on its own statistical findings. The patents, U.S. Patent Numbers 6,680,302 and 6,355,623, encompass the correlation between metabolite levels and the efficacy and toxicity of thiopurine drugs. Prometheus claimed the exclusive license to methods for calibrating the correct dosage of thiopurine drugs, used for treating gastrointestinal and non-gastrointestinal autoimmune diseases.
Prometheus sued Mayo for patent infringement on June 15, 2004 in the U.S. District Court for the Southern District of California. The court granted Mayo's motion for summary judgment on March 28, 2008. It held the claim's first two steps of administering a drug to a subject and determining metabolite levels to be unpatentable as necessary data-gathering steps. The third step, the warning of a dosage adjustment was an unpatentable mental step. The district court also found the correlations to be unpatentable natural phenomena resulting from "a natural body process," and that the inventors did not "invent" the claimed correlation.

Prometheus appealed the district court's grant of summary judgment on May 16, 2008. The Court of Appeals reviewed the decision and held that the district court erred in finding the asserted claims to be drawn to non-statutory subject matter. It reversed the grant of summary judgment and upheld the patent in Prometheus because the preparatory steps of administering a drug and determining a metabolite level involved "transformations" of matter as the body's natural reaction to ingestion of drugs. "[D]etermining metabolite levels in the clinical samples taken from patients" was transformative because "determining metabolite levels" included the extraction and measurement of metabolite concentrations.

In so holding, the Court of Appeals applied the Supreme Court's machine-or-transformation test articulated in earlier cases and concluded that the disputed method fell squarely within the realm of patentable subject matter because its central purpose was to transform an article into a different state.

Mayo appealed the decision to the Supreme Court, which granted a petition for certiorari. However, the Supreme Court remanded the case to the Court of Appeals, stating that the machine-or-transformation test was not the sole test for what constitutes a process under §101, but "a useful and important clue, an investigative tool..." On remand, the Court of Appeals again held the asserted claims were statutory subject matter under §101, because the inventive nature of the claims recited "a particular application of the natural correlations: the treatment of a specific disease by administering specific drugs and measuring specific metabolites [,]" and did not preempt all uses of natural correlations.

Once again, Mayo appealed the decision to the Supreme Court, resulting in the present case.