October 2011

October 31, 2011, by Mandour & Associates, APC

San Diego – The United States Supreme Court denied Barr Laboratories writ of certiorari on October 31, 2011 in Barr Laboratories v. Cancer Research Technology, Ltd. The action arose out of Barr Laboratories’ filing of an Abbreviated New Drug Application (ANDA), or application for approval to produce a generic version of the drug Temodar. Barr Laboratories, a division of Teva Pharmaceutical Industries, Ltd., filed an ANDA to manufacture a generic version of the brain cancer drug Temodar which is currently covered under a patent owned by Cancer Research Technology and licensed to Merck & Co.

The ANDA filing led to an action in a U.S. District Court in Delaware filed by Cancer Research Technology, a British licensor of the Temodar patent to New Jersey based Merck and Co, to enforce the Temodar patent. The Delaware District Court found for Barr Laboratories, holding that the Temodar patent was unenforceable due to incomplete information in the application and that the patent applicant had engaged in delay tactics before the USPTO. The USPTO did not issue the Temodar patent for nine years after receiving the application.

However, that ruling was later overturned by the United States Court of Appeals for the Federal Circuit which found that Barr Laboratories was not harmed by the USPTO’s delay in issuing the patent. The result of the Federal Circuit ruling prevented Barr Laboratories from producing the generic version of Temodar pending further appeal before the U.S. Supreme Court. However the Supreme Court refused to grant certiorari and hear Barr’s appeal. The Supreme Court, which has vast discretion over the cases it hears, refused to grant the appeal without comment.

Barr Laboratories and parent company Teva agreed to withhold its plans to produce a generic version of the brain cancer drug pending the appeals. In exchange for agreeing to withhold production pending the outcome of the case, Barr Laboratories may begin production of a generic version of Temodarin August of 2013. Temodar experienced sales of over one billion dollars in 2010.

October 31, 2011, by Mandour & Associates, APC

San Diego – Last week, Pfizer announced its victory in a patent infringement battle with Teva Pharmaceuticals USA, Inc. in the United States District Court for the Eastern District of Virginia.

“We are pleased that the court recognized the validity and enforceability of our Viagra patent for the treatment of erectile dysfunction,” said Amy Schulman, executive vice president and general counsel for Pfizer. Shulman added, “Protecting the intellectual property rights of our innovative core is critical, and Friday’s court decision acknowledges Teva’s clear violation of our patent rights.”

Friday’s decision from the court, which is subject to appeal, will prevent Teva from receiving approval on a generic form of Viagra until October 2019. Pfizer initially filed its patent infringement lawsuit against Teva in April, 2010.

The lawsuit contends that Pfizer has two patents on sildenafil, which is the technical name for Viagra. The first patent, scheduled to expire in 2012, covers the composition of the drug itself, while the second patent, expiring in 2019, covers its use for erectile dysfunction. Pfizer’s lawsuit alleged that immediately upon expiration of the first patent in March, 2012, Teva intended to market its own generic version of sildenafil for the treatment of erectile dysfunction.

According to the lawsuit, Teva’s doing so would be an infringement of Pfizer’s second patent and would “substantially and irreparably” harm Pfizer.

In addition to barring Teva from selling its version of sildenafil until 2019, Pfizer is also seeking unspecified reimbursement for the alleged damages.

Founded in 1849 by German cousins Charles Pfizer and Charles Erhart, Pfizer is the world’s largest research-based pharmaceutical company, discovering, developing, manufacturing and marketing leading prescriptions such as Lipitor, Lyrica, Diflucan, Viagra, and Celebrex. In 2009, Pfizer pleaded guilty to the largest health care fraud case in U.S. history and received the largest criminal penalty ever given for the illegal marketing of four of its drugs.

October 24, 2011, by Mandour & Associates, APC

San Diego – Whirlpool Corporation recently won a stay motion in a patent infringement action against Korean electronics manufacturer LG Electronics. The patent action, initiated by LG, pertains to four refrigerator patents owned by LG. However, each of the four patents LG claims that Whirlpool infringed were recently found to be invalid by the USPTO in a separate proceeding.

This finding prompted Whirlpool’s motion to stay the action in order to allow reexaminations of the patents by the USPTO. The U.S. District Court in New Jersey granted Whirlpool’s motion and stayed the action for six months to allow the patents to be reexamined. The District Court judge commented that, in the interests of justice and due to the speed with which the USPTO found the patents to be invalid, the action should be stayed to allow further reexamination.

To prevail in an action for patent infringement,a plaintiff must prove both that it owns a valid patent and that the defendant used, made, sold, or imported an article comprising plaintiff’s valid patent. In this action, if the patents are found to be invalid upon reexamination, it is likely that LG’s suit will be dismissed.

Whirlpool Corp, with over 18 billion dollars in sales in 2010, is the world’s largest home appliance maker. Whirlpool’s products include brands such as Whirlpool, Maytag, and KitchenAid among others. Korean based LG Electronics is the world’s second largest manufacturer of television sets and the third largest mobile phone maker. LG Electronics netted over 1 billion in 2010 with sales over 40 billion.

Whirlpool and LG have recently been engaged in litigation in a Chicago District Court over alleged false advertising by Whirlpool. LG claimed that Whirlpool had engaged in false advertising by advertising a line of dryers as “steam dryers.” Whirlpool was able to establish, despite arguments from LG,that its dryers did use steam. The Chicago District Court found for Whirlpool and ordered LG to pay a portion of Whirlpool’s costs in the action.

October 18, 2011, by Mandour & Associates, APC

San Diego – TiVo was recently awarded a favorable definitional ruling in its patent infringement action initially filed in March of 2010 against AT&T. In the infringement action, TiVo alleged that the AT&T uVerse DVR system infringed patents owned by TiVo pertaining to methods for DVR recording. District Court Judge David Folsom recently issued a definitional ruling in which he defined the disputed terms in the TiVo patent in a manner favorable to TiVo.

In the definitional ruling, Judge Folsom agreed to most of TiVo’s proposed definitions for key terms contained in the patent. The ruling in TiVo’s favor may strengthen its case and make it easier for TiVo to prove that AT&T did indeed infringe the patents as defined. As AT&T may have a difficult time defending the action using the unfavorable definitions, they may be forced to negotiate a settlement with TiVo.

To prevail in an action for patent infringement, the plaintiff must show that defendant’s use infringed upon every element of the patent claim or was the functional equivalent of the patent at issue. To prove that every element of a patent claim has been infringed, the terms in the claim are often defined by the court to focus the litigation. Patent holders generally advocate for broader claims or term definitions because it is easier to prove infringement of broad patent claims. Defendants typically seek to narrow the claims in order to show that their invention is distinct from the patented article.

In this case, Judge Folson’s interpretation favored the broader definitions proposed by TiVo over the narrower definitions that AT&T proffered. The decision was widely interpreted as favorable to TiVo and TiVo even received a 6% boost in its stock price the day the of the ruling. TiVo is hopeful that this ruling will be mirrored by Judge Folson in its pending case against Verizon for infringing the same patent.

TiVo and AT&T have been litigation adversaries before. In 2009, TiVo brought a patent infringement action against AT&T for use of its patented “Time Warp” feature. AT&T currently has a high stake in the litigation, as almost five million Americans use a DVR provided by either AT&T or Verizon. Therefore, AT&T may negotiate a license or settlement to avoid losing a major share of the DVR market.

October 13, 2011, by Mandour & Associates, APC

San Diego – 131-year-old Kodak is hoping for a $3 billion sale of its digital imaging patent portfolio to increase the company’s dwindling revenue. Kodak was once a behemoth that employed 145,000 people and had stock that traded at $94 per share. Today however, Kodak is a shadow of its former self, with only 18,000 employees and stock that trades for less than $2 per share.

Kodak has become a case study on what happens to companies that are unable to keep up with advancements in technology. Kodak invented the first digital camera, but failed to continue developing the technology and instead relied on its profitable film sales. Meanwhile, companies like Canon and Nikon raced ahead of Kodak in the digital photography market. After dwindling profits due to the exploding digital age, Kodak has continued to restructure itself in an attempt to become profitable once again.

In addition to mining its patent portfolio, Kodak is considering selling its digital imaging patent portfolio with 1,100 patents, which amounts to 10 percent of Kodak’s entire patent portfolio. This consideration comes after Nortel Networks sold a group of patents to buyers including Apple, Microsoft, and Research and Motion for $4.5 billion. Additionally, Google spent $12.5 billion to purchase Motorola Mobility largely for its patents.

One of the key patents in Kodak’s digital imaging patent portfolio is on photo previewing. Kodak is asserting U.S. Patent No. 6,292,218 against Apple and Research in Motion for patent infringement at the International Trade Commission. Kodak has won a similar lawsuit against Samsung, where the ITC judge ruled that the patent was valid and enforceable. Additionally, Kodak stated in a press release that it licenses digital imaging technology to about 30 companies, including LG, Motorola, and Nokia.

As such, the digital imaging patent portfolio can be a huge asset for a company in the digital photography and personal electronic device industry. In addition, companies in these industries can take advantage of the patents in this portfolio for defensive patenting during a time when patent litigation is on the rise. Hopefully the revenue from the sale of its patents will help Kodak get back on its feet.

October 10, 2011, by Mandour & Associates, APC

Los Angeles – Smartphone Technologies has filed suit against Amazon in the Eastern District of Texas, alleging that the Amazon Kindle Fire and other Kindle products infringe five separate patents. Amazon unveiled the Kindle Fire last week and has scheduled for a November 15 release. Preorders for the widely anticipated tablet reached 95,000 sales in the 24 hours after the tablet was first announced. By releasing the Kindle Fire, Amazon is hoping to push past the e-reader market and to compete with Apple and its iPad.

Smartphone Technologies is owned by Acacia Research Corp., a nonpracticing entity, which amasses patents and licenses them to subsidiaries. Smartphone’s complaint alleges that Amazon is infringing patents for:

• Power Conserving Intuitive Device Discovery Technique in a Bluetooth Environment
• Handheld Computer System that Attempts to Establish an Alternative Network Link Upon Failing to Establish a Requested Network Link
• Method and Apparatus for Communicating Information over Low Bandwidth Communications Networks
• Method for controlling a handheld computer by entering commands onto a display feature of the handheld computer; and
• System and method for displaying and manipulating multiple calendars on a personal digital assistant

Each of these patents covers common features in smartphones and tablets. Smartphone has alleged similar patent infringements against other companies in the past, including Apple, Research in Motion, and Motorola.

Smartphone’s complaint against Amazon, however, does not include requests for preliminary injunctions. The company is seeking only damages and reasonable royalties. Therefore, Amazon customers who have preordered the Kindle Fire can breathe a sigh of relief because it appears that Smartphone’s lawsuit will not affect the release date of Kindle Fire. While this is good news for Amazon customers, Amazon cannot be happy about getting tangled up in the constant patent litigation surrounding personal electronics. This is not exactly a warm reception into the tablet market.

Posted in: Uncategorized
October 5, 2011, by Mandour & Associates, APC

San Diego – AstraZeneca appeared in front of the U.S. Court of Appeals for the Federal Circuit on Wednesday October 5th, 2011 to defend against claims that its multi-billion dollar cholesterol fighting drug Crestor was too obvious to receive patent protection. That action was originally heard by the Delaware District Court in June 2010. That court found that generic drug makers including Mylan, Teva, Sun, Aurobindo, Par, Watson, and Sandoz failed to prove that Crestor was an obvious invention at the time it was patented.

The case originated when AstraZeneca brought a patent infringement action against several makers of generic drugs after the generics applied for approval to market their own identical versions of Crestor before the patent term was set to expire in 2016. In the original action, the generics defended by attacking the initial issuance of the patent as well as a subsequent reissue. Primarily, the generics claimed that the invention of the drug Crestor was too obvious to receive a patent.

To receive patent protection, an invention must be useful, novel, and non-obvious. An invention is obvious if, at the time of invention, others skilled in the art would find the invention an obvious improvement of the prior art. Instead, to receive a valid patent, the invention must involve a minimum level of creativity not obvious to someone skilled in the industry.

On appeal, aside from arguing that the drug was an obvious extension of the prior art, the generic drug makers argue that the original patent was intentionally drawn too broadly, in order to receive over-reaching patent protection. They also claim that the more narrowly drawn reissued patent did not cure these defects. In addition, the generics allege that original patent applicant, Shionogi (from whom AstraZeneca licenses the Crestor patent), withheld crucial documents from the USPTO in the patent application process.

The generic drug companies failed to prove these allegations before the District Court judge in the original suit and appealed to the U.S. Court of Appeals for the Federal Circuit, which held oral arguments in the case on October 5, 2011. The case comes with high stakes, both for AstraZeneca and the generic companies. Crestor achieved worldwide sales amounting to over five billion dollars in 2010, with over 2.6 billion dollars in the United States. The market for the drug is only expected to increase as AstraZeneca reaches the termination of the 20 year patent term in 2016.