December 2011

December 28, 2011, by Mandour & Associates, APC

San Diego – Genentech filed suit against Regeneron Pharmaceuticals and Sanofi Inc. on December 23, 2011 in the United States District Court, Southern District of New York. In its complaint, Genentech alleges that Regeneron infringed on its patents with two products possibly containing an active ingredient called aflibercept. The first Regeneron product is called Eylea and is injected into the eye to treat neovascular (“wet”) age-related macular degeneration, a degenerative eye disorder. The second Regeneron product is called Zaltrap, used to treat colorectal cancer. Genentech claims Regeneron knowingly and willfully developed, marketed and sold these infringing products in the United States.

Several patents are involved in the case. The first two are U.S. Patent Numbers 6,383,486 and 6,897,294, both entitled “Inhibitors of vascular endothelial growth factor activity, their uses and processes for their production.” They were issued on May 7, 2002 and May 24, 2005, respectively, by the U.S. Patent and Trademark Office. The third is U.S. Patent Number 6,100,071, entitled “Receptors as novel inhibitors of vascular endothelial growth factor activity and processes for their Production,” issued on August 8, 2000 by the U.S. Patent and Trademark Office. The fourth is U.S. Patent Number 7,771,721, entitled “Using Chimeric Vascular Growth Factor Receptor Proteins. It was issued on August 10, 2010 by the U.S. Patent and Trademark Office.

Regeneron collaborated with Avantis in 2003 to develop, market, and sell the compound involved in the treatment of age-related macular degeneration. Sanofi is the successor-in-interest to this agreement. On February 18, 2011, Regeneron sought FDA approval to market a product to treat colorectal cancer called Zaltrap that used a protein designed to prevent cell surface receptor interactions. That same day, the company filed a complaint against Genentech, seeking declaratory judgment on both the invalidity of Genentech’s patents and the non-infringement of Regeneron’s product. Genentech’s recent complaint is related to Regeneron’s initial lawsuit.

Genentech is one of the world’s leading biotechnology firms. It specializes in using genetic information to develop medications for the treatment of diseases. It is a South San Francisco-based company organized in Delaware. Regeneron is a biopharmaceutical company that develops, discovers, manufactures, and markets medicines for the treatment of medical conditions. It is a New York-based business.

December 27, 2011, by Mandour & Associates, APC

San Diego – The U.S. International Trade Commission (ITC) ruled on Monday, December 21, 2011 that Taiwan-based HTC, who produces the Android smartphone, violated only one provision of Apple’s patents. The ITC ruling imposes an import ban on some of HTC’s products but the ban does not go into effect until April 19, 2012, giving HTC time to modify their products to avoid infringement.

Unfortunately, for Apple, it’s a limited victory. Apple originally filed a complaint in March, 2010 alleging that HTC violated 10 of its patents. In June 2011, at a preliminary hearing, an ITC administrative judge found only two violations of Apple’s patents by HTC. The ITC’s final ruling on Monday further narrowed the preliminary ruling to only one violation.

The Apple patent (US 5,946,647) in question, granted in 1999, contains a feature called “data tapping.” This feature marks up formatted data such as a telephone number in an unstructured document, such as an email, and allows users to bring up other programs (i.e. a dialer app) to process that formatted data. The import ban will not affect HTC products that don’t use this feature or use this feature by another means. For example, Google currently uses this same feature in a different manner without infringing on Apple’s patents. If HTC is able to find a way around this infringement in the time period set by the ITC, this ruling will likely have little effect on HTC. However, if HTC is unable to find a way around this infringement, they will have to remove this infringing feature from their smartphones, putting them at a competitive disadvantage against Apple and other Android vendors.

Either way, this ruling is cause for concern for HTC in the future. While HTC is the second largest vendor of the Android phone, it has less than 20% US market share for smartphones. Further, HTC is considered to be most vulnerable against legal attack because they have a small patent portfolio to act as a potential shield. Apple may find credence in this ruling that the Android phone infringes on its patents and pursue further legal action against HTC and other Android vendors.

At present, the best legal and financial tactic for Apple has been to pursue legal matters in the ITC where they can prevent import of infringing products and disrupt the finances of an infringing company. The ITC has been the more desired route to pursue legal matters because the process has been considered more efficient and the threat of an importation ban has resulted in forcing companies to settle. Before his death in October, 2011, then Apple-CEO Steve Jobs referring to this case, stated, “we think competition is healthy, but competitors should create their own original technology, not steal ours.”

December 20, 2011, by Mandour & Associates, APC

San Diego – On December 13th, Google cruised away with a driverless car patent. U.S. Patent 8,078,349 covers devices and methods for allowing a vehicle to transfer from a conventional driving mode into an autonomous driving mode.

Most importantly, the car can potentially self-park on a preset parking strip. Google wants to equip the vehicle with an optical or radio sensor to detect a parking strip and a computer data processing system. The parking strip, located on the ground, will also be embedded with a sensor. The sensor could resemble a one-dimensional radio tag or bar code. Alternatively, it could resemble a two-dimensional bar code consisting of a white background with a black pattern.

To switch the vehicle to autonomous mode, a driver will park on the strip. The car’s sensors will detect the strip sensor, triggering an indicator that provides data such as a URL, coordinates or a physical address that the car can read. It may also allow a driver to program a preset route that it can follow. The route can be stored in the car’s memory database.

Google test cars have already clocked in 200,000 autonomous miles. This feature may prove useful in heavy traffic. It may also allow drivers to navigate tight tolerances, such as parking in a warehouse or a dealership lot.

The current model is currently too expensive for a general market, however Google expects developments in sensor technology to progress quickly. Apparently Nevada agrees. It has already amended state laws to allow autonomous cars on its roads.

December 12, 2011, by Mandour & Associates, APC

San Diego – Watson, the IBM computer famous for winning a game of Jeopardy against Ken Jennings, may now have its supercomputer capabilities put to use in the patent world.

IBM has implemented new software into the computer called the Strategic IP Insight Platform (SSIP) that allows Watson to search through peer reviewed medical articles and pharmaceutical patents. The SSIP software enables Watson to identify the chemical compounds in this vast array of information and generate a chemical compound database. Further, Watson also catalogs the chemical compounds in the database to include other relevant information such as the inventors, the patent term, and the companies or assignees who own the chemical compound and their finances.

As an example of Watson’s capabilities, it searched through 4.7 million patents and 11 million articles dated from 1976 to 2000, and created a database of 2.5 million chemical compounds. IBM has since donated this database to the National Institutes of Health to allow scientists to access information that would otherwise be very costly and time consuming to get.

From this great potential with Watson also comes an ethical dilemma. On one side, Watson could identify potential drug targets that could lead to improved research and development for new pharmaceutical drugs. On the flip side, Watson could target vulnerable companies who own lucrative patents and pass this information onto “patent trolls” leading to increased litigation and restrictive licensing practices.

IBM has yet to state how they will utilize Watson. But how IBM utilizes Watson for its own benefit may give an indication. By re-tooling Watson’s software, IBM could search through the vast amount of computer-related patents and articles available. IBM owns 50,000 patents and filed for 6,000 in 2010 alone. They stand to benefit immensely from Watson if they so choose.

Even national patent offices may stand to benefit from Watson in the long run. Watson has the potential to search through prior art patents and articles faster and more efficiently than human examiners, resulting in decreased laime for obtaining a patent.

December 1, 2011, by Mandour & Associates, APC

San Diego – Samsung has prevailed in its appeal to lift the preliminary injunction banning sales of the Samsung Galaxy Tablet in Australia. Competitor and iPad maker Apple initially filed the action for a preliminary injunction against Samsung, alleging that Samsung’s Galaxy Tablet infringed patented touchscreen technology owned by Apple and used on its iPad tablet. After Apple won the temporary ban, Samsung appealed.

The Federal Court of Australia, ruling on Samsung’s appeal, recently lifted the ban allowing Samsung’s Galaxy to enter the Australian market. Samsung may now sell the Galaxy Tablet in Australia beginning Friday, December 2. The Federal Court of Australia reasoned, in part, that due to the short life of technology such as tablets, banning the Samsung Galaxy without a full hearing on the merits was unfair, especially with so much money at stake during the Christmas season.

In Australia, as in the United States, a preliminary injunction or temporary ban may be granted without a full hearing if the moving party can demonstrate a high probability of success on the merits of the case and significant harm if the ban is not granted. Here, the Australian court that originally heard the case found that Apple met these requirements and issued the preliminary injunction banning sales of the Samsung tablet. Samsung elected to appeal the decision rather than hold a full hearing on the merits of the case. The appellate court however, citing considerations of fairness, overturned the decision allowing Samsung to enter the market.

Samsung and Apple have been bitter rivals in the tablet and smartphone war, opposing each other in litigation in more than ten countries including the United States. While the Australian dispute focused on touchscreen technology, the United States design patent action focused on the non-functional aesthetic aspects of the tablets. In that dispute, a U.S. Federal District Court recently held that while Samsung infringed Apple’s design patent for the iPad, Apple must prove that its design patent is valid.