September 2012

September 28, 2012, by Mandour & Associates, APC

San Diego – The Federal Circuit on Friday shot down several generic drug makers’ appeal of an injunction against selling their generic versions of Pozen Inc.’s patented migraine medicine Treximet.

Par Pharmaceutical Inc., Alphapharm Pty Ltd. and Dr. Reddy’s Laboratories Inc. had appealed a Texas federal judge’s ruling that the asserted claims of Pozen’s U.S. Patent Numbers 6,060,499, 6,586,458 and 7,332,183 were valid and infringed by Par and Dr. Reddy’s’ Abbreviated New Drug Application filings with the U.S. Food and Drug Administration.

The district court did not err in rejecting the generics makers’ claims that the patents are invalid as obvious, nor did the court err in its infringement finding, the Federal Circuit ruled in affirming the Texas court’s decision and related injunction.

Pozen developed a method for treating migraines by combining two drugs, sumatriptan and naproxen, in a single tablet, which it markets as Treximet in conjunction with GlaxoSmithKline. Sumatriptan was developed in the late 1980s and is widely accepted as an effective medicine for migraines, but does not prevent the reoccurrence of migraine symptoms. Naproxen, meanwhile, is a well known nonsteriodal anti-inflammatory drug.

On appeal, the generics makers challenged the validity of the ’499 and ’458 patents in light of four prior art references. They also challenged the validity of the ’183 patent in light of the ’499 patent and prior art.

The generics companies asked the Federal Circuit to hold the ’499 patent invalid for lack of written description, and challenged the district court’s determination that the ’183 patent was infringed.

“Appellants failed to rebut the presumption of validity of issued patents,” the Federal Circuit ruled. “Additionally, the appellants provided no basis for unsettling the district court’s finding on infringement.”

The appeals court accordingly affirmed the district court’s injunction barring the three generics makers from making, using, importing, selling or offering to sell their generic Treximet products, or inducing others to do so, until the expiration of the three Pozen patents.

Circuit Judge Raymond Clevenger dissented in part from the Federal Circuit’s majority opinion, saying the district court erred in finding infringement of one claim of the ’183 patent under the doctrine of equivalents.

September 25, 2012, by Mandour & Associates, APC

San Diego – SK Hynix Inc. on Monday settled Intellectual Ventures Inc.’s litigation against it over semiconductor patents, after winning a court ruling Friday in the Northern District of California that will cap the royalties it owes Rambus Inc. for infringing other patents for memory devices.

Hynix and Elpida Memory Inc., which also settled with IV Monday, were named as defendants in IV’s patent infringement action filed in December 2010 in the District of Delaware.

Both companies and some of their customers were also named as respondents in an investigation by the United States International Trade Commission of certain memory device manufacturers based upon an IV complaint filed in July 2011, and in a related action in the Western District of Washington filed the same month.

“IV has built a world-class portfolio of semiconductor patents, and our preference is to sign license agreements and form productive, long-standing relationships with innovative companies rather than to litigate,” IV vice president and chief litigation counsel Melissa Finocchio said Monday.

The Friday ruling in the Rambus case, meanwhile, came in large part due to the district court’s finding that Rambus spoiled evidence in bad faith or at least willfully.

The court concluded that the sanction most commensurate with Rambus’s conduct is to strike from the record evidence supporting a royalty in excess of a “reasonable, non-discriminatory” royalty.

“Such a remedy recognizes that Rambus’s patents have been determined to be valid while at the same time recognizing that Rambus’s spoliation of evidence should preclude it from entitlement to a royalty that places Hynix at a competitive disadvantage,” Judge Ronald M. Whyte said.

The evidence does not support a conclusion that Rambus deliberately shredded documents it knew to be damaging, but Rambus did willfully destroy records when litigation was reasonably foreseeable, the judge said.

“That destruction was part of a litigation plan,” he said. “The destruction involved the shredding of large volumes of documents on multiple occasions. And finally, Rambus made no effort to log or record what was destroyed.”

Rambus itself welcomed the decision, despite the limit on the royalty rate, for confirming that it does indeed deserve royalty payments for the use of its patented technology

“This is a positive result as it is consistent with what we’ve been seeking all along — reasonable compensation for the use of our patented inventions,” Rambus senior vice president and general counsel Thomas Lavelle said Sunday. “We appreciate the court’s extensive efforts in working through years of complex arguments. While this decision does not provide SK Hynix with a going-forward license, we are hopeful it will lead to putting this matter behind us completely and allow us to reach reasonable agreements.”

September 21, 2012, by Mandour & Associates, APC

San Diego – A German court ruled Friday that Android devices made by Samsung Electronics Co. and Google Inc.-owned Motorola Mobility LLC do not infringe an Apple Inc.-held European patent for a touch-sensitive interface.

Judge Andreas Voss of the Mannheim Regional Court ruled that Samsung and Motorola do not infringe because Android does not store a multi-touch “flag” in association with each user interface component, patent blogger Florian Mueller reported Friday.

European Patent Number EP2098948, titled “Touch event model,” relates to multi-touch devices in general, and more specifically to recognizing single and multiple point and touch events in multi-point and multi-touch devices.

The European patent at issue is broader and relates to the general way Android reports touch events to applications, in contrast to the more specific touch patents Apple asserted against Samsung in the much-publicized U.S. case that recently yielded a $1 billion infringement verdict against Samsung, Mueller wrote.

“Apple would obviously like to maximize its leverage over its rivals and win an injunction over a broad patent, or even a ‘killer patent’,” he wrote. “Some of the patents Apple is asserting in different jurisdictions could have that effect, and the touch event model patent would have caused far greater problems to Google’s Android operating system than any single-gesture patent ever could.”

The same non-infringement argument Judge Voss adopted has been embraced by courts in the U.K. and the Netherlands. The High Court of England and Wales actually rejected the same Apple patent as invalid in a ruling earlier this year, in Apple’s infringement case against HTC Corp. there.

Another German regional court in Munich ruled last week that Samsung does, in fact, infringe a different Apple-held European patent for its operating system’s bounce back effect, or “rubber-banding,” patent, giving Apple the opportunity to enforce an injunction against Samsung’s sales in Germany.

Motorola also suffered a European patent defeat in Germany on Thursday, when a regional court ruled that it has infringed a Microsoft Inc. patent for a software input system widely used in Android devices. Motorola is the only major maker of Android devices that has not already licensed the patented technology from Microsoft.

Microsoft recently won two other German injunctions against Motorola, one over a text message layer patent and one concerning a file system patent.

September 18, 2012, by Mandour & Associates, APC

San Diego – Microsoft Inc. and Research in Motion Ltd. have entered into a patent licensing agreement giving the Blackberry maker unfettered access to its latest file allocation system for flash memory storage, Microsoft said Tuesday.

Microsoft’s Extended File Allocation Table, known as exFAT, is a modern file system that facilitates large files for audiovisual media and enables seamless data portability and an easy interchange between desktop PCs and other electronic devices, according to the tech giant.

The system improves on its predecessor, the FAT system, and greatly expands the size of files that flash memory devices can handle by five times over previous FAT technology. It also increases the speed with which those files can be accessed.

“Today’s smartphones and tablets require the capacity to display richer images and data than traditional cellular phones,” Microsoft general manager of intellectual property licensing David Kaefer said.

“This agreement with RIM highlights how a modern file system such as exFAT can help directly address the specific needs of customers in the mobile industry,” he said.

Since Microsoft launched its IP licensing program in December 2003, the company has entered into more than 1100 licensing agreements and continues to develop programs that make it possible for customers, partners and competitors to access its IP portfolio, the company claims. The program was developed to open access to Microsoft’s R&D investments and its patent portfolio.

Microsoft has entered into similar licensing agreements with several leading consumer electronics manufacturers through its IP licensing program, including Panasonic Corp., Sanyo Electric Company Ltd., Sony Corp. and Canon Inc.

Last year Microsoft and RIM entered another patent deal, as part of a consortium including Apple Inc. and others that paid $4.5 billion for the patent portfolio of Nortel Networks Inc.

Posted in: Patent License
September 14, 2012, by Mandour & Associates, APC

San Diego – A group of scientists at the University of Texas at Austin said Wednesday that they have been awarded a patent for a type of nuclear reactor that could eventually be used to turn radioactive waste into new fuel.

Mike Kotschenreuther, Prashant Valanju and Swadesh Mahajan, physicists at UT’s College of Natural Sciences, said the patent covers a fusion-fission hybrid nuclear reactor that would use nuclear fusion and fission together to incinerate nuclear waste. Fusion produces energy by fusing atomic nuclei, and fission produces energy by splitting atomic nuclei.

The process of burning the waste would also produce energy, a process which the scientists hope could eliminate 99 percent of the most toxic waste from traditional nuclear fission reactors.

“The potential for this kind of technology is enormous,” Mahajan said. “Now that we have the patent, we hope this will open up opportunities to engage with the research and development community to further this potentially world-changing technology.”

The patented reactor would rely on a tokamak device, which uses magnetic fields to produce fusion reactions. The tokamak is surrounded by an area that would house a nuclear waste fuel source and waste byproducts of the nuclear fuel cycle.

The device is driven by a new technology the three physicists developed called the Super X Divertor, which they called a “crucial technology” with the capacity to safely divert enormous amounts of heat out of the reactor core to keep the reactor producing energy.

The need to store nuclear waste is among the biggest impediments to more widespread use of nuclear energy. Projects like the proposed Yucca Mountain long-term nuclear waste storage site in Nevada have met with much public opposition.

The physicists say their invention could someday drastically decrease the need for any additional or expanded geological waste dumps like Yucca Mountain, making nuclear power cleaner and more viable.

The scientists’ hybrid reactor currently remains in a conceptual phase, they said. The Super X Divertor, though, is being installed as the centerpiece of a $40 million upgrade of the MAST tokamak in the United Kingdom.

“This installation is a critical step forward in testing the Super X Divertor experimentally,” the scientists said.

September 13, 2012, by Mandour & Associates, APC

San Diego – A California federal judge on Tuesday threw out OIP Technologies Inc.’s patent infringement suit against Inc. over a system for determining pricing automatically in online retail, saying the patent is ineligible.

OIP sued Amazon in March alleging it infringes OIP’s patent by making and using software systems for automated testing and selection of prices for products offered for sale on, wherein statistics are generated from the testing, estimated outcomes are determined and prices are selected based on those outcomes.

Amazon argued that the patent claims failed the “machine-or-transfomation” test and are directed to the abstract idea of price optimization, which is a fundamental economic principle that is reserved for the public, and Judge Edward M. Chen of the Northern District of California agreed.

The patent’s only machine elements merely incorporate a computer that is employed only for its most basic function, the performance of repetitive calculations, and so do not impose meaningful limits on the scope of those claims, Judge Chen ruled.

More fundamentally, it is clear that the patent falls within the statutory exception for abstract ideas, he said.

U.S. Patent Number 7,970,713 was issued to OIP’s predecessor Optivo Corp. in June 2011, 11 years after the application was filed, is titled “Method and apparatus for automatic pricing in electronic commerce.” The patent is designed to facilitate e-commerce price selection and optimization.

Optivo released its product, marketed as the Optivo Pricing Solution, in 2001 and allowed e-commerce companies to participate in trials of the technology, including Amazon, which took part in June 2001. The parties exchanged information under a non-disclosure agreement during that time.

The parties met in September 2001 to discuss Amazon’s potential acquisition of Optivo and its technology. Optivo gave a detailed presentation regarding the patent-pending technology, and projected that using the Optivo technology could increase margins by $100 million.

Amazon declined to purchase Optivo, but offered employment to two Optivo engineers as “price statisticians.” Both engineers fielded technical questions about the Optivo technology during the interview.

September 10, 2012, by Mandour & Associates, APC

San Diego — Smith & Nephew Inc. won a $4 million jury verdict in Massachusetts federal court on Tuesday in its patent infringement suit against Hologic over a medical tissue removal device.

In June 2010 and November 2011, S&N filed a complaint against Hologic alleging infringement of U.S. Patent Numbers 7,226,459 and 8,061,359 by the use and sale of the MyoSure Tissue Removal Device. The two patent suits were consolidated into a single action culminating in a jury trial which commenced on August 20.

As part of the Tuesday verdict in S&N’s favor, the jury awarded $4 million to the medical device maker in damages for lost profits.

” We are pleased with the jury’s verdict in this case,” S&N representative Joe Metzger said Thursday. “This was an important step in the process and, moving forward, we will continue to vigorously defend our intellectual property, seeking to prevent competitors from unfairly profiting from Smith & Nephew’s innovation.

Hologic, in connection with its January 2011, $125 million acquisition of MyoSure developer Interlace Medical Inc., is indemnified up to a previously defined dollar amount by the former Interlace Medical shareholders for potential associated liabilities, Hologic said in a statement Wednesday.

“We are disappointed in and strongly disagree with the verdict in this case,” Hologic Senior Vice President, Chief Administrative Officer and General Counsel Mark Casey said. “This is but the first step in a multi-phase process and there remain several issues to be decided by the court which could impact the applicability of this verdict.”

“We intend to continue to market and sell the MyoSure product and, if necessary, will pursue the appellate process to ensure the right of women to have access to this best-in-class treatment for the removal of uterine fibroids,” Casey said.


September 5, 2012, by Mandour & Associates, APC

San Diego — A California federal judge ordered Oracle Corp. on Tuesday to pay Google Inc. $1 million to compensate it for costs relating to Oracle’s failed infringement suit against Google over Oracle’s copyrights and patents for the Java programming language.

Oracle sued Google over the copyrights and patents in 2010, initially seeking six billion dollars in damages and injunctive relief, but after nearly two years of litigation and six weeks of trial it recovered nothing

Oracle initially alleged infringement of seven patents and 132 claims but each claim ultimately was either dismissed with prejudice or found not to be infringed by the jury. Oracle also lost on its primary copyright claim for Java’s application programming interface. While Oracle prevailed on two minor, peripheral copyright claims, those successes did not have a major impact on the final judgment.

Following the final judgment, Google asked the court for $4 million in compensation for its costs, which were largely related to expert fees for court-appointed expert Dr. James Kearl, and fees for electronic document discovery by a third-party vendor, according to the court.

Google is the prevailing party for the purposes of taxing costs, and Oracle has failed to overcome the presumption of awarding costs, Judge William Alsup said.

The media attention following the case accumulated in large part because Oracle crafted broad, and ultimately overreaching, claims of copyright infringement, the judge said. Oracle did not place great importance on its copyright claims until after its asserted patents started disappearing upon PTO reexamination, according to the judge. In fact, Oracle’s first damages report barely mentioned copyright claims, he noted.

Oracle did not bring its API copyright claim for the benefit of addressing a landmark issue of national importance, but instead “fell back on an overreaching (albeit somewhat novel) theory of copyright infringement for its own financial interests late in litigation,” Judge Alsup said.

While the court’s prior rulings clearly implied that the prevailing party could recover the expert fees, Google’s claims for $3 million in e-discovery costs fail to pass muster because many of its line-item descriptions were of non-taxable intellectual efforts, according to the judge.

Judge Alsup noted in a separate Tuesday order that he intended to take no further action regarding the subject of Oracle’s and Google’s payments to commentators and journalists reporting on the case, seeking to reassure both sides that “no commentary has in any way influenced the court’s orders and ruling herein save and except for any treatise or article expressly cited in an order or ruling.”

The judge had previously demanded that the two companies disclose the identity of any writers, reporters or bloggers it had paid, and scolded them for failing to comply with his orders to that effect.

The $1 million blow to Oracle came a day after reports on Monday that the company planned to appeal a roughly $300 million copyright judgment against it in favor of SAP AG.

“SAP is disappointed that Oracle continues to prolong the case,” a SAP representative said. “We agreed to reasonable terms in this case, as we believe it’s gone on long enough. We remain determined to work through the legal process to bring this case to resolution.”

Representatives for Oracle did not respond to emails seeking comment.