Philip Brooks' Patent Infringement Updates

Chip Bans Hit OEM Plans

The following is excerpted from a July 1, 2009 article by Rick Merritt at EE Times:

Systems makers may be beginning to feel the bite of a limited exclusion order prohibiting the import of chips from six companies found to infringe two packaging patents of Tessera Technologies Inc.

"We were told we can't get the Freescale MCF5282 after July 17 for at least a year due to patent infringement," said an engineer from Nordson Corp. (Duluth, Georgia) in an email to EE Times. "This is causing quite a ruckus in engineering," he said.

Nordson uses the Freescale chip, a Coldfire microcontroller, in an industrial controller used primarily on packaging lines to control adhesive deposition. The company was informed by its contract manufacturer in Ohio about the issue sourcing the part.

A Freescale spokesman said the shipments in question do relate to the U.S. International Trade Commission's order banning imports of certain products found to infringe two patents of Tessera.

Affected companies include ATI Technologies (now part of Advanced Micro Devices Inc.), Freescale Semiconductor, Motorola Inc., Spansion LLC and ST Microelectronics NV and Qualcomm Inc. Freescale and Qualcomm have posted the bond to allow imports, said a Tessera spokesperson.

Read the full article here.

Bayer Files Patent Infringement Lawsuit Against Teva

The following is excerpted from a Thursday, July 02, 2009 press release at Webwire:

Bayer Schering Pharma AG, Germany and Bayer HealthCare Pharmaceuticals Inc. together with Schering Corporation have filed a patent infringement lawsuit in the U.S. Federal Court in the District of Delaware against Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries, Ltd.. The lawsuit concerns Teva’s application to the FDA for approval to market a generic form of Levitra®, Bayer Schering Pharma’s therapy for the treatment of erectile dysfunction, prior to patent expiration. The patent at issue in the suit is Bayer Schering Pharma’s U.S. Patent No. 6,362,178, expiring in 2018. In the US, Levitra® is marketed by Schering-Plough and GlaxoSmithKline.

See the full press release here.

CRESTOR PATENT INVALIDITY EVIDENCE UNCOVERED BY ARTICLE ONE PARTNERS COMMUNITY

The following is excerpted from a July 1, 2009 Article One Partners press release:

Article One Partners, LLC has discovered new prior art impacting the validity of AstraZeneca’s Crestor U.S. drug patent, in closing out another round of Patent Studies. The Article One community uncovered premier validity evidence which can show the Crestor patent to be invalid, as verified by independent outside counsel, Darby & Darby, and an independent expert. CRESTOR® (rosuvastatin calcium) is a prescription drug for treating high cholesterol. The discovery of this patent invalidity evidence can impact the industry litigation to market generic rosuvastatin drugs. The prior art (further detailed below) was provided by an Article One community Advisor with the username Columbo, who will receive a monetary award.

JSA Technologies Study Uncovers Two Key References

In addition to the Crestor Study, Article One’s JSA Technologies Study for U.S. Patent No. 6,963,857 uncovered a broad range of prior art references, including two references that each separately can show the patent to be invalid under the strongest level of invalidity evidence, called anticipation. The JSA patent involves transferring funds from a second account to a first account with the accounts on separate networks and servers—such as transferring funds onto university student ID cards. Two Advisors, with usernames Ramesh and Patented, identified the evidence and will share the monetary reward. 

Article One already has begun to license the proprietary collection, with law firm Davis Wright Tremaine, LLP first to license. The JSA Study uncovered new dramatic invalidating prior art that extensive traditional prior art searches didn’t produce. With so many Article One Advisors using different approaches, a wide variety of highest quality references were found—providing two separate paths to invalidity under “102 anticipation,” including a U.S. patent, and obscure publications about a product offered in 1997. The patent has been asserted in litigation against Informed Decisions Corp./Cashnet and has been described by JSA as being widely licensed to universities.

Crestor Study & Industry Impact

Nine generic drug manufacturers have submitted Abbreviated New Drug Applications with Para IV certifications (ANDAs) to the U.S. Food and Drug Administration (FDA), seeking approval to market generic versions of Crestor. AstraZeneca countered with litigation for patent infringement against these nine drug companies, with court cases proceeding in the discovery phase, in the District of Delaware.

The Article One community uncovered references that are crucial for an invalidity position for the U.S. patent to Crestor. This includes references that can teach the claim elements, why the lead molecule would be selected, what results could be expected from substitutions to the lead molecule, and why a person of ordinary skill at the time would have applied the teachings to create the claimed invention. The references can form a clear, convincing invalidity position as verified by the independent outside counsel and expert referenced above. Both the Crestor and JSA Study proprietary collections of prior art are available for license from Article One. 

“The U.S. Patent Office does high quality work, but its resources are limited to fully research the validity of all the patents it issues. With the public bearing the burden of this limitation by paying monopoly pricing, Article One provides a counter-balance through citizen’s review of granted patents,” said Cheryl Milone, Article One Partners founder and CEO. “This Patent Study related to AstraZeneca’s Crestor drug is a perfect example, where the public has provided information to potentially correct an improper patent grant. This citizen review is having a tremendous impact. Earlier this month, the U.S. Patent Office moved forward with a re-exam of Merck’s Singulair U.S. patent based directly upon relevant prior art discovered by the Article One community. Not only do the Advisors eliminate monopoly pricing but they receive premium compensation for doing so.”

Article One also has announced the closing of additional Patent Studies: Opana ER-Penwest; Effexor XR-Wyeth; Lotrel-Novartis; Prevacid-Takeda; Lipitor-Pfizer; Angioplasty Stent-Wall; Keyboard-RIMM; and Wireless Transmissions-Wi-Lan. Studies which are closed indicate that the Article One prior art collections do not form an independent basis for an invalidity position related to the subject patents at this time. Advisors continue to send in validity evidence for closed Studies to earn profit sharing points. In the event that further submissions are relevant to a validity position, Article One will compensate the Advisors with the applicable stated reward of up to $50,000. Closed Studies also contain state of the art collections for the Study patents. These Article One proprietary collections are available for license to interested parties. 

Best Tax Practices for Managing Intellectual and Intangible Property

On July 9, 2009, CCH is hosting a live audio seminar titled, "Managing Your Intellectual and Intangible Propery: Best Tax Practices for Domestic and Cross-Border Operations."

Learn the best tax strategies for working with intangible assets — in a timely and convenient two-hour audio seminar that you can participate in — right from your office — on Thursday, July 9th.

Intellectual property (IP) of U.S.-owned companies operating in interstate or cross-border commerce is increasingly becoming the most sophisticated and cutting-edge tax-efficient planning tool in the tax professional’s arsenal. Using the proper strategies and techniques available under present tax laws, there are significant opportunities available through the transfer of the exploitation rights of IP to the proper state and/or foreign jurisdictions.

Join noted tax advisor, author and presenter, William “Bill” Elliott, CPA, ABV, J.D., LL.M. on Thursday, July 9, in a timely and informative two-hour program as he discusses the fundamentals of intangible assets while providing practical strategies to manage the overall IP portfolio. Mr. Elliott will provide thorough coverage of the tax impact on intangibles for both domestic and international transactions. Visit the links above for complete details on this seminar.

Learn more and register here.

Calculating Damages Arising from Design Patent Infringement

I just received my print Summer 2009 issue of the ABA Intellectual Property Litigation newsletter.  The following is excerpted from the above-titled article by Mark Gallagher and Kelly Caputo of Duff & Phelps:

So, what would you like in your hand now—a utility patent or a design patent? The answer may surprise you. This article compares and contrasts the calculation of damages for utility patents and design patents.

As one court noted, “[a]lthough the design patent is not as popularly known as its counterparts, the utility patent and the copyright, design patents perform a distinct function in the federal scheme of legal protection for creative works.” Indeed, damages resulting from infringement of a design patent are recoverable under § 284 or under § 289. Therefore, having a design patent in hand opens alternative, and possibly more advantageous, avenues to explore when calculating damages.

...a court can consider at least three theories when determining the appropriate damages award in connection with design patent infringement: (1) the infringer’s profits pursuant to § 284; (2) lost profits pursuant to § 289; and (3) a combination of lost profits and reasonable royalty pursuant to § 284 and § 289.

Read the full article here (ABA Section of Litigation membership required).

Fourth Blogaversary!

 

Thanks for Reading!

IP Trial Strategy: Buying Tivo's Bull

The following is excerpted from a June 26, 2009 article by Zusha Elinson of The Recorder appearing at Law.com:

As the make-or-break patent trial between Tivo Inc. and EchoStar Corp. got under way in Marshall, Texas, Tivo's top brass had an idea: Let's buy a cow.

It was late March in 2006, and that meant it was time for Farm City Week in the home of America's most popular venue for patent litigation. Featuring the Harrison County Cattlemen's Ball and the 4-H Cake Show, the main event at Farm City Week is the livestock auction, where prize-winning steers, heifers, lambs, goats, broiler chickens and rabbits are sold by dedicated young farmers.

Samuel Baxter, perhaps the best-known lawyer in the Eastern District of Texas, was representing Tivo...Baxter bid on the Grand Champion Steer -- the most prized farm animal at the auction -- and bought it for what at the time was a record-breaking sum of around $10,000. The lucky steer-raiser was a high-school senior from Hallsville, who, like all the students selling animals, got to keep the money for herself to use for college. They named it Tivo.

Two weeks later, on April 13, the Marshall jury found EchoStar (now known as DISH Network) guilty of infringing Tivo's "time warp" patent, used in technology that lets viewers record, fast-forward and rewind TV shows. And it awarded Tivo $74 million in damages.

Did buying Tivo the animal help Tivo the company win -- perhaps steer the jury in the right direction?

Read the full article here.

Professional Liability Policy Excludes Patent Claims

Kenneth J. St. Onge writing today, June 25, 2009, for Insurance Journal:

A professional liability policy does not cover legal fees for patent infringement lawsuits brought by a competing company, a Pennsylvania appeals court has ruled.

The ruling comes in response to a suit brought by Transcore, a company that makes technology for electronic tolling on roadways, against its insurer, Caliber One Indemnity Co.

The suit stemmed from Caliber One's refusal to pay nearly $825,000 in legal fees spent by TransCore to defend itself in a patent lawsuit brought by a competitor, X-Cyte. X-Cyte alleged that TransCore, formerly known as Amtech, was violating X-Cyte's patent protections in a system it installed for high-speed tolling.

When notified of the case, Caliber declined to pay the legal fees. Transcore then hired its own lawyers and defended the action in court, ultimately winning the underlying lawsuit brought by X-Cyte.

TransCore then sued Caliber One, claiming the insurer -- part of PMA Capital Corp. -- improperly declined coverage.

...the Superior Court found that a professional liability policy is not designed for claims brought by third parties, such as contract or patent infringement claims. Professional liability, the court said, encompasses claims made by entities that have a professional relationship with the insured. By definition, the court ruled, competitors are not counted among that group.

Read the full article here.

Business Method Patents on Supreme Court Docket

From BPCouncil:

Some 30 years after it last looked into the subject, the Supreme Court decided to weigh in on the burning issue of software and business method patentability by granting the certiorari petition and hearing the appeal filed by inventors Bernard Bilski and Rand Warsaw. The two requested the Court to reverse the Federal Circuit’s decision in re Bilski (now known as Bilski vs. Doll), which changed the test for determining patentable subject matter in the US. While some experts are surprised at this development – saying that the Circuit’s ruling closely followed Supreme Court precedent – others saw it coming. According to Eileen McDermott, in her article for managingip.com, this latter group contends that the issues are too critical, the dollars involved too large, and the implications on the US economy (where many inventions are tied to the computer) just cannot be ignored.

Inventors Bilski and Warsaw had sought to patent a method of hedging risks in the sale of commodities, that is, a way to buy or sell energy at a fixed price based on the expected weather for a season. The application was denied by the US Patent and Trademark Office (USPTO), the case went to the US Court of Appeals for the Federal Circuit. In a 9-3 ruling that basically narrowed the scope of business processes eligible for patent protection, the Court of Appeals upheld the rejection, ruling that business method patents applied only to those tied to a particular machine or apparatus, or processes that transformed an item from one state to another. By ruling as such, the appeals court actually overturned its own 1998 decision that patents should protect business methods that had a “useful, concrete and tangible result.”

Now, the current Bilski petition to the Supreme Court asks the Court to consider whether the Federal Circuit erred in its ruling under US law and whether its machine or transformation test contradicts Congressional intent that patents protect methods of conducting business in 35 U.S.C. Section 273.

Read the full article here.

LARGO Models Supreme Court Decision Making

I just finished reading an article by Cara J. Hayden in the print edition of the Spring issue of Pitt Magazine (electronic version will eventually post here).  The article titled, "Supreme Decisions," discusses the work of Pitt professor Kevin Ashley who has developed a software program that employs artificial intelligence to explore how the U.S Supreme Court makes decisions.  The program called Legal Argument Graph Observer or LARGO, was developed "to help law students follow and interpret complex Supreme Court debates."

Professor Ashley's research is of particular interest to me in light of the work I have done for clients using decision analysis to assist counsel and corporate executives evaluate whether to settle or ligitate cases based on defining the key potential decisions in the litigation and the associated damage value with each possible combination of decisions and outcomes.

If you do not have access to Pitt Magazine, you may learn more by viewing the presentation titled, "Largo, an ITS for Teaching Argumentationwith Hypotheticals" [Download LARGOTalk2].

China's Guidebook for Pharmaceutical Patent Protection

Research and Markets announced today, June 22, 2009, in a Business Wire press release:

The addition of the "China's Guidebook for Pharmaceutical Patent Protection" report to their offering.

China is expected to become the fifth largest drug market in the world by 2010 with a growth rate of 20-25 percent per annum in next three years. As China joins the World Trade Organization (WTO) and integrates more completely into the global economy, it will further open the door to a lucrative drug market for overseas pharmaceutical companies, which attracts more and more overseas pharmaceutical manufacturers and producers to enter such drug market and seize a larger part of such drug market. However, the Chinese social environment for the protection of intellectual property right is complex. The locally produced generics and copy products dominate the Chinese drug market. It is estimated that about 97 percent of the drugs produced by local companies are generics or counterfeits.

Facing such complex social environment and market, most overseas and multinational pharmaceutical companies fear that their imported drugs and pharmaceuticals produced in China will be imitated or copied, in turn, their intellectual property will be infringed and benefit will be violated. What reason incurred such fear of overseas and multinational pharmaceutical companies? Why did Eli Lilly & Company fail in its litigation of patent infringement dispute case in China? Why can Pfizer win in an administrative proceeding against the Patent Reexamination Board of the China State Intellectual Property Office (SIPO) for its Viagra patent? Lack of knowledge of the Chinese intellectual property right system and legislation institution, the cultural difference between China and Western countries as well as the language barriers incurred such result.

Guidebook Highlights

China's Guidebook for Pharmaceutical Patent Protection provides a comprehensive and thorough knowledge of the Chinese patent system relating to pharmaceuticals, the detailed administrative, civil and criminal judicial pathways for protections of patent right, and the design for composition of optimized protection strategies.

• The organization structure of patent authorities and judicial system;

• A comprehensive and thorough knowledge of the Chinese patent system and the relevant laws and administrative regulations relating to pharmaceuticals;
• The patentable subject matter relating to pharmaceuticals in China;
• Administrative protection for patent right;
• Civil judicial procedures and remedies for patent right;
• Criminal punitions for infringement of patent right;
• Design for compositions of optimized protection strategies;
• Case studies and comparative analyses of patent infringement disputes.

See the full press release here.

fuelperks! Patent Infringement Suit Filed Against Safeway

The following is excerpted from a June 18, 2009 press release available at Business Wire:

Excentus Corporation announced today that it has filed a lawsuit against Safeway, Inc. and Safeway subsidiaries, including Blackhawk Network, Inc., Blackhawk Marketing, LLC., and Randalls/Tom Thumb in the United States District Court for the Northern District of Texas in Abilene, alleging willful and deliberate patent infringement and the misappropriation and theft of trade secrets, among other things. The lawsuit seeks injunctive and equitable relief along with unspecified damages.

During 2006 and 2007, Safeway, through its Blackhawk subsidiaries, attempted to acquire Excentus as well as the patents owned by Auto-Gas Systems, Inc. (which are now owned by Excentus). The suit alleges that after Blackhawk failed to complete a transaction with either party, Safeway wrongfully used the patents, trade secrets and confidential information belonging to Excentus to develop its fuel rewards program called PowerPump Rewards. Excentus’ complaint also asserts that Safeway’s PowerPump Rewards program is a willful and deliberate infringement of four patents owned by Excentus.

“We believe our patent-protected fuelperks!® rewards program is the most powerful customer loyalty program ever offered in the United States,” said Dickson Perry, President and CEO of Excentus. “We have made significant investments over the last ten years to develop our world-class technology, services and expertise and acquire the related trademarks and patents, all of which are valuable components of the fuelperks! program and assets of our Company. When faced with situations like this one with Safeway, we are prepared to take the necessary steps to assure our assets and interests are protected.”

Read the full release and complaint.

2nd Annual Pharmaceutical Congress on Paragraph IV Disputes

The Center for Business Intelligence is hosting the above-titled conference in Philadelphia, PA on October 22-23, 2009.

Paragraph IV litigation is reaching an all-time high with almost $85 billion in product sales that potentially could be affected by pending litigation and more than twenty-five drugs going off patent before 2012.  Today’s pharmaceutical companies, both brand and generic, have much at stake in this costly, complex and constantly changing area of patent litigation.  CBI’s 2nd Annual Pharmaceutical Congress on Paragraph IV Disputes brings both sides of the issue together for two days of presentations and panel discussions to discuss litigation strategies, statutory guidelines, current cases and their landmark decisions.

 Confirmed Sessions Include:

    Inequitable Conduct and Exceptional Cases – What Does Recent Case Law Tell Us?

        * Inequitable conduct and recent Federal Circuit decisions
              o Aventis Pharma v. Amphastar Pharmaceuticals and Teva 
        * Exceptional cases
              o What makes a case exceptional?
              o Assess Takeda v. Apotex and Alphapharm and prior “exceptional” case examples

        Anthony J. Viola, Partner, Edwards Angell Palmer & Dodge LLP

    Analyze FTC Enforcement Activity and Reverse Payment Policy Initiatives

        * Evaluate continuing development of antitrust litigation
        * Analyze pending reverse payment policy and evaluate the force(s) behind it
        * Discuss authorized generics and their impact on competition
        * Understand the FTC’s findings in their report on FOB market entry and pioneer/FOB competition

        Saralisa Brau, Deputy Assistant Director, Health Care Division, Federal Trade Commission

Learn more and register here.

Pfizer Sues Mylan Over Patents for Top-Drug Lipitor

The following is excerpted from a June 15, 2009 article by Phil Milford and Susan Decker at Bloomberg:

Pfizer Inc., the world’s biggest drugmaker, sued rival Mylan Inc. asking a judge to prohibit sales of a generic version of its cholesterol-fighting medicine Lipitor until 2017.

In federal court papers filed today in Wilmington, Delaware, lawyers for New York-based Pfizer contend a Mylan affiliate has applied to the U.S. Food and Drug Administration for permission to sell copies of Lipitor, the world’s best- selling drug, before three Pfizer patents expire.

Pfizer officials have said they’re looking for cooperative ventures with other pharmaceutical makers to increase generic sales as patents expire. Lipitor logged $12.4 billion in revenue last year, $7.7 billion of it in the U.S.

Ranbaxy Laboratories Ltd., India’s biggest drugmaker and majority owned by Japan’s Daiichi Sankyo Co., settled a lawsuit filed by Pfizer and plans to enter the market in November 2011. Pfizer already is suing Apotex Inc. and Teva Pharmaceutical Industries Ltd. to prevent them from selling copies of the medicine before then.

Read the full article here.

IP Advocate Wins Two Communicator Awards of Distinction From International Academy of Visual Arts

Non-Profit Dedicated to Empowering Academic Researchers is Honored For Excellence in Education and Branding

ATLANTA (June 16, 2009) – IP Advocate (www.IPAdvocate.org) today announced it has won two awards from the International Academy of the Visual Arts, honoring the non-profit organization with “Communicator Awards of Distinction” in the categories of Education and Branding.     

IP Advocate.org was selected from more than 9,000 entries from companies and agencies around the world, making the Communicator Award the largest and most prestigious award of its kind. 

The Communicator Awards is the leading international awards program honoring creative excellence for communications professionals. The awards are judged by the International Academy of the Visual Arts (IAVA), an invitation-only body consisting of top-tier professionals from acclaimed media, communications, advertising, creative and marketing firms.

“A communications award is especially meaningful to us, because communication is the central theme for what we’re trying to accomplish,” said Dr. Renee Kaswan, founder of IP Advocate, former research professor at the University of Georgia and inventor of the billion-dollar drug Restasis®.  “We want to give voice to the community of academic researchers – the very people who find cures for diseases and invent new technologies for us to explore, but who all-too-often are overlooked during the process of getting their discoveries from the lab to the people who need them.  We’re thrilled with this honor.”

IAVA is the second organization to officially honor IP Advocate.  Earlier this month IP Advocate announced it won the Interactive Media Award for Outstanding Achievement in Advocacy

IP Advocate is dedicated to helping academic researchers preserve their rights in their work and to cultivating an online community that focuses on safeguarding the interests of faculty inventors.  IPAdvocate.org is led by executive director, Rhaz Zeisler – a recognized industry innovator of multi-channel interactive new media and digital branding.

Already one of the most comprehensive IP resources available, IPAdvocate.org provides a storehouse of authoritative information on laws and litigation related to intellectual property issues, case studies that represent both cautionary tales and examples of commercialization done right, and an interactive forum where researchers and others can share information with each other and discuss laws, ethics, best practices, public policy on academic technology transfer and more.

Pittsburgh Penguins Win Stanley Cup

 

Pittsburgh Wins Super Bowl, Stanley Cup ... World Series?!?!!!

A123 Systems Files Motion to Reopen Case Against Hydro-Quebec

Jeffrey Gleason of Wilmer Cutler Pickering Hale and Dorr LLP, counsel for A123 Systems, Inc. filed a motion yesterday, June 11, 2009, to reopen the A123 Systems, Inc. v. Hydro-Quebec case:

Plaintiff A123 Systems, Inc. (“A123”) hereby moves the Court to reopen the above-captioned case. As grounds for this motion, A123 states that, on January 30, 2007, this Court dismissed this case without prejudice to either party moving to reopen the case prior to September 1, 2007 (Docket No. 79). On September 6, 2007, the Court granted A123’s Amended Unopposed Motion to Extend Deadline to File Motion to Reopen Case Pending Reexamination of Patents, extending the deadline to file a motion to reopen the case until thirty (30) days after the conclusion of the Reexaminations of US Patent Nos. 5,910,382 (“the ‘382 patent”) and 6,514,640 (“the ‘640 patent”) by the United States Patent and Trademark Office (“PTO”). The PTO issued reexamination certificates concluding the reexaminations for the ‘382 patent on April 15, 2008 (attached hereto as Exhibit A) and for the ‘640 patent on May 12, 2009 (attached hereto as Exhibit B).

Accordingly, consistent with the Court’s Orders, A123 respectfully requests that the Court reopen this case without prejudice to either party.

Thanks to the reader who provided the attached copy of the motion [Download A123 v HQ suit].

Developments in Pharmaceutical and Biotech Patent Law 2009

PLI is hosting the above-titled conference in New York City on September 17, 2009 (along with groupcasts in Boston, Philadelphia and Pittsburgh and a live webcast) and in San Francisco on October 14, 2009.

This year’s program is totally new! Pharmaceutical and biotech patent law is an important and rapidly changing practice area and the program is designed to give you the information you need to maintain your practice edge.

Technological innovation, Federal Circuit appellate oversight, Congressional action and Supreme Court decisions have all driven significant changes in the law. Several different perspectives on many of the most pressing issues will be offered from experienced in-house and outside counsel.

Do not miss this opportunity to fully understand the impact of appellate decisions and the pending patent legislation on your pharmaceutical and biotechnology patent practice.

What You Will Learn

• The patentability of pharmaceutical products post-KSR v. Teleflex from the Federal Circuit and District Court perspectives
• Inequitable conduct in biotechnology and pharmaceutical patent cases; recent Supreme Court and Federal Circuit developments
• Section 112 developments regarding enablement and written description requirements: the impact of U.S. Patent and Trademark Office (USPTO) Written Description Guidelines
• Cutting-edge issues impacting your pharma and biotech patent prosecution practice
• Patent misuse and other issues in pharma and biotech licensing
• At the intersection of antitrust and pharma and biotech patent cases: unique issues that can arise and strategies to avoid antitrust liability

Faculty

Co-Chairs

    David K. Barr, Kaye Scholer LLP
    Daniel L. Reisner, Kaye Scholer LLP

Speakers

    Karen I. Boyd, Turner Boyd LLP
    Jennifer Gordon, Baker Botts L.L.P.
    Timothy R. Holbrook, Professor at Law, Emory University School of Law
    Lisa A. Schneider, Sidley Austin LLP
    Gerald Sobel, Kaye Scholer LLP
    Darryl L. Webster, Senior Patent Counsel, Wyeth
    Cynthia H. Zhang, Ph.D., Director, Intellectual Property, Gilead Sciences Inc

Program Attorneys

    John M. Mola, Practising Law Institute

More information and registration are available here.

 

Cellectis SA Clarifies Competitor’s Comments on Preliminary U.S. Patent Office Action

The following is an excerpt from a June 10, 2009 Cellectis press release available at Business Wire:

On March 13, 2008, the genome engineering company Cellectis SA (Alternext: ALCLS) initiated a patent infringement lawsuit in the U.S. District Court in North Carolina against Precision Biosciences Inc., for infringing two of its patents directed to the use of molecules known as megaucleases in recombinant biotechnology. These two patents-in-suit, U.S. Patent Nos. 7,309,605 and 6,610,545, are exclusively licensed from Institut Pasteur, a world-renowned, not-for-profit research institution, and are part of a portfolio of patents and applications in the endonuclease field that Cellectis owns or to which it has exclusive rights. Currently, Cellectis holds a portfolio of 42 granted patents, with more than 130 applications for additional patents pending.

Well after Cellectis filed its suit, Precision asked the U.S. Patent Office to reexamine two related, but separate, patents also licensed exclusively to Cellectis by Institut Pasteur, U.S. Patent Nos. 7,214,536 and 6,833,252. The Patent Office recently agreed to reexamine these two related patents. “This is a normal and common administrative procedure. The process is likely to be long, involving multiple legal steps. A final decision ultimately will be given by the U.S. Patent Office and any conclusions drawn before this decision are premature,” said Dr. André Choulika, CEO of Cellectis.

The Cellectis patents to be reexamined by the U.S. Patent Office are not the two patents-in-suit that Cellectis has accused Precision of infringing in the U.S. District Court. And, in fact, Precision has not sought to reexamine the patents it has been accused of infringing.

Read the full press release here.

Largest U.S. Patent Infringement Case Ever is Controversial Too

A reader alerted me that the jury in the Star Scientific v. R.J. Reynolds case should get the case this week.  I have covered this case in numerous prior posts.  The following is excerpted from a May 19, 2009 article by Sandy Hoff at Herald de Paris:

A trial begins tomorrow in a patent infringement case that could result in the largest patent infringement award in U.S. history. It could also pave the way down tobacco road to less hazardous cigarettes, in terms of the rate of cancers caused from smoking.

The case is Star Scientific, Inc., v. R. J. Reynolds Tobacco Company, and jury selection already occurred on Monday, May 18, 2009. The trial is scheduled for 3 to 4 weeks. The venue is the U.S. District Court for Maryland, Baltimore (Northern) Division (101 W. Lombard Street, Baltimore, MD 21201 (410) 962-2600). The case is civil action number MJG 01-CV-1504 and MJG 02-CV-1504.

Aside from its status as a large patent infringement case, this is truly a David v. Goliath scenario. Tiny Star Scientific of Chester, VA is exclusive licensee of patents owned by inventor and principal stockholder Jonnie Williams. The patents are for a method of substantially eliminating what are believed to be among the most potent carcinogens, called tobacco specific nitrosamines (TSNAs), in cured tobacco, and thus potentially eliminating them from both smokeless and smoked tobacco.

If the patents are upheld in this case, royalties from other industry players, who may have infringed (and continue to do so), over the life of the patents, could amount to well over a billion dollars.

Expert testimony directly concerning the role of TSNAs in causing many of the cancers from smoking will likely be part of the damages argument. RJR/RAI has unleashed a blizzard of motions in limine to try to avoid a court room scene in which the court may have to litigate just what role smoking plays in causing cancer, and how it does so. It appears that both the court and RJR/RAI would like to avoid that scenario, and yet that matter is the crux of the worth of Star’s intellectual property, and thus determines damages and royalties.

The scene smacks of an era of legal Americana … an era in which even the most despised corporate structures in America, big tobacco, appear to hold sway, even still at least at first brush, in matters before Congress and the courts. It pits a corporate David against tobacco Goliaths in a battle in which the proverbial David tries to force the tobacco industry to improve the safety of its products using new technology, and the tobacco Goliaths seemingly fight for their right to continue doing business with only one concern - the bottom line.

Read what one commenter described as "the most honest and accurate article I’ve read on the case in the last eight years" in its entirety here.