SoCal IP Law Group

The SoCal IP Law Blog

Monthly Archives: January 2012

SoCal IP Institute :: January 30, 2012 :: Patent Standing and Federal Circuit Affirmation of TTAB Default Judgment

We will be discussing two recent Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, January 30, 2012. Brief synopses are presented below.

Benedict v. Super Bakery, Case No. 2011-1131 (Fed. Cir. Dec. 28, 2011) (attached).  Mr. Benedict, appearing pro se in a cancellation proceeding, appealed the decision of the Trademark Trial and Appeal Board (TTAB), entering judgment against him for failure to comply with discovery orders, and imposing the sanction of cancellation of his trademark registration. On appeal of a prior TTAB ruling, the Federal Circuit vacated the Board’s default judgment and remanded to the Board. On this appeal from the TTAB’s renewed decision upon remand, the Federal Circuit affirmed the judgment and the sanction of cancellation because Mr. Benedict had avoided meaningful participation in the cancellation proceeding for almost two years and, most recently, in an effort to avoid discovery obligations, filed a summary judgment motion hoping to utilize the TTAB’s “suspension” during summary judgment to enable him to still further delay cooperation.  In view of Mr. Benedict’s failure to take part in discovery, the Federal Circuit found that the default judgment and sanction were appropriate.

Abbot Point of Care v. Epocal, Case No. 2011-1024 (Fed. Cir. Jan. 13, 2012 (attached). Abbott filed a complaint against Epocal in the Northern District of Alabama alleging infringement of two patents related to systems and devices for testing blood samples. Abbott and Epocal are competitors in the diagnostic field. Abbot manufactures and sells a variety of healthcare products, including point-of-care systems that enable medical professionals to quickly test blood without sending a sample away to a lab. Epocal is a Canadian corporation founded by Dr. Imants Lauks, the named inventor of the patents-in-suit. Epocal manufactures and sells point-of-care blood testing systems. Both parties claim to own the asserted patents. Both patents name Epocal as the assignee. Abbott claims ownership on the basis of contracts between Lauks and Abbott’s predecessors. Lauks entered into a total of three contracts: two employment agreements and one consulting agreement with Abbott and its predecessors.

Under the terms of the initial contract, Abbott would have been the rightful owner of the patents.  However, Dr. Lauks entered into another agreement in 1999 that did not require him to assign any inventions.  As a result, the patents, filed in 2001, were subject to the later consulting agreement, without any obligation to assign.  Therefore, the Federal Circuit affirmed the lower court finding that Abbott lacked standing to sue Epocal.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, January 30, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.

Advertisements

SoCal IP Institute :: January 23, 2012 :: Recent Changes to the Trademark Manual of Examination Procedures

We will be discussing the changes in the 8th Edition of the Trademark Manual of Examination Procedures (the TMEP) during our weekly SoCal IP Institute meeting on Monday, January 23, 2012.

The most important changes will be discussed by Christine L. Kopitzke of our Santa Barbara office.  Some of the highlights are available at the United States Patent and Trademark Office website.

All are invited to join our discussion on Monday, January 23, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.

SoCal IP Institute :: January 16, 2012 :: Exceptional Cases and Preliminary Injunctions in Patent

We will be discussing two recent Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, January 16, 2012. Brief synopses are presented below.

MarcTec, LLC v. Johnson & Johnson and Cordis Corp, Case No. 2010-1285 (Fed. Cir. Jan. 3, 2012) (attached).  MarTec sued Johnson & Johnson and Cordis Corp. alleging infringement of two patents.  After claim construction, the Southern District of Illinois granted summary judgment of noninfringement.  J&J and Cordis then moved for the court to declare the case exceptional and to award reasonable attorney’s fees and expert witness fees.  The motion was granted.  On appeal of the decision that the case was exceptional, the Federal Circuit affirmed.

The independent claims of both patents provide for a “heat bondable material” that is “bonded” to a surgical device or implant.  During prosecution, the MarcTec patents were distinguished from a prior art reference on the basis that it bonds with the application of heat and because it, unlike the cited reference, did not include “intraluminal grafts” (stents).  The district court found that J&J and Cordis manufacture and sell stents that are of the type that bond at room temperature, as described in the disclaimed prior art reference.  On that basis, summary judgment of noninfringement was granted.

After this motion was granted, J&J and Cordis moved for the court to declare the case exceptional and to grant attorney’s fees.  J&J asserted that MarcTec 1) misrepresented claim construction law, 2) mischaracterized the district court’s claim construction order and 3) offered unreliable scientific evidence.  This district court agreed.  On appeal, MarcTec argued that the wrong standard was applied by the district court.  The Federal Circuit found that the correct standard was applied, namely, “subjective bad faith and objectively baseless” claims and that MarcTec’s claims were pursued in bad faith while being objectively baseless.  This alone was sufficient to affirm the award of attorney’s fees.  In addition, the Federal Circuit found that there was litigation misconduct in the form of misstating the law of claim construction to the district court and reliance up on scientific evidence that was lacking in any reliability.  As a result, the Federal Circuit affirmed the grant of expert witness fees and attorney’s fees.  The reasonableness of those fees was not challenged on appeal.

Celsis In Vitro, Inc. v. CellzDirect, Inc. et al., Case No. 2010-1547 (Fed. Cir. Jan. 9, 2012 (attached). The Northern District of Illinois granted Celsis’ motion for a preliminary injunction against CellzDirect.  CellzDirect  appealed the grant and requested a stay of the preliminary injunction pending the appeal.  This request was denied and the Federal Circuit affirmed the grant of the preliminary injunction.

Celsis’ patent covers a method for preserving liver cells through cryopreservation (freezing).  In general, liver cells are fragile and are typically irreparably damaged when frozen.  The Celsis patent describes freezing the cells multiple times as increasing viability of the cells.

In determining whether to grant a preliminary injunction, the court (and the Federal Circuit in reviewing) considered four factors: (1) likelihood of success on the merits, (2) irreparable harm, (3) balance of hardships, and (4) public interest.  As to likelihood of success on the merits, the Federal Circuit affirmed that the patent was not obvious in view of art previously identified by CellzDirect.  Some discussion was made of a de Sousa reference that, arguably, showed viability after a single round of freezing of the cells.  However, the court accepted the testimony of Celsis’ expert, Dr. Strom, which suggested that multiple rounds of freezing would not be expected to generate better results than a single round.  He argued that one would expect a runner of multiple marathons in rapid sequence to perform increasingly poorly in each marathon.  Therefore, it would stand to reason that multiple rounds of freezing in succession would decrease viability, not increase it.

As to irreparable harm, the district court and Federal Circuit affirmed that the possibility to calculate a damages award, if pressed, id not preclude a finding of irreparable harm.  As to balance of the hardships, the district court and Federal Circuit found that it clearly tipped in favor of Celsis, as holder of the patent, and that any harm to CellzDirect could be protected by a bond.  Finally, public interest is generally presumed in patent cases, because the public would favor enforcement of valid patent rights.  Accordingly, the preliminary injunction was affirmed.

In dissent, Judge Gajarsa argued that repetition of a known-to-be effective step shown in de Sousa is no invention at all.  As a result, he argues that de Sousa renders the Celsis patent obvious.  He argued that the flexible approach of KSR requires such an obviousness finding.  In addition, he argued that the burden was not adequately shifted in view of the prior art presented by CellzDirect.  In particular, he stated that CellzDirect need only present proof that the patent was vulnerable, not meet the clear and convincing burden of invalidity.  In view of these issues, he would have found that the preliminary injunction was improper because there was no likelihood of success on the merits.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, January 16, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.

SoCal IP Institute :: January 9, 2012 :: The Stop Online Piracy Act (SOPA)

We will be discussing the proposed Stop Online Piracy Act (SOPA) during our weekly SoCal IP Institute meeting on Monday, January 9, 2012. A brief synopsis and several relevant articles and sites are presented below.

SOPA (attached) has been the subject of much commentary as of late.  The Electronic Frontier Foundation has an entire site devoted to SOPA.  Infographics discussing the substance of SOPA have been prepared by various sources.  Law professors have also weighed in on the SOPA debate.  On the other side of the debate, product manufacturers subject to counterfeiting and content producers have each supported SOPA.

In general, SOPA itself states that is intended “[t]o promote prosperity, creativity, entrepreneurship, and innovation by combating the theft of U.S. property, and for other purposes.”  Title 1, section 102 enables the Attorney General, at the request of a content holder, to request an order from a U.S. court to require internet service providers (DSL, Cable, FiOS, internet hosting sites and the like), internet search engines (Google, Bing, Yahoo and the like), internet advertising services (Google, Apple iAd, Yahoo and the like) and payment processors (banks, advertisers and the like) to take “technically feasible and reasonable measures” to stop users from accessing a “foreign” infringing site, to stop processing of payments directed to the operators of the site and to stop serving ads (and providing money) for the site.  Section 103 provides the ability for content holders to go directly to payment processors and internet advertising services in a DMCA-like take down procedure directed to cutting off funding for the site.

Other sections provide the internet service providers, internet search engines, payment processors and internet advertising services who comply with an order or a legitimate request with immunity to lawsuits by the allegedly infringing site.  Still other provisions provide that the effect of the law will be studied by the copyright office and that the Copyright Office will begin a study of “notorious” infringers in order to make recommendations to Congress.

Title 2 includes miscellaneous revisions to Title 17 and 18 of the U.S. Code pertaining to making copies of movies, for example, available before their theatrical release.  Title 2 also includes additional provisions related to counterfeit goods and unlawful use of trademarks by overseas entities.  Finally, Title 2 also appoints a new intellectual property attache to coordinate with foreign countries on appropriate enforcement of U.S. intellectual property rights.  These provisions are, generally, less-controversial than those in Title 1 of SOPA.

The law professors’ letter and the letter by several content producers referenced above provide a good primer on the two sides of the contentions provisions.  We will begin with these two sides of the issue in our discussion of SOPA on Monday, January 9, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.