Patent Law Practice Center

Top 5 Patent Law Blog Posts of the Week

Today we are debuting a weekly installment highlighting the best of the patent blogosphere from the past week. Highlights include USPTO updates and announcements, as well as the expiration of the patent for the world’s best selling prescription drug – ever.

1. IP Watchdog: USPTO Announces More PPH Agreements, China and Iceland – Several announcements came out of the USPTO this week regarding launches for Patent Prosecution Highway (PPH) pilot programs with China’s State Intellectual Property Office, the Icelandic Patent Office, as well as the start of the Paris Route PPH program. This post details how the PPH programs facilitate work-sharing benefits worldwide.

2. Patents Post-Grant: USPTO to Implement New Ex Parte Appeal Rules for 2012 – At the beginning of the week, the USPTO released the final rule package regarding the Rules of Practice Before the Board of Patent Appeals & Interferences in Ex Parte Appeals. This post explains the application of the new rules and how they will impact ex parte proceedings and ex parte reexamination. *PLI will be hosting a One Hour Briefing on the USPTO’s new rules on Jan. 9, 2012. Stay tuned for more information. Also check out information regarding PLI’s  Post-Grant USPTO Proceedings 2012 – The New Patent Litigation Seminar on Feb. 3, 2012.

3. Reexamination Alert: Judge Randa Refuses to Lift Reexamination Stay Despite Patentee’s Success (So Far) with Examiner – This post from Westerman, Hattori, Daniels & Adrian, LLP shares an interesting twist to the use of the 35 U.S.C. Section 316(a) standard for “complete” reexamination. In Generac Power Systems v. Kohler, the twist came when an accused infringer invoked Section 316(a) to maintain a reexamination stay rather than the more common practice of the patentee using the section.

4. TIME: Lipitor Already Cheaper After Patent Expiration – Pfizer’s patent for their best selling prescription drug, Lipitor, expired this week. According to this article, Pfizer’s sales from Lipitor averaged at about $11 billion dollars per year, which ends up being roughly one-sixth of Pfizer’s total sales. Because of the patent’s expiration, Pfizer is now doing what it can in order to preserve whatever claim it has to Lipitor, including selling the drug at a steep discount (to counter-act the sale of the generic drug at an estimated 80% discount), as well as paying pharmacies to spread the news to its customers about the discount. How Pfizer reacts to losing the patent for the best selling prescription drug of all time will have an impact on how the rest of the pharmaceutical market handles patent expiration.

5. Patently-O: Holiday Gift List for Patent Attorneys and the Like – Although this blog post is from last week, I thought it would be good to share right before the weekend, considering the holiday season is upon us and all types of holiday parties (whether they be office or social) are popping up each week. Patent attorneys deserve cool presents too, and this list is full of great and very different gift ideas. Enjoy!

Do You Have The Right To Sue: Understanding Contract Provisions In The Context Of Litigation

Written by Michael Davitz, Partner at Axinn, Veltrop & Harkrider and Practice Center Contributor, and his associates Josephine Liu and Tara Rahemba.

A patent grants the patentee the right to exclude others from making, using, selling, offering to sell or importing the patented invention into the United States.  35 U.S.C. § 271(a).  It follows that when this right to exclude is violated by an infringer, the “patentee” has the right to bring a “civil action for infringement of [its] patent,” i.e., standing to sue for patent infringement.  35 U.S.C.  § 281.

Recently, the identity of the “patentee” as defined, has been called into question.  The Federal Circuit has made it clear that nuances in the provisions and language used in patent licensing and assignment agreements can be critical in determining whether or not an inventor, licensee or assignee has standing to sue another party for patent infringement.  Slight imperfections or even subtle deviations from what was actually intended or desired by the parties can have a profound impact on their right to sue over the patent.  It is therefore imperative that practitioners are knowledgeable about the effects particular language and provisions have on a standing determination in order to ensure that their clients, whether individual inventors or corporations, licensors or licensees, preserve their right to sue for patent infringement. (more…)

Rocky Mountain IP Conference: Joint Infringement Update

R. David Donoghue, author of Chicago IP Litigation blog and Practice Center Contributor, recently attended the 9th Annual Rocky Mountain IP & Technology Institute.  David will be writing several articles on the highlights from the Institute.  The first two articles  focused on the Judges panel wherein they discussed best practices in intellectual property litigation.  In this article, David discusses Scott Alter‘s (of Faegre & Benson) presentation on joint and divided infringement.

One of the excellent sessions at the conference was Scott Alter’s presentation about the state and history of joint and divided infringement.  Here are some of the highlights:

• BMC v. Paymentech (2007): This case involved method claims directed to separate parties — caller, debit processor & bank. The parties agreed that no single party performed each step. The Federal Circuit said Section 271 required one party to perform every step, unless one defendant played a “mastermind” role. BMC had argued that plaintiff just needed to show participation and combined actions. Court noted that patentee could have drafted the claims to apply to a single entity. (more…)

Global-Tech Appliances, Inc. v. SEB S.A.: Importing criminal law into patent infringement

Tuesday’s Supreme Court decision in the Global-Tech Appliances v. SEB S.A. case set a higher mental state required to show infringement by inducement.  Many in the patent community are contemplating what implications the decision will have on the area of intellectual property? To get you up to speed, Vanessa Perez-Ramos, associate at Birch, Stewart, Kolasch & Birch, sent in this article discussing the key points of the opinion.

Relying on the well-established criminal law doctrine of “willful blindness,” the Court in Global-Tech Appliances, Inc., et al. v. SEB S.A., 563 U.S. _____ (2011), affirmed CAFC’s ruling that Global-Tech was liable for induced patent infringement of SEB’s deep fryer patents under 35 U.S.C. § 271(b).

Pentalpha Enterprises, a Global-Tech subsidiary, purchased an SEB fryer in a foreign market (which fryer unsurprisingly lacked U.S. patent markings) and virtually copied all of the fryer’s features, with the exception of the fryer’s cosmetic elements. Pentalpha hired an attorney to conduct a right-to-use study, but did not inform the attorney that the fryer was a replica of an SEB’s fryer. The attorney failed to locate SEB’s patent, and issued an opinion that Pentalpha’s fryer did not infringe any of the patents found by him. Penthalpa sold the fryers to Sunbeam Products, Inc., and Sunbeam resold them in the U.S. under its own trademarks. After settling a lawsuit against Sunbeam for patent infringement, SEB sued Pentalpha for actively inducing Sunbeam (and others) to sell or offer to sell the fryers at issue in contravention of § 271(b). (more…)

Microsoft v. i4i – Awaiting a Burdensome Decision by the Supreme Court

In the Microsoft Corp. v. i4i, the Supreme Court must determine whether the burden of proof for parties alleging patent invalidity should be changed from a clear and convincing standard to a preponderance of the evidence standard.   Oral arguments took place on April 18, 2011 and the Court’s decision is expected by the end of June 2011.  While we wait for this potentially precedential opinion, Garth M. Dahlen, Ph.D., Partner at Birch, Stewart, Kolasch & Birch, LLP, brings us up to speed with a comprehensive discussion on the history of the case, the oral arguments and possible outcomes.

In the pending case of Microsoft v. i4i, the Supreme Court must decide whether the Federal Circuit’s requirement of clear and convincing evidence is proper for an invalidity defense, even though the prior art relied upon by the Defendant was not considered by the Patent and Trademark Office (PTO).

The oral arguments were heard April 18, 2011. Prior to the oral arguments, the smart money was on Microsoft , but based on comments by the Justices during oral arguments, it is not clear that Microsoft has an advantage going forward. (more…)