Happy Anniversary to US!!

This week marks one year since we launched the Patent Law Practice Center and we couldn’t be happier with the reception that our little project has received from law firms, blogs, news media and others!!  In an effort to keep striving to improve the PLPC, we have prepared a (very short) survey for our readers.  We promise this will only take a minute or two and your feedback will be greatly appreciated.

Thank you for tuning in over the past year and for your feedback!!

TAKE OUR SURVEY HERE

TiVo Attack On Four Verizon Patents Among Reexamination Requests Filed Week Of 5/30/11

Here is the latest installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

On Thursday, TiVo requested reexamination of three Verizon cable box patents, and on Friday, of a fourth Verizon patent (see ex parteRequest Nos. (9) through (12)).  These requests are only the latest development in an on-going patent war between the two companies that includes fronts at the ITC and in two District Courts.

Reexamination was requested for SynQor’s U.S. Patent No. 7,272,021 for power converters (see inter partes Request No. (1)).  In January, Judge Ward enjoined Artesyn/Astec and a series of other companies from infringing four SynQor patents, among them the ‘021 patent.  It is not yet clear from the PTO records who filed the request.

And Abbott Diabetes Care requested reexamination of three DexComanalyte-sensor devices in the long-term patent dispute between the companies (see ex parte Request Nos. (4), (5) & (6)). Read the rest of this entry »

Gene Quinn on the Supreme Court’s Stanford v. Roche Decision

Big news for the technology transfer world…. earlier today, the Supreme Court issued it’s decision in Stanford v. Roche. The issue in the case was, in the context of federally funded research, the ownership of the invention first arises with the federal contractor (i.e., Stanford) or with the inventor under the Bayh-Dole Act 35 U.S.C. §§ 200-212 and whether the inventor can interfere with that right by assigning the invention to a third party.  Gene Quinn, of IPWatchdog and Practice Center Contributor, passed along this article summarizing the opinion and what lasting consequences, if any, it will have on the patent community.

This morning the United States Supreme Court issued its decision in Stanford v. Roche, a decision that has been much anticipated in the technology transfer world.  Technology transfer is the front line for the interfacing of University research and private sector commercialization, so it is no great wonder that this case captured the attention of academia and the private sector alike. At issue in the case was whether the Bayh-Dole Act automatically vested ownership of patent rights in Universities when the underlying research was federally funded.

It is not at all an exaggeration to say that Bayh-Dole is one of the most successful pieces of domestic legislation ever enacted into law. The Bayh-Dole Act, which was enacted on December 12, 1980, was revolutionary in its outside-the-box thinking, creating an entirely new way to conceptualize the innovation to marketplace cycle. It has lead to the creation of 7,000 new businesses based on the research conducted at U.S. Universities. Prior to the enactment of Bayh-Dole there was virtually no federally funded University technology licensed to the private sector, no new businesses and virtually no revolutionary University innovations making it to the public. Bayh-Dole set out to remedy this situation, and as a direct result of the passage of Bayh-Dole countless technologies have been commercialized, including many life saving cures and treatments for a variety of diseases and afflictions. In fact, the Economist in 2002 called Bayh-Dole the most inspired and successful legislation over the previous half-century. Nevertheless, the question remained, at least until this morning, whether ownership of patent rights immediately vested in the University as the result of federal funding.

Click here to read Gene Quinn’s full publication.

Judicial Panel: Best Practices in IP Litigation (Part 1)

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 discussing highlights from the Institute.  In the first of the series, David focuses on the Judges panel wherein they discussed best practices in intellectual property litigation.

One of the highlights of the Institute was a panel of sitting and retired federal judges sharing their views on intellectual property litigation, with a focus upon patent litigation. What follows is the beginning of the highlights. There was simply too much information to digest it in a single post. So, this post begins with the thoughts from Judge Philip Brimmer (D. Col.) and retired Judge James Rosenbaum (D. Minn.). In an upcoming post, I will provide the highlights of the thoughts from the two other panelists, Magistrate Judge Boland (D. Col.) and retired Judge McKelvie (D. Del.). Read the rest of this entry »

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). Read the rest of this entry »