Patent Law Practice Center

Attack On Famous Funai Digital TV Patent Among Reexamination Requests Filed Week Of January 3rd

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

Funai’s U.S. Patent No. 5,329,369 for digital television picture compression has been the subject of three District Court cases and an ITC investigation.  In October, the PTO Board of Appeals ruled in a reexamination proceeding that claims 1-18 were invalid over the prior art.  Now, a third party has requested reexamination of the remaining ‘369 patent claims 19-29 for a video signal processor (see ex parte Request No. (8)).

Apple requested reexamination of MedioStream’s U.S. Patent No. 7,843,508 (see inter partes Request No. (4)), in response to MedioStream’s infringement action against Apple, Microsoft and others.

The following inter partes requests were filed:

(1)       95/001,518 (electronically filed) – U.S. Patent No. 7,037,321 entitled MEDICAL DEVICE WITH SLOTTED MEMORY METAL TUBE and owned by EVM Systems, LLC. Filed January 5, 2011, by.  The ‘321 patent is currently the subject of a litigation styled EVM Systems, LLC v. Cordis Corp. et al., (Case No. 6:10-cv-00437 (E.D. Tex.)). (more…)

RCT v. Microsoft – Fed. Cir. Attempts to Shift Focus Away from MOT Test

The following post comes from Clement S. Roberts (Partner at Durie Tangri and Practice Center Contributor).

On December 8 the Federal Circuit issued its first post-Bilski opinion on patentable subject matter when it decided Research Corporation Technologies Inc. v. Microsoft .

In RCT the court was asked whether RCT’s patents on digital image halftoning were directed to patentable subject matter.  Digital image halftoning is a technique for displaying tones (either shades of grey or colors) that lie between those that a monitor or printer can natively produce by creating a matrix of dots that blur together when viewed from a distance.  The patent was directed to a method for creating a halftoned image using a mask (essentially a series of prearranged dots of known values which can be compared to the pixels in a given image) and, in particular, for creating an improved mask through the use of a particular kind of mathematical operation.  For example, claim 1 of one of the two relevant patents called for:

A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue notice mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images. (more…)

Microsoft v. i4i: Amici Make Strong Argument for Supreme Court Review of Patent Invalidity Standard

The following post comes from one of our newest Practice Center Contributor’s Clement S. Roberts.  Mr. Roberts is a founding partner at Durie Tangri where his practice focuses on intellectual property litigation and on complex commercial cases with a high-technology component.

A broad spectrum of academics and industry lined up Friday to support Microsoft’s request for Supreme Court review of its ongoing patent litigation against i4i.  In the underlying litigation, i4i won a pile of money on a patent dealing with the idea of separately storing metacodes and text in a markup language document.    While the litigation has an interesting factual history, the issue on appeal is a purely legal one – namely the application of the “clear and convincing evidence” standard to questions of invalidity.

As most people reading this blog already know, in order to invalidate a patent, a defendant must prove that the patent is invalid by “clear and convincing” evidence.  Ostensibly, this rule exists in order to reflect deference to the fact that the patent has been examined and found valid by an expert at the Patent and Trademark Office.    See e.g. American Hoist & Derrick co. v. Sowa & Sons, Inc, 725 F.2d 1350 at 1359 (Fed. Cir. 1984) (taking note of “the deference that is due to a qualified government agency presumed to have properly done its job.”).

Especially when taken together, however, the amicus briefs in Microsoft v. i4i overwhelmingly show that this is an exceptionally bad rule – at least when applied (as it is now) to all questions of invalidity. (more…)

Post-Bilski: “Patent Strategy for Personalized Medicine”

Today’s guest post comes from Michael J. Shuster, Ph.D. (a partner in Fenwick & West’s Intellectual Property group and co-chair of  the lifes sciences group) and Pauline Farmer-Koppenol (associate in Fenwick & West’s intellectual property group).

Protecting inventions in personalized medicine with patents is essential to making the investment in research and development of those inventions worthwhile.  Absent meaningful patent protection, however, companies will be less likely to pursue such innovation since there is nothing to prevent competitors from free-riding on the back of the many hours and millions of dollars expended by the innovator company.

Personalized medicine diagnostics can produce meaningful improvements in patient outcome and medical economics.  Diagnostic innovations developed by University of California Professors Dan Pinkel and Joe Gray allowed for the first time sensitive and accurate measures of gene amplifications in breast cancer patient biopsies. This allows physicians to determine whether Herceptin® (trastuzumab) treatment is likely to improve the patient’s outcome because only tumors with the amplification respond to Herceptin®.  Pinkel and Gray’s remarkable invention was exclusively licensed to Abbot Laboratories which devoted years of effort and millions of dollars to bring this innovation to market.  Considering the cost of a full course of treatment with Herceptin®, approximately $70,000, the development of the HER2/neu amplification diagnostic test is valuable not only in minimizing the use of an expensive treatment for patients for whom it is unlikely to provide benefit, but it also helps patients by not wasting valuable time pursuing a treatment that is unlikely to be beneficial. (more…)

Baker & Daniels on the Ring Plus v. Cingular Wireless Federal Circuit Decision

Baker & Daniels’ Trevor Carter, a Practice Center Contributor, recently passed along this article that he co-authored with colleague Andrew McCoy on the August 6^th Federal Circuit decision, Ring Plus, Inc. v. Cingular Wireless Corp., 09-1537.

In Ring Plus, Inc. v. Cingular Wireless Corp., No. 2009-1537 (Fed. Cir. Aug. 6, 2010), the Federal Circuit reversed a final judgment of inequitable conduct and found that the prosecuting attorney of U.S. Patent No. 7,006,608 (“the ‘608 Patent”) did not intend to deceive the PTO.

While we do not believe this article is biased, we note that we are counsel in a pending Federal Circuit appeal involving inequitable conduct.  See, Joovy LLC v. Target Corp., No. 2010-1323 (Fed. Cir.)  We represent Target and were successful in obtaining a final judgment of unenforceability due to inequitable conduct at the district court. (more…)