Philip Brooks' Patent Infringement Updates

B. Braun Medical Sues CareFusion for Patent Infringement

The following is excerpted from an August 30, 2011 B.Braun press release published by PR Newswire:

B. Braun Medical Inc. (B. Braun) late yesterday filed a multi-count patent infringement suit against its competitor, CareFusion 303, Inc. (CareFusion). The case involves CareFusion's Alaris® System infusion pumps and smart medication systems.

Five B. Braun patents are being asserted in the lawsuit, which was filed in the United States District Court for the Northern District of Illinois located in Chicago. The asserted B. Braun patents are United States Patent No. 7,236,936 B2, entitled "Security Infusion Pump With Bar Code Reader" issued June 26, 2007; United States Patent No. 6,519,569 B1, entitled "Security Infusion Pump With Bar Code Reader" issued February 11, 2003; United States Patent No. 6,790,198 B1, entitled "Patient Medication IV Delivery Pump with Wireless Communication To A Hospital Information Management System"; United States Patent No. 7,645,258 B2, entitled "Patient Medication IV Delivery Pump with Wireless Communication To A Hospital Information Management System"; and United States Patent No. 7,933,780, entitled "Method and Apparatus for Controlling An Infusion Pump and the Like" issued April 26, 2011.

The CareFusion infringing products include CareFusion's Alaris® System 8000, specifically, the Alaris® Auto ID and Mobile Systems Manager modules in CareFusion's smart medication system product line. Gale White, B. Braun's Vice President of Infusion Systems Division, said, "This lawsuit was necessary to protect B. Braun's highly valuable technology and patent rights."

Read the full press release here.

Ex Parte Reexamination Filings on Record Pace

According to the United States Patent and Trademark Office's report on Ex Parte Reexamination filings year to date through June 30, 2011, there have been 581 filings compared to the 780 for all of 2010.  Last year was the highest number of such filings since these statistics have been recorded in 1981.  See figure below:

 
The full report is available here.

Star Scientific Denied New Trial

The following is excerpted from an August 29, 2011 article at CSP:

An appeals court on Friday denied tobacco-products company Star Scientific Inc.'s patent infringement claims against Reynolds American Inc. and its motion for a new trial in a case involving lawsuits filed in 2001 and 2002, affirming a lower court ruling.

Shares of Star Scientific closed down 40% to $1.81, while Reynolds American ended the day up 0.9% to $36.57, according to a report in the Wall Street Journal.

The ruling by the U.S. Court of Appeals is a blow to Star Scientific, which had sought to reverse a jury verdict that ruled in favor of R.J. Reynolds Tobacco Co., a unit of Reynolds American.

"We are gratified that the Federal Circuit Court of Appeals has affirmed the validity of the patents at issue in our prosecution of patent infringement against R.J. Reynolds,” Star Scientific said in a statement. “The court specifically rejected each of the four invalidity defenses raised by RJR, and the panel also reversed the district court's 2007 summary judgment ruling on priority date: the panel affirmed that the patents' claims deserve the September, 1998 priority date as originally claimed. We nonetheless are disappointed that the Federal Circuit did not reverse the jury trial verdict of noninfringement.”

Read the full article here.

Technology Licensing Corporation Files Video Display Monitor Patent Infringement Suit

On August 25, 2011, Technology Licensing Corporation (TLC) filed a patent infringement lawsuit against Westinghouse Digital, Asus and ASUSTek in U.S. District Court in the Northern District of Illinois's Eastern Division. PriorSmart posted the complaint at Scribd from which the following is excerpted:

In this action for patent infringement, Plaintiff Technology Licensing Corporation (“TLC”) complains of Westinghouse Digital, LLC. ("Westinghouse"), Asus Computer International ("Asus Int’l”), and ASUSTeK Computer, Inc. ("ASUSTeK"), (collectively, "Defendants")...

Upon information and belief, Westinghouse has made, used, offered for sale, sold, and/or imported products which possess video processing technology and methods, including but not limited to Directional Correctional Interlacing (“DCDi”) on models including, but not limited to LVM-37w1, LVM-37w3, LVM-42w2. (“Westinghouse Devices”). These acts by Westinghouse have directly infringed at least independent method claim 1 of the ‘964 Patent within the meaning of 35 U.S.C. §271(a).

WHEREFORE, TLC respectfully requests this Court enter judgment against each Defendant, and against their subsidiaries, successors, parents, affiliates, officers, directors, agents, servants, employees, and all persons in active concert or participation with them, as follows:

A. The entry of final judgment in favor of TLC.
B. An award to TLC of such damages as it shall prove at trial against Defendants Westinghouse, Asus International, and ASUSTeK that is adequate to compensate for their infringement of the '964, ‘929, and ‘851 Patents, said damages to be no less than a reasonable royalty, together with prejudgment interest from the date infringement of the ‘964, ‘929, and ‘851 Patents began;
C. A determination that this case is exceptional pursuant to 35 U.S.C. § 285 and an award to TLC of the costs of this action and its reasonable attorneys’ fees...

Read the full complaint here.

Generic Candesartan Launch Opportunity - Prodrug Patent Expiration in 2012

The following is excerpted from an August 23, 2011 GenericsWeb press release:

GenericsWeb, the leader in established pharmaceutical patent analysis and searching, recently published an article based on its proprietary Pipeline Patent Intelligence that analyses opportunities in launching generic versions of Atacand® (Candesartan cilexetil). Marketed by AstraZeneca and Takeda, Candesartan cilexetil is indicated for the treatment of hypertension and heart failure, with sales of US $1.5bn in 2010. Candesartan cilexetil is currently available in oral tablet formulations and in oral tablet fixed dose formulations in combination with Hydrochlorothiazide (Atacand HCT®).

The article by GenericsWeb highlights the following observations in relation to generic Candesartan:

• Patent protection of the candesartan cilexetil prodrug molecule remains in force in Europe via Supplementary Protection Certificates and national patent extensions in other major territories until 2012-2013.
• Patent protection has expired in Canada and generics are available from Apotex, Sandoz and Teva, and generics have been identified in Australia despite the extended molecule patent remaining in force.
• In all major territories where Candesartan has been marketed, the data and marketing exclusivity have already expired thus are not a factor for generic competition.
• Patents protecting the combination product with Hydrochlorothiazide (HCTZ) are identified in Canada, Europe and the US; however the granted European equivalent has recently been revoked and the Canadian patent is undergoing litigation.
• In the US, tentative FDA approvals for generic Atacand have been granted and several Paragraph IV filings have been identified relating generic Atacand and Atacand HCT.
• Generic companies KRKA and Teva appear in the top five applicants for patents relating to Candesartan.
• Since the initial and on-going approvals of Atacand HCT, several generic companies have submitting patent filings relating to combination products and their various uses.

GenericsWeb notes that: “Currently a barrier to generic competition, the expiry of the prodrug molecule patents in 2012 in Europe and the US means that generic competition to Candesartan is likely to be very strong, evidenced by the fact that generic Candesartan appeared in Canada only days after the expiry of the Canadian molecule patent.”

Generic combinations of Candesartan cilexetil and HCTZ may be prevented until 2014; however this will depend on the outcome of litigation in Canada, which is currently on-going. Since the revocation of the equivalent European patent, the outcome of new pending European applications concerning the combination is of great importance when considering generic Atacand HCT, as these are unlikely to proceed unopposed by major generic manufacturers.”

You can read the entire article here.

Intas Pharmaceuticals Settles USITC Section 337 Investigation

The following is excerpted from an email alert from H. Keeto Sabharwal and Daniel E. Yonan of Sterne, Kessler, Goldstein & Fox regarding the above investigation over the non-Orange Book process patent for Gemcitabine:

Investigation No. 337-TA-766 entitled Certain Gemcitabine and Products Containing Same included a complainant not frequently before the Commission -- innovator pharmaceutical company Eli Lilly and Company. Lilly, through its complaint, requested the exclusion of generic versions of its popular anti-cancer drug Gemzar©. Specifically, Lilly alleged that a number of respondents, including SKGF client Intas Pharmaceuticals Ltd., manufactured abroad, and subsequently imported and sold within the United States, generic versions of Gemzar© that were allegedly made by using Lilly’s patented process technology.

Lilly filed its complaint at the Commission after its Orange Book listed patents on Gemzar© had expired or were declared invalid by the Court of Appeals for the Federal Circuit. Despite a lengthy pre-institution process where the Commission questioned whether Lilly’s allegations were pled with particularity, the Commission instituted the investigation in March 2011. The Administrative Law Judge established a 16-month target date, and the parties underwent extensive fact discovery. Before the fact discovery was completed, however, the parties motioned to terminate the investigation on the basis of a settlement agreement. Administrative Law Judge Rodgers ordered the termination of the investigation on August 16, 2011.

Although the terms of the settlement remain confidential, 337-TA-766 represents one of the few attempts by an innovator to use the Commission to protect revenue streams on key pharmaceutical drugs experiencing generic drug competition after litigation on the Orange Book listed patents has ended. Unlike the wave of smartphone and mechanical-based technology proceedings currently before the Commission, innovator pharmaceutical-based Section 337 investigations have only constituted about 2.5% of all investigations instituted since 1976. Further development of this trend could lead to new investigations with a new technology discipline requiring generic drug manufactures [sic] to more closely evaluate innovator non-Orange Book patent portfolios.

For a more detailed look at the issues behind this matter, read "Big Pharma and Section 337: The Next Frontier for Enforcement of Non-Orange Book Listed Pharmaceutical Drug Patents," published in BNA's Pharmaceutical Law and Industry Report.

Information Forum on Pending U.S Patent Law Overhaul

The above-titled Forum is sponsored by the National Small Business Association and the Washington, D.C., Northern Virginia and Baltimore Sections of the Institute of Electrical and Electronics Engineers (IEEE). The Forum will focus on the impact on patenting practice, patent protection, and on science and engineering jobs.

The following is excerpted from the Angel Venture Forum's email invitation to this event:

As major changes in U.S. patent law are adopted, a radical shift in the landscape for the process of seeking and obtaining patent protection for innovations is taking place.

Recent mega-acquisitions of patent portfolios with unprecedented valuations by large multinational corporations underscore a trend wherein a growing share of U.S. patents are owned by a few large multinational corporations.

On March 8, 2011, the Senate overwhelmingly passed the S. 23 that would make fundamental adverse changes to a 220 year old patent system that has made the United States the world leader in generating new inventions and fueling start-up companies that historically have been the greatest engines of job creation. On April 14, 2011, the House Judiciary Committee sent a version of H.R. 1249 to the House which mirrors S. 23 and it passed the House in June, 2011.

This legislation, touted as exemplars of "patent reform" and "harmonization" was passed with with little to no input from small business and individual inventors and a lot of input from large multinational corporations.

H.R. 1249 is scheduled for a vote in the the Senate in early September. Please take the time to learn how this will change the landscape for start-ups thinking they can rely on patents.

SPEAKERS & PANELISTS:

Paul Michel, Chief Judge (retired) of the U.S. Court of Appeals for the Federal Circuit which is the highest court specializing in patent law and from an official from the U.S. Patent and Trademark Office.

John Duffy, University of Virginia School of Law

Valerie Gaydos, Angel Investor, Angel Venture Forum

Ron Hira, Rochester Institute of Technology, co-author of "Outsourcing America"

Ron Katznelson, Entrepreneur-inventor and President of Bi-Level Technologies

Henry Nothhaft, Serial Entrepreneur and Author of "Great Again"

Herbert Schwartz, Patent litigator and author of "Patent Law and Practice," a book used by all federal judges.

DATE & TIME: Monday, August 29, 2011; 1:00 PM - 4:30 PM

LOCATION:

UC Washington Center
1608 Rhode Island Ave. NW
Washington, D.C. 20036

There is no cost to attend this forum. Registration deadline is August 26. Register here.

Cook Medical Remains Resolute in Pursuit of Infringement Action Against Endologix Following Markman Ruling

The following is excerpted from an August 18, 2011 Cook Medical press release published at Business Wire:

Cook Incorporated, a global leader in endovascular technologies, announced today that Judge Tanya Walton Pratt of the United States District Court for the Southern District of Indiana in Indianapolis has issued a Markman ruling in the ongoing patent infringement lawsuit filed against Endologix (Nasdaq: ELGX). The majority of constructions adopted by the Judge favored Cook’s proposed constructions.

“Cook has never wavered in the protection of its extensive patent portfolio,” said Cook general counsel Cynthia Kretz. “We will move forward as swiftly as possible to obtain all available remedies based on Endologix’ infringement of our two patents.”

The two patents in suit are Cook's U.S. Patent 5,755,777 and 5,035,706. The '777 Patent “Expandable Transluminal Graft Prosthesis for Repair of Aneurysm” was granted on May 26, 1998. The '706 Patent “Percutaneous Stent and Method of Retrieval Thereof” was granted on July 30, 1991.

Read the full press release here.

Intellectual Property Owners Association Annual Meeting - September 11-13, 2011

The following is excerpted from the invitation by Douglas K. Norman, IPO President, in the program brochure:

It is my pleasure to invite you to the 2011 IPO Annual Meeting at the JW Marriott in Los Angeles, California. The program committee, chaired by Charles M. Kinzig, GlaxoSmithKline, and vice chaired by Bart Eppenauer, Microsoft Corp., and Dee Ann Weldon-Wilson, Exxon Mobil Corp, have created an excellent event.

The Los Angeles IPO Annual Meeting offers a mix of educational programs, committee meetings, networking opportunities and exhibits. Renew acquaintances and make new friends by attending the Monday Reception & Dinner at Paramount Studios, one of the worlds’ largest and busiest production facilities.

We are pleased to have Chad Deaton, CEO of Baker Hughes, Inc., as Monday’s luncheon speaker. Tuesday’s luncheon speaker will be James Pooley, Deputy Director General for Patents at the World Intellectual Property Organization. Concurrent parallel sessions on Patent and Trademark topics are offered throughout the meeting, including Ethics presentations for both patent and trademark attorneys.

This year, IPO is offering an additional, one-day CLE conference on “Compulsory Licensing as an Emerging Global IP Issue.” This program will take place on September 14 at the JW Marriott, the day after the Annual Meeting.

Learn more and register here.

Intellectual Property Proceedings in Canadian Federal Court for 2011

The following is from Alan Macek's [Dimock Stratton LLP] IPPractice.ca blog on Canadian intellectual property:

Many of the intellectual properties proceedings in Canada are litigated in the Federal Court and Federal Court of Appeal. I have created the following list of proceedings based on listings provided by the Federal Courts website.

The Federal Court identifies the ‘type’ of proceeding (such as ‘Patent Infringement’) which can be used to identify IP proceedings but this is often incomplete because some PM(NOC) applications are coded as generic Judicial Reviews rather than as specifically IP. I have attempted to compensate for this by creating my own list of frequent PM(NOC) litigants and flagging those as IP regardless of the Federal Courts listing.

Three tables generated on August 16, 2011 are included:

1. Number of proceedings by type
2. List of Federal Court proceedings
3. List of Federal Court of Appeal proceedings

The first table shows that 18.6% of the Federal Court proceedings, year-to-date, are intellectual property related. Of these, 9.4% are identified as patent infringement. The largest two categories are trademark infringement and copyright infringement with 36.7% and 17.6%, respectively. See the complete tables here.