Philip Brooks' Patent Infringement Updates

Europe's Landmark Decision on Stem Cell Patents

The following is excerpted from an October 27, 2011 Jones Day Commentary by Niklas Piening, Christian Paul and Martin Weber:

In a landmark decision on October 18, 2011, the highest court of the European Union—the Court of Justice—decided on the patentability of stem-cell-related inventions (case number C-34/10). The dispute arose around the definition of the term "human embryo" in the European Biotechnology Directive. Based upon this decision, the Court will now apply a very broad definition, which will result in nonpatentability and invalidity of many stem-cell-related inventions in Europe. The impact on biotechnology and life sciences innovator companies will be significant.

According to the Court, the definition shall include the fertilized human ovum. Reaching even further, the term shall also include artificial cell types including the ones obtained by cell nucleus transfer from a mature human cell into a nonfertilized human ovum. This technology was used to obtain the clone sheep "Dolly," for instance.

The Court of Justice further ruled that not only is any such—broadly defined—human embryo unpatentable, but also that every invention that requires the prior destruction of a human embryo shall not be the subject of a patent. This also applies to inventions using stem cell lines that resulted from the destruction of a human embryo long before the cell line was employed for the invention.

Read the full commentary here.

Premier Concerned About Impact of Apple's New Patent Victory

The following is excerpted from an October 27, 2011 article in The Central News Agency's Focus Taiwan news channel:

Premier Wu Den-yih directed relevant government agencies Thursday to assess the possible impact on local companies of Apple Inc.'s latest success in winning the "Slide-to-Unlock" patent.

The directive came two days after the United States Patent and Trademark Office granted the U.S.-based consumer electronics giant a patent on its iconic handset's unlocking mechanism -- the now famous Slide-to-Unlock component.

Speaking at a weekly Cabinet meeting, Wu said he is very concerned about the possible adverse effects of Apple's latest patent victory on Taiwanese companies, particularly those in the smartphone and tablet sectors.

Read the full article here.

The Reasonable Royalty Becomes More “Reasonable”

The following is excerpted from an October 25, 2011 article by Eric Lobenfeld, co-head of the U.S. Intellectual Property Practice of Hogan Lovells, published by Inside Counsel:

Responding to increasingly large damages awards based on expert advice grounded more in speculation than fact, the Federal Circuit finally rejected the so-called “25 percent rule,” a rule of thumb used in calculating a reasonable royalty.

The 25 percent rule allowed an expert to opine that the accused infringer would pay a royalty rate equivalent to 25 percent of its profit on the product practicing the patent at issue.

Rejecting the 25 percent rule, courts returned to requiring the full-fledged “hypothetical modeling” approach outlined in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970).

A hypothetical royalty negotiation is modeled between the potential licensee and the patent holder on the assumption that the patent is valid and infringed. The model first defines a bargaining range with the upper end of the range set by the largest amount the potential licensee would willingly pay, but the lower end is pegged to the minimum amount the patent holder can accept.

Read the full article here.

Joint Representation in IP Litigation

Strafford Publications is hosting the above-titled webinar/teleconference on November 30, 2011:

Joint representation in intellectual property litigation can provide the parties with significant benefits, including pooling resources and information and cutting costs. Though the benefits are appealing, the downsides to joint representation must also be considered.

Clients may have diverging interests or disagree on how the matter should be resolved. Joint representation also calls for the sharing of certain privileged information with the other clients in the matter. There is no attorney-client protection privilege between clients within the joint representation.

Counsel must deal with the day-to-day challenges of determining the appropriate legal arguments for the different clients and communicating with the multiple clients. Further, the attorney in the joint representation must manage client confidences while meeting disclosure obligations.

Faculty includes Annie Rogaski, Partner with Kilpatrick Townsend & Stockton. Learn more and register here.

Mylan's Dey Pharma Successfully Obtains Patent Reexamination Certificates for Two Perforomist® Patents

The following is excerpted from an October 20, 2011 Mylan press release available on its website:

Dey Pharma L.P., a subsidiary of Mylan Inc. (Nasdaq: MYL), today confirmed that the U.S. Patent and Trademark Office (PTO) has issued Reexamination Certificates for two patents related to Perforomist® (Formoterol Fumarate) Inhalation Solution 20 mcg/2mL vial thereby confirming the validity of these patents. Sepracor, now known as Sunovion Pharmaceuticals, requested the PTO to re-examine these patents, which now has been completed.

Mylan Chairman and CEO Robert J. Coury commented: "We are pleased that the successful re-examination of these patents is complete as this only further strengthens our confidence in the intellectual property protecting our Perforomist product as well as our combination product currently in development. We are very excited about continuing to build on our brand division, Dey, which is and will continue to be an important growth driver for Mylan."

In addition to the two re-examined and granted patents, Dey owns five other relevant patents, giving it a total of seven U.S. patents which it believes are infringed by Sunovion's Brovana® product. In addition, Dey believes that Teva's Formotorol Fumarate product, which is the subject of an Abbreviated New Drug Application (ANDA) pending before the FDA, infringes several of Dey's U.S. patents. Mylan intends to vigorously defend its intellectual property in the pending patent litigations against Sunovion and Teva. The terms of the patents protecting Perforomist extend into 2021. 

Read the full press release here.

In other Mylan news, on October 19, 2011 it announced it , "has entered into a settlement agreement with Warner Chilcott resolving litigation related to Femcon® Fe Chewable Tablets, known generically as Norethindrone and Ethinyl Estradiol Tablets USP (Chewable), 0.4 mg/0.035 mg and Ferrous Fumarate Tablets USP (Chewable), 75 mg (28-Day Regimen). This medication is an oral contraceptive. Pursuant to the settlement agreement, the pending litigation has been dismissed and Mylan may begin to market and sell a generic version of Femcon Fe upon receipt of final product approval from the U.S. Food and Drug Administration. Additional details of the settlement are confidential, and the agreement itself is subject to review by the U.S. Department of Justice and the Federal Trade Commission."

Median Patent Damages Awarded Hits 16-year Low

The following is excerpted from a PwC press release published on October 18, 2011 by U.S. Politics Today:

Reflecting upon developments currently underway in patent reform legislation, PwC US today released a new report "2011 Patent Litigation Study: Patent litigation trends as the ‘America Invents Act' becomes law" summarizing trends in the patent infringement litigation landscape.  PwC reports that the annual number of patent actions filed has increased at an overall compound annual growth rate (CAGR) of 4.9% since 1991, while annual median damages awarded ranged from $1.8 million to $15.6 million between 1995 and 2010.

PwC maintains a database of patent damages awards, collecting with specificity information about patent holder success rates, time-to-trial statistics, and practicing versus non-practicing entity (NPE) statistics (all from 1995 through 2010).  This year's study adds industry classification and expanded NPE segmentation analyses.

Notable findings include:

• Damages awards for NPEs averaged more than double those for practicing entities over the last five years
• Almost half of the largest damages awards have gone to NPEs; however, these large awards are frequently reversed on appeal, with final results dramatically reduced or eliminated
• The disparity between jury and bench awards continues to widen and is likely the primary contributing factor in the significant increase in use of juries since 1995
• Reasonable royalties remain the predominant measure of patent damages awards
• NPEs have been successful 23% of the time overall versus 33% for practicing entities, with similar success at trial but a relative lack of success for NPEs at summary judgment
• Technology associated with the consumer products industry represents the largest percentage of identified decisions from 1995 through 2010
• While the median time-to-trial has remained fairly constant in recent years (averaging 2.28 years), there are significant variations among jurisdictions
• Certain federal district courts (particularly Virginia Eastern, Delaware, and Texas Eastern) continue to be more favorable to patent holders, with shorter time-to-trial, higher success rates, and higher median damages awards
• Ten federal district courts (of 94 total, i.e. 11%) accounted for 55% of all identified decisions involving an NPE as the patent holder
• Not all NPEs are created equal: While University/Non-profit NPEs have the highest success rate among NPE litigants, their median damages award is considerably lower than the median award of Company NPEs

Read the full press release and access a link to the full PwC report here.

Monsanto to Fight DuPont Lawsuit Over Patent

The following is excerpted from an October 19, 2011 article published at Bloomberg Businessweek:

Monsanto is vowing to fight a patent infringement lawsuit filed this week by DuPont.

DuPont was in federal court in Iowa on Tuesday, alleging that Monsanto used a corn-seed treatment patented by DuPont in the mid-1990s. DuPont included photos that it says shows Monsanto's corn plots were treated with DuPont's patented spray techniques. Monsanto grows its own corn as a source of seed, and as a way to experiment with new seed traits.

Monsanto denied those charges Wednesday.

Read the full article here.

ITC Judge Finds Apple Did Not Violate Four HTC Patents

The following is excerpted from an October 17, 2011 article by Katie Marsal published by the Apple Insider:

The preliminary decision found that Apple was not in violation of four patents related to power management and phone dialing, according to Reuters. The full commission will decide to uphold or reject the judge's decision on February 17.
 
The complaint stems from May of 2010, when HTC filed its lawsuit with the ITC and asked for the commission to ban the importation of iPhone, iPad and iPod products into America. Judge Charles Bullock found that HTC's patents were valid, but Apple was not in violation.

Read the full article here.

Cascades Computer Innovation Files Patent Infringement Case Against Acer

On October 12, 2011, Raymond P. Niro, Arthur A. Gasey and Paul C. Gibbons of Niro, Haller & Niro filed a patent infringement case against Acer America Corp. on behalf of its client, Cascades Computer Innovation, LLC in U.S. District Court for the Northern District of Illinois, Eastern Division:

On June 20, 2006, United States Patent No. 7,065,750 (the "'750 patent"),entitled "Method and Apparatus for Preserving Precise Exceptions in Binary Translated Code," was duly and legally issued by the United States Patent and Trademark Office. Cascades owns the exclusive license and right to sue for past, present and future infringement of the '750 patent.

Acer is now and has been infringing and/or contributorily infringing the'750 patent, literally and under the doctrine of equivalents, by, among other things, using, offering to sell, selling, re-selling and/or receiving imported products from its parent, Acer, Inc., that infringe one or more claims of the '750 patent. Such infringing products include, but are not limited to, cell phone products such as Liquid E Ferrari and ICONIA SMART Smartphones and the Acer Iconia Tab A500 tablet computer.

See the full complaint and patent at PriorSmart.

Pfizer Settles with Teva Over Generic Lipitor in UK

The following item appeared on October 11, 2011 at Device Space:

Pfizer Inc. announced today that the company has settled its patent-infringement case against Teva and several other parties in respect of Teva's generic form of Lipitor in the U.K. Under the terms of the settlement agreement Teva and the other settling parties agree not to sell Teva's atorvastatin product in the U.K. before patent expiry in May of 2012. Teva acknowledges that Pfizer's Lipitor patent is valid and infringed by Teva's product. Other terms of the settlement remain confidential.

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