Philip Brooks' Patent Infringement Updates

Press Conference on IPR Protection 2007 Held in Beijing

On May 8, 2008 a press release from the International Sports Movement was available at Sports Features Communications.  The following is excerpted from that release:

Beijing Intellectual Property Working Conference and the Information Office of the Municipal Government jointly held a press conference on IPR protection 2007 at the Beijing Olympics Press Center.

Principals from the municipal IP Office, Press and Publication Administration, Administration for Industry and Commerce, High People’s Court, Customs and Cultural Enforcement Team presented at the annual event. 

By employing multiple tools in policies, government guidance and coordination, the municipality elevated the public’s awareness of IPR, fine-tuned its administration system and upgraded its promotion and protection standard, vaulting IPR protection in the nation’s capital to another height. 

Intellectual property filing activity across the board registered another record high year in 2007.  Patent applications exceeded 30,000 for the first time, racing to 31,680, up 19.3%.  Invention applications mounted to 18,763 (59.2% of all patent applications), ranking No.1 in the nation.  Trademark applications reached 51,383 while 14,893 trademarks were registered.  There were 295 newly added citywide effective famous marks, 99 marks with the title Beijing famous brand, 61 with China famous brand and 57 with China well-known marks. In terms of copyright, 110,573 works registered voluntarily and 3,334 software works registered, both ranking No.1 in the nation.  Copyright registrations were also proceeded for medal design, ticketing service label, torch design and torch relay slogan of the Beijing 2008 Olympics as well as icons of the Paralympics. 

The press conference is the fifth time the municipal government releases complete information of its IPR protection efforts to the public in the city.

Read the full release here.

Chinese Firms Triumph in U.S. Battery Suit

The following China Daily item appeared in the May 6, 2008 issue of China View:

A U.S. court's decision to shoot down the patent infringement claims of a U.S. battery maker has ended a lengthy case against Chinese battery manufacturers and marks the first victory of Chinese enterprises in trade disputes such as this.

"It lasted five years and cost millions of dollars," the China Battery Industry Association said in a press release yesterday, "but the victory marks a perfect ending."      

Experts said the win will put Chinese battery enterprises in a better position to tap overseas markets, the United States in particular, which have seen an annual twofold increase in recent years.

According to Wang Jingzhong, spokesman for the association, battery from China costs only half that of the local ones in the US.

Energizer Holdings, the second largest battery maker in the U.S., in 2003 filed complaints against more than 20 companies, including nine Chinese manufacturers, claiming they had infringed on Eveready's zero-mercury-added patent.

According to an announcement by Hogan & Hartson, the law firm that helped Chinese enterprises with the case, the patent claims were unfounded.

The U.S. Court of Federal Appeals for the Federal Circuit in late April affirmed a previous ruling by the US International Trade Commission (ITC) that Energizer's claim was not valid. It is the final decision on the case since this was the second time Energizer appealed.

Energizer used to ask Chinese manufacturers for $1 million as patent fees plus 2 to 3 cents on each battery sold. "That was unacceptable since we earn only 1 cent on each battery," said Wang from the association.

Read the full article here.

Sidley Announces Settlement of Patent Infringement Claims Against Fourth LED Manufacturer

The following is excerpted from Sidley Austin's May 6, 2008 press release:

Sidley Austin LLP announced today that firm client Professor Gertrude Neumark Rothschild has settled her patent infringement claims against Epistar Corporation, a Taiwanese corporation. The terms of the settlement are undisclosed. The Sidley team consisted of James D. Zirin and Ashe Puri, partner and associate respectively. Peter Toren of Kasowitz, Benson, Torres & Friedman LLP served as co-counsel. Professor Neumark had previously settled patent infringement claims against Toyoda Gosei, a Japanese entity, Osram, a German corporation, and against Philips Lumileds this past May for an undisclosed settlement.

Professor Neumark had alleged that Epistar had infringed U.S. Patent No. 4,904,618, “Process for Doping Crystals of Wide Band Gap Semiconductors,” and U.S. Patent No. 5,252,499, “Wide Band-Gap Semiconductors Having Low Bipolar Resistivity and Method of Formation” through the unauthorized manufacture, importation, use, sale and/or offer for sale of light emitting diodes (“LEDs”) and laser diode created using the processes described and claimed in each of these patents.

Despite the recognized potential of LEDs, their commercial use was initially limited because it was not commercially feasible to produce LEDs in blue, green and other high spectral ranges. Through the process claimed in Professor Neumark’s patents, it has become commercially feasible to produce such LEDs, and they have increasingly gained general acceptance as a superior lighting source.

Read the full press release here.

Managing the Dragon

Dan Fitzpatrick writes in the March 30, 2008 print issue of the Pittsburgh Post-Gazette:

Before venturing halfway around the world to become the businessman known as "Mr. China," Jack Perkowski was a North Catholic High School student seen hitching rides along Routes 28 and 8, up Dorseyville Road and past Meinert's Farm in O'Hara.

On a recent visit back, the barrel-chested, silver-haired Mr. Perkowski is dressed in dark suit, blue shirt and red tie, home to give a few speeches, talk to some students, make a few TV appearances and promote the release of his first book, "Managing The Dragon."

...the 59-year-old acknowledges how improbable it was that a descendant of immigrant steelworkers could make it to Yale University, then to Harvard Business School and the pinnacle of Wall Street before betting everything at age 42 on China -- by no means a sure thing in 1991, two years after the protests and shootings in Beijing's Tiananmen Square.

Despite an array of obstacles and near-failures, he did what few Westerners can claim -- the building of a profitable company from the ground up inside the world's largest Communist nation. Beijing-based ASIMCO Technologies now employs 12,000 and books more than $500 million in sales. Nearly all of Mr. Perkowski's employees are Chinese and 85 percent of his diesel fuel injection systems, piston rings, starters, alternators, air compressors, brake products and castings are sold within China, via 17 manufacturing plants and 52 sales offices.

While many books have been written about China's rise, about the opportunities provided by its transition to Western-style capitalism and population of 1.3 billion, Mr. Perkowski claims his is the first from a person who has truly lived the life, day to day. The book and a blog (Managing the Dragon) are part of Mr. Perkowski's plan to turn himself into a "franchise" on the issue of doing business in China, making him available to explain the country to anybody who's interested.

He claims there are only two rules for doing business inside China: that "everything is possible" and "nothing is easy." To succeed, he said, is to build a strong management team; this, in fact, is Mr. Perkowski's central point: "There's no way around it," he writes.

Read the full article here.

Obviousness Under Chinese Patent Law

A paper with this title was written by Santa Clara Law student Xin Ma for an Advanced IP Research class and was published by the Tech LawForum, sponsored by the High Tech Law Institute at Santa Clara Law School, on February 20, 2008.

Executive Summary

Current Chinese Patent Law requires “inventiveness,” a concept similar to the Unites States’ requirement that a patent’s subject matter be non-obvious. One difference between the two requirements is that the Chinese standard is lower, in that the definitions of prior art and “ordinary skill in the art” make it harder in China to invalidate a patent application. Also, there is no “motivation from market force” factor in Chinese Patent Law, nor indication that Chinese Patent Law will adopt such a factor in the future for the purpose of invalidating a patent for being obvious.

The gap between the Chinese Patent Law and the United States patent law will therefore widen after KSR v. Teleflex, unless the next amendment to the Chinese Patent Law, due 2008, adopts some significant changes.

Download the paper here.

Waves of Changes in Chinese Patent Law and Regulations

The final section of a four-week series appeared in ChinaBio Today on January 31, 2008. The article was prepared by Charles C. Liu, PhD, JD, Partner, Director of US Practice, Unitalen Attorneys at Law, and Jeanne J. Liu. It was originally published in China Intellectual Property, 20:44-51 (2007).

The fourth section states, in part:

INTRODUCTION

The Chinese Patent Law, since its enactment on March 12, 1984 (effective April 1, 1985) was previously revised on September 4, 1992 (effective January 1, 1993) and on August 25, 2000 (effective July 1, 2001). The draft of the third revision of the Patent Law (“Patent Law (Draft Revision 2006)”) is expected to be finalized in 2008 after the current 2000 version has been effective for eight years.

The draft of the third revision was released for comments on July 31, 2006 by the State Intellectual Property Office (“SIPO”) and was further revised and submitted as a draft for review to the Judicial Committee of the State Council on December 27, 2006. It should be pointed out that the SIPO released its revised administrative guidelines, i.e., the Patent Examination Guidelines (“Examination Guidelines (Revised 2006)”) on July 1, 2006. Also, a revision of the Implementing Rules of the Patent Law (“Patent Rules”) is expected to follow this revision of the Patent Law. Task forces were set up earlier this year to conduct research and to prepare an initial draft for the third revision of the Patent Rules.

PATENT MISUSE AND UNFAITHFUL PROCEEDINGS

To protect the legitimate interests of the public, the Patent Law (Draft Revision 2006) adopts provisions on prior art defense and malicious prosecution. For the prior art defense, the draft states that in a judicial or administrative proceeding for patent infringement if the defendant can forward sufficient evidence showing that the patented subject matter falls within the scope of the prior art, the defendant’s conduct shall be held as not constituting infringement.

The draft further provides that where a patent owner knew that his patented art belongs to a prior art, but nevertheless unfaithfully brought an action against another party in an administrative or judicial proceeding for patent infringement, the patent owner will be held liable to the alleged infringer for damages caused by the unfaithful accusation.

Addressing the issue of unfaithful proceedings, the draft also provides that if a patent owner, through his conduct, expression or silence, caused another party who practices the patented invention to reasonably believe that the patent owner was not and would not claim the patent rights, but the patent owner later brought an action against the other party before a court or patent administration, the patent owner’s claim will be deemed as against the principle of faithfulness and honesty. Thus, the patent owner will be held to have no right for compensation for the period prior to the date of the action and not have the right to ask the court or patent administration to order the other party to cease practicing the invention.

Access the four-part series here.

Intellectual Property: The China Threat Teleconference

The Legal Publishing Group of Strafford Publications is hosting a two-part teleconference:

Part 1 – Essential Preemptive Steps to Protect IP Rights
(Tuesday, February 19, 2008, 1:00-2:30 pm Eastern)

Part 2 – Strategies for Policing and Enforcing IP Rights
(Tuesday, February 26, 2008, 1:00-2:30 pm Eastern)

The panel will review these and other key questions:

    * What issues must be addressed for registration of IP in China?
    * What steps can U.S. companies implement to protect their brands against infringement?
    * What strategies can IP owners employ to combat counterfeiting in China?
    * What are the best practices for IP enforcement and protection in China?

Faculty

• Yitai Hu, Partner, Akin Gump Strauss Hauer & Feld, Palo Alto, Calif.
• Paul D. Jones, Principal, Jones & Co., Toronto, Canada.
• Keith Medansky, Partner, DLA Piper, Chicago, Ill.
• Stan Abrams, DLA Piper, Beijing, China.

More details and registration are available here.

ITC Probes Samsung-Sharp LCD Patent Dispute

EE Times Asia reported on January 24, 2008:

The U.S. International Trade Commission (ITC) it will investigate imports of TVs and other goods containing LCD devices made by Sharp Corp., according to an Associated Press report.

Samsung Electronics Co. Ltd requested the investigation last month, alleging that Sharp's LCD devices infringed on four Samsung patents. The South Korean company also asked the ITC to ban the import and sale of Sharp's LCD devices and products with the displays in them.

The ITC said the case will be referred to an administrative law judge and has set a target date for completing the investigation within 45 days.

Japan to Block Some Nanya DRAM Chips After Fujitsu Complaint

Martyn Williams of IDG News Service writes today, January 24, 2008, at InfoWorld:

Japan will block imports of some memory chips produced by Taiwan's Nanya Technology after local chip-maker Fujitsu lodged a request with the country's customs authorities.

In August last year Fujitsu won a patent infringement case against Nanya at the Tokyo District Court. The lawsuit concerned a patent related to a technology for improving the speed of DDR SDRAM (double data rate synchronous dynamic RAM) memory chips, and the court case came about after discussions between the companies broke down.

A day after winning the case, Fujitsu filed with Japan Customs to block import of the DRAM chips in question. DRAM is used as the main memory inside personal computers and some consumer electronics products.

With Fujitsu's request to suspend imports granted, the government will begin inspections of Nanya DRAM chips coming into Japan, Fujitsu said Thursday. If the chips are judged to include the technology that was the subject of the August court case, the chips will be blocked from entry, Fujitsu said.

Nanya Technology could not immediately be reached for comment.

China Gets Ready for National IP Strategy

Peter Ollier of Managing Intellectual Property wrote on January 14, 2008:

A key committee in China's parliament has approved changes to a draft law that deals with innovation in the country, a move that commentators say signals final preparations before the publication of the long-awaited National IP Strategy.

The National IP Strategy is designed to raise IP awareness throughout the country, encourage so-called joined-up government by connecting existing IP policies in different departments and take "a macroeconomic look at IPR protection," according to Thomas Pattloch, IP officer at the EU delegation in Beijing.

But publication may have to wait until after the first plenary session of the 11th National People's Congress on March 5 this year, during which members will elect new state and government leaders.  These may need to approve the Strategy before it is published, although one US official who follows IP issues in China told MIP Week that the Strategy is expected to be published "in the first half of 2008."

Read the full article here.