Philip Brooks' Patent Infringement Updates

Apple May Hurt Shareholders With Patent War

The following is excerpted from a December 28, 2011 article by Peter Burrows published by Bloomberg:

Steve Jobs, the co-founder of Apple (AAPL) Inc., told his biographer that he’d rather wage “thermonuclear war” with Google Inc. than make deals to share its technology with the maker of the Android operating system.

That was no empty threat. In the 18 months before Jobs died on Oct. 5, Apple sued HTC Corp. (2498), Samsung Electronics Co. and Motorola Mobility Inc., the three largest Android users. It alleged that the phone makers stole Apple’s technology and asked courts to make them stop.

Now, as rulings start coming in, it might be time for a détente that helps Apple maximize the value of its patents, said Kevin Rivette, a managing partner at 3LP Advisors LLC, a firm that advises on intellectual property. When courts side with Apple and impose bans on infringing products, competitors can often devise workarounds; in cases where Apple doesn’t win import restrictions, it would be better off striking settlements that ensure access to a competitor’s innovation, he said.

For a time, Apple’s strategy looked sound. In October, an Australian court banned the sale of Samsung’s Galaxy 10.1 tablet in that country, and the U.S. International Trade Commission agreed to consider an import ban on sales of certain HTC devices.

Then the tide began to turn. Apple suffered a setback Nov. 30 when a higher Australian court overturned the ruling against Samsung. On Dec. 22, a German judge said he was unlikely to uphold an import ban on a version of the Galaxy, which Samsung had modified in response to a ban on the original design.

The ITC gave Apple only a partial victory on Dec. 19 by ruling that HTC had violated only one of four patents Apple said it infringed. The patent covered so-called data detection, a feature that helps users make a call, send an e-mail or find an address on a map with a single keystroke.

Read the full article here.

Section 337 Litigations: An Introduction for Associates by Associates

The American Bar Association Section of Intellectual Property Law, Young Lawyers Division and the ABA Center for Continuing Legal Education are sponsoring the above-titled webinar on December 16, 2011:

This past year marked the highest year of activity for Section 337 Investigations.  Currently, one in six patent trials in the United States occur at the International Trade Commission under Section 337.  As the number of parties litigating in this venue continue to grow, having basic knowledge of this special type of patent litigation is of value to IP practitioners of all levels. 

This program will cover the unique aspects of Section 337 investigations, including an overview of the procedural timelines and tips regarding the statutory requirements.

This course will provide new attorneys an introduction into a growing field of IP practice, and will allow all attorneys to refresh their knowledge on the nuances of Section 337 investigations. As it is only a matter of time before an associate is asked to work on a Section 337 investigation, or before a client inquires about a Section 337 investigation, knowledge of Section 337 investigations is a necessary and marketable skill.  

This introductory course should prepare attorneys to competently advise their clients to navigate a Section 337 investigation.

Program Faculty

• Monisha Deka (Moderator), Associate, White & Case LLP
• Brian Koo, Associate, Sidley Austin LLP
• Kimberly R. Parke, Associate, Dickstein Shapiro LLP
• Stephanie L. Roberts, Associate, Banner & Witcoff, Ltd.

Learn more and register 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.

Kodak's Bondholders Seem Supportive of Plans to Sell Patents

The following is excerpted from an October 7, 2011 article published by Businessweek:

Eastman Kodak Co.'s plan to sell patents is gaining traction with bond investors after derivatives last month suggested a 97 percent chance the 131-year-old camera maker would fail within five years.
 
The implied five-year default probability on Kodak was 73 percent on Sept. 2, according to data provider CMA, which compiles prices in the privately negotiated market. The Rochester, New York-based company's $250 million of 7.25 percent debt due November 2013 yielded 14.7 percent on Aug. 31 after jumping to as high as 19.8 percent on Aug. 10.
 
Kodak, headed for its sixth annual loss in seven years, is following Motorola Mobility Holdings Inc. and Nortel Networks Corp. in marketing patents as the U.S. International Trade Commission delays a ruling on the company's attempts to win $1 billion in licensing fees for image-preview technology used in cameras. Chief Executive Officer Antonio Perez said Aug. 29 that the company has signed confidentiality agreements with potential buyers of more than 1,000 Kodak patents.

Read the full 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.

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.

Apple Files Second ITC Complaint Against HTC

The following is excerpted from a July 11, 2011 post by Florian Mueller at his FOSS Patents blog:

The ITC website reveals that Apple filed another patent infringement complaint against Android device maker HTC on Friday, July 8, 2011. By my count, that's Android-related lawsuit no. 48 (some disputes consist of multiple lawsuits). At this stage, the asserted patents aren't known (not even their number). I will update this post as soon as I obtain a copy of the complaint. I don't want to speculate too much but I wouldn't be surprised to see some overlap between the five patents Apple asserted in its very recent ITC complaint against Samsung and the ones asserted in the new complaint against HTC.

Read the full post here.

ITC Commission Issues Favorable Ruling in Kodak Patent Case Against Apple and RIM

The following is excerpted from a June 30, 2011 Kodak press release:

Eastman Kodak Company (NYSE:EK) today announced that in response to the company’s request, the U.S. International Trade Commission (ITC) modified key findings of an ITC judge’s initial recommendation in Kodak’s patent infringement claim against Apple and Research In Motion (RIM). The Commission extended the target date for a final ruling until August 30.

In support of Kodak, the Commission modified the following key findings:

• Kodak appealed the meaning of the patent term “at least three different colors.” The Commission agreed with Kodak that all of Apple and RIM's accused phones infringe this term.
• Kodak appealed the meaning of the patent terms “motion processor” and “still processor.” The Commission revised the judge’s interpretations and instructed him to make a new recommendation based on the revision.
• Kodak appealed the meaning of the patent term “initiating capture.” The Commission agreed with Kodak that RIM’s accused phones and certain Apple phones infringe this term. With respect to other Apple phones, the Commission instructed the judge to reconsider his recommendation.
• Kodak appealed the judge's invalidity ruling. The Commission sent the issue back to the judge for reconsideration in view of the revised meaning of the patent terms.
• The Commission affirmed other determinations favorable to Kodak, including the enforceability of the patent, and the existence of domestic industry.

Read the full press release here.

Tessera Technologies Provides Legal Update

Tessera Technologies, Inc. today, May 23, 2011, provided a status update on certain ongoing legal actions and announced a new legal action by its wholly-owned subsidiary Invensas Corporation in a press release at Business Wire:

Today, the U.S. Court of Appeals for the Federal Circuit affirmed-in-part, and vacated-in-part, the ITC’s final determination in the action brought by Tessera, Inc. against certain DRAM manufacturers, Investigation No. 337-TA-630 (“DRAM ITC action”). The Court of Appeals affirmed that U.S. Patent No. 5,663,106 was valid, infringed as to the accused μBGA products, but not infringed as to the accused wBGA products. The Court also affirmed that Tessera, Inc.’s patent rights were exhausted as to certain accused products purchased from Tessera, Inc. licensees.

“Although we are somewhat disappointed in today’s decision by the U.S. Court of Appeals, we do not believe it will have a material impact on our business,” said Robert A. Young, president and chief executive officer, Tessera Technologies, Inc. “Under Tessera, Inc.’s historical Tessera Compliant Chip (TCC) program, licensed customers have access to a patent portfolio of approximately 250 patents, and a court’s decision on a single patent, one which it found valid, does not alter each licensee’s obligation to pay royalties. In addition, we have recently announced that our Invensas Corporation subsidiary’s patent portfolio of approximately 280 patents and patent applications is available for licensing, and we are in discussions with multiple DRAM companies with respect to that portfolio.

Read the full press release here.

Kodak Up After Recommendation in Patent Battle

The following is excerpted from a May 18, 2011 article by Ben Dobbin published at Yahoo! Finance:

Stock in Eastman Kodak Co. rose sharply Wednesday after staff investigators at the U.S. International Trade Commission sided with the photography pioneer in its patent-infringement battle with smartphone giants Apple Inc. and Research in Motion Ltd.

The third-party investigators at the federal agency, which oversees trade disputes, found that Apple and Canada-based RIM infringed an image-preview patent Kodak obtained in 2001. They recommended an order barring imports of Apple's iPhones and Research In Motion Ltd.'s BlackBerry phones.

Kodak is attempting to negotiate a royalty-paying deal that CEO Antonio Perez estimates could be worth up to $1 billion.

Read the full article here.