Philip Brooks' Patent Infringement Updates

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.

ITC Investigates Blue Laser Patent Claim

Ian Williams writing for vnunet.com today, 26 Mar 2008:

The US International Trade Commission has begun an investigation into certain short-wavelength light emitting diodes and laser diodes following a patent infringement complaint.

Gertrude Neumark Rothschild, an emeritus professor at Columbia University, claims to own a patent on a method of producing wide-band gap semiconductors for LEDs and laser diodes at the blue and ultraviolet end of the light spectrum.

Rothschild alleges violations of section 337 of the Tariff Act of 1930 and is seeking to block the import of all LEDs and lasers that fall foul of the patent, as well as any products which use the technology.

These include hand-held mobile devices, instrument panels, billboards, traffic lights, Blu-ray disc players and data storage devices.

Companies under investigation include Avago Technologies, Everlight Electronics, Hitachi, LG, Lite-On Technology, Matsushita, Motorola, Nokia, Pioneer, Samsung, Sanyo, Sharp, Sony, Sony Ericsson and Toshiba.

Read the full article here.

Federal Circuit Addresses Effect of 271(e)(1) "Safe Harbor" in ITC Actions

Aaron F. Barkoff of the Orange Book Blog writes in his March 21, 2008 post:

Amgen holds at least six US patents that relate to erythropoeitin and its derivatives (EPO) and processes for making EPO, protecting the Amgen drugs Aranesp and Epogen.  Sales of Aranesp alone topped $3.6 [b]illion last year.  Roche produces EPO in Europe and has been seeking FDA approval for its own EPO drug, Mircera, in the US.

Roche began importing EPO as part of its effort to generate data for its regulatory submissions to the FDA.  Amgen did not object to these acts of importation.  However, Roche continued importing EPO even after its FDA application was complete (though Roche has not yet sold or contracted to sell any of its EPO in the US).  Amgen responded by filing a Section 337 action with the International Trace Commission (ITC), asking the ITC to enjoin Roches further importation and future sale in the US of its European-produced EPO.

The ITC denied Amgens injunction request...In a decision Wednesday [March 19, 2008], the Federal Circuit affirmed in part, reversed in part, and remanded the case to the ITC.

Read the full analysis of the decision here.

IP Litigation at the ITC: Recent Developments and Best Practices

Managing IP will host a free web seminar, in association with Finnegan Henderson, covering recent developments and enforcement at the ITC on Wednesday March 26 at 12 noon EST.

The US International Trade Commission (ITC) is playing an increasingly prominent role in patent enforcement in the US - for both American and overseas companies.

With its unique procedures and remedies, and increasingly IP-experienced Commissioners, the ITC is becoming a vital consideration in many enforcement strategies - especially in industries such as telecoms and semiconductors where fast and effective relief against infringement is required.

In this free Managing IP web seminar, a panel of IP practitioners with experience of acting before the ITC will discuss how it can be of use to IP owners and provide strategic advice on handling disputes there. They will also discuss recent developments and cases.

The event will also include an interactive Q&A session between participants and our panel.

Current List of Participants

• James Nurton, Editor, Managing IP
• Hildy Bowbeer, Assistant Chief Intellectual Property Counsel, 3M Innovative Properties Company
• Thomas L. Jarvis, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner
• Smith R. Brittingham, Finnegan, Henderson, Farabow, Garrett & Dunner

More details and registration are available here.

Barracuda Networks Enlists Open Source Community In Trend Micro Patent Fight

The following is excerpted from Thomas Claburn's February 6, 2008 article at InformationWeek:

Barracuda Networks, a maker of e-mail and Web security hardware, has sent out a distress call to the open source community to save it from patent litigation at the hands of Trend Micro, a competing security company. On Tuesday it asked for help from anyone who can provide information that can invalidate Trend Micro's patent on gateway antivirus scanning.

Barracuda Networks has framed the dispute as an attack not only on itself but on the open source community and the free Clam AntiVirus software by "commercial patent holders attempting to unjustly hinder the free and open source community," as Dean Drako, president and CEO of Barracuda Networks, put it in a statement issued on Tuesday.

The patent in question, U.S. Patent No. 5,623,600, was filed in 1995. Fortinet, another security hardware vendor, was accused of violating the patent in 2004 and settled with Trend Micro in early 2006. Sweeny from Trend Micro confirmed that both Symantec (NSDQ: SYMC) and McAfee have licensed the patent as well.

"They're accusing us of importing open source software," said Drako. "How can you accuse someone of importing open source software? It's written everywhere." Nonetheless, Trend Micro appears to be doing just that it. If it prevails, Drako predicts trouble for companies that rely on open source software. "If Trend Micro is successful in claiming that we import Clam AV, and therefore that the ITC is the appropriate court, I could go claim that Linux is imported by IBM (NYSE: IBM) ... I could start suing them in the ITC. It could reinvent how patent litigation is done for open source software. It's a pretty bold move."

Read the full article 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.

IP Litigation & S. 337 Actions Before the International Trade Commission

National Constitution Center Audio Conferences hosts a one hour audio conference on December 18, 2007.

Litigating IP disputes before the ITC can be a swift, powerful tool to address such unfair acts as patent, trademark, and copyright infringement.  Make sure you fully understand the scope of the ITC's authority and how to strategically manage a Section 337 action before, during and after litigation.  Join us for a 60-minute audio conference where you and your colleagues will discover:

• What to consider when pursuing a section 337 action before the ITC
• Advantages & disadvantages of litigation before the ITC
• Using the ITC as a strategic weapon
• How to ensure enforcement of an ITC order

Sean P. DeBruine, a partner with Akin Gump Strauss Hauer & Feld, will lead the program.  Read more about the conference and register here.

Expect Twofold Increase in Patent Litigation

Mobile Handset Design Line provides an EE Times article by Todd R. Miller of Jones Day that reads in part:

In the past decade, the U.S. International Trade Commission has undertaken 50 Section 337 investigations into alleged patent infringements in the semiconductor industry. In 1997, four such investigations were made; this year, nine were launched in the first half alone.

The increase may be a reaction to the decision in 2006 in eBay Inc v. MercExchange, 126 S. Ct. 1837. The Supreme Court's unanimous landmark decision put an end to the "general rule" that a permanent injunction should follow a finding of patent infringement by a district court. It is now left to the trial court's discretion to decide whether an injunction should be issued. In contrast, in the ITC, the primary remedy is still the almighty exclusion order.

Over the last decade, the main players in these investigations have been Toshiba Corp. (six investigations), Samsung Electronics Co. Ltd. (five), and Fujitsu Ltd., Gateway Inc., Hewlett-Packard Co., Hynix Semiconductor Inc. and Qualcomm Inc. (each with three).

In the next decade--absent legislation or other dramatic reform--expect to see at least another twofold increase in patent litigation in the industry. We will see the same steady rate of enforcer litigation by large semiconductor companies. There will continue to be aggressive enforcement by smaller chip companies, as well as many more lawsuits by outside patent owners/nonrivals seeking to cash in on licensing fees. Such lawsuits may come as a result of the greater ease with which an accused infringer can now file suit for declaratory judgment, per the Supreme Court's MedImmune Inc. v. Genentech Inc., 127 S. Ct. 764 (2007). Or they may come as preemptive filings, i.e., as a result of the patentee affirmatively seeking to sue first in its chosen forum, and then initiating contact with the accused infringer to negotiate a license. Moreover, an accused infringer may be more willing to sue for declaratory judgment of invalidity in light of the Supreme Court's KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007), which may make it easier to prove obviousness, and in light of eBay, which makes it much more difficult for a nonrival to obtain an injunction. Due to the latter reason alone, expect to see more ITC investigations as these quick proceedings offer an exclusion order as the primary remedy.

Assuming the litigation takes place in federal district court, the Ninth Circuit should continue to be the primary go-to circuit, with its Northern District Court and Central District Court seeing the most action. The Eastern District of Texas should continue to be a favored forum for patentees.  More suits are also expected to be filed in the increasingly popular, speedy Western District of Wisconsin. The Northern District of Texas, Northern District of Georgia and Western District of Pennsylvania, each of which has now enacted local patent rules, should also see increased filings.

Read the full article here.

Chinese Firms Learn Patent Protection Amid U.S. IPR Investigation

China View reported yesterday, September 10, 2007:

Increasing U.S. investigations over alleged IPR infringement have forced more and more Chinese companies to actively register patent rights across the world in an effort to protect their own rights and prevent potential lawsuits.

Many production, knowledge and technology-based Chinese enterprises have suffered from global accusations over IPR violations without making their patents registered at the initial stage.

U.S. international Trade Commission (USITC), a major complainant, has instituted 46 Section 337 investigations against Chinese companies since 2002, making China the largest victim among other countries, according to statistics from the Chinese Ministry of Commerce.

The commission launched 12 investigations against Chinese firms since the beginning of this year, involving 1.66 billion U.S. dollars, up more than 43 percent as against the same period of last year, the statistics show.

Section 337 investigations were put forth against products imported to the United States that are suspected of constituting unfair competition. This is particularly based on the infringement of intellectual property such as patents and trademarks, according to Section 337 of the US Tariff Act of 1930.

Of the 39 concluded cases, 28 Chinese companies, including a major battery manufacturer facing charges from U.S. rival Energizer, were found innocent or reached compromises with complainants, said Yu Benlin, officer with the ministry, at an IPR forum held on the sideline of the ongoing 11th China International Fair for Investment and Trade in this coastal city of east China's Fujian province.

Read the full article here.

Pass & Seymour/Legrand Files ITC Complaint Against Chinese Companies

Charley Hannagan of The Post-Standard reported on August 22, 2007:

Pass & Seymour/Legrand last week filed a complaint with the International Trade Commission and in federal court against Chinese companies that it alleges infringed on its patents.

In the complaint, the company also named several American companies that distribute the devices for the Chinese.

The complaint filed with the trade commission Thursday alleges infringement of six U.S. patents the Solvay company holds on ground-fault circuit interrupters. The interrupters prevent electrocution during the use of electrical receptacles.

Pass & Seymour/Legrand seeks a trade commission order precluding the importation and sale of devices that allegedly infringe on its patents.

Also Thursday, the company filed suit in the U.S. District Court for the Northern District of New York alleging infringement on nine patents, including the six named in the trade commission complaint.

The company seeks an injunction against further patent infringement and damages.

Chinese companies named in the suit were: General Protecht Group Inc. and its subsidiary General Protecht Group U.S. Inc., Shanghai ELE Manufacturing Corp., Shanghai Meihao Electric Inc., Wenzhou Trimone Co. and Zhejiang Dongzheng Electrical Co.

Resellers named in the complaints include: Cheetah USA Corp., GX Electric, Nicor Inc., Orbit Industries Inc., The Designer's Edge and Universal Security Instruments Inc.

Distributors named in the suit include: Colacino Electrical Supply Inc., Ingram Products Inc., Lunar Industrial & Electrical Inc., and Quality Distributing LLC.