Philip Brooks' Patent Infringement Updates

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.

Attorneys Note Seriousness of Serverside Patent Suit

The following is excerpted from a June 27, 2011 article by Natasha Chilingerian published by Credit Union Times:

The patent litigation filed by London-based technology vendor Serverside Group is not to be taken lightly by the credit unions and credit union service organizations the vendor lists as defendants.

That’s according to several attorneys contacted by Credit Union Times, who say the lawsuit could be very costly for the targeted organizations to defend or settle.

Serverside Group, which provides design, marketing and printing services to the international payment card industry, named 15 defendants for patent litigation. Credit union industry members included PSCU Financial Services in Florida, The Members Group in Iowa, the $1.3 billion Anheuser-Busch Employees CU of St. Louis, the $274 million Neighbors CU of St. Louis and the $753 million Credit Union 1 of Anchorage. JHA Payment Processing Solutions, part of Jack Henry & Associates of Monett, Mo. was also named among the private companies and financial institutions.

The London firm alleges defendants “infringed upon its U.S. patent right as to financial transaction card customization technology,” it said in a press release. The suit was filed in U.S. District Court in Delaware.

Galvani [Phoenix-based patent attorney Thomas W. Galvani] adds the level of risk posed to the defendants may largely depend on a Markman hearing, a pre-trial hearing that determines the scope of the claims. The broader the scope, the more likely the defendants’ conduct will fall within that scope, the Phoenix attorney said.

Read the full article here.

Claim Construction: Too Much Structure Will Spoil the Brew

The following is excerpted from a May 6, 2011 article by Isaac Crum of McDermott Will & Emery published at the National Law Review:

In affirming-in-part grants of summary judgment on non-infringement by two separate district courts, the U.S. Court of Appeals for the Federal Circuit reiterated the role of a district court in claim construction is to give meaning to the limitations actually contained in the claims, “not to redefine claim recitations or to read limitations into the claims.” American Piledriving Equip., Inc. v. Geoquip, Inc., Case Nos. 10-1283, -1314 (Fed. Cir., Mar. 21, 2011) (Linn, J.).

In upholding the Virginia constructions, the Federal Circuit found that the California constructions imported unnecessary limitations into the construction of “eccentric weight portion” and “insert-receiving area.” In its analysis, the Court reviewed the claims, the specification and the file history as it related to each of these terms. With regard to both “eccentric weight portion” and “insert-receiving area,” the Court found that there was no support in the intrinsic evidence for the additional structural limitations imported by the California district court.

The Federal Circuit affirmed both of the district court’s grants of summary judgment of non-infringement with regard to the accused products.

Read the full article here.

Palomar's Patent Infringement Lawsuit Against Candela Proceeds to Trial

The following is excerpted from a Palomar press release posted on April 27, 2011 at Fierce Medical Devices:

Palomar Medical Technologies, Inc. (Nasdaq:PMTI), a leading researcher and developer of lasers and light systems for aesthetic treatments, announced today that its patent infringement lawsuit against Candela Corporation (acquired in 2010 by Syneron, Inc.) will now proceed to trial. Palomar has accused Candela of willful infringement of U.S. Patent No. 5,735,844 ("the '844 patent"). Today, the Judge issued a ruling on Candela's motion for summary judgment which marks a final step before trial.

The ruling denied Candela's motion for summary judgment that the '844 patent is invalid over prior art. The ruling further denied Candela's motion for summary judgment that Candela's products do not infringe claim 32 of the '844 patent. The Judge also ruled that Palomar had insufficient evidence to prove that Candela's products infringe claims 1, 19 and 27 of the '844 patent. Consequently, once the Judge conducts a scheduling hearing and a trial date is determined, the lawsuit will proceed to trial on Palomar's assertion that Candela's products infringe claim 32 of the '844 patent.

The '844 patent relates to light-based hair removal and has already been licensed to many other companies. The U.S. Patent Office has also found the existing claims, including claim 32 of the '844 patent, valid over prior art raised by Candela in a re-examination proceeding. Claim 32 of the '844 patent is broad and covers all of Palomar's licensee's hair removal products as well as Palomar's own hair removal products.

Palomar is also suing Syneron, Inc. for patent infringement of the '844 patent as well as related U.S. Patent No. 5,595,568 ("the '568 patent"). On November 17, 2010, a claim construction hearing (also known as a Markman hearing) was held and Syneron argued that certain words in the claims should be construed such that the claims would only cover lasers and would not cover their lamp based products. On April 14, 2011, the Judge issued a ruling which did not limit independent claims 1 of the '568 patent or 1, 17, 19, and 32 of the '844 patent to only lasers, such that these claims will cover both lasers and lamps. The ruling only limited independent claims 14 of the '568 patent and 27 of the '844 patent to lasers. Accordingly, Palomar's lawsuit will proceed against both Syneron's lamp and laser products.

Read the full press release here.

j2 Global Prevails in Patent Markman Hearing

The following is excerpted from a March 21, 2011 j2 Global press release:

j2 Global Communications, Inc. (NASDAQ: JCOM), the provider of cloud-based, value-added communication, messaging and data backup services, today announced that the U.S. District Court for the Central District of California issued a Markman Order on March 2, 2011 in ongoing patent infringement litigation by j2 Global against Easylink Services International Corp. (NASDAQ: ESIC) and Captaris, Inc., a wholly-owned subsidiary of Open Text Corporation (NASDAQ: OTEX). In the litigation, j2 Global is alleging infringement of U.S. Patent Nos. 6,208,638 ("the '638 patent") and 6,350,066 ("the '066 patent"), as well as two additional U.S. patents. In a Markman Order, the Court determines the meaning of disputed patent claim language.

In its Order, the Court construed each and every disputed claim term of the '638 and '066 patents in a manner consistent with the construction offered by j2. This result underscores j2 Global's view that both Easylink and Captaris infringe these patents. While j2 Global did not initially include the '066 patent in its case against Easylink, the Company is seeking to amend its complaint against Easylink to add the '066 patent.

Read the full press release here.

Judge Emphatically Denies Motion to Continue Markman Hearing in Hydro-Quebec v. Valence Case

Judge Sparks in the Hydro-Quebec v. Valence Technology, Inc. case (No. A-06-CA-111-SS) in the US District Court for the Western District of Texas, Austin Division issued the following order on October 14, 2009:

BE IT REMEMBERED on this day the Court reviewed the eight volumes of pleadings in the above-styled cause, and further noting that a stack of pleadings consisting of thousands of pages and arising over 14 inches above the undersigned's desk, received a Motion to Continue the Claim Construction Hearing Before the Special Master [#137] on November 2-3, 2009, and thereafter, enters the following:

The Motion to Continue is DENIED. This lawsuit was filed on February 14, 2006, almost three years ago. As a result of agreed extensions to answer different types of negotiations between the parties and the plaintiffs bringing in new parties, it was not possible to set an order scheduling a Markman hearing until September 9, 2006, when one was entered setting the Markman hearing for February 27, 2007. However, on January 10, 2007, this Court entered an order staying proceedings until July 10, 2007, at the request of all parties as there was a reconsideration of some of the patents involved in this lawsuit by the Patents Office. The stay was continued by order of July 18, 2007, at the request of the then-existing parties. Then after an exhaustive onslaught of pleadings, motions to dismiss, motions for summary judgment, and motions for partial summary judgment was filed and determined, ultimately, another order was entered for the Markman hearing for June 23, 2009. However, as a result of an agreement between the parties, it was reset for July 29, 2009. Thereafter, by agreement of all the parties, it was reset until November 2, 2009. The order setting the Markman hearing for this date was entered on July 28, 2009, over three months in advance of the hearing date. Now counsel for the plaintiffs requests another continuance because of scheduling commitments, and the answer is an emphatic "No."

The undersigned is blessed with one of the heaviest civil dockets in the country, including other patent cases. This case will proceed and will proceed with the Markman hearing on November 2-3, 2009. If counsel cannot arrange to attend, then the plaintiffs must obtain new counsel.

Thanks to the reader who provided the order (Download 144).

MMP Portfolio™ Prevails After Multiple Reexams

Business Wire published an Alliacense press release today, September 16, 2009.  The following is an excerpt from that release:

Alliacense announced today that the USPTO has affirmed the validity of US’336, the most widely recognized patent in the MMP Portfolio™.

The TPL Group has extended its remarkable string of successes against multiple validity attacks on the MMP Portfolio perpetrated by numerous electronics industry giants from around the world. These victories significantly strengthen the MMP Portfolio patents – and accordingly, magnify the risk for those companies without a license to the technology. Recent key victories include:

• August - September 2009. The USPTO indicates it will issue a Reexamination Certificate for the US’336 “Dual Asynchronous Clock” patent, ending reexaminations filed by NEC, Toshiba, and the Public Patent Foundation; and resoundingly rejects another attempted attack by litigant HTC.

• July 2009. The USPTO issues a Reexam Certificate for the US’584 “Multiple Instruction Fetch” patent over the reexaminations filed by litigants NEC and Toshiba.
• January 2009. The German Patent Court confirms the validity of MMP Portfolio™ patent EP’730 rejecting a “nullity action” brought by Deutsch Telecom.

“This remarkable story demonstrates,” said Mac Leckrone, President of Alliacense, “that the reexam delay tactic routinely encouraged by lawyers defies business sense, since it usually backfires by strengthening the very patents under attack.”

Combined with favorable “Markman” Rulings in the Eastern District of Texas in 2007, and the steady addition of over 60 licensees since the launch of the Licensing Program in 2005, the MMP Portfolio™ continues its phenomenal ascendance as one of the most important patent portfolios in the history of electronics.

Mike Davis, Senior Vice President of Licensing, added, “These developments obviously diminish any uncertainties associated with purchasing the required MMP Portfolio license, and will thus have a direct impact on the market price going forward.” Davis also confirmed that progressively higher royalty rates remain a basic principle of the MMP Portfolio Licensing Program.

See the full release here.  Thanks to the reader from Germany that alerted me to the release.

Fence Posts or Sign Posts? Rethinking Patent Claim Construction

The following is excerpted from the above-titled article by Dan L. Burk & Mark A. Lemley from the July 2009 issue (Vol. 157, No. 6) of the University of Pennsylvania Law Review:

Patents are, in theory, a legal right to exclude competitors from using the patentee's invention. Exactly what the patentee gets to prevent others from using depends, however, on how the law defines the scope of the patent right. In modern American patent doctrine, we define what the patentee owns not by what she actually built or disclosed, but by what she claimed. Courts and commentators regularly analogize patent claims as akin to the "metes and bounds" of a real property deed, defining the outer boundaries of a "property" right conferred on the patentee. According to this view, known as the peripheral claiming approach, words of a claim form a sort of conceptual "fence" that marks the edge of the patentee's rights. And for the last dozen years, judges have had the responsibility of defining that periphery, interpreting the perimeter of patent claims in a pretrial proceeding known as a Markman hearing.

It isn't working. Despite repeated efforts to set out the rules for construing patent claims, culminating in the Federal Circuit's en banc Phillips decision in 2005, parties and courts seem unable to agree on what particular patent claims mean. Patent law has provided none of the certainty associated with the definition of boundaries in real property law. Literally every case involves a fight over the meaning of multiple terms, and not just the complex technical ones. Recent Federal Circuit cases have had to decide plausible disagreements over the meanings of the words "a," "or," and "through," to name but a few. Claim construction is sufficiently uncertain that many parties don't settle a case until after the court has construed the claims, because there is no baseline for agreement on what the patent might possibly cover. Even after claim construction, the meaning of the claims remains uncertain, not only because of the very real prospect of reversal on appeal but also because lawyers immediately begin fighting about the meaning of the words used to construe the words of the claims.

Even if the patentee is not being deliberately ambiguous, a dozen years of Markman hearings have made it clear beyond doubt that litigators can and will find ambiguity in claim language.

Read the full article here.

Krippelz v. Ford Motor Co. Willful Infringement Damages Decision Due Shortly

Jake Krippelz, VP of US operations for Jakes Inc. says "the enhancement ruling...will be happening soon."

The following is excerpted from a December 24, 2008 Vcorp blog post:

Patent lawsuits sometimes take years to become resolved, however very few of them take a decade.  I just this [sic] come [sic] across the wire, A real-life David vs. Goliath story unfolded last week in Chicago when a Federal jury on Friday awarded a $23 million verdict to Jacob Krippelz, Sr. in a patent infringement lawsuit against Ford Motor Co. His patent, on an automotive lighting system used in exterior rear view mirrors, was issued in 1991.

The verdict came 10 years after Krippelz first sued Ford in the United States District Court for the Northern District of Illinois. Krippelz is the 77-year-old Chief Executive Officer of Jake’s, Inc., a machining and heavy equipment component manufacturing company in Aurora, Illinois.

...and this from a March 27, 2009 Law360 article by Sam Howard:

A federal judge has determined that Ford Motor Co. willfully infringed a patent for the car-door lights known as “puddle lamps” and is liable for damages greater than the $23 million previously awarded by a jury.

Judge James B. Zagel of the U.S. District Court for the Northern District of Illinois said Wednesday that for almost 10 years Ford willfully infringed the puddle lamp patent owned by inventor Jacob Krippelz Sr.

The court determined that Ford, which installed the puddle lamps on many of its best selling cars, willfully infringed U.S. Patent Number 5,017,903 from October 1998, shortly after Krippelz filed suit, to April 2007, according to the opinion.

“Ford had offered nothing that it could use in defense of the claim. All it had done was try to wriggle out of my Markman ruling by indirect methods. My ruling is not sacred writ and, if it is in error, the judgment against Ford likely will fall,” Judge Zagel said.

“But reasonable defenses are limited to those consistent with that ruling as long as the case is in this court, and that is not a limit that Ford honored. Much, if not all, of what it offered in its defense until April 2007 was impermissible, and what may not have been impermissible was clearly without merit,” Judge Zagel said.

While the trial resulted in a $23 million jury verdict for the plaintiff, the parties agreed in advance to address the issue of willful infringement in a separate phase before the court alone, where enhancement damages would be determined through written rather than live evidence, according to court filings.

The court will calculate the amount of the enhancement award after the plaintiff submits a draft of the findings for Ford‟s consideration, the opinion said.

Judge Zagel also has yet to consider the amount of prejudgment interest to award, and whether to award attorneys‟ fees.

The case is Krippelz v. Ford Motor Co., case number 1:98-cv-02361, in the U.S. District Court for the Northern District of Illinois.

Read the full article here.

VirnetX Receives Markman Order in Patent Infringement Action Against Microsoft

The following is from a July 31, 2009 VirnetX press release available at PR Newswire:

VirnetX Holding Corporation (NYSE Amex: VHC) announced today that the United States District Court for the Eastern District of Texas, Tyler Division, issued its patent claim construction, or "Markman" Order ("Markman Order") in the ongoing patent infringement action between VirnetX Inc. ("VirnetX") and Microsoft Corporation ("Microsoft").

In a Markman ruling, a district court hearing a patent infringement case interprets and rules on the scope and meaning of disputed patent claim language regarding the patents in suit. A Markman decision is often a significant factor in the progress and outcome of patent infringement litigation.

In the recently issued Markman Order, the Court adopted interpretations that VirnetX believes are favorable to VirnetX on many of the claim terms that were in dispute in the litigation.

The litigation, which the company previously announced it had filed in February, 2007, involves Microsoft's development and marketing of certain of its products that the company believes infringe three patents owned by VirnetX.

"We are extremely pleased with the Court's Markman Order. We remain confident in our position concerning Microsoft's infringement of the patents at issue," said Kendall Larsen, VirnetX's chairman, president and CEO. "While the outcome of this and any legal matter is unpredictable, we believe the Court's Markman Order is another significant step towards the successful resolution of this litigation and further validates VirnetX's ongoing commitment to the enforcement of our intellectual property and protection of our investment in patent-protected licensing and research and development."

About VirnetX

VirnetX Holding Corporation, a secure real-time communications and collaboration technology company, is engaged in commercializing its patent portfolio by developing a licensing program, as well as developing software products designed to create a secure environment for real-time communications such as instant messaging and Voice over Internet Protocol. The Company's patent portfolio includes over 25 U.S. and foreign patents and pending applications which specifically cover the Company's unique GABRIEL Connection Technology. For more information, please visit www.virnetx.com