October 2011

October 28, 2011, by Mandour & Associates, APC

Los Angeles – The United States Court of Appeals for the Federal Circuit recently held in Classen Immunotherapies v. Biogen IDEC that certain methods of scientific research pertaining to a particular field of study may be patentable. Classen Immunotherapies was issued a patent for testing an immunization schedule against a control group. Researchers would then use the results of the tests to adjust the immunization schedule in both timing and dosage.

The patent states that the schedule of infant immunization can have significant effects in the advancement of chronic disorders such as diabetes. The patent is a method of determining which immunization schedule minimizes the risk of development of chronic disorders. Once the optimal immunization schedules were determined, Classen planned to implement that schedule to prevent risk of development of chronic disorders in infants and children.

The action arose when defendant Biogen IDEC, allegedly began using the Classen testing method and discovered the optimal immunization schedule for diabetes and other ailments. Classen brought an action against Biogen IDEC for patent infringement which was then appealed to the Federal Circuit. The Federal Circuit held that the immunization schedule research method contained patentable subject matter under 35 U.S.C. § 101.

Prior to the decision of the United States Supreme Court in Bilski v. Kappos, an invention had to qualify for patent protection under the machine-or-transformation test. The machine-or-transformation test pertains to process patents and requires that, for a process to be patentable, it must be either implemented with a machine or transform an article into another. In Bikski, the Supreme Court held that the machine-or-transformation test was not the only appropriate test for patentability, but instead should be regarded as a useful tool or guiding principle.

In this case, the Federal Circuit noted that one of the steps in the research process, “reviewing the relevant literature,” was not fatal to the patent’s validity. Though this was a “mental step” in contrast to a physical step, the patent contained physical steps such as immunizing on a fixed schedule. Because the methods were directed toward a specific useful goal and included physical steps such as immunizing on a certain schedule, the processes were eligible for patentability.

The Federal Circuit ultimately held that two of the three Classen patents contained patentable subject matter under 35 U.S.C. § 101. However, a third Classen patent that did not pertain to an immunization schedule was found to be invalid.

October 28, 2011, by Mandour & Associates, APC

Los Angeles – Earlier this week, Redmond, Washington-based Microsoft announced its new Android patent agreement with Compal Electronics, a Taiwanese company. The software giant claims the new patent deal gives it a licensing stronghold on the majority of Android devices.

The agreement with Compal Electronics will cover tablets, mobile phones, e-readers, and other consumer devices running off the Android or Chrome Platform operating systems. Earlier this month, Microsoft inked a similar deal with Quanta Computer and one with Winstron in July. Back in April 2010, it signed a patent agreement with HTC.

“Together with the license agreements signed in the past few months with Wistron and Quanta Computer, today’s agreement with Compal means more than half of the world’s ODM industry for Android and Chrome devices is now under license to Microsoft’s patent portfolio,” said Horacio Gutierrez, Microsoft deputy general counsel.

These patent deals with the Taiwanese companies will likely have a significant impact on the mobile industry for years to come. The deals could prove to be quite lucrative for those on the right side of the conflict, with one Goldman Sachs analyst predicting that Microsoft could rake in $444 million in licensing fees from Android manufacturers alone.

Another major factor affecting the landscape of the mobile industry is the ever-increasing litigation between tech giants such as Apple, Samsung, HTC, Motorola, and Google. For example, in the Samsung vs. Apple patent infringement lawsuit, Apple has been successful in getting Samsung’s Android-based Galaxy Tab 10.1 tablet temporarily banned from sale in the Australian and German markets.

Furthermore, Google has been busy trying to bolster its patent portfolio, purchasing Motorola Mobility in August, partly for its treasured collection of over 17,000 technology patents and also to protect Android from legal battles. When Microsoft sued Motorola in 2010 and tried to have its patents for its Android phones, Wi-Fi and video capabilities invalidated, Google’s David Drummond suggested that Microsoft, Apple, Oracle, and others are waging “a hostile, organized campaign against Android.”

Earlier this year, Microsoft also sued Barnes & Noble for patent infringement over the book retailer’s Android-based Nook e-readers.

Posted in: Patent License
October 28, 2011, by Mandour & Associates, APC

Los Angeles – Apple announced that the USPTO has recently published its patent application for an advanced gesture based toolbar. The patent would involve technology designed to allow iPad users to control their iPads from across the room using body movements such as hand sweeps and other gestures. These body movements would manipulate the iPad display through the gesture based toolbar.

Invented by Peter Langenfeld and Michael Hailey, the toolbar would have preset controls associated with predetermined gestures but would allow advanced users to customize their own movements to correspond to certain tasks. The gestures would be captured by the “front-facing” camera found on newer iPads and iPhones. The front facing camera would capture the 3D gestures and the Apple device would respond in kind.
The patent application, originally filed in mid-2010, notes that the toolbar system will have facial recognition capabilities. In addition, the device will have predetermined gestures for certain functions such as selecting and pointing. The system will feature an associating gesture, used to associate items with one another.

The toolbar will also allow for on-video annotation. The device will allow transfers from images captured using the front facing camera of the iPhone to the iPad to allow users to take advantage of the greater video editing capabilities of the iPad.

The patent application suggests that older Apple devices such as older models of the iPhone and iPad would not have the processing power to utilize the gesture capturing feature. However, the iPad 2, launched in March of 2011 and the recently released iPhone 4S will be capable of running the toolbar system and allow the device to manipulated remotely by the user’s 3D gestures.

October 28, 2011, by Mandour & Associates, APC

os Angeles – Some of the most widely-used and expensive brand-name drugs are soon to come off of their patents and go generic.

With almost $11 billion in sales last year, Lipitor, the largest drug to fall off what analysts call the “patent cliff”, will come off patent in November with multiple generic versions expected to be available by next June. Lipitor, which is prescribed to manage high cholesterol, is just one of many popular, pricey drugs whose prices are expected to plummet when their generic alternatives arrive on the market. Other major pharmaceuticals to come off patent in the near future include Plavix (for heart disease), Seroquel (for depression), and Nexium (used to treat digestive issues.)

Although the “patent cliff” is bad news for major pharmaceutical manufacturers such as AstraZeneca, Pfizer, and Bristol-Myers Squibb/Sanofi Pharmaceuticals, many patients will finally be able afford the prescriptions they need to manage their conditions. Without generic competition, the brand-names are often too expensive for patients, even if they have insurance coverage. Some patients have resorted to purchasing drugs online, which often have turned out to be ineffective counterfeit knock-offs manufactured in China.

Howard Weintraub, a cardiologist at New York University, says that many patients on those drugs go to their doctors and beg for free samples. Others patients don’t bother to fill the expensive prescription, or if they do, they cut the dosage in half in order to stretch it out longer.

“People come in with their blood pressure not as well controlled, or they come in and their cholesterol’s all of a sudden mysteriously higher. And you realize, OK, the medicine hasn’t stopped working, but you also realize the medicine doesn’t work when it’s still in the bottle,” Weintraub commented.

Generic medicines already represent 70-80 percent of pharmaceutical sales, which is expected to grow larger in the future. Some marketing analysts believe that patent expirations over the last five years are one of the main reasons why Medicare spent $50 billion less than federal officials projected five years earlier.

October 28, 2011, by Mandour & Associates, APC

Los Angeles – Toronto based Litens Automotive filed an action for patent infringement in a German court against Flennor Automotive for infringement of automatic belt tensioner patents. Litens claims that the Flennor automatic belt tensioners are knock offs of Litens’ easy-install tensioners. The belt tensioners at issue were used in many Volkswagon and Audi engines from 2002 to 2009.

Litens owns U.S. Patent No. 7,285,065 as well as patents in Europe and China and claims it has undergone efforts worldwide to detect patent infringers. According to a Litens spokesperson, the latest patent infringement suit was brought as part of the auto parts company’s worldwide patent enforcement efforts. Along with requesting monetary damages, Litens also seeks an injunction against Flennor Automotive to prevent Flennor from continuing to manufacture and distribute the allegedly infringing article. Litens Automotive also issued a statement warning consumers that use of the alleged knock off belt tensioners could result in “catastrophic engine failure.”

German based Flennor Automotive supplies replacement parts such as belts and components for most automobile makes and models. Plaintiff Litens Automotive is one of the world’s leading component manufacturers whose parts have been utilized by auto makers such as Volkswagen and Audi, among others.

As the patent owner, Litens owns exclusive rights in the patented article similar to the rights granted under U.S. law, including the right to use, make, or sell the patented article. If the Flennor belt tensioner is found to be infringing upon Litens’ patents, Litens may be entitled to an injunction or damages including recovery of profits made, enhanced damages, or attorney’s fees. Germany is a first to file patent jurisdiction, meaning that the first party to file a patent is given preference in patent issuance. The United States recently adopted the “first to file” approach in the America Invents Act, reforming the prior “first to invent” policy.

October 24, 2011, by Mandour & Associates, APC

Los Angeles – DuPont’s Pioneer seed unit is suing rival Monsanto for patent infringement, alleging that Monsanto infringed on patents that help genetically modified corn seeds germinate.

The lawsuit, filed in United States District Court for the Southern District of Iowa by DuPont Pioneer Hi-Bred International, claims that it is the owner of patented technology for “enhancing the vigor of maize seeds” by defoliating the plant at a particular point after pollination but before harvest, and on a maize seed and stand of maize seeds that have such enhanced vigor. The lawsuit, filed on Tuesday, is just the latest round in a heated legal battle between the two companies in their quests for dominance in the U.S. corn seed industry.

According to DuPont, Monsanto has been infringing on the same technologies and methods protected by DuPont’s patents and is seeking reimbursement for any profits gained by Monsanto from the sale of any seed products manufactured with the patents. In its complaint, DuPont also claims that Monsanto’s infringement was “willful and deliberate” and is seeking damages, however a specific dollar amount for the damages was not indicated. DuPont is also seeking reimbursement of its attorney fees and a permanent injunction that will prevent Monsanto from using the patented technologies in the future.

In response to DuPont’s claims, Monsanto issued a statement calling the lawsuit “baseless” and “without merit” and said that the methods covered by the DuPont patents were not used in any of its production fields.

“This filing appears to be another in a series of frivolous claims initiated by DuPont against our business and aimed at distracting us from our mission of investing in and delivering new product offerings to farmers around the world. We will defend our business in this latest attack,” stated a Monsanto spokesperson.

No comment was available from the DuPont camp.

October 14, 2011, by Mandour & Associates, APC

Los Angeles – Waltham, Massachusetts based Fractal Systems, Inc. recently disclosed that it has filed a patent application for a fractal based wireless antenna. The technology, known as Fractal Plasmonic Surfaces, uses fractals placed on the surface of the device close together in a unique pattern. According to Fractal Systems, the fractal pattern increases the antenna’s capability at a low cost. The antenna will have wideband ability and is meant to increase signal strength regardless of environment or placement.

In a press release issued by Fractal Systems, inventor Nathan Cohen claims that the new fractal antenna will solve recurring problems smartphone makers have had to deal with including loss of signal strength from user contact with the antenna. Rather than featuring distinct multiple antennas, such as the iPhone’s dual antenna system, the fractal antenna will consist of one antenna that repeats itself numerous times on the surface of the device. Inventor Nathan Cohen stated, “There is a freedom of placement and usage that is unprecedented in new applications. Put simply, whenever you see a surface, you can now think ‘antenna.”

Fractals are fragmented geometric shapes that are “self-similar,” meaning that the shape of the whole is similar to a part of itself. Approximate fractals are common in nature and found on snowflakes, broccoli, crystals, and DNA. For example, the frond of a fern is self-similar to the entire fern, though not identical.

In order to receive patent protection, an invention must be useful, novel, and non-obvious. If the invention does improve antenna signal strength in a new way, it will likely satisfy the utility and novelty requirements of patentability. Furthermore, while approximate fractals do occur in nature, the fractal pattern used by Fractal Systems will not be approximate, but will amount to a “meta-material,” an artificial material not found in nature. The patent will consist of geometric figures scaled down and placed in intricate patterns on the surface of the device. If Fractal Systems, Inc. can show that this antenna method does improve signal strength, they stand to gain considerable attention from smartphone manufacturers striving to eliminate dropped calls.

October 12, 2011, by Mandour & Associates, APC

Los Angeles – Lipitor manufacturer Pfizer, Inc. faces the expiration of a key patent to the manufacture of its signature cholesterol medication in November 2011. In anticipation of the expiration of the patent term, generic drug makers are set to release generic versions of the atorvastatin as soon as November 30, 2011. Pfizer has now brought an action against rival drug company Merck & Co. who plans to combine a generic version of Lipitor with Merck’s drug, Zetia.

Pfizer’s lawsuit seeks an injunction to prevent Merck from using a generic version of Lipitor in the drug combination. Lipitor, an atorvastatin, is known as the bestselling drug of all time, experiencing sales of over $10 billion internationally in 2010. Merck, who has experienced success with Zetia, (over $2 billion in sales in 2010) believes that the combination of generic Lipitor and Zetia will work on two fronts to treat high blood cholesterol. Lipitor works by blocking enzymes in the liver while Zetia blocks the absorption of cholesterol from food. Merck hopes to achieve significant sales by combining the two processes into a complete cholesterol medication.

Unlike trade secrets and trademarks which can last indefinitely, patents have a very specific term length usually 20 years from the date of first filing depending on factors such as the type of patent. In order to maintain some continuous protection over its Lipitor product, Pfizer has filed for several different patents as recently as 15 years ago to protect different aspects of the drug. Some of Pfizer’s Lipitor patents have already expired and generics are simply waiting for FDA approval to launch their products.

On November 30, generics will have the ability to recreate the basic ingredients of Lipitor. However, Lipitor’s crystalline structure is patented until its expiration in 2017. Pfizer is asking the Delaware court to delay Merck’s combination drug for five years, until the crystalline structure patent expires. Merck, nevertheless, has already issued statements stating that it does not plan to use the crystal structure of Lipitor in its combination drug for the time being. Instead, Merck plans to use only the basic ingredients of Lipitor.

Meanwhile, as the Lipitor patent expires, both Merck and Pfizer will experience stiff competition from a range of generics offering atorvastatin at a low price.

October 11, 2011, by Mandour & Associates, APC

Los Angeles – Apple’s iPhone 4 received considerable attention in 2010 when numerous customers complained that gripping the phone a certain way caused dropped calls. The problems stemmed from the iPhone’s external frame antenna, designed to improve signal strength. Unlike its predecessor, the iPhone 3GS, the iPhone 4′s un-insulated steel frame acts as the phone’s antenna. As iPhone 4 users touched the lower left edge of the phone’s exterior, the signal strength was reduced, leading to dropped calls in low reception areas.

This led to Apple issuing a widely criticized statement that consumers should avoid gripping the lower left corner of the phone when making a call. Organizations including Consumer Reports reported that placing a small amount of duct tape or masking tape on the lower left edge of the phone fixed the problem by preventing direct contact with the sensitive area. Apple was eventually forced to offer free cases designed to prevent contact with the exterior antenna to iPhone 4 users as it fixed the problem.

Apple’s latest iPhone, the iPhone 4S features a dual antenna feature, allowing the phone to alternate between two separate antennas based on signal strength. Apple insists that this new feature will prevent the dropped calls and reduced signal strength caused by the previous design flaw. However, the new design may infringe on a patent owned by Korean electronics giant, Samsung.

Danish inventor Gert Frolund Pedersen claims that the new iPhone 4S dual antenna design infringes upon a patent he developed and sold to Samsung. Pedersen’s patent claims a method for determining which of the dual antennas has a stronger signal. The patent utilizes the phone’s detection of whether the user is holding it in the portrait or landscape position and calculates which antenna will feature a stronger signal based on its position.

As the patent holder, Samsung has the exclusive rights to make, sell, or use the patent. Anyone wishing to utilize the technology claimed by the patent must negotiate a license with the patent holder or face a possible patent infringement lawsuit.

If a court holds that the new iPhone does indeed violate Samsung’s patent, it is likely that some sort of licensing agreement will be formed between Samsung and Apple. However, increasing litigation and competition between Samsung and Apple in the tablet and smartphone market call into question whether the two will be able to agree. Apple was awarded an injunction banning the sales of Samsung’s phones and tablets in the Netherlands and Germany. In addition, several other international cases are pending including cases in Australia and the U.S. In a future post we will analyze the claims as to whether the latest iPhone does indeed utilize technology claimed in the Samsung patent.

October 5, 2011, by Mandour & Associates, APC

Los Angeles – Imagine that you are the owner of a neighborhood bakery, which offers free WiFi to all of your customers. Now, imagine opening up shop one morning, only to be served with a patent infringement suit for providing WLAN. Innovatio has exploited the patent statute to do just that–sue end users.

35 U.S.C §271 provides in part that, “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States . . . infringes the patent.” The statute language does not limit infringers to manufacturers, companies, and businesses but is broad enough to encompass end users as well. The broad language has permitted Innovatio IP Ventures, LLC to file patent infringement lawsuits against defendants you would not normally find tied up in patent litigation.

Innovatio is a nonpracticing entity (NPE) that acquired 17 patents from Broadcom earlier this year. Some of these patents, Innovatio believes, covers standard wireless local area network (WLAN) products. Rather than file suit against the companies that make or sell the wireless products, Innovatio decided to file suit against unrelated businesses such as coffee shops, bakeries, restaurants and hotels that are mere users of the WLAN products. Innovatio’s method of suing end users rather than manufacturers is a dangerous new approach to patent enforcement–one that may lead to an influx of lawsuits against consumers for patent infringement. It is reported that Innovatio filed suit against Ramada, Days Inn, Travelodge, and Super 8 whom all operate WiFi hotspots, about 200 in total.

In these cases, Innovatio is seeking $2,300-$5,000 from each of the defendants to license the patent. Innovatio’s patent litigation attorney insists that Innovatio “doesn’t intend to pursue [lawsuits on the basis of] residential use of WiFi” and that “this is not a seat-of-the-pants, fly-by-night shakedown.” Innovatio is not fooling anyone. Innovatio seeks from defendants an uncommonly low amount for patent infringement, making it appear that the company is going after small businesses that cannot afford to take the matter to court.