November 2011

November 29, 2011, by Mandour & Associates, APC

Los Angeles – Eleven-time world surfing champion Kelly Slater was recently issued a patent by the USPTO for a wave pool. Slater’s Kelly Slater Wave Company applied for patent protection with the USPTO in 2008 after developing a donut shaped wave pool creating a barrel wave. According to Slater, the USPTO issued the patent after a three year application process.

Slater’s application was initially denied by the USPTO because Australian surf company owner Greg Webber already owned a patent for a donut shaped wave pool that produced a barrel wave. The initial denial of Slater’s application forced Slater’s legal team to focus on the differences between the two pools. Granting the patent application, the USPTO agreed that Slater’s wave pool was sufficiently novel and non-obvious for patent protection.

In order to receive patent protection, an invention must be useful, non-obvious, and novel. The novelty requirement necessitates that the invention not already exist in the prior art. In this case, Slater was originally denied patent protection when the USPTO found that his application for a donut shaped wave pool was already the subject of a patent owned by Webber.

Slater, however, managed to convince the USPTO that his pool design was distinct from Webber’s existing patent. Slater focused on the two main differences between the Slater pool and the Webber Pool. First, the two pools differ in the source of the waves. Webber’s pool uses a hull or foil to displace the water toward the surfer. The effect is similar to the wake of a power boat. Slater’s wave, on the other hand, simulates a groundswell, a naturally occurring phenomenon. Second, the Webber pool creates two successive waves while the Slater pool creates only a solitary wave.
Webber and Slater each recognized that the two pools create a different type of wave and experience for surfers.

November 14, 2011, by Mandour & Associates, APC

Los Angeles – The Supreme Court recently clarified the standard of proof required to prevail in an action for indirect patent infringement by intending to induce infringement in a recent case, Global-Tech Appliances v. SEB S.A., 131 S. Ct. 2060 (2011). Prior to the ruling, it was unclear whether the inducing party must have acted only to induce the infringing act or whether the inducing party must have also intended that the infringing act actually infringe the patent at issue. The Supreme Court recently held that to be liable for inducing patent infringement under 35 U.S.C. § 271(b), the defendant must have knowledge that the infringing act it induced constituted patent infringement.

The case arose when Respondent SEB invented a deep fryer, obtained a patent for the invention, and began marketing the fryer. Sunbeam Products then requested that Pentalpha, a Hong Kong based subsidiary of Petitioner Global-Tech Appliances, supply Sunbeam with a deep fryer meeting specifications set forth by Sunbeam. Pentalpha then obtained a SEB fryer and provided Sunbeam with deep fryers based on that SEB model, changing only aesthetic features of the SEB fryer.

SEB sued Sunbeam for patent infringement and subsequently brought an action against Pentalpha’s parent company Global-Tech for intentionally inducing Sunbeam’s patent infringement under 35 U.S.C. § 271(b). The jury found that Global-Tech’s subsidiary had indeed induced patent infringement and the court entered judgment for SEB which was affirmed by the Federal Circuit.

Unlike actual patent infringement which does not require intent to infringe, inducing patent infringement under § 271(b) requires that the defendant act with intent to induce infringement. The standard applied by the federal circuit and upheld by the Supreme Court in this case requires that the defendant knew or should have known that its actions would induce actual patent infringement.

In this case, the Supreme Court found that the evidence was sufficient to find knowledge on Pentalpha’s behalf under the theory of willful blindness. Though “deliberate indifference” to the existence of a patent would not satisfy the knowledge requirement, willful blindness to the existence of a patent is akin to knowledge.

November 10, 2011, by Mandour & Associates, APC

Los Angeles – German based Bayer CropScience recently amended its complaint in its patent infringement lawsuit against Dow Agro Sciences in a Delaware Federal Court adding additional counts of patent infringement. Bayer alleges that Dow’s application for approval to market a three-gene herbicide tolerant soybean infringed on seven Bayer patents.

The original action concerned soy, cotton, and corn sold by Dow under the Dow Enlist brand name. Bayer alleged that Dow’s products infringed on its 2,4-D herbicide tolerant patent. The additional causes of action for patent infringement involve Dow’s herbicide resistant soybean production. Bayer claims that Dow’s soybeans infringe seven Bayer patents for glyphosate-tolerant technology.

Glyphosate is an herbicide used to kill weeds. Glyphosate is the most common herbicide used in the U.S. and is sold by Monsanto under the Roundup brand name. Due to the effectiveness and widespread use of herbicides in agriculture, genetically modified seeds designed to withstand the application of glyphosates have become increasingly popular. For example, Roundup maker Monsanto also markets a line of herbicide tolerant corn seed under the brand name Roundup Ready. In this action, Bayer claims to own seven patents relating to herbicide tolerant technology for use in agriculture.

Reacting to Dow’s request for approval to market herbicide tolerant soybeans, Bayer requested a permanent injunction prohibiting the sale of any infringing soy seeds.To receive the injunction, Bayer will have to show that a refusal to bar sale of the soybeans by Dow will result in irreparable harm. Bayer must also show that money damages would be insufficient in the matter for an injunction to issue. If granted, a permanent injunction would bar Dow’s sale of the herbicide tolerant soybeans until the patent term expires.

November 7, 2011, by Mandour & Associates, APC

Los Angeles – Motorola was recently granted an injunction by the Mannheim Regional Court in Germany prohibiting competitor Apple from selling mobile devices infringing on two patents owned by Motorola. The lawsuit concerned two European Motorola patents, one covering “a method for performing a countdown function during a mobile-originated transfer for a packet radio system,” as well as a patent for a “multiple pager status synchronization system and method.” Both European Motorola patents in issue are equivalent to current U.S. patents.

Rather than defending its devices, as it has done in countless international patent actions, it appears that Apple defaulted in this case. A default judgment occurs when a party neglects or refuses to take some critical action, such as responding to the complaint or appearing in court to defend against the lawsuit. While Apple’s decision not to defend itself may have been a procedural tactic, the judgment is still in effect barring Apple products from sale.

However, the effect of the injunction is being called into question as Motorola elected to sue Apple rather than its regional subsidiary. The injunction therefore is effective against Apple but is perhaps ineffective against its regional subsidiary, commenters say.

Furthermore, because the case was decided through a default judgment, there was no need for an adjudication on the merits. It may therefore be difficult to predict the potential outcomes of the litigation. In this case, the default judgment is appealable. Certainly, if Apple is prohibited from selling products in Germany, Europe’s strongest economy and largest market, it will be a devastating blow to the company’s international revenue stream. However, even if Apple does eventually lose the case on the merits, it is likely that the mobile devices giant would negotiate some type of license agreement with Motorola, allowing Apple to continue to offer its tablets, smartphones, and computers in Germany.