Stein IP LLC issues Vol. 8, Issue 2 of the Stein IP LLC Newsletter (July 2012)

We are pleased to present the latest edition of the Stein McEwen, LP Newsletter, Vol. 8, Issue 3 (July 2012). The newsletter includes information on the following: USPTO Issues Proposed Rules for Implementing the America Invents Act In re Hyon: Substantial Evidence Standard Helps Preserve Finding of Obviousness Viacom v. YouTube: Open Questions of “Substantial Influence” Weaken a Safe Harbor McDonnell Boehnen Hulbert & Berghoff LLP Respond to John Wiley & Sons Ltd.’s Copyright Infringement Complaint Federal Circuit Finds Prior Use By Another Invalidates Patent Per se legal? The Eleventh Circuit Rejects FTC’s “Unlikely to Prevail” Antitrust Challenge to “Reverse Payment” Patent Settlements Bear Declines Invitation to Oust MDL from Patent Infringement Realm For more information on Stein McEwen, LLP, please visit www.smiplaw.co

Bear Declines Invitation to Oust MDL from Patent Infringement Realm

By Kyle Meziere Recently, the Judicial Panel on Multidistrict Litigation (JPML) addressed the contention that the America Invents Act precludes multidistrict litigation (MDL) centralization for patent infringement proceedings. The current legality of MDL centralization was questioned due to an arguable conflict with 35 U.S.C. §299, which was enacted by the America Invents Act. The statute prohibits the alleged infringers, in most patent infringement cases, from being joined in one action. 35 U.S.C.S. §299 (§299). Since the 1960’s, pretrial proceedings for cases involving infringement of the same patent have commonly been centralized into one district under the authority of 28 U.S.C. §1407 (§1407). This has been a way for parties to conserve their resources. It also results in more consistency within a set of closely related cases. In the wake of §299’s implementation, the question of how §299 affects the availability of MDL centralization in patent infringement cases was raised. In May, the JPML granted a motion by Bear Creek Technologies

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Fourth Circuit Remands Rosetta Stone Ltd. v. Google Inc. 2010 Ruling

By Virginia Dudley On April 9, 2012, the U.S. Court of Appeals for the Fourth Circuit revived the trademark infringement case Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531 (E.D. Va. 2010). The Fourth Circuit overturned the summary judgment granted in favor of Google by the U.S. District Court for the Eastern District of Virginia. The Rosetta Stone case stemmed from Google’s sale of marks as AdWords. Adwords are Google’s online advertizing tool that allows a sponsor to “purchase” keywords that prompt the appearance of the sponsor’s advertisement when the keyword is entered as a search item. Rosetta Stone, a language-learning software company, was established in 1992 and began advertizing in connection with Google’s website in 2002. Rosetta Stone initially accused Google of trademark infringement as a result of the website’s use of their mark in AdWords. In terms of this appeal, the Fourth Circuit re-addressed the possible elements of confusion, application of the functionality doctrine, dilution

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Per se legal? The Eleventh Circuit Rejects FTC’s “Unlikely to Prevail” Antitrust Challenge to “Reverse Payment” Patent Settlements

By Meera El-Farhan In F.T.C. v. Watson Pharmaceuticals, Inc., 677 F.3d 1298 (11th Cir. 2012) the U.S. Court of Appeals for the Eleventh Circuit rejected the Federal Trade Commission’s (“FTC”) antitrust challenge to “reverse payment” patent settlements. Under the terms of the “reverse payment” (or “pay-for-delay”) agreement, the patent owner of AndroGel, Solvay Pharmaceuticals, Inc. (“Solvay”), agreed to make over $20 million annual payments to the generic challengers Watson Pharmaceuticals, Inc., Par Pharmaceuticals, Inc., and Paddock Laboratories, Inc. In return, the generic challengers agreed to stay out of the market until 2015, unless another generic version was to enter the market before then.   The FTC brought suit against all parties to the agreement. The FTC challenged the “pay-for-delay” settlement on the basis of unfair restraint of trade (the settlement allegedly being an “unlawful agreement not to compete,” in violation of section 5(a) of the Federal Trade Commission Act[1] (“FTCA”)). The FTC argued that such monopolies allow both generic and

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Federal Circuit Finds Prior Use By Another Invalidates Patent

In Teva Pharmaceutical Industries Ltd. v. AstraZeneca Pharmaceuticals LP, 100 U.S.P.Q.2d 1852 (Fed. Cir. 2011), Teva Pharmaceutical Industries Ltd. (“Teva”) appealed the District Court for the Eastern District of Pennsylvania’s grant of summary judgment in favor of AstraZeneca Pharmaceuticals LP (“AstraZeneca”).  The district court’s decision invalidated four asserted claims of Teva’s U.S. Patent No. RE39,502 (“‘502 patent”) based on AstraZeneca’s prior invention of the subject matter claimed therein. Teva’s ‘502 patent is directed to formulations of statins, which are a class of compounds useful in the treatment of dyslipidemia, or high blood pressure.  Statins are inherently unstable and so must be manufactured in stabilized formulations; Teva’s patent is directed to formulations that are stabilized by an amido-group containing polymeric compound (“AGCP compound”). In October 2008, Teva sued AstraZeneca for infringement of the ‘502 patent based on AstraZeneca’s manufacture and sale of its Crestor drug, which is also a stabilized statin formulation for the treatment of dyslipidemia.  AstraZeneca designed this drug

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Federal Circuit Rules that the Invention of a Method of Making Chemical Compounds May Be Sufficient Contribution to Qualify for Joint Inventorship of the Compounds

By Charles Pierce In Falana v. Kent State Univ., 101 USPQ2d 1414 (Fed. Cir. 2012), the Federal Circuit affirmed the district court’s order that Dr. Olusegun Falana (Falana) be added as an inventor to U.S. Patent No. 6,830,789 (the ‘789 patent), and did not address the district court’s award of attorney’s fees to Falana. Kent Displays, Inc., a private spinoff of Kent State University (collectively, KDI) was attempting to develop proprietary chiral additives with high, temperature independent helical twisting power (HTP) for use in liquid crystal displays.  They hired Dr. Alexander Seed (Seed), who in turn hired Falana.  While working for KDI, Falana developed a synthesis protocol for making naphthyl substituted TADDOLs.  He used his synthesis protocol to create such a TADDOL, which was designated Compound 7.  Compound 7 was found to be significantly temperature independent, and represented significant progress for the project.  Falana left KDI soon after this development.

The “America Invents Act” to Improve and Harmonize the U.S. Patent Filing System

By Kyle Meziere On March 16, 2013, the United States will transition from a “first to invent” patent system to a “first inventor to file” system under the Leahy-Smith America Invents Act (AIA).[i] The AIA is an effort to both reform the U.S. patent system and harmonize the U.S. system with foreign systems. Most notably, the AIA changes an underlying principle of how the U.S. patent filing system functions. It implements the basic “first to file” principle, but maintains some features that are characteristic of “first to invent” systems. Presently, the U.S. system for identifying who has a right to a patent differs substantially from most international systems. Currently, U.S.C. §102 governs the U.S. system according to a “first to invent” principle.[ii] When two parties contest the right to a particular valid claim, the U.S. system awards the patent to the first applicant to reduce the invention to practice, either actually or constructively. Also, the system allows the inventor a

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ICANN’s New gTLD: Dot.Protect.Your.Trademark

By Meera El-Farhan The Internet Corporation for Assigned Names and Numbers’ (ICANN) leap into the new generic Top-Level Domains (gTLDs) will introduce one of the largest unprecedented Internet developments. ICANN’s introduction of the New gTLDs is aimed to promote competition, add consumer choice, increase market differentiation and enhance the diversity pool of geographical and service providers.[1] The New gTLD program allows any private or public entity worldwide to apply for any custom-made gTLDs (example: .com or .yournewdomainname). Furthermore, gTLD strings will be capable of incorporating characters from other languages such as Mandarin Chinese. Although many corporations and other organizations publicly announced their application to certain gTLDs -Google announcing its application to .google, .docs, .youtube, and .lol- ICANN has postponed sharing applicants’ information until “Reveal Day” (June 13, 2012). On Reveal Day ICANN will publicly post all TLD character strings entities have applied for; thus, triggering the processes of trademark “protection” mechanisms. Background The new gTLD is designed to virtually introduce

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Supreme Court Unanimously Rules for Generic Manufacturers in Improper Patent Listing Case

By Charles Pierce In Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S, 566 U.S. ___ (2012), the Supreme Court unanimously clarified the prerequisites of 21 U.S.C. §355(j)(5)(C)(ii)(I) counterclaims seeking to correct or delete patent information that a name-brand pharmaceuticals manufacturer submits to the FDA. Repaglinide is a drug that has been approved by the FDA for the treatment of diabetes.  The FDA approved three methods: repaglinide alone, repaglinide in combination with metformin, and repaglinide in combination with thiazolidinediones.  The compound was covered by the ‘035 patent that Novo had owned, but the patent had expired in 2009.  Novo currently owns the ‘358 patent, a method-of-use patent which claims “a method for treating [diabetes by] administering . . . repaglinide in combination with metformin.” Generic drug makers, rather than submit a new drug application (NDA), may submit an abbreviated new drug application (ANDA) that piggy back on the brand’s NDA.  Following the expiration of the ‘035 patent, Caraco filed such an

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Supreme Court Holds that New Evidence May Be Presented in § 145 Actions, Must Be Reviewed De Novo

By Charles Pierce In Kappos v. Hyatt, 566 U.S. ___ (2012), the Supreme Court unanimously ruled that in a 35 U.S.C. § 145 action, there are no evidentiary restrictions beyond those imposed by the Federal Rules of Evidence, and the Federal Rules of Civil Procedure.  The Supreme court also held that when new evidence is presented, the district court must make a de novo finding on a disputed question of fact. In 1995, Gilbert Hyatt filed U.S. Patent Application No. 08/471,701 (the ‘702 application), “Improved Memory Architecture Having a Multiple Buffer Output Arrangement.”  After amendments, the ‘702 application had a total of 117 claims, which were all rejected by the examiner.  Hyatt appealed to the Board of Patent Appeals and Interferences,  and the Board approved 38 claims, but upheld the examiner’s rejection for lack of adequate written description for the rest.  Hyatt then filed an action under 35 U.S.C. § 145 in District Court. 35 U.S.C. § 145 states, An

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