Fort Properties, Inc. v. American Master Lease LLC

By Zi Wang In Fort Properties, Inc. v. American Master Lease LLC, 2012 WL 603969 (Fed. Cir. 2012), the Federal Circuit affirmed the district court’s holding that a method patent for creating real estate investment instrument adapted for performing tax-deferred exchanges is invalid because it is directed at an unpatentable abstract idea, even though the claim language of the patent at issue recited a computer in certain operations. American Master Lease LLC (“AML”) holds the ‘788 patent at issue.  The ‘788 patent discloses an investment tool designed to enable property owners to buy and sell properties without incurring tax liability pursuant to a tax law provision that exempts certain investment property exchanges when an owner of investment property exchanges one property for another of like kind and certain conditions are met. Specifically, the claims require the aggregation of a number of properties into a “real estate portfolio.”  The property interests in this portfolio are then divided into shares, called “deedshares”,

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Eastern District of Texas Presents Their Take on the Model Discovery Order

By Kevin M. Repper The use of e-discovery requests present a broad spectrum of challenges including preservation of attorney client privileges and work product, production format and the disproportionate costs included in massive searches and data collection. Particularly, patent cases have been a victim of noticeably higher expenses when dealing with e-discovery. Patent cases generally require discovery of the accused products work, what the prior art discloses, and the proper calculation of damages. These topics tend to cause disproportionate, overbroad email production requests, having overwhelming time and production costs. Generally, such expansive production costs outweigh the substantive benefits of the requests. Thus, the Model Order Limiting E-Discovery in Patent Cases was created.  The order was intended to be a helpful starting point for district courts to use in requiring the responsible, targeted use of e-discovery in patent cases.  The goal of the Model Order is to allow a more efficient discovery process, especially with the discovery of mass e-mails. Further,

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President of Restaurant and Lounge Is Found Personally Liable For Unlicensed Public Music Performance

By Evelyn Li The United States Court of Appeals for the Ninth Circuit affirmed a California district court’s granting of a summary judgment in favor of plaintiff-appellees for a total of $203,728.22. The judgment included a statutory infringement damage of $4,500 for each of the eight infringements ($36,000), and attorneys’ fees and costs in the amount of $167,728.22. Plaintiff-appellees, Range Road Music, Inc. together with Sony/ATV harmony, Williamson Music Company and several other music companies (“Music Companies”) sued East Coast Foods, Inc.(“East Coast”) and its sole officer and director Herbert Hudson for copyright infringement after a collection of evidence through an independent investigator, Scott Greene, on unlicensed public performance of music owned by the Music Companies. Scott Greene was retained by American Society of Composers, Authors, and Publishers (ASCAP) to visit the restaurant “Long Beach Roscoe’s” owned by East Coast to investigate whether copyright infringement was likely occurring at the venue. Greene’s report identified eight songs, which were later confirmed

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Claim Language Defined in the Specification Is Reason for Overturning District Courts Ruling of Invalidity for Violating the Recapture Rule

By Kevin M. Repper In AIA Engineering Ltd. v. Magotteaux Intern. S/A, 657 F.3d 1264 (Fed.Cir.2011), the Federal Circuit overturned a district court judgment of invalidity under the recapture rule of 35 U.S.C. § 251.  The court held that the patentee was acting as his own lexicographer, instead of attempting to broaden his own claims, when he repeatedly used the term “solid solution” during patent prosecution. Magotteaux International was granted aU.S.patent directed to wear products used for crushing and grinding abrasive materials.  Consistently throughout the prosecution of the patent, the patentee used the claim language “ceramic pads consisting of a homogenous solid solution of 20-80 percent aluminum oxide and 80-20 percent zirconium oxide.”  Magotteaux later applied for reissue to change “consisting of” to “comprising” and “solid solution” to a “ceramic composition.”  The reissue patent was granted. A year later, AIA Engineering sued Magotteaux in the U.S. District Court for Middle District of Tennessee.  AIA sought declaratory judgment of noninfringement, invalidity,

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Typhoon Touch v. Dell: Claims Saved From Aristocrat Invalidity But No Infringement Found

By Chris Reaves A massive infringement suit against the major players in the touch-screen mobile market ended in the Federal Circuit, which confirmed that two patents required that a computer have specific software installed, not merely the capacity to run said software should it be installed.  In a small comfort to the patent holder, the Circuit also reversed a holding that certain patent claims were unsupported means-plus-function claims, finding that a textual description of the procedure involved qualified as an “algorithm” for Aristocrat purposes. Background In 1988, prosecution began on a chain of patent applications that culminated in Patents No. 5,379,057 (‘057) and No. 5,675,362 (‘362), issued in 1995 and 1997 respectively.  Both patents disclosed a “portable, keyboardless computer” with components including “a touch-sensitive screen … configured for entry of responses” and an “application generator for generating [at least one] data collection application and for creating different functional libraries”. Typhoon Touch Technologies, Inc., the present assignee of the patents, sued

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Federal Circuit Overturns District Court’s Claim Construction in Markem-Imaje Corp. v. Zipher Ltd.

.By Zi Wang In Markem-Imaje Corp. v. Zipher Ltd., 657 F.3d 1293 (Fed. Cir. 2011), the Federal Circuit per curiam majority overturned the district court’s claim construction and summary judgment of noninfringement. Markem-Imaje Corp. sued Zipher Ltd. and Videojet Technologies, Inc. (together “Zipher”), requesting a declaratory judgment that Zipher’s ‘572 patent is not infringed by Markem.  The ‘572 patent is directed to a heat transfer printing apparatus that provides increased control over the acceleration, deceleration, speed, and positional accuracy of the printing operation.  In transfer printers in general, the ink ribbon is wound on two spools, one spool for supplying the ribbon for positioning on the substrate, and the other spool for taking up the ribbon after use.  Maintaining correct ribbon tension is essential for proper functioning of the printer.  The patent specification explains the problems with the mechanism that has been used to provide ribbon tension in prior art printers.  It then distinguishes the prior apparatus from what the

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Federal Circuit Defines Language of 35 U.S.C. § 271(e)(2) in a Hatch-Waxman Controversy

By Kevin M. Repper In the case of AstraZeneca Pharmaceuticals LP v. Apotex Corp., No. 2011-1182 (Fed. Cir. 2012), Astrazeneca holds the rights to three patents related to the drug rosuvastatin calcium. Two of the three patents involve methods of using rosuvastatin compounds. One of which is a method of treating heterozygous damilial hypercholesterolemia (HeFH) and the other is a method of lowering cardiovascular disease risk for individuals who have normal cholesterol levels but demonstrate elevated circulating C-reactive protein (CRP). The method of use patents expire in 2021 and 2018, respectively. Apotex, a generic pharmaceutical manufacturer, filed an Abbreviated New Drug Applications (ANDA) with the FDA seeking to market generic rosuvastatin for treating hypercholesterolemia (HoFH) and hypertriglycerdemia while omitting or “carving out” patented indications directed towards the treatment of HeFH and elevated CRP. Under the Hatch-Waxman Act, the filed ANDA must provide a list of all the related patents and if the method of use patents do not claim a

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Linsanity Hits Trademark Registration both in the United States and China

By Evelyn Li New York Knicks’ rising star Jeremy Lin has filed a trademark application with the United States Patent and Trademark Office for the term “Linsanity” on Feb. 13th, 2012. Three different fillings under the same term came to the agency before Lin acted on claiming his IP rights. Yenchin Chang, one of two California applicants who works as an importer/exporter, has paid the $1,625 filing fee to use the phrase on sports apparel so that he could “be a part of the excitement.” The other California applicant, Slayton, purchased the domain name http://www.linsanity.com. None of those three applicants have any ties to Jeremy Lin. 15 USC §1052 (c), states that no trademark shall be refused registration unless it “Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature.” Also, in determining whether a particular living individual with that “name” would be associated with the mark,

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Vexatious Plaintiff Is Slapped With $4.5M In Fees

By Zi Wang In MarcTec LLC v. Johnson & Johnson, 664 F.3d 907 (Fed. Cir. 2012), the Federal Circuit affirmed the district court’s holding that the case is exceptional and awarded a total amount of more than $4.5 million in attorney and expert fees to the defendant. Plaintiff MarcTec filed suit against Cordis, a subsidiary of Johnson & Johnson, alleging the latter of infringing the ‘753 and ‘290 patents. The two patents-in-suit are directed at surgical devices and implants with a therapeutic-agent-containing coating bonded by heat.  According to the prosecution history, in order to overcome the PTO’s rejection over the ‘417 patent, the patentee highlighted the fact that the coating is to be bonded by heat.  The patentee also tried to distinguish his invention from stents during prosecution for similar reasons.  The allegedly infringing product in question is the Cypher stent manufactured by Cordis.  The product utilizes the technology disclosed by the ‘417 patent, the same patent plaintiff distinguished and

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The Harari Cases: Copied Claims Found Unsupported Despite Proper Incorporation of Prior Applications

By Chris Reaves After a lengthy prosecution led to two interferences over new, copied claims, a Federal Circuit panel reviewed whether the new claims were supported by the old description.  The Circuit found that the application properly incorporated the complete disclosures of two prior applications.  However, it also found, in a limitation on a prior ruling in Baldwin Graphics, that the indefinite article “a” in a “consisting of” clause meant “one and only one” in the specific context of the claim. Background Eliyahou Harari and his colleagues filed Patent Application Nos. 07/337,566 (‘566) and 07/337,579 (‘579), and much later, after “a chain of continuations and a divisional,” 09/056,398 (‘398).  The applications claimed various methods for programming computer memory arrays.  ‘398 added claims that it admitted were “substantial copies” or “near exact copies” of those in Patent Nos. 5,619,454, filed by Roger Lee, and 6,426,898 and 6,493,280, filed by Andrei Mihnea.  Nonetheless, as ‘398 was a child application of ‘566, which

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