Federal Circuit Reverses Summary Judgment Finding Non-Infringement
By Leocadie Welling – Edited by Jad Mills

Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., No. 2009-1556 (Fed. Cir. Aug. 18, 2010)
Slip Opinion

On August 18, 2010, the Federal Circuit reversed in part, affirmed in part, vacated in part, and remanded the decision of the United States District Court for the Southern District of Texas, which had granted summary judgment in favor of Maersk on issues of invalidity and non-infringement for three of Transocean’s deepwater drilling patents.

The Federal Circuit reversed the district court’s grant of summary judgment of invalidity for lack of enablement because there were factual issues precluding summary judgment. The court also reversed the summary judgment of invalidity for obviousness because the district court failed to consider objective evidence of nonobviousness.  Although Transocean had presented contrary objective evidence of obviousness, the court held that the issue could not be resolved at summary judgment.  The court also held that the district court had erred in granting summary judgment of non-infringement.  Importantly, in so holding, the court stated that “a contract between two U.S. companies for performance in the U.S. may constitute an offer to sell within the U.S. under § 271(a)” regardless of whether the contract had been negotiated and/or signed outside of the U.S.

The 271 Patent Blog provides an overview of the case and quotations from the opinion.  Patently O provides a summary of the decision. (more…)

By Ian B. Brooks

Lexmark Sues 24 Companies for Patent Infringement

CNET reports that Lexmark is once again attempting to stop sales of aftermarket printer cartridges. In its latest attempt, Lexmark has filed suit against 24 companies in the International Trade Commission and a U.S. district court alleging infringement of at least 15 patents related to laser printer technology. In its ITC complaint, Lexmark seeks the exclusion of imported goods that infringe the company’s patents. The district court case seeks an injunction and damages. The company was previously unsuccessful in its attempt to combat aftermarket cartridge sales when it filed suit under the Digital Millennium Copyright Act. Lexmark’s press release is available here.

Philadelphia Bloggers Asked to Pay for Business Licenses

The City of Philadelphia is requiring bloggers who operate websites with ads to obtain business licenses, CNN reports. The city, in its attempt to ensure that all locally run commercial businesses operate with the required license, sent letters to various businesses — including bloggers — requiring that they obtain a license. The licenses cost $50/year or $300 for life. The Philadelphia Citypaper reports that the letters upset many bloggers who do not view their blogs as businesses. Many have made less than $50 during several years of operation. Some bloggers see the move as restricting free expression. Some other cities, including Boston and Washington, D.C., similarly claim to require a business license for blogging websites, though Los Angeles reportedly does not require such a license.

RIAA President Sees Failure in Copyright Law

CNET reports that Cary Sherman, the Recording Industry Association of America President, stated that U.S. copyright law ”isn’t working” for content providers. Sherman believes that the DMCA contains loopholes, allowing web companies to function without active concern for illegal activities performed on their websites. Sherman is seeking informal agreements with broadband providers and web companies to address his concern with the DMCA. If unable to form those agreements, Sherman would support further modifications to copyright law. YouTube’s product counsel Lance Kavanaugh disagreed with Sherman, stating that Congress foresaw and intended the current consequences of the DMCA, striking a balance between imposing liability and allowing the freedom to innovate.

Federal Circuit Reverses Noninfringement Declaratory Judgment, Dissent Takes on Gene Patentability
By Chinh Vo – Edited by Anthony Kammer

Intervet Inc. v. Merial Ltd., No. 2009-1568 (Fed. Cir. Aug. 4, 2010)
Slip Opinion

On August 4, 2010, the United States Court of Appeals for the Federal Circuit reversed and remanded the declaratory judgment of the United States District Court of the District of Columbia, which held that Intervet’s Porcine Circovirus vaccine (“PCV-2”) did not infringe Merial’s gene patent. The majority reversed the lower court’s ruling on grounds of claim construction and for improper application of the doctrine of equivalents.

Plaintiff Intervet Inc. (“Intervet”) filed a complaint against Merial Limited (“Merial”) in 2006, asking for a declaratory judgment stating that its PCV2 vaccine did not infringe on Merial’s gene patent. The DC District Court granted this declaratory ruling in Intervet’s favor, finding that Merial’s patent covered only the specific DNA sequences disclosed. On appeal, the Federal Circuit rejected the district court’s construction of Merial’s patent claim as overly limiting, finding that Merial had a proper claim directed at the entire genus of PCV2 sequences. The Federal Circuit also held that a narrowing amendment to the claim did not estop Merial from asserting that one or more elements of Intervet’s product were equivalent to the elements in the claim. Dissenting in part, Circuit Judge Dyk argued that mere isolation of a DNA molecule is not sufficient for patentability.

Patently-O and The Patent Prospector provide an overview of the decision. Inventive Step discusses and questions the appropriateness of Judge Dyk’s dissenting opinion. (more…)

Federal Circuit affirms collaboration is insufficient basis for joint infringement; partial disclosure can form basis for inequitable conduct
By Leocadie Welling – Edited by Anthony Kammer

Golden Hour Data System, Inc. v. emsCharts, Inc., No. 2009-1306, 1396 (Fed. Cir. Aug. 9, 2010)
Slip Opinion

On August 9, 2010, the Federal Circuit affirmed the decision of the United States District Court for the Eastern District of Texas, holding that emsCharts and Softtech had not jointly infringed Golden Hour’s patent for managing emergency medical transport services. The Federal Circuit also vacated and remanded the invalidation of Golden Hour’s patent for inequitable conduct due to an alleged failure to disclose material information. The court agreed that the alleged material information was material even if it was not prior art; however, it held that there was insufficient evidence of deceptive intent.

PatentlyO features an overview of the case.  The Patent Prospector has a detailed summary of the case and criticizes the court’s remand on the deceptive intent question and its reliance on “puppeteering” as necessary for a finding of joint infringement.  271 Patent Blog summarizes the court’s analysis of the inequitable conduct issue. (more…)

By Chinh Vo

Google, Verizon Offer Proposal for Regulating Internet, Face Criticism

CNET reports that Google and Verizon have announced a joint proposal for regulating Internet service that offers a legislative framework for net neutrality. The proposal states that Internet service providers should not be allowed to discriminate against lawful online content producers and gives the FCC authority to deal with violators. The proposal, however, contains exceptions for Internet access over mobile networks and new services distinguishable from traditional broadband access, such as advanced health care, education, or entertainment. The New York Times describes criticism from net neutrality proponents who claim that these exceptions would create a loophole companies could exploit to avoid complying with open-access requirements. Other major Internet and telecommunications companies — including Ebay, Amazon.com, and AT&T — expressed concerns about the proposal and stressed the need to review its provisions more carefully.

Concert Organizer Files Trademark Suit Ahead of Festival Date to Preempt Bootlegging

The Hollywood Reporter, Esq. blog reports that concert-organizer AEG Live has filed suit against hundreds of John and Jane Does for infringement of trademarks related to the Mile High Music Festival in Denver. Though the festival will not take place until this weekend, the complaint claims that AEG has the sole right to sell products bearing the festival’s trademark and asks a federal court to allow local, state and federal police officers to seize bootlegged merchandise. AEG’s action is the second this summer to use the John Doe trademark lawsuit to employ law enforcement to control bootlegging, following a similar suit by a merchandising company before a series of Lady Gaga concerts in New York.

Oracle Files Patent and Copyright Suit Against Google for Use of Java in Android

VentureBeat reports that Oracle has sued Google for patent and copyright infringement over its use of the Java programming language in its Android operating system. Oracle, which took ownership of Java after acquiring Sun Microsystems, stated in a press release that “Google knowingly, directly, and repeatedly infringed Oracle’s Java-related intellectual property.” According to the complaint, Google had knowledge of the patents at issue after the company hired former Sun Java engineers a few years ago. As Ars Technica explains, Google “makes heavy use of Java in the Android software development kit,” but has also released a subsequent development kit that allows developers to use C and C++ to build Android components.