Get the Facts About Patent Infringement

UNMPatent Co-Owner’s Refusal to Join Lawsuit Results in Dismissal

The US Court of Appeals for the Federal Circuit recently affirmed the dismissal of a patent infringement suit for lack of standing due to the failure to join a patent co-owner as plaintiff.

The case involves a US patent for a “Method for Manufacture of Quantum Sized Periodic Structures in Si Materials.”  The invention is intended for use in connection with manufacturing semiconductors and was derived from the contributions of four people, three of whom were employed by the University of New Mexico at the time of the invention. The fourth inventor, Draper, was employed by Sandia Corp.

In 1996, the four inventors executed a joint assignment of the invention to UNM.  In 2002, UNM assigned its own interest in the initial patent, US Patent S/N 5705321 (or the ‘321 patent) and a related patent, US Patent S/N 6042998 (or the ‘998 patent) to its wholly-owned licensing arm, STC.UNM.

In 2010, STC filed suit against Intel for infringement of the ‘998 patent. Intel asserted that STC could not enforce the ‘998 patent under the terms of the terminal disclaimer, which required identical ownership of both the ‘321 and ‘998 patents. STC contended that Sandia owned the ‘998 patent by reason of an assignment by Draper. Sandia refused to join the case, preferring “to take a neutral position with respect to this matter,” and the district court granted Intel’s motion to dismiss for lack of standing.

According to patent attorney, Laura Lloyd:

Researching all the inventors and owners of a patent before an infringement case is filed can prevent dismissals which are costly for the Plaintiff.

The district court reasoned that ownership rights must derive from inventorship, and because Draper did not co-invent any claims of the ‘998 patent (as distinct from the ‘321 patent) he had no interest in that patent to assign.

The district court explained that when a patent is co-owned, a co-owner seeking to enforce that patent must join all other co-owners as plaintiffs to establish standing. Without this joinder, a plaintiff cannot pursue a patent infringement suit. Accordingly, the Federal Circuit affirmed the district court’s dismissal for lack of standing.

If you have questions about patent ownership, please call today for a free initial consultation: 1 (855) UR-IDEAS or (626) 796-4000.


Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.

Photo Attribution: “The campus of the University of New Mexico, Los Alamos branch in Los Alamos, New Mexico” by Danski14 is licensed under CC A 3.0.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

 

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Federal Circuit Kills Patent Based on Inequitable Conduct

Blood Pressure Patent

The Federal Circuit Court of Appeals upheld a ruling that a patent for a method for making blood pressure drugs was unenforceable due to inequitable conduct by the founder and chairman of the company that owned the patent.

The patent at issue was granted in 2004. Dr. Bernard Charles Sherman, the founder and chairman of Apotex, wrote the application and is the sole inventor on the patent.

Dr. Sherman has written about 100 other patent applications for Apotex and directs all of its patent litigation activities.

The patent covers a process for making tablets used to treat hypertension (high blood pressure). Specifically, the process includes a method for stabilizing ACE inhibitors.

The court noted that several other methods for stabilizing ACE inhibitors were known in the prior art before Dr. Sherman filed his patent application. The application was rejected three times at the US Patent and Trademark Office for reasons of obviousness.

Dr. Sherman then submitted an expert declaration from a Dr. Michael Lipp that a person “skilled in the art” would not find the method claimed in the patent to be obvious. The challenged claim in the patent was modified and the patent was finally granted.

Apotex sued UCB for patent infringement.

The district court ruled that the patent was unenforceable due to Dr. Sherman’s inequitable conduct. The court found that he misrepresented the nature of the defendant’s drugs, that he withheld prior art references, and that he submitted “results” of experiments he never actually conducted.

Dr. Sherman admitted at trial that the experiments “were made up in his head.”

The court noted that Dr. Sherman failed to inform Dr. Lipp of the true facts and thus knowingly perpetuated his mischaracterizations of the prior art.

Apotex appealed the court’s holding that the patent was unenforceable.

The Federal Circuit upheld the lower court’s decision, finding that Dr. Sherman had “breached his duty of candor, good faith, and honesty before the PTO.”

According to Patent Attorney, Laura Lloyd:

This case illustrates how important it is to keep the Patent Office (USPTO) informed of any prior references that an inventor knows of.

Inequitable Conduct after Therasense

Invalidating a patent based on inequitable conduct before the USPTO has been relatively rare since 2011, when the Federal Circuit’s ruling in the Therasense case made such conduct more difficult to prove.

The Federal Circuit had become concerned that defendants in patent cases had overused the defense.

Under Therasense, a defendant must show that a patent holder deliberately withheld prior art from the USPTO and that the disclosure of the prior art would have led the USPTO to disallow the patent claim.

The Risks of Withholding Prior Art

Intentionally withholding information from the Patent Office is unethical, usually self-defeating, and often fruitless.

Undisclosed prior art can be uncovered by various parties and at various stages.  It may be uncovered during the patent examination process or during litigation after a patent has been issued.

Some companies have even turned to crowdsourcing to detect prior art, as in contests run by Patexia.

If you are ready to prepare a patent application for your invention, contact our office to arrange a free initial consultation.

Please Like us on Facebook and Follow us on Twitter for the most current intellectual property news.


Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Digital Blood Pressure Monitor” by Solaris2006 is used under the GNU Free Documentation License.

 

Fossil Told to Pay Attorneys’ Fees for Frivolous Trademark and Patent Defense

Fossil Trademark Patent Defense

Fossil Inc., the maker of handbags, jewelry, and other apparel and accessories, was ordered to pay the attorneys’ fees of a company that successfully sued Fossil for trademark and patent infringement.

Plaintiff Romag Fasteners Inc. makes and sells magnetic snap fasteners used in handbags and other accessories.  It holds a US patent for “Magnetic Snap Fasteners” and also a registered trademark for the mark “ROMAG” used in connection with these fasteners.

Romag sued Fossil, Macy’s, Nordstrom, and other stores for patent infringement, trademark infringement, and other cause of action based on sales of handbags allegedly including infringing fasteners.

In April, a federal jury in Connecticut returned a verdict finding Fossil liable for trademark infringement, false designation of origin, common law unfair competition, and violations of the Connecticut Unfair Trade practices Act. The jury also found Fossil and Macy’s liable for patent infringement.

The jury awarded Romag $7 million based on Fossil’s profits, but the judge ruled that damages based on lost profits were only available for willful trademark infringement, which Romag had not established. The remaining award was $41,863 against Fossil and $12,562 against Macy’s.

The judge ordered that Fossil pay part of Romag’s attorneys’ fees on the grounds that Fossil’s defense that the patent at issue was invalid “bordered on frivolous.”

The judge noted that fasteners were only a “minute portion” of Fossil’s and Macy’s costs of doing business but that the patents were Romag’s “primary business assets.”

She said:

There is a risk that plaintiffs similar to Romag could be discouraged from bringing claims that may garner only small awards but are nonetheless vital to the survival of their businesses where defendants, as was the case here, aggressively pursue invalidity counterclaims in an attempt to prolong litigation and exponentially increase the cost and risk of pursuing a lawsuit.

The judge cited the US Supreme Court’s recent decision in the Octane Fitness case, which allows judges to require a losing party to pay the winner’s attorneys’ fees in exceptional cases.

Romag had asked for $3 million in fees, but the judge rejected several of the grounds and ordered additional briefing on the amount.

Fee Shifting in Patent Cases

The Romag case shows that raising a frivolous (or borderline frivolous) defense can be equally expensive.

Patent Attorney, Laura Lloyd says,

This is an interesting result and I would remind clients to consider the merits or dangers of fee shifting in all stages of an infringement proceeding.

If you are facing an intellectual property infringement suit and want help deciding whether you should fight or settle, contact our office to arrange a free initial consultation at 1-855-UR-IDEAS.

Please Like us on Facebook and Follow us on Twitter for the most current intellectual property news.

Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution:  “Tyrannosaurus Rex” by David Monniaux is licensed by GNU Free Documentation License.