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August 2014 Archives

mFormation Loses Its $147M Award in BlackBerry Patent Case

Does a data connection have to be completely established before it can transmit data? You'd think so, and if you didn't, you'd have lost a $147 million jury award and be out about $200,000 in court costs.

A company called mFormation Software Technologies (MST) claimed that BlackBerry infringed its patent to "the wireless activation and management of an electronic device without the need to have physical access to the device" -- in this case, basically remotely deleting the contents of the phone.

'Inequitable Conduct' Survives; Denial of Apotex Patent Affirmed

Following the Federal Circuit's 2011 opinion in Therasense Inc. v, Becton, Dickinson & Co., the "inequitable conduct" defense -- described by one Quinn Emanuel article on the subject as "the 'atomic bomb' of patent law" -- became much harder to invoke.

Last week, the Federal Circuit proved that news of its death had been greatly exaggerated, as it used inequitable conduct to invalidate a plaintiff's patent.

Fed. Cir. Sends MPHJ 'Scanner Troll' Case Back to Vermont

The Federal Circuit on Monday rejected a plea by a well-known patent troll to remain in federal court. MPHJ Technology purported to own the patents to scan-to-email technology. It sent demand letters to small businesses that use scan-to-email in their copy machines (which is to say, all of them) asking for license fees in the amount of $1,000 per employee, Ars Technica reported last year.

The State of Vermont had it up to here with MPHJ demanding license fees from Vermont corporations and nonprofits, so it filed a lawsuit in state court, alleging unfair and deceptive trade practices.

Post-Alice, Will Fed. Cir. Stem Tide of Software Patents?

June's U.S. Supreme Court decision in Alice Corp. v. CLS Bank International struck a blow to software patents -- or at least the ones that didn't make any sense in the first place. To briefly recap: The Court invalidated a patent for a very generic, unpatentable abstraction whose only claim to patentability was that the abstract concept had been reduced to a computer program. The Court unanimously declared that merely attaching the words "on a computer" doesn't transform an unpatentable idea into a patentable one.

Where does that leave the venerable Federal Circuit, which has always been loath to invalidate a patent?

Fed. Cir. Finds Some Antitrust in Patent Infringement Claims

A lawsuit about an insomnia medication has kept lawyers awake at night for the last five years. Who would have thought?

Tyco Healthcare manufactures Restoril, an insomnia medication. The patent covers formulations of Restoril with a particular surface area. Its competitor, Mutual Pharmaceutical, wanted to make a generic version of Restoril with a larger surface area. Tyco sued for patent infringement, but a district court agreed with Mutual, finding that a generic version of Restoril with a larger surface area couldn't possibly infringe on Tyco's patent. It also ultimately invalidated Tyco's patent, which it acquired from another company, as being prior art.

After that lawsuit didn't work, Tyco filed a citizen petition with the FDA, urging it to reconsider its guidelines for generic makers of Restoril -- and conveniently, those guidelines suggested that the same larger surface area that Mutual wanted to manufacture shouldn't be approved for use. For safety, you know. The FDA denied the petition, which "reli[ed] entirely on uncorroborated generalities and theoretical speculation." Mutual then counterclaimed that Tyco was engaging in "sham" litigation and antitrust behavior to keep Mutual from selling generic Restoril.

Cohiba Cigar Trademark Battle Between U.S., Cuban Firms Can Proceed

For 17 years, two companies -- one American, the other Cuban -- have fought over who owns the U.S. trademark to the venerable Cohiba cigar brand. Both Cubatabaco, the original Cuban manufacturer of Cohiba cigars, and the U.S.-based General Cigar Co. claim a right to the trademark.

Last year, the U.S. Trademark Trial and Appeal Board (TTAB) granted summary judgment in favor of General Cigar on the issue of Cubatabaco's standing to General Cigar's trademark. But last month, the Court of Appeals for the Federal Circuit reversed.