Fed Cir. Reverses WDWA on Rare Interference Ruling

I previously posted about this case here, when Judge Pechman dismissed a suit brought by Philips Electronics seeking to overturn a ruling made in an interference. The Board of Patent Appeals and Interferences had ruled an inventor at Philips Electronics, Morgan, was not the first to invent certain defibrillator methods claimed in US Patent No. 6,241,751. The invention claimed in the '751 patent involved considering patient impedance levels and adjusting the pulse of the defibrillator in response to those impedance levels. According to the Board, an inventor at Cardiac Science, Owen, was the first to invent defibrillators with this capability. Philips asked the USDC here in Seattle to review the Board's decision under 35 USC section 146, and Judge Pechman affirmed the Board on all issues. Most notably, Judge Pechman decided that the Board was not required to construe the terms "impedance-compensated defibrillation pulse," because no matter how those terms were construed, the specific interpretation would not have impacted the Board's ultimate decision.

Yesterday, the CAFC reversed in an opinion authored by Judge Garjarsa (with him were Chief Judge Michel and Friedman, J.) stating that the lower court's ruling was "tantamount to sua sponte summary judgment." Slip Op. at 6. In its opinion, the CAFC explained "[t]hough the court suggested during the last hearing that it need not consider the merits of the interference if it agreed with the Board’s procedural grounds, § 146 grants parties the right to present new testimony and requires the court to review the Board’s factual findings. See Winner, 202 F.3d at 1345; Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 592 (Fed. Cir. 1997) (“Section 146 actions have been described as a hybrid of an appeal and a trial de novo.”)."

The CAFC also noted that "there remains a genuine dispute as to material facts between the parties. For example, the parties still disagree on whether the Owen application contains an adequate written description for the term “impedance-compensated defibrillation pulse” and on whether the Gliner patent anticipates Owen’s claim 38. Cardiac Science argues that Philips failed to inform the district court that it would need to address other issues after ruling on the motion for a claim construction hearing. But Cardiac Science ignores clear statements to the contrary."

Federal Circuit Scraps Point of Novelty for Design Patents

I'm happy to report that the case I recently argued at the Federal Circuit resulted in new law for anticipation of design patents.  Here is the article written for Darby & Darby.  Articles have also appeared in the National Law Journal and IP 360 (subscriptions required for both).

The Court of Appeals for the Federal Circuit has changed the law of anticipation for design patents.  The so-called "point of novelty" test was recently scrapped in a case handled by Darby & Darby.  Representing Walgreens and its supplier, Darby litigator Mark P. Walters argued for the Court to bring its case law in line with another recent decision that had changed the law of design patent infringement, Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008). "The Court's decision in Egyptian Goddess eliminated the point of novelty test for infringement, so it made sense that the same should happen for anticipation," Walters said.  Writing for the majority, Judge Timothy Dyk agreed, saying "[i]t has been well-established for over a century that the same test must be used for both infringement and anticipation."  The case is International Seaway Trading Corp. v. Walgreens, (2009-1237), and the patents-in-suit are U.S. Patent No. D529,263; D545,032, and D545,033.

Fees Denied to K2 in Short Fat Ski Case

The case is Paul N. Nelson v. K2 Inc., Cause No. C07-1660RSL. My previous posts, explain that plaintiff Nelson lost his priority date claimed in U.S. Patent No. 5,603,522 on written description grounds, and then lost summary judgment on his invalidity defense based on allegedly "experimental sales." K2 moved for attorneys fees. In an order denying fees, Judge Lasnik reasoned as follows:

"Prior to commencing this litigation, plaintiff was under no obligation to accept defendant’s (or Volant’s) opinion regarding the validity of United States Patent No. 5,603,522 (the ‘522 patent). Plaintiff had successfully marketed and licensed the invention to a number of sophisticated entities, including K2, and had always maintained that the ‘522 patent was entitled to its earliest claimed priority date. Determining the correct priority date required the Court to evaluate the range and "blaze mark" cases and to consider the policy implications of requiring too much or too little specificity from an inventor. Plaintiff was entitled to a judicial determination of this important issue and was not required to abandon the ‘522 patent simply because his competitors challenged its validity. Because the lawsuit was not baseless or frivolous at its inception, plaintiff’s prosecution of his claims does not justify an award of attorney’s fees under 35 U.S.C. § 285."

Judge Lasnik went on to explain that "the closer question" was whether the prosecution of the case since the first SJ order on written description grounds, October 15, 2008, should be characterized as "exceptional." This issue arose because at oral argument, plaintiff’s counsel apparently stated "we’re out of here . . . we lose" if the Court granted K2's first SJ motion.

Attempting to explain these statements, plaintiffs presented evidence regarding settlement negotiations between the parties, arguing that the fees defendants incurred after the Court’s priority date ruling resulted from K2's own "strategic choices." This evidence was called into question by declarations submitted by K2.

Explaining that "[f]ee disputes should not devolve into mini-trials," Judge Lasnik denied K2's motion, noting that "[i]t is clear from either version of events that plaintiff took significant, albeit unsuccessful, steps to resolve this case in an appropriate and timely manner."

Indeed, plaintiff offered a "walk-away" settlement within days of receiving the Court’s priority date ruling. This was rejected by K2 because they believed the settlement should come with a payment of attorneys fees.

Noting further that plaintiff's experimental use defense was "not well supported," Judge Lasnik said that the weak defense could not serve as basis for fees where "defendants opted to continue the litigation" following the "walk away" proposal.

This is a reminder that continuing litigation purely for the recovery of attorneys fees is almost always a bad idea. The better route is to simply accept your hard-fought victory and move on. After all, this is America, where the default rule is that each party should bear their own attorneys fees, win, lose, or draw.nelsonK2FeeOrder.pdf

Nintendo Prevails Over Fenner Investments in East Texas Patent Suit

Literally on the "eve of trial," Judge Leonard Davis dismissed claims for patent infringement against Nintendo that were brought by Fenner Investment in East Texas. Fenner had alleging that the Wii console and its controllers along with the GameCube infringed on a patent held by Fenner.

Judge Davis dismissed the case Monday citing that no jury trial was needed.

From Judge Davis' order:

Following the review of the parties’ oral arguments and written submissions on Defendants’ Motions for Summary Judgment and Motion for Clarification the Court concludes that the material disputes between the parties concern the meaning and scope of the patent-in-suit (“the ‘751 patent”). As such, these disputes are issues of law. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008). The Court further finds that a correct construction of the claim terms in the ‘751 patent supports the arguments raised in Defendants’ Motions for Summary Judgment of Non-infringement. Therefore, Nintendo’s Motion for Summary Judgment of Non-Infringement (Docket No. 207) and Microsoft’s Motion for Summary Judgment of Non-Infringement (Docket No. 208) are GRANTED. A full opinion and final judgment will follow. The jury is dismissed. No appearance on March 17, 2009 is required.

Nintendo's senior in-house counsel, Rick Flamm, was reported as saying "We are very pleased with the court’s decision," "Nintendo has a long history of developing innovative products while respecting the intellectual property rights of others. We also vigorously defend patent lawsuits when wehttp://www.blogger.com/img/blank.gif firmly believe that we have not infringed another party’s patent, despite the risks that this policy entails. I would like to express our sincere appreciation for the tireless efforts of our legal team, which represented us so well."

That legal team included local Seattle Patent litigators from Perkins Coie, including Jerry Riedinger, Jessica Rossman, Michael D. Broaddus, Tyler C. Peterson, and Vincent Ajay Singh. Congratulations.

Philips Electronics Can't Overturn Interference Ruling

In the United States (at least for the time being), the first person to invent has superior rights in a dispute involving multiple claims covering the same subject matter. According to a decision by the USPTO's Board of Patent Appeals and Interferences, an inventor at Philips Electronics, Morgan, was not the first to invent certain defibrillator methods claimed in US Patent No. 6,241,751.

The invention claimed in the '741 patent involved considering patient impedance levels and adjusting the pulse of the defibrillator in response to those impedance levels. According to the Board, an inventor at Cardiac Science, Owen, was the first to invent defibrillators with this capability. Philips asked the USDC here in Seattle to review the Board's decision under 35 USC section 146, and Judge Pechman affirmed the Board on all issues. Most notably, Judge Pechman decided that the Board was not required to construe the terms "impedance-compensated defiblliation pulse," because no matter how those terms were construed, the specific interpretation would not have impacted the Board's ultimate decision.

From Judge Pechman's order:

The issue presented by this motion is whether the Board erred in failing to construe the
claim “impedance-compensated defibrillation pulse.” The Board never made a single decision
not to construe the claim, but instead determined that claim construction was not necessary to resolve Philips’ preliminary motions. No authority suggests that the Board is required to
perform claim construction when it is not necessary to decide an issue presented in a party’s
motion.

phillips146action_orderdismissining.pdf

Seattle Patent Litigation Update: July 2008

It was a very busy month in July for patent litigation. Here is the case list.

July 29, 2008
Chef'n Corporation v. Trudeau Corporation
WA Western
Pechman
Patent
Federal Question
Plaintiff: Chef'n Corporation; Defendant: Trudeau Corporation

July 23, 2008
Northwest Agricultural Products, Inc. v. Emerald Bioagriculture Corp
WA Eastern
Shea
Patent
Federal Question
Plaintiff: Northwest Agricultural Products, Inc.; Defendant: Emerald Bioagriculture Corp

July 15, 2008
Malki v. Franke Commercial Systems Inc. et al
WA Western
Martinez
Patent
Federal Question
Plaintiff: Avraham Malki; Defendant: Franke Commercial Systems Inc., H & K Norwood Inc., McDonald's Corporation

Implicit Networks Inc. v. International Business Machines Corporation et al

WA Western
Tsuchida
Patent
Federal Question
Plaintiff: Implicit Networks Inc.; Defendant: International Business Machines Corporation, Oracle Corporation, Sap America Inc., Adobe Systems Incorporated
July 11, 2008

Loops, LLC et al v. Phoenix Trading, Inc. et al
WA Western
Martinez
Patent
Federal Question
Plaintiff: Loops, LLC, Loops Flexbrush LLC.; Defendant: Phoenix Trading, Inc., Wendy Hemming, Jeffrey R Hemming, H&L Industrial, Does
July 8, 2008

Widevine Technologies Inc v. Verimatrix Inc
WA Western
Robart
Patent
Federal Question
Plaintiff: Widevine Technologies Inc; Defendant: Verimatrix Inc

You might take notice that this list includes another patent case by Implicit Networks, a relatively unknown local technology owner with some pretty large bones to pick. Implicit's case filed last month is against IBM, Oracle, Adobe, and SAP. It also filed in February against Intel, AMD, Sun, NVIDIA, Raza, and Real Networks. Made me think "Hey ... you forgot someone ... 'your potential, our passion.'"

Implicit's case against IBM, Oracle, Adobe, and SAP involves Infringement allegations targeting IBM's Websphere Application Server, Oracle's Application Server and BEA WebLogic Server, SAP's NetWeaver and Adobe's JRun and ColdFusion products. The patents-in-suit are for computer-server software that performs faster security functions, US 6,324,685, and 6,976,248.

Implicit's case against Intel and others involves US Patent No. 6,629,163 covering "A method and system for demultiplexing a first sequence of packet components to identify specific components wherein subsequent components are processed without re-identifying components." This is basically, a system for processing encrypted data. According to allegations in the Complaint, this technology is used in Intel's Viiv platform, the Java Media Framework, ATI Radeon hardware, software from NVIDIA called Stant, and other products.

In both cases, Implicit is represented by James Rogers, as well as Ed Goldstein, Corby Vowell, adn Matt Prebeg of Houston, Texas. Texas lawyers filing contingent fee-patent litigation in Seattle? Why not. You'll get to trial faster here than in the so-called "rocket docket" of East Texas, where patent cases are languishing due to a back-log.

Claims Construction Order in Wide, Short Ski Case against K2

Judge Lasnik recently construed claims for US Patent No. 5,603,522 for a "Wide, Short Ski." The case is one for infringement brought by inventor Paul Nelson against K2 Corporation. The parties disputed six claim terms from independent claim 1. Not surprisingly, the patent here uses words of approximation, like "about" and "approximately" to describe some numerical measurement ranges. Using the prosecution history as support, Judge Lasnik ruled that these words will be constituted to provide a +/- 3% range from the claimed measurements. This will set the boundary for a determination of literal infringement.

One interesting snippet from this Order is that Judge Lasnik all but ignored evidence from a patent attorney as to what these words ought to mean, saying "Absent evidence that [the patent attorney] is one skilled in the art of designing and/or manufacturing skis, his opinion regarding the proper interpretation of the claim terms is not useful to the Court." (citing Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1361 (Fed. Cir. 2005) (quoting Phillips, 415 F.3d at 1318).


NelsonvK2claimsconstruction.pdf

Seattle Patent Litigation Update (May-June 2008)

So my trial is now over. My posts will pick up and be more frequent. I'm happy to report a victory for one local inventor over Sears Roebuck and their advertising firm, Young & Rubicam. Jury returned a verdict for $1.7 million on Wednesday afternoon. It's a copyright case, so I won't go into detail here. If you are interested, here is a link to today's story in the Seattle Times.

May and June saw some interesting new patent filings in Washington. Here is a list:

June 10, 2008
Nintendo of America Inc v. Nyko Technologies Inc	WA Western	Lasnik	Patent	Federal Question
Plaintiff: Nintendo of America Inc; Defendant: Nyko Technologies Inc
May 28, 2008
Microscan Systems Inc v. Cognex Corporation	WA Western	Martinez	Patent	Federal Question
Plaintiff: Microscan Systems Inc; Defendant: Cognex Corporation
May 22, 2008
Brower v. Lowe's Companies Inc et al	WA Western	Robart	Patent	Patent Infringement
Plaintiff: Jerry E Brower, Jerry E Brower Defendant: Lowe's Companies Inc, Lowe's HIW Inc, Homax Products Inc
May 20, 2008
Westfield Outdoor Inc v. GCI Outdoor Inc	WA Western	Jones	Patent	Declaratory Judgement
Plaintiff: Westfield Outdoor Inc, Westfield Outdoor Inc, Westfield Outdoor Inc Defendant: GCI Outdoor Inc

The most interesting of these cases to me is Nintendo's action over Nyko Technologies to enforce rights in the NUNCHUCK controller for the Wii. Now that is what I like to see: a major technology player from the PNW showing confidence in our local district court to sort out complicated IP matters. This case is also interesting because it seeks to enforce design patent rights in the shape of the controllers amid great uncertainty in the law concerning design patent rights. The Federal Circuit has yet to issue a decision in the en banc review of Egyptian Goddess v. Swisa. Here is a link to post about amicus briefs offered in connection with that case, one of which I co-authored earlier this year on behalf of the Federal Circuit Bar Assocaition.

Trainman Lantern Company Wins Summary Judgment of Non-infringement

Some of you may remember my post about this case in March involving US 7,118,245 for a Trainman Lantern. The Plaintiff in this case, A.G. Design & Associates, LLC, sells patented lanterns to Burlington Northern Santa Fe and other railroads for use by trainmen and engineers. They sued Trainman Lantern Company and initially won a preliminary injunction from Judge Burgess, ordering TLC to cease marketing the accused device. This injunction was vacated by the Court of Appeals for the Federal Circuit and TLC has now won summary judgment of non-infringement. The primary argument was prosecution history estoppel for the element “a plurality of ports in said reflector that permit light from said primary source to pass through in a lateral direction so as to augment said light source from at least one secondary source,” a limitation added to the broadest independent claim during prosecution. There was no dispute that TLC did not literally infringe, so the only question before the court on summary judgment was whether the plaintiff had sufficient evidence to rebut the presumption of surrender for application of prosecution history estoppel. Judge Leighton found they could not, and granted Summary Judgment for TLC.


Trainman143%20Order%20granting%20part%20denying%20part%20defendants%20summary%20judgment.pdf

Seattle Patent Litigation Report: April 2008

April was a very busy month for patent litigation in the Western District of Washington. Wacom settled its patent dispute with competitor, Hanvon, Microsoft and Veritas settled their decade old database dispute, and there were seven new cases filed.

TGN, Inc v. CRS, LLC, (2:2008cv00680) (Pechman)

VTran Media Technologies LLC v. Astound Broadband LLC et al , (2:2008cv00650) (Pechman)

Unigen Pharmaceuticals Inc v. Perrigo Company et al, (3:2008cv05258) (Leighton)

Gardner v. Toyota Motor Corporation et al, (2:2008cv00632) (Jones)

Koninklijke Philips Electronics NV, (2:2008cv00543) (Pechman)

American Piledriving Equipment Inc v. Hydraulic Power Systems Inc et al, (2:2008cv00537) (Martinez)

Progressive International Corporation v. Jo-Ann Stores Inc (2:2008cv00514) (Lasnik)

Washington State Patent Law Association Files Amicus Brief in Bilski

On April 4, 2008 the Washington State Patent Law Association (WSPLA) filed an amicus brief in support of Petitioner Bernard L Bilksi and Rand A Warsaw in the case currently under en banc consideration by the CAFC, In re Bilksi. My earlier posts on this case can be found here and here.

WSPLA's brief was signed by Michael Swope over at Woodcock Washburn. Also on the brief were Grzegorz S Plichta (Woodcock Washburn), Dale Bar, President of WSPLA and lawyer at Lee and Hayes, and Peter J Knudsen, IP counsel for Nastech Pharmaceutical Co., Inc.

Dennis Crouch over at Patently O, has a good summary of all Amicus Briefs filed in the case.

Report for Washington State Patent Cases: March 2008

Patent case filings in Washington State remained strong through March. There were four cases filed total; three in the Western District and one in the Eastern District. This is one better than March 2007, which only had three patent cases total. So far, Washington is substantially ahead of where it was last year at this time in terms of the number of patent cases filed. Through March last year, there were only nine (9) patent cases filed. This year's total through March is eighteen (18), that's an increase of 100%.

Here is a list of cases for March.

Zacklift International Inc v. Kooima (WA Eastern) Judge Van Sickle

Progressive International Corporation v. CKC International LLC (WA Western) Judge Theiler

Cequint Inc v. TECMobile Software LLC (WA Western) Judge Jones

CRS LLC v. Valve Corp. (WA Western) Judge Donohue

Plaintiff Ordered to Produce More Specific Infringement Contentions

The Plaintiff in the case Gebr. Tigges Gmbh & Co. KG v. EYS Metal Sanayi Ltd. (C07-1673) (Lasnik, J.) was ordered to produce more specific infringement contentions in response to the Court's scheduling order calling for "preliminary infringement contentions."

The order states as follows:

The Local Rules for the Western District of Washington do not currently [NOTE: I think the key word from our Chief Judge here is "currently"] define requirements for preliminary infringement contentions. As a guideline, however, many courts, including this Court, look to the Patent Local Rules for the Northern District of California and case law interpreting the rules. See, e.g., McKesson Info. Solutions LLC v. Epic Sys. Corp., 242 F.R.D. 689, 695 n.1 (N.D. Ga. 2007) (stating that decisions of the U.S. District Court for the Northern District of California provide persuasive authority). These rules require PICs to identify “specifically where each element of each asserted claim is found within each Accused Instrumentality” and to declare whether the element “is claimed to be literally present or present under the doctrine of equivalents.” U.S. Dist. Ct. N.D. Cal. Patent LR 3-1(c-d). The courts in the Northern District of California have interpreted this rule as requiring that PICs: reflect “all facts known to [the plaintiff] including those discovered in their Fed. R. Civ. P. 11 pre-filing inquiry,” and contain sufficient detail regarding the plaintiff’s theory of infringement “‘to provide defendants with notice of infringement’ beyond the claim language itself.”

*** (citations omitted)

This Court follows this reasoning because specificity in disclosure responds to the objectives underlying preliminary infringement and invalidity contentions: to streamline discovery and to require both parties “to crystallize their theories of the case early in litigation.” O2 Micro Int’l, Ltd. v. Monolithic Power Sys. Inc., 467 F.3d 1355, 1364-1366 (Fed. Cir. 2006) (upholding under the Federal Rules of Civil Procedure the validity of the Northern District of California’s local patent rules’ requirement that “both the plaintiff and the defendant in patent cases . . . provide early notice of their infringement and invalidity contentions”).

So the take away point from this post is that the WDWA tends to follow practices from the ND of Cal. in terms of local patent practice and in particular, the disclosures and contentions required by the local rules from the ND of Cal., as incorporated into specific cases by judges in this district.
EYSPICorder.pdf
LasnikScheduleOrderPatentCase.pdf

Preliminary Injunction in Tacoma Lantern Case Reversed by the CAFC

Note: This post was modified on 3/27/2008 to reflect the fact that the opinion is nonprecedential.

In this case for infringement of US 7,118,245, the USDC, WDWA in Tacoma granted the plaintiff's motion for preliminary injunction on July 3, 2007. In ordering the preliminary injunction, the district court (Judge Burgess) noted that expert testimony provided that the accused device was "identical in all respects (within + or - .005) to the Patented Device, except that the Accused Device lacked the ‘plurality of ports’ in the reflector that would allow the central light to augment the lateral light." Additionally, the district court briefly discussed a covenant not to compete between the parties, concluding that "because a serious question has been raised on the issue of the Covenant Not To Compete . . . another basis for preserving the status quo pending final resolution of the issue has been shown."

Today in a nonprecedential opinion authored by Judge Prost and joined by Judges Rader and Schall, the CAFC reversed finding that substantial questions existed as to whether the accused devices infringed under a doctrine of equivalents analysis, and that even if the covenant not to compete were enforceable, it had expired.

Judge Settle (Tacoma) Stays Patent Case Pending Reexamination

U.S. District Court Judge, Benjamin Settle (nominated by George W. Bush on January 9, 2007, to a seat vacated by Franklin D. Burgess; Confirmed by the Senate on June 28, 2007, and received commission on July 2, 2007) recently stayed a dispute involving U.S. Patent Nos. 5,993,303 and 6,250,998, patents for hand-held cutting tools.

The dispute is between Pactool International, Ltd and DeWalt Industrial Tool Co., as well as Kett Tool Company (Case No. 06-5367). Judge Settle granted Kett Tool Company's motion to stay in view of a request for reexamination that was filed on December 20, 2007. While the PTO has not yet granted Kett's request for reexamination, Judge Settle stayed the case anyway, calling for a stay until May 1, 2008, and permitting the parties to file a motion to lift the stay in the event the PTO denies Kett's request for reexamination.
PactoolOrderStay.pdf

Western District Sees Significant Uptick in Patent Cases Filed For January 2008

January started 2008 with a red-hot increase in the number of patent cases filed in the Western District. There were 10 patent cases filed last month in Washington State, 9 in the Western District. That's more than the combined total for the same month in 2007 (3 patent cases in Jan.), 2006 (2 patent cases in Jan.), and 2005 (3 patent cases in Jan). With 10 cases already in January of this year, patent filings so far equal about 20% of last years' total filing ... in one month! It's hard to make any predictions at this point, but if we keep it up at this rate, it will be a busy year. Here are the cases filed last month.

Zodiac of North America Inc et al v. 1181969 Ontario Limited et al (Co8-0157)(Martinez) U.S Patent No. 6,006,690 (Mixed-Hull inflatable Boat).

Laughing Rabbit Inc v. J&S Marketing LLC (C08-0123) (Lasnik) U.S. D375,372 (Pocket Flashlight).

Sterling International, Inc. v. Hiscox et al (ED of Wash.) (Co8-0022) (Shea) U.S. Patent No. 5,557,880 (Yellow Jacket Trap).

Airbiquity Inc v. AT&T Inc et al (C08-0094) U.S. Patents 6,681,121 (Circuitry for Activating a Modem in a Cellular Telephone); 7,206,305 (Software Code for Improved In-Band Signaling for Data Communications Over Digital Wireless Networks); 7,221,669 (Cellular Telephone having Improved In-band Signalling).

Cequint Inc v. Pint-Sized Apps (C08-0080) (Robart) U.S. Patent Nos. 7,200,212 and 6,353,664 (Telephonic Communications Products).

Cequint Inc v. Incipher Inc (C08-0081) (Zilly) U.S. Patent Nos. 7,200,212 and 6,353,664 (Telephonic Communications Products).

Trinity Glass International Inc v. ODL Incorporated (C08-05018) (Bryan) U.S. 5,636,484 (Hurricane Door).

Fascinations Toys & Gifts Inc v. Levitation Arts Inc et al (C08-0028) (Robart) U.S. Patent No. 5,168,183 (Levitation Devices)

Neometal WA Inc v. Industrial Strength Corporation (C08-05009) U.S. Patent. No. 6,167,725 (Threadless Jewelry Assembly).

Procyte Corporation v. Johnstone et al (08-0012) (Zilly) U.S. 6,262,105 (Method of Enhancing Hair Growth).

Professor Karl Manheim of Loyola Law School Speaks to Seattle Patent Lawyers About Patent Reform Legislation

Professor Karl M. Manheim from the Loyola University Law School (LA) spoke to Seattle area patent lawyers today about pending patent reform legislation pending in both houses of Congress. Professor Manheim's talk was given at the monthly meeting of the Washington State Patent Lawyer's Association (WSPLA). Professor Manheim is the Loyola director of the Program for Law & Technology at the California Institute of Technology and Loyola Law School. The talk was very informative, covering all areas of both bills, HR 1908 and S 1145. Topics discussed included the hotly debated "first-to-file" provisions of the proposed legislation, which Professor Manheim was quick to describe as the "first inventor to file," placing emphasis on the legislation's continued requirement for filings in the name of the inventor. What was interesting to me is the fact that the original version of HR 1908 included a provision where companies could file in their own name under a representation that the inventor was under an obligation to assign. This provision was removed from HR 1908 after obvious protests from independent inventors, but according to Professor Manheim, it remains in the the Senate bill, S 1145. In fact, there appear to be many significant differences between the Senate and House versions of this legislation. Professor Manheim directed us to a chart prepared by attorneys from Foley Hoag LLP attempting to set forth, on a provision by provision basis, the differences between Senate and House patent reform legislation pending in both houses of Congress. Professor Manheim's comment on this chart was that it seemed "generally accurate," at least insofar as the legislation existed in September 2007. So far, there is no complete version of the Senate bill available and because the Senate did not establish a subcommittee on IP, discussions are being conducted within the broader Senate Judiciary Committee. Here is a link to the complete ("engrossed") version of the HR 1908 as of September 2007.

Scheduling Orders in Patent Cases (WD of Wash.)

Yesterday, a reader asked me whether Judge Zilly has a standing order for patent cases similar to that of Judge Robart. The answer is no, but his scheduling orders in patent cases can be more detailed than other cases and establish deadlines for Markman hearings and briefing on claims construction. Below is a link to a recent scheduling order from a patent case currently pending in Judge Zilly's court.
ZillyMinuteOrderPatentCase.pdf

2007 Patent Litigation Statistics for Washington State

Because Blogger dates my posts when they are started (as opposed to when they are finished), the purpose of this post is to provide a link to my completed report on patent litigation statistics in Washington State. I finished the report today. Enjoy.

Report on Washington State Patent Cases 2007

There were a total of 49 patent cases filed in the State of Washington in 2007. That is an increase of over 48% from 2006 (33 total patent cases filed in 2006) and an increase of over 16% from 2005 and 2004 (both years had 42 patent cases filed). Cases filed in the Eastern District of Washington in Spokane continued to lag far behind those filed in the Western District. In 2007, just 2 of the 49 cases were filed in Spokane; that's just 4%. Tacoma saw five patent cases in 2007, about 10% of the total patent case load.

Here is the Judge break down for 2007 patent cases, listing current judges as of December 2007: Judge Zilly (9); Judge Jones (6); Judge Lasnik(4); Judge Pechman (5); Judge Robart (6); Judge Donohue (2); Judge Bryan (1); Judge Leighton (2); Judge Shea (2); Judge Theiler (2); Judge Settle (2); Judge Martinez (4); Judge Burgess (2); Judge Coughenour (1); Judge Whaley (1). Based on this data, Judge Zilly has the most 2007 patent cases on his docket (not bad for a Judge on senior status). The District's newest judge, Judge Jones, is tied for second with Judge Robart with a total of 6 patent cases from 2007.

According to Justia, there was at least one patent case tried all the way to verdict in Washington in 2007. That case was Baden Sports v. Molten USA, Inc. (06-210MJP). Judgment was entered against Molten for $8M on a jury verdict of willful infringement. Judge Pechman entered a limited injunction against Molten, and there are pending motions for contempt. The patent-in-suit was U.S. 5,636,835 for a padded basketball. This case was filed February 13, 2006, and tried to verdict in under 18 months.

Most cases filed in Washington from January 2004 through the end of 2007 state were settled or dismissed voluntarily without prejudice. So far, there is no uniform scheduling order entered for patent cases in any Federal Court in Washington. Some Judges, including Judge Robart, have a standing order for patent cases setting a schedule for disclosures and briefing leading up to a Markman hearing. Judge Robart's order is attached below (PDF). My quick scan of the scheduling orders entered by all judges in patent cases show that these cases are often scheduled with a trial date set 12-18 months out (from the scheduling order). Generally, the parties are given a lot of freedom to propose a case schedule.

Nationally, Washington saw just under 2% of all patent cases filed in 2007. According to Justia, there were about 2,800 patent cases filed nationally in 2007. The busiest jurisidictions are located in California (532 patent cases in 2007) and Texas (456 patent cases in 2007). Other jursidictions with busy patent dockets in 2007 included New Jersey (197); Illinois (157), and New York (164). Regionally, more patent cases were filed in Washington in 2007 than in Oregon (23) or Idaho (6).

While Wisconsin (specifically, the Western District in Madison) received a reputation in 2007 as a patent "rocket docket" jurisdiction, the entire state saw just 39 patent cases filed in 2007.

Here is a list of all patent cases filed in Washington in 2007 naming the parties, the assigned judge, a brief statement of the current status of each case (as of mid December 2007), and the patent-in-suit.

Laughing Rabbit Inc. v. John Wilson et. al.
December 28, 2007
Martinez
No Answer

National Products Inc v. Gamber-Johnson LLC
December 11, 2007
Jones
No Answer
7298611 Portable Device Docking Station

Aerotel Ltd et al v. T-Mobile USA Inc.
December 6, 2007
Robart
No Answer
4706275; Telephone System

F5 Networks Inc v. A 10 Networks Inc
December 4, 2007
Lasnik
No Answer
6473802 Method and System, for Storing Load Balancing Information with an HTTP Cookie

Fluke Corporation v. Ratner
December 3, 2007
Donohue
No Answer
D554,152; Ergonomic Pressure Calibration Pump


Plant 21 LLC v. Cascade Greenhouse et al
November 19, 2007
Bryan, reassigned to Settle 11/27/2007
No Answer
PP14852; PP13545; Plant Patents

Berg Companies Inc v. Basic Concepts Inc et al
November 19, 2007
Shea
No Answer
5316175 Foldable Spill Collector Container; 7168588 Multi Section Containment; 6880720 Portable Containment


F5 Networks Inc v. Coyote Point Systems Inc
November 13, 2007
Pechman
No Answer
6473802 Method and Syste, for Storing Load Balancing Information with an HTTP Cookie

BooginHead LLC v. Twin Beginnings LLC
November 13, 2007
Theiler
JSR due 1/14/2008
6978918 Teather for Objects Such as Infant Drinking Device

Teragren LLC v. Smith & Fong Company
November 5, 2007
Leighton
JSR due 2/6/2008
5543197 Parallel Randomly Stranded Laminated Bamboo Boards and Beams

Gebr Tigges GMBH & Co KG et al v. EYS Metal Sanayi Ve Ticaret LTD. STI et al
October 12, 2007
Lasnik
Answer filed, JSR filed 12/11/2007
5009795 Process for the Dewatering of Solids Suspended in Water and Screw Press Separator Therefor

Flexiworld Technologies Inc v. Skype Inc
October 12, 2007
Leighton, reassigned to Settle on 10/16/2007
JSR due 1/14/2008
7099304 Apparatus, Methods and Systems for Anonymous Communication.

Nelson v. K2 Inc et al
October 11, 2007
Lasnik
No Answer Filed
5603522; Wide Short Ski

Mukai v. AG Design & Associates LLC
October 11, 2007
Donohue, reassigned to Pechman
2 day bench trial set for 11/10/2008
7118245 Lantern


Canon USA Inc et al v. Screentone Systems Corporation et al
October 1, 2007
Martinez, reassigned to Jones
Motion to stay, transfer or dismiss pending (noted 12/21/2007) Motion before MDL Panel filed 12/27
5166809 Computer Printer Technology

ShareBuilder Corporation et al v. FOLIOfn Investments Inc
September 20, 2007 (DJ)
Martinez
Rule 41 Dismissal on 11/19/2007
7110971; 6996539; 6601044; 7117176; Online Brokerage

Simulab Corporation v. Synbone AG
September 12, 2007
Zilly
Answer filed 12/07/2007
6780016; Human Surgical Trainer and Methods for Training

Tien Hsin Industries Co Ltd et al v. Cane Creek Cycling Components et al
August 15, 2007
Zilly
Motion to Dismiss for Lack of Personal Jurisdiction Denied on 11/09/2007; Motion to Transfer pending (noted 12/7/2007)
5095770; Steering Assembly for Wheeled Vehicle

Scolr Pharma Inc v. Nutra Manufacturing Inc et al
July 30, 2007
Zilly
Rule 41 Dismissal; 9/28/2007
6090411; Monolithic Tablet for Controlling Drug Release; 6337091; Matrix for Contolled Delivery of highly Soluble Pharmaceutical Agents


Campbell Pet Company v. Miale et ala
July 25, 2007
Leighton
Order Dismissing case for lack of Personal Jurisdiction entered 11/02/2007; Notice of Appeal filed; 11/15/2007
6199508; 6230662; Pet Stretcher


Unigen Pharmaceuticals Inc v. Target Corporation
July 16, 2007
Bryan, transferred to Lasnik, reassigned to Jones
JSR Entered 10/17/2007
7,108,868; Isolation of Dual Cox-2 and 5-lipoxygenase; 7,192,611, Identification of Free-B-Ring Flavonoids as Potent Cox-2 Inhibitors


Q13 Inc et al v. Eveready Industrial Services Corp
July 13, 2007 (DJ)
Lasnik
Motion for staged discovery pending
6,318,194 Inspection of Tubes Conduits Pipelines


Prokop Labs LLC v. Staples Inc et al
July 13, 2007
Pechman
JSR due 1/10/2008
5,566,913 Wrist Apparatus


Proven Winners North America LLC v. Cascade Greenhouse et al
July 5, 2007 (transferred from MD Florida)
Coughenour, reassigned to Burgess 7/26/2007
Nothing since transfer
PP11,835; PP13,545; PP13,510, PP15,607; PP14,037: PP13,887;
Plant Variety

Joescan Inc v. LMI Technologies Inc
July 5, 2007
Bryan
Preliminary Injunction Denied on 9/5/2007; Jurisdiction challenged, and motion denied on 9/05/2007 Trial set 11/6/2008
5734172; 5854491; 5,670,787; Method and Apparatus for Electro Optically Determining the Dimensions Location and Altitute of Objects

Frontier Paper and Packaging Inc v. Washington Packaging Supply Inc
July 2, 2007 (transferred from SD of Indiana)
Zilly
JSR filed 12/14/2007; Motion for Summary Judgment Pending, noted 9/7/2007
5,820,268; 6,007,467; 7,021,524;6,080,096 Methods and Apparatus for Packaging Parishable Goods

Alliance Packaging LLC v. 1-800-Flowers.com
June 28, 2007
Theiler
Proof of service filed 11/05/2007
7,219,797 Box with Insert that Extends From A Side and That Divides the Box Into Compartments and Methods for Forming and Using

Fascinations Toys & Gifts Inc v. Plant Cell Technology Inc
June 25, 2007 (DJ)
Coughenour, reassigned to Pechman on 8/01/2007
Stip. and Order dismissing with prejudice 12/11/2007
5,803,014


Precor Incorporated et al v. Smooth Fitness et al
June 21, 2007
Donohue
Answer filed 11/28/2007
5,383,829 Stationary Exercise Device

InstantService.com Inc v. Rood et al
June 12, 2007
Robart
Answer Filed 12/12/2007
6,915,336, Real Time Internet Communication System

Unigen Pharmaceuticals Inc v. Colgate-Palmolive Company
June 8, 2007(removed fromKCSC)
Pechman, reassigned to Jones
Remanded to State Court, 9/21/2007
Disputed Ownership/inventorship under 256, Patent not yet issued

High Maintenance Bitch LLC v. Uptown Dog Club Inc
June 8, 2007
Coughenour, reassigned to lasnick, reassigned to Zilly
Dismissed for lack of Personal Jurisdiction, 10/17/2007
D475,163
D475,162
Dog Collar

High Maintenance Bitch LLC v. B A Barker Inc
June 8, 2007
Zilly
Stip and Order to Dismiss With Prejudice
D475,163 D468,491
Dog Collar

High Maintenance Bitch LLC v. Innovative Spotlight Inc
June 8, 2007
Coughenour
Rule 41 dismissal.
D475,162 Dog Collar

CRS LLC v. IGN Entertainment Inc
June 7, 2007
Zilly
Complaint amended 7/9/2007; Motion Partial SJ Invalidity, pending. Noted 12/21/2007
6,073,124 Method and System for Securely Incorporating Electronic Information Into Online Purchasing Application

Precor Incorporated et al v. Diamondback Fitness Inc
June 5, 2007
Theiler, reassigned to Martinez, Reassigned to Jones
Answer due
5,383,829 Stationary Exercise Device


WizKids Inc v. Wizards of the Coast Inc
May 25, 2007 (DJ)
Pechman
Complaint Amended 7/03/2007; Motion for Leave to File Motion For SJ, pending, noted 10/29/2007 (attached M for SJ)
7,201,374 Method and Article of Manufacture for Collectible Game


Sunstream Corporation v. Reimann & Georger Corporation
May 23, 2007
Benton, reassigned to Robart 7/12/2007
Rule 41(a) Dismissal after Order to Show Cause
6,976,442 Variable Range Apparatus for Watercraft Lift

Home Debut Inc v. Justsnooping.com Inc
May 10, 2007 (transferred from ND Cal.)
Whaley
Motion for Protective Order Pending: noted 12/14/2007
Trial 9/29/2008
6,839,880 Electronic Property Viewing System

F & G Research Inc v. Microsoft Corporation
April 12, 2007
Theiler, reassoigned to Robart 4/18/2007, reassigned to Martinez
Case Consolidated with 07-524-RSM
5,313,229 Mouse and Method For Concurrent Cursor and Scrolling Position

A G Design & Associates LLC v. Trainman Lantern Company Inc et al
March 30, 2007
Burgess, reassigned to Settle, 7/31/2007, reassigned to Burgess 8/31/2007
Motion for Preliminary Injunction Granted: 7/3/2007; Notice of Appeal filed 7/24/2007; Case reopened 9/04/2007 Motion for Contempt Pending, noted 10/25/2007
7,118,245
Trainman’s Lantern

Unigen Pharmaceuticals Inc v. Walgreen Co
March 29, 2007
Lasnik, reassigned to Jones 11/29/2007
Motion PartialsSJ (invalidity) pending, Noted: 12/21/2007
Motion for Sanctions (Rule 11) Pending, Noted: 12/21/2007
7,108,868 Isolation of a Dual Cox-2 and 5-Lipoxygenase Inhibitor from Acacia

MSC International Inc et al v. Norpro Inc
March 23, 2007
Robart
Case dismissed w/o prejudice, Rule 41(a)
D421,908 Spout

DX/DY Voice Processing, Inc. v. Teligence Corporation et al
February 22, 2007
Shea
Motion to dismiss denied; Motion for leave to file amended complaint granted 8/28/2007; Trial: 12/1/2008
7,116,768 Collect Callback

Unigen Pharmaceuticals Inc v. Leiner Health Products Inc et al
February 7, 2007
Robart
Stip. and Order Dismissing Claims with Prejudice: 7/10/2007
7,108,868 Isolation of a Dual Cox-2 and 5-Lipoxygenase Inhibitor from Acacia

National Products Inc v. Vision Tech America Inc
February 5, 2007
Robart
Consent Judgment entered: 6/18/2007
6,666,420 Suction Cup Having Compact Axial Installation and Release Mechanism

Alliance Packaging LLC v. Smurfit-Stone Container Corporation et al
January 24, 2007
Pechman, reassigned to Zilly, 11/28/2007
Markman hearing: 2/7/2008; Trial: 7/28/2008; Motion to Exclude Expert Witness (noted 1/11/2008)
7,156,287 Container with Integrated Pour Spout


National Products Inc v. JVC Americas Corp et al
January 9, 2007
Martinez
Stip. and Order Dismissing Case with Prejudice August 21, 2007.
6,666,420 Suction Cup Having Compact Axial Installation and Release Mechanism


MIXXER Inc v. Mvisible Technologies Inc
January 5, 2007
Zilly
Stip. and Order Dismissing with prejudice, May 1, 2007.
7,113,981 Cellular Telephone Download Locker


RobartStanding%20OrderinPatentCase.pdf