Thomson Electronics’ patent for a digital video signal processing device was rejected by the Japan Patent Office on grounds that the invention presented identical points of resemblance with the description of a cited invention. The decision was held to be in error by the Intellectual Property High Court which ruled in favour of the plaintiff’s action for a reversal of JPO’s decision. ....Click here for full details >>

35 USC §102(b) bars patentability given the intended commercial sale of an invention with an enabling description prior to the critical date- one year before the filing of the application for a patent-, or if the invention was reduced to practice. In the above case, two of Cygnus’ patents were declared invalid by the district court on grounds invoked by 35 USC §102(b), sustained by the Federal Circuit. The Cygnus patents (US patent No. 5, 883, 964 and No. 6, 035, 027) for a computerised call back system was deemed a sale by the court as two overseas individuals, troubleshooting for Cygnus were invoiced for the cost of their telephone calls, at the time the company was involved in discussions with a telecom company for the sale of the invention. Cygnus’s defence that the exercise was experimental was overturned since the court considered the invention to have been reduced to practice, backed by Cygnus’ own declaration to the effect. ....Click here for full details >>

Language can be ambiguous and assignments should explicitly list, by number, the issued patents while drafting an assignment contract. In the above case, Euclid filed for DJ denying infringement of six patents, declaring five of the assigned patents assigned to Vector invalid. Vector claimed ownership of yet another patent, the ‘742 patent deriving from a parent patent assigned by an assignment agreement in 2001. US Patent No. 6,217,742, was issued on April 17, 2001 to Euclid, before the parent patent was assigned to Vector on December 20, 2001. The ‘742’patent in question, stems from a primary patent (No. 6,033, 553). The lower court’s decision, awarding ownership to Vector, was based, according to the judge, on the unambiguous language of the 2001 agreement which stated ‘all rights in the 553 patent and all continuations in part thereof.’ The Federal Circuit vacated the decision, holding that the assignment clearly referred to a single issued patent (in this case ‘553’ while the other four were applications) and remanded the case to be decided after including external evidence. ....Click here for full details >>

The Tokyo District Court under its patent laws [Pat. L§§ 29(2), 104-3] on July 15, 2009, dismissed an action filed by the Plaintiff for injunction among others, against infringement by Toshiba, regarding its Patent No. 3600149 for a user interface for the list of television programmes, stating that the Plaintiff’s patent lacked inventive step and was invalid. ....Click here for full details >>

The Osaka District Court on September 3, 2009, dismissed the plaintiff’s action for damages, alleging infringement under Article 123, paragraph 1, item 2 of its patent law. The plaintiff’s patent No. 3499858 for a shooting game device was invalidated for lack of inventive step. ....Click here for full details >>

Japan’s Intellectual Property High Court, on April 27, 2009 turned down Siemens AG’s action for reversal regarding JPO’s decision on its patent – Pat. Kokai 1997 -117426. The Japan’s Patent Office had rejected the above mentioned patent which was a method to prevent image shading in nuclear spin tomography device as lacking novelty since it was identical to an invention described in a cited publication, under article 29, paragraph 1 and item 3 of its patent laws. ....Click here for full details >>

In the case of Patent No. 3066189, the Intellectual Property High Court under the Articles 123 and 169 of the patent law and Article 61 of the Civil Procedure Code upheld the Japanese Patent Office’s decision to invalidate the above patent on grounds that the plaintiff’s invention identically resembled the cited invention and lacked novelty. ....Click here for full details >>

In the above case, the Federal Circuit concluded that the district court erroneously construed two claims - ‘information transmitter’ and ‘recognition device’ - without taking into account any ‘personal action’ by an elevator user , such as, his part in activating the transmitter, other than walking into the monitored area. The US patent No. 5, 689, 094 owned by Schindler is a sophisticated elevator system built to carry only those passengers which it is trained to recognise and automatically deliver them to their destination floor without any effort on the passenger’s part. Schindler accused Otis Elevator Co. Of infringing its device, and both parties cross moved for SJ, granted by the district court to Otis. On appeal, Schindler argued that the district court’s interpretation of the claim terms were too limiting, which the Federal Circuit acknowledged and held that the district court should have struck out the phrase ‘without requiring any sort of personal action by the passenger’ while construing the claims. The Federal Court vacated the SJ of non infringement, remanding the case for further proceedings. ....Click here for full details >>

The plaintiff which manufactures and sells MIRAPEX® for treatment of idiopathic Parkinson’s disease, brought a suit against two ANDA ( Abbreviated New Drug Application) filers for infringing US Patent No. 4, 886, 812 by trying to win FDA approval for generic versions of the drug. The ‘812 patent belongs to a chain of patents sharing common specifications. The original, US Patent No. 4, 731, 374 (‘374 patent’) was issued after the PTO required the applicants to elect one of at least five independent and distinct inventions claimed in the application, following which they filed a divisional application which claimed more than one of the non elected inventions. This divisional later issued as US Patent No. 4, 843, 086. Before the ‘086 patent issued, the applicants voluntarily filed a second divisional application (the ‘812 patent) based on the earlier divisional application, for which a tem extension was granted. During the infringement suit, both the ‘374 patent’ and the ‘086 patent’ had expired, though the ‘812’ patent was still in force, but with the limited rights. To avoid invalidity due to obviousness type double patenting, Boehringer filed a terminal disclaimer on the last day of the trial, which the district court stated was ineffective since it was filed after the ‘086 patent had expired and that the safe harbour provisions under §121 did not apply to the ‘812 patent as it was a divisional of a divisional that required restriction. The Federal Circuit held that the language of §121 does not require a divisional of a divisional to be restricted to only one of the examiner’s demarcated inventions to fulfil its terms. And accordingly, that safe harbour provisions did apply. The Court further, reversed the findings of invalidity; however, holding that a retroactive disclaimer cannot overcome obviousness type double patenting. ....Click here for full details >>

The defendants sued Therasense (now Abbott Diabetes Care) seeking SJ of non infringements of US Patent Nos. 6, 143, 164 (the ‘164 patent ) and 6, 592, 745( ‘745 patent) owned by Abbott for disposable blood glucose test strips using electrochemical biosensors to measure the level of glucose in blood. Abbott countersued Becton alleging infringement of the ‘164, ‘745 patents as well as the ‘551 patent (Patent No. 5, 820, 551). Abbott further brought about an infringement action against its supplier Nova Biomedical Corp., and sued Bayer Healthcare LLC, alleging infringement of its ‘551 and ‘745 patents. All defendants asserted non infringement of Abbott’s patents in suit and held that the patents were invalid, based on obviousness and anticipation, a decision upheld by the district court while granting SJ. The Federal Circuit in the above case, affirmed all of the district court’s findings, that claims 1-4 of the ‘551 patent were invalid due to obviousness in respect of prior art in membrane-less sensors in US Patent Nos. 4, 545, 382 (‘382 patent) and 4, 225, 410, despite conflicting testimony and that the entire patent unenforceable due to inequitable conduct, where the plaintiff had failed to disclose highly material statements to the European Patent Office during proceedings involving the European counterpart to the ‘382 patent, seen as intent to deceive the PTO. ....Click here for full details >>

The Osaka District Court on September 3, 2009 dismissed the defendant's claim in respect to the plaintiff that it confirm ownership of transferred trademarks and the transfer procedure of the registrations and its demand for injunction, under various laws [Trademark L§36(1), Commercial L §522, Civil Procedure Code §140; Designated Goods; classes 4, 17, 21, 22, 23, 25, 28]. The plaintiff had allegedly signed a repurchase agreement with the defendant on December 14, 2000, transferring 9 trademarks to the defendant, who then, on September 29, 2008 demanded the above mentioned confirmation and pressed for injunction against the use of the marks, an action the court claimed illegitimate and lacked merit, with the alleged right to repurchase having expired. ....Click here for full details >>

Proving intent to infringe, under Spanish IPR laws, has always been a hard task given Article 274 of the Spanish Criminal Code, allowing an infringer the benefit of the doubt by pleading confusion. In the present case, Barcelona’s Appeal Court’s recent decision upholding the trail court’s October 2008 verdict that Futbol Club Barcelona’s IP rights have been violated is considered a welcome decision as it points to the infringer’s awareness of his actions. The Court however, pronounced a case of fraudulent intent, midway between accusations of malice and negligence, while considering the determining factors: that Futbol Club’s trademark was well known, the unauthorised copying meticulous and that the infringers were professionals, while passing judgement. ....Click here for full details >>

In a recent decision regarding case T-137/08, the European Court of First Instance (CFI) upheld OHIM’s decision in refusing to invalidate the green and yellow mark applied for by Deere for its agricultural machines including tractors, holding that the mark acquired distinctiveness through use. Deere & Company filed for registration of the trademark No. 63, 289, which was granted in November 2001. In 2004, BCS SpA moved to invalidate the mark on account that it used similar colours for the same types of machines throughout the EEC countries where the public identified the mark with BCS. Following the refusal by OHIM’s Cancellation Division to invalidate the mark, BCS further appealed to OHIM’s appeal board which also denied BCS its application, prompting the company to file before the CFI. The Court held that BCS did not consistently use the said combination of colours, or that it regularly used the machines in EEC countries, or that the public associated the colours with BCS; whereas, though not strictly a trademark, the colour combination was distinctive in identifying trade origin of Deere’s machines. ....Click here for full details >>

The Argentine government has replaced its existing 76 year old intellectual property law No. 11.723, by a new law, No. 26.570, extending the copyright term on records and for producers of records to 70 years from the date of publication or recital of the musical works. The new law holds good to for those records which are yet to finish their term, which will be automatically extended. The modification follows the extension of copyright to 70 years granted to authors for their works, in line with international norms. ....Click here for full details >>

In yet another case concerning infringement by the defendants against Toho, the Tokyo District Court on July 31, 2009 granted injunction to Toho under Article 113, paragraph 1, item 1 of Japan's copyright laws. Defendant Cosmo Coordinate was restricted from importing and distributing the offending DVDs infringing Toho's reproduction rights in the cinematic works of world famous film maker Akira Kurosawa. The court calculated damages amounting to ¥7,340,400. Click here for Full Article>> ....Click here for full details >>

KK Takahashi Seisakusyo's action for injunction against infringement of its design patent with the registered number 1238637 was dismissed by the Osaka District Court on August 27, 2009, under its design laws [Des. L§37, Civil Code§709, Pat. L § 100]. The court found the two designs for the product - ‘forming mold for reinforcement spacer' different and held that the defendant's product was outside the technical scope of the plaintiff's patent and not in violation. ....Click here for full details >>