Observing that a semiconductor package was distinct from a semiconductor wafer, the Tokyo District Court, in dismissing an action for injunction, sustained by Japan’s Intellectual Property High Court on August 25, 2009, ruled out any possibility of infringement by the defendant of the cutting method outlined by the plaintiff in its Patent No.3887614. The purview of technical scope does not apply in this case on account of the difference in the products, the district court said, denying equivalency between the defendant’s method and KK Disco’s invention, adding that the plaintiff’s invention lacked inventive step and was invalid. ....Click here for full details >>

Those making and selling patented products, including patentees themselves, are cautioned against false marking claims; as such suits by litigant sharks are on the rise. A percentage of a $ 500 statutory fine for labelling an unpatented article or, mismarking it, is temptation to companies specialising in filing false marking claims against a host of companies who either do so in ignorance that their registered patent has expired, and therefore is ineligible for labelling, or those with faulty patent marking practices. While proving that false marking was a deliberate attempt by these companies to wilfully deceive the public, as the patent law stipulates for a conviction, may be a difficult task, the litigation nevertheless may prove costly and incur liability for the companies, as in the Forest Group Inc. vs. Bon Tool Co case, which would be better avoided by timely reviewing of patent applications, dates and claims cited. ....Click here for full details >>

In the above case, the Federal Circuit reversed the district court’s sua sponte dismissal of Philips’ suit seeking to overturn the Board’s decision in an interference proceeding. Philips was assigned the US Patent No. 6, 241, 751 (the ‘751 patent’) for a cardiac defibrillator. Cardiac Science filed a continuation application - No. 10/159, 806 - (the Owen application) covering a multiple-capacitor cardiac defibrillator which claimed priority to a parent application filed before the priority date of Philips’ patent. To provoke an interference, Cardiac Science copied the claims of the ‘751 patent into the Owen application and claimed an earlier priority date. The PTO declared an interference and formulated one count. The Board of Patent Appeals and Interferences denied the five motions by Philips challenging the validity of the Owen application and cancelled all claims in Philips’ patent disregarding the ‘751 patent while construing a claim term in the Owen application, citing 37 CFR §41.200(b). The district court affirmed the Board and dismissed Philips’ motion for a claim construction hearing under a § 146 action. In its appeal, Philips argued that its dismissal of motion was improper de facto SJ, and that the Board had applied the above mentioned Section erroneously, which the Federal Circuit affirmed. The Court, reversing the district court’s ruling, remanded the case with instructions to construe the claims pursuant to Agilent Technologies, Inc. v. Affymetrix, Inc. , 567 F. 3d 1366 (Fed. Cir. 2009). Philips’ written challenges were to be addressed under 35 USC§§102 and 103. ....Click here for full details >>

In the above case, the Federal Circuit rejected the PTO’s interpretation of Patent Term Adjustment(PTA) under 35 USC § 154(b)(1) where patent applicants are entitled to PTA for each day the PTO fails to meet examination deadlines and issue a patent within three years of the filing date of application. Wyeth challenged the PTA determination in the district court under 35USC §154(b)(4)(A). Both parties filed for SJ. The Court affirmed the district court’s determination that the plaintiffs were entitled to patent term adjustments under the statute due to PTO’s delay in prosecuting their patent applications (US Patent Nos. 7, 179, 892 and 7, 189, 819) for inventions treating Alzheimer’s disease. During prosecution of these patents, the PTO delayed in issuing the patents that entitled Wyeth to both A and B guarantees. 35 USC § 154(b)(1) also restricts PTA when periods of delay overlap. The PTO interpreted the above statute as allowing PTA only for the greater of the two types of delays, but never a combination of the two. The Court found the PTO’s interpretation of the statute contrary to its clear language and held that the Chevron deference did not apply. Accordingly, the Court confirmed the grant of the plaintiff’s motion for SJ, extending the PTA as proper interpretation of the statute. ....Click here for full details >>

While construing claims, keep it simple, should be the legal maxim. The legal community, given the high reversal rates by the Federal Circuit, struggles under costly and cumbersome processes as claim construction gets increasingly more complicated. A more intuitive approach works better suggests a law firm, with the focus not just on the Patent and Trademark Office which are often short staffed, but the onus also on the applicant to ensure incisive and clear patent drafts which would save time, tax payers’ money and cut down on expensive litigation. To achieve this, patents should be viewed for what they essentially are, i.e. a contract, despite the high technology, and be interpreted accordingly. Ambiguities in patent drafts should be penalised to ensure efficiency and equity as 35USC§112 requires that subject matter be claimed distinctively. Disavowals of claim scope need to be clear. Claims need to be interpreted without resorting to prosecution history or extrinsic means other than dictionaries or reference books. The Doctrine of Equivalents should be restricted to limited and extreme circumstances since claims ideally, should be interpreted literally. ....Click here for full details >>

The Osaka District Court on July 16, 2009, denied Plaintiff KK Bikky's action for injunction against the defendant for infringement of its two line registered trademark ‘Premium' (Reg. No. 1989764). The defendant's trademark ‘Premium by LASTSCENE', applied to various things, from clothing to its website. The court found no similarity between the marks since that the name and implied meaning were both different. ....Click here for full details >>

The controversial decision by the Benelux Intellectual Property Office (BIPO) to reconsider the unitary right offered by a Community Trade Mark (CTM) throughout the EU has put European trade mark holders in a fix. BIPO’s decision in the case of Hagelkruis Beheer B. V. vs. Leno Merken B. V. (the OMEL/ONEL case), denying extension of a single registration in a member state to all countries in the EU necessitates a rethink by trademark holders and potential registrants who will now be forced to file for national trademark applications and renew their mark every five years to preserve validity. Such a decision will undoubtedly benefit the state’s coffers and ensure that the CTM is used. How this would affect judicial decisions since BIPO’s decision runs contrary to the policies of the EU, the European Commission or the European Council, including the European Court of Justice which has upheld the validity of a CTM in a member state to be binding across the EU, remains to be seen. ....Click here for full details >>

The Japanese copyright laws under article 112, paragraph1, items 1& 2 allows for a grant of injunction in cases of infringement. The Tokyo District Court on June 17, 2009 following the plaintiff’s complaints, in accordance with the above Article, restrained Cosmo Coordinate from manufacturing, importing and distributing Toho’s DVDs at issue, as well as disposing of its inventory, including master editions from which copies were made. ....Click here for full details >>

Vehicle owners will significantly reduce their maintenance costs and the dying breed of car mechanics revive, if the proposal by a section of the non dealer car repairs industry and the American Automobile Association forming a ‘Right to Repair Coalition’ comes about. Independent car repairers have been concertedly trying to bring about legislation compelling auto manufacturers to make available all information on repair facilities including electronic data, diagnostic tools and replacement parts and equipment, in a motor vehicle, in contrast to the usual practice where such information is supplied only to car dealers, giving them monopoly, putting independent mechanics and car service centres out of business. ‘The Motor Vehicle Owners Right To Repair Act of 2009’ (HR2057), is opposed by car manufacturers perceiving that it would violate copyright and trade secret claims. The Bill was introduced to the House of Representatives in September 2009. ....Click here for full details >>

The Plaintiff’s action for damages alleging infringement was dismissed by the Osaka District Court on July 23, 2009, under its design laws [Des. L §23 Civil code § 709] since it was found that the infringer’s design for a cell container for medical testing was less appealing compared to the plaintiff’s registered Des. Reg. No. 888566, and therefore was held to be dissimilar. ....Click here for full details >>

In the above case, the Osaka District Court on July 23, 2009, held that article 19, paragraph 1, item 2 of the Unfair Competition Prevention Law did not apply to the Plaintiff’s demand for injunction since the defendant was representing his own name and therefore the use of the name for an unfair purpose was unlikely. ....Click here for full details >>