Virginia IP Law : Virginia Intellectual Property Lawyer & Attorney : Troutman Sanders Law Firm : Technology & Patent Litigation

 Victoria A. Espinel

• Email This
• Print
• Comments
• Trackbacks

This blog previously noted the upcoming 21st Annual IP Fall Weekend Seminar, being held by the Virginia State Bar's Intellectual Property Section on October 2 and 3, 2009 at the Omni Hotel in Richmond.

The Honorable David Kappos, Under Secretary of Commerce and the new Director of the United States Patent and Trademark Office, has been added to the schedule recently. He will address the seminar late Saturday morning on his plans for the PTO, and his presentation will include a question and answer session.

See our earlier post for registration links.

David Kappos

• Email This
• Print
• Comments
• Trackbacks

The ABA Section of Intellectual Property Law will host a webinar entitled "Trademark Fraud on the USPTO - A New Landscape" on Wednesday, September 30, 2009, 3:00 PM to 4:30 PM (EST). Details may be found here.

 At the end of August, the U.S. Court of Appeals for the Federal Circuit, in In re Bose, overturned an ever-growing line of Trademark Trial and Appeal Board decisions enabling challengers to invalidate pending trademark applications and issued registrations on grounds of fraud - resulting from circumstances of simple inadvertence or misunderstanding.  The Federal Circuit's Bose decision clarified the standard for alleging and establishing that fraud had occurred before the U.S. Patent and Trademark Office, making the litigation of these claims before the Board more challenging.  However, even after Bose, many questions remain unanswered. 

This teleconference will feature a distinguished panel of trademark experts who will discuss their views on litigating fraud claims and on best practices for trademark portfolios that may be still vulnerable to fraud claims after Bose.

• Email This
• Print
• Comments
• Trackbacks

In a case appealed from the Eastern District of Virginia, the Federal Circuit has clarified how the doctrine of res judicata / claim preclusion applies to subsequent patent infringement actions.

On September 8, 2009, the Federal Circuit affirmed Nystrom v. Trex Co., 553 F. Supp. 2d 628 (E.D. Va. 2008) [Norfolk – Kelley, J.]. See Nystrom v. Trex Co., case no. 09-1026, 2009 U.S. App. LEXIS 20016 (Fed. Cir.). The opinion has been marked as precedential but not yet assigned an F.3d citation. The Federal Circuit affirmed on alternative grounds, however, reaching a different conclusion with respect to claim preclusion than the Eastern District of Virginia did.

This appeal was from Plaintiff Ron Nystrom’s second suit against several defendants, including Home Depot, alleging infringement of a particular patent related to certain types of boards for decking (“the ‘831 patent”). In the first suit, the judge construed the claims in the patent to apply to materials made of wood and manufactured with woodworking techniques and thus found no infringement in the challenged products because they were made of composite materials and not through woodworking techniques. 

Although the Eastern District granted summary judgment against Nystrom, it rejected Defendants’ claim preclusion argument in the second suit. Relying primarily on Hallco Mfg. Co. v. Foster (“Hallco II”), 256 F.3d 1290, 1294 (Fed. Cir. 2001), and Del Mar Avionics, Inc. v. Quinton Instrument Co., 836 F.2d 1320 (Fed. Cir. 1987), Judge Kelley explained that claim preclusion did not apply because the allegedly infringing product in the second suit was materially different from the allegedly infringing product in the first suit and because the proper way to apply the “essentially the same” test from prior Federal Circuit cases was to “compare[ ] device to device,” rather than the device to the claim. See Nystrom, 553 F.Supp.2d at 632, 633.

• Email This
• Print
• Comments
• Trackbacks

The Virginia State Bar Intellectual Property Law Section will be holding its Twenty-First Annual Fall Weekend CLE on October 2-3, 2009, at the Omni Hotel in Downtown Richmond, Virginia. It will be begin on Friday, October 2, 2009 at 1:30 pm and finish around 1:00 pm on Saturday, October 3, 2009.

The featured topics and speakers include:

• Use of Surveys in Trademark Disputes, presented by Hal Poret, Guideline Market Research

• Patent Reform Status Report, presented by Hon. Q. Todd Dickinson, Executive Director, American Intellectual Property Law Association

• Fraud Standards at the Trademark Office, presented by Linda McLeod, Finnegan Henderson Farabow Garrett & Dunner LLP

• Hot Topics in Patent Law, presented by Stephen Kunin, Oblon Spivak McClelland Maier & Neustadt

• Electronic Copyright Applications, presented by John Jennison, Jennison & Schultz

• Ethics in IP, presented by Deborah Jeffrey, Zuckerman Spaeder

• Bankruptcy and Intellectual Property, presented by Matthew Cheney and Karen Hermann, Crowell & Moring

• Google Adwords/Online Advertising, presented by Brad Newberg, Holland & Knight LLP

For a PDF brochure and full details, please visit: http://www.vsb.org/sections/ip/2009-Fall-CLE.pdf

• Email This
• Print
• Comments
• Trackbacks

Written by Troutman Sanders Intellectual Property Attorneys:  Doug Salyers, Michael Hobbs and James Thomas.

With the Federal Circuit’s recent decision in In re Bose Corporation, the Court squarely reversed the test for trademark fraud on the Patent and Trademark Office adopted by the Trademark Trial and Appeal Board in Medinol v. Neuro Vasx, Inc.

To recap the history of these seminal decisions regarding trademark fraud, in 2003, the Trademark Trial and Appeal Board (“TTAB”) in Medinol v. Neuro Vasx, Inc. reviewed a case where trademark owner Neuro Vasx had filed an “intent to use” trademark application for its mark "NEUROVASX" for “medical devices, namely neurological stents and catheters.”  As required by the United States Patent and Trademark Office (“PTO”), to obtain a federal registration from an “intent to use” application, Neuro Vasx filed its Statement of Use that the “NEUROVASX” mark was in use on the products covered by the application.  In doing so, counsel for Neuro Vasx checked a box on the form indicating that the mark had been used in connection with all of the goods it had originally identified in the application. However, at the time it checked that box, Neuro Vasx had only used its mark in connection with catheters, but not with stents.  Although a registration issued, the mistake was not discovered until subsequent litigation before the TTAB. 

• Email This
• Print
• Comments
• Trackbacks

          In May 2009, the American Civil Liberties Union and the Public Patent Foundation filed a lawsuit arguing to invalidate a group of patents having claims directed to human genes and the generic testing of human genes to determine their risk of breast and ovarian cancer. The gene patents are owned or licensed by Myriad Genetics.  The inventors of the patents recognized that mutations along the BRCA1 and BRCA2 gene sequences are indicators of an increased risk of breast and ovarian cancer in women. (Details of the lawsuit are available here on the ACLU website.) At least in part, the patents claim methods of determining the risk of these cancers by comparing the BRCA1 and BRCA2 gene sequences of a patient with the normal sequence of the genes. The ACLU and AMA argue that such claims should be found to be invalid and unpatentable as unconstitutional and for reasons of public policy.

          The ACLU filed the lawsuit in U.S. District Court for the Southern District of New York against the U.S. Patent and Trademark Office (PTO) and Myriad Genetics and the University of Utah Research Foundation on behalf of breast cancer and women’s health groups, individual women and scientific associations.

          This week, the American Medical Association along with other medical and genetic organizations have filed a “Brief for Amici Curiae” backing the ACLU position. The brief (found here)argues that the Myriad claims are unpatentable "laws of nature," do not claim patentable subject matter based upon the machine or transformation test as interpreted by the Court of Appeals of the Federal Circuit in Bilski, and provide compelling public policy arguments against the patentability of these claims and similar medical and biotechnology method claims.

          This is an important case to the biotech industry and may change how patent applications are prepared for gene and diagnostic method inventions. 

• Email This
• Print
• Comments
• Trackbacks

            Preparing a strong patent application is a complex and demanding task. The inventor interview is an important part of the application drafting process. Early and effective communication between the inventor and their patent attorney often results in a more detailed description of the invention, stronger claims, and lower fees. 

Two friends recently started a patent boutique, Abbott & Costello LLC. I overheard this discussion in their offices. (With apologies to Bud Abbott and Lou Costello. Here is a video of their classic vaudeville sketch “Who’s on First?”)

Costello: Well, Abbott, we finally got our first patent client. Are you ready to interview the inventor?

Abbott: I certainly am.

Costello: We want to do a great job on this application. You'll need to know the names of the inventors, everything about the invention, the prior art, and other information.

Abbott: I know it all, I’m ready. OK, well, let's see, Who's the inventor, What's the invention, I Don't Know, the joint inventor...

Costello: That's what I want to find out.

Abbott: Well that’s what I’m telling you … Who's the inventor, What's the invention, I Don't Know, the joint inventor

Costello: Did you prepare for this interview?

Abbott: Yes.

Costello: And you know the inventors' names?

Abbott: Well I should.

Costello: Well then, who's the inventor?

Abbott: Yes.

• Email This
• Print
• Comments
• Trackbacks

As you may know, the United States Supreme Court will help clarify what is patent eligible subject matter in the case Bilski v. Kappos.  The holding in Bilski will tell us how determine whether business method/software/medical process inventions are patentable and whether many issued patents with such claims are still valid.  But before the Supreme Court issues its opinion (Oral argument is not scheduled until November 9, 2009), the examiners of the United States Patent and Trademark Office (USPTO) must continue to make decisions on patentability every day.  The examiners just can't wait for the Supreme Court to ponder, mull and then opine on the issue.

• Email This
• Print
• Comments
• Trackbacks