DJ Action Dismissed – 1st Post MedImmune
In what appears to to be the first dismissal of a declaratory judgment action post the Supreme Court’s decision in MedImmune, a court in Minneapolis dismissed two counts seeking declaratory judgment of non-infringement and invalidity (Case 08–cv-00816).
According to the ruling:
“However, although MedImmune lowers the bar for declaratory judgment jurisdiction, a substantial controversy is still required. In the post-MedImmune authorities relied on by[Plaintiff], a patentee has either demonstrated a preparedness to litigate against the prospective declaratory judgment plaintiff, accused the prospective declaratory judgment plaintiff of infringement, affirmatively asserted its rights to license fees, or engaged in some combination of all three. For example, in Micron Technology, Inc. v. MOSAID Technologies, Inc., 518 F.3d 897 (Fed. Cir. 2008), …
Under these circumstances, the Federal Circuit found that the record demonstrated a “substantial controversy” between the parties under the MedImmune standard.” (Emphasis added).
The instant case is distinguishable because [Defendant] has not demonstrated an intent to litigate against [Plaintiff], has not accused [Plaintiff] of infringement, and has not demanded licensing fees. There is no evidence that [Defendant] has pursued litigation against [Plaintiff].
Considering all the circumstances, the Court finds there is no substantial controversy regarding the … Patent supporting declaratory judgment jurisdiction. Specifically, [Defendant] has not yet established any position on whether [Plaintiff] infringes the ‘356 Patent. [Defendant]’s letter to Plaintiff was a means of gathering information regarding potential infringement, not an assertion of an already determined legal interest adverse to [Plaintiff]. Therefore, because the parties have not established positions of adverse legal interests, there is no substantial controversy regarding the ‘356 patent. Accordingly, this Court does not have subject matter jurisdiction over Counts II and III of [Plaintiff]’s Complaint.
A copy of the decision in PDF format can be found by clicking the link (Dismissal Order (26 KB)).
Posted by Douglas Sorocco, August 8, 2008 at 10:14 am
Permalink: DJ Action Dismissed – 1st Post MedImmune
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tell us how you really feel
It is getting very “springy” here in Oklahoma and folks are getting a bit goofy – so, I guess it should come as no surprise that we have been chuckling about this snippet from my RSS reader tonight…
If you were wondering what this is about – have a read over at Politico for the full angst, political intrique, a bank heist, and patent rhetoric.
Posted by Douglas Sorocco, March 25, 2008 at 10:08 pm
Permalink: tell us how you really feel
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In defense of offense…
A couple of months ago I came across Mike Dillon’s blog – The Legal Thing – covering all things legal from the perspective of General Counsel at Sun.
As GC for Sun, Mike’s daily routine must entail a significant amount of attention to intellectual property issues and his blog plows a lot of ground concerning this topic. The posts are informative – albeit they have a “big corporate shine” to them, much to the dismay of a lot of “anonymous commenters”. If you read many patent blogs, you can probably guess the identities of many of these “anonymous commenters” – but they do make for an interesting peek at the more reactionary component of our niche of the legal world.
That is a lot of setup for a recent post of Mike’s dealing with how Sun defends against patent “troll” lawsuits – namely, a good offense.
I recently shared dinner with a few other GCs of local technology companies. It was a nice evening in which we were able to relax and share insights (and commiserate) about topics of common interest. During the course of our meal while we were discussing rising legal costs, one of my table mates made a statement that I found somewhat bothersome. He said that when faced with patent “troll” litigation, he knows he is going to pay something to get rid of the lawsuit and so he economizes on the use of defense counsel. After all, the thinking goes, if your intent is to settle a case, why spend money on a strong defense?
His view is completely contrary to how we think about this problem at Sun. It’s also symptomatic of the way many companies view this issue as a quarterly “cost of doing business” without considering the long term consequences of settlement both for individual companies and our industry.
Before going further, let me state that we respect the intellectual rights of third parties. When a third party claim has been clear and the terms reasonable, we have entered into licenses. However, those situations are easily distinguished from the cases that make up almost all of our present docket of patent litigation. These lawsuits have usually been filed with no advance notice, by plaintiffs that don’t commercialize their patents (i.e. create and sell products) and in venues considered favorable to them. It’s also almost always the case that these plaintiffs have done little or no investigation to ascertain whether our products infringe prior to filing their lawsuit.
I think the approach that Mike outlines is a good example of how to frame decisions when confronted with a freedom to operate issue – whether the FTO issue is brought to your attention through an offer to license, or a cease and desist, or a patent search, or even when you have been served with a complaint — i.e., “How do we play offense in this particular case or instance?”
As Mike mentions, oftentimes it makes sense strategically and economically to simply license the patent – especially if the license allows you to preclude other competitors in the marketplace.
On the other hand, a careful analysis may lead to a determination that a license is unworkable – e.g., that the patent is invalid or because the license fee does not make economic sense. In such a circumstance, a zealous defense against an accusation of infringement may be in order – including the invalidation of the asserted claims.
In either case – taking a license or defending zealously – the accused infringer is approaching the case in an active/offensive manner and judging each case on its relative merits. Defaulting into paying to settle every case is no better than defaulting into aggresively defending every case.
The best defense to a patent infringement lawsuit?
Early analysis of the case and its relative merits (including the type of entity bringing the lawsuit). As each case and situation is unique, arbitrary “blanket rules” – while being easy to implement – don’t necessarily increase value to the corporation. Licensing everything or defending against everything is not a strategy – it is simply an invitation for disaster.
In any event, go on over and read Mike’s blog – I can guarantee that you will learn something.
The best offense…is a good defense.: the legal thing… by Mike Dillon.
Posted by Douglas Sorocco, March 17, 2008 at 9:33 pm
Permalink: In defense of offense…
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Scrabble v. Scrabulous
Check out this statement from an article that I read today: 
Now, as if you needed more proof that we live in a time in which stuffy lawyers don’t dig the digital age, take a look at this: It looks like toy-makers Hasbro and Mattel have sent their legal goons to Facebook and demanded that it remove the immensely popular ‘Scrabulous’ from its site.
Woah, woah, woah. Come on, that wasn’t very nice. Let me explain. Hasbro and Mattel have probably asked their Intellectual Property attorneys to look into this matter. Intellectual property attorneys dig the digital age. In fact, we are advocates for the digital age. That is why we have chosen to devote our working lives trying to protect the very technology and innovation that you create.
If intellectual property attorneys did not step in and advocate for our clients intellectual rights, like the copyright and trademark rights of Scrabble®, everything would be free game and copying and stealing would suddenly become the norm. In fact it’s legal goons like us that advocate and protect the copyright held in the very article written above.
Trust me, I may be a legal goon, but I dig the digital age.
Posted by Douglas Sorocco, January 17, 2008 at 2:01 pm
Permalink: Scrabble v. Scrabulous
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say it aint so – incompetence at the USPTO?
Morningstar reports that four individuals have sued Secretary of Commerce Carlos M. Gutierrez for appointing an allegedly unqualified Deputy Director of the USPTO, Margaret Peterlin. But really, incompetence in government, where’s the beef?
Well, as amended in 1999, 35 U.S.C. § 3(b)(1) requires that the Deputy Director be a citizen of the U.S. “who has a professional background and experience in patent or trademark law.”
According to her executive biography, Ms. Peterlin was Counsel for Legal Policy and National Security Advisor for the Speaker of the House, J. Dennis Hastert, . . . where she advised the Speaker, House and Senate leadership, and senior staff on legislative policy and strategy, including judiciary issues such as IP protection . . . .” Prior to that, Ms. Peterlin was General Counsel to Richard Armey, Majority Leader of the House; clerked on the Fifth Circuit Court of Appeals; and served as a Naval Officer in the communications field. Ms. Peterlin also earned her legal degree sum laude from the University of Chicago.
No doubt an impressive resume, but is it really “a professional background and experience” in patent or trademark law? Many patent and trademark practitioners would probably be insulted by the suggestion. In fact, the complaint filed Monday alleges that Ms. Peterlin is not, and could not become, registered to practice before the USPTO; has never drafted or prosecuted a patent or trademark application; and, overall, has never had direct exposure to patent or trademark practice. And so, these four plaintiffs have asked the D.C. District Court to declare Peterlin’s appointment illegal and order appointment of a qualified alternative.
Morningstar quoted the USPTO as responding, in an emailed statement, “Margaret Peterlin is well qualified for her job as Deputy Under Secretary and Deputy Director, having had direct involvement in oversight of the USPTO and every piece of patent, trademark, and copyright-related legislation considered on the House floor over the past five years . . . .” Well there you have it, the USPTO, of which Peterlin is second in command, says Peterlin is qualified.
On a side note, the suit alleges Peterlin’s appointment “perpetuates USPTO management’s inability to handle egregious delays” in processing applications. Suing the Secretary of Commerce does seem like an innovative way of attempting to fast-track their applications. No word yet on whether the plaintiffs plan to file a patent application for a business method of expediting patent prosecution by suing USPTO personnel.
Posted by Douglas Sorocco, July 20, 2007 at 10:44 am
Permalink: say it aint so – incompetence at the USPTO?
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don’t tell anyone, it is a secret
Via IAM Blog (worth adding to the aggregator for IP types):
Speaking today at the second plenary session of the CIP Forum in Gothenburg, Sweden, Randall Rader, a judge who sits on the CAFC in Washington DC, revealed that he believed the recent KSR v Teleflex decision handed down by the Supreme Court would not lead to “great changes” in the way the Federal Circuit looks at obviousness. In fact, he told delegates that the judgment in the first CAFC decision on obviousness post-KSR had actually been written before the Supreme Court’s decision was handed down and “did not require one iota of change”. Make of that what you will.
KSR is going to prove more and more interesting as time goes on. As a very vaunted commentator recently said, “All the patent practitioners went “Huh?” when the KSR decision was released.”
Huh, indeed!
Posted by Douglas Sorocco, May 30, 2007 at 7:40 pm
Permalink: don’t tell anyone, it is a secret
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An Adventurous Trademark Weekend: Mystery Science Theater 3000 v. Mr. Sinus Theater and Katie Holmes v. Katee Holmes
Over the Memorial Day weekend my husband and I went to Austin, Texas to visit his family and low and behold while we were there visions of intellectual property danced in my head.
Other than being the home of the University of Texas Longhorns (a huge rival of my alma matter, the University of Oklahoma), Austin is a great town rich with arts and entertainment and outdoor recreation. While in town we wanted to try and get tickets to see Mr. Sinus Theater. Mr. Sinus Theater was a live comedic spin off of Mystery Science Theater 3000 mocking films such as Top Gun, The Terminator, and yes, even Britney Spear’s breakthrough film, Crossroads. As you might have guessed, a quick search on the internet to find tickets revealed that Mr. Sinus Theater was sued in 2004 by the creators of Mystery Science Theater 3000 over trademark issues. Apparently earlier in 2003, Mr. Sinus Theater contacted Best Brains Inc., owners and producers of Mystery Science Theater 3000, to license the mark but to no avail. After deciding that Mr. Sinus’ adult-type humor went against the spirit of Mystery Science Theater 3000, Best Brains Inc. filed suit.
But don’t worry this was not the end of Mr. Sinus Theater. Mr. Sinus Theater later changed its name to The Sinus Show. Although the comedy group decided later to part ways, in January 2007 one of the original members formed Master Pancake Theater under the same movie-mockery premise. You can see Master Pancake Theater at the Alamo Drafthouse in Austin, TX. Currently they are showing The Breakfast Club, for show times click here.
Also during my weekend, I woke up after a nap to a television blasting in the background, “Katie Holmes Threatening Legal Action Against Porn Star”. What?! Sure enough, a fashion student who is hoping to launch a career as a porn star recently changed her name to Katee Holmes. Apparently, “Katee is using the name as a tribute to Katie, who has always portrayed in innocence in everything she’s done, beginning with ‘Dawson’s Creek.’ “.
This could get interesting.
Posted by Douglas Sorocco, at 4:07 pm
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KSR – an obvious patent opinion from the Supreme Court
The waiting is finally over, or is it. It seems that the Supreme Court’s opinion in KSR v. Teleflex has left patent attorneys, litigators, and holders asking more and more questions about the obviousness standard. Until the dust settles, I suggest heading over to The Legal Talk Network where a couple of patent experts (including our own Matt Buchanan) discuss KSR and the ramifications. Then come on back to PHOSITA where your opinions are welcome on KSR, obviousness, and the next step.
Posted by Douglas Sorocco, May 3, 2007 at 11:25 am
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No "Big Love" for use of a Mormon Trademark
In a recent article by the Associated Press, the Church of Jesus Christ of Latter-day Saints sent a cease and desist letter to Just Add Coffee, a Utah coffee shop, for using the image of a robed an
gel holding a trumpet up at an angle as coffee is poured into it. The Utah coffee shop used the image in ads and to sell t-shirts and greeting cards. The church claims that the image of the angel Moroni is a registered trademark.
What’s even more interesting is the lengths to which the church has gone to protect its intellectual property rights. The Church of Jesus Christ of Latter-day Saints has set up a non-profit corporation, the Intellectual Reserve, Inc., which owns most of the church’s intellectual property. Most notably, in 1999, the Intellectual Reserve filed suit against Utah Lighthouse Ministries, Inc. seeking a preliminary injunction for copyright infringement. The Intellectual Reserve claimed that the defendants were infringing their copyrights held in a Church Handbook of Instructions by posting it on a website. The court granted the preliminary injunction.
Sidebar comment: While writing this article I couldn’t help but to think back to the great South Park episode “All About Mormons”. If you haven’t seen it, you can check out a summary of the episode here.
Posted by Douglas Sorocco, March 30, 2007 at 4:47 pm
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Them’s fightin’ words
Check out this week’s WAR OF THE WORDS:
Businessweek reports that in Beijing, China, a pharmaceutical company was refused permission to use the name of a disgraced official as a trademark to sell rat poison.
Forbes reports that Jimi Hendrix’s sister, Janie Hendrix, is suing a Seattle company, which is backed by other relatives, for using the legendary guitarist’s image to sell vodka under the name Electric Hendrix.
The Hill reports that two well-known business trade associations, namely the U.S. Hispanic Chamber of Commerce and the U.S. Chamber of Commerce, are embroiled in a legal battle as to the right to use the words “United States” and “chamber of commerce.”
JSOnline reports a “food fight” between Palermo’s Pizza and Trader Joe’s. The complaint claims that Trader Joe’s Pizza Palermo frozen pizzas are trading unfairly on the Palermo’s Pizza frozen pizza brand. The fun twist to this story is that Palermo is not only the last name of the family that owns the company that makes Palermo’s Pizza, Palermo is also a city in Sicily, Italy, having a style of pepperoni pizza distinctive to the region.
Posted by Douglas Sorocco, March 9, 2007 at 3:30 pm
Permalink: Them’s fightin’ words
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