California Patent Attorney® Blog

Apple's Latest Patent Allows for Voicemail Screening

March 18, 2014,

iphone.jpgCalifornia - Apple was recently assigned a patent, numbered 8,666,034 , which will allow users to listen to a message as it is being left by a caller and then pick up mid-message, if desired. In a time known as "the age of texting" where voicemail is increasingly viewed as outdated, Apple is attempting to modernize this older phone feature by adding it to its next lineup of mobile phones. As many of us recall, with land-line based voice mail machines, one could let an incoming call go to voicemail, listen to the caller leave a message, and depending how important the call was, pick up during the message.

Apple's new patent will allow iPhone users to do exactly this, enabling remote voice message systems to relay the information instantaneously to users. Apple customers will still have the option to have an incoming call sent directly to voicemail, without screening it, but several commentators have already pointed out the irony of Apple's attempt to update voicemail by adding a technology that is widely considered a thing of the past.

Officially termed "Audio call screening for hosted voicemail systems", the patent comes as part of a huge collection of intellectual property originally held by Nortel Networks, until the struggling telecom firm struck a deal with its rivals. Back in 2012, Apple was part of a group of big name tech companies (including Microsoft, Research in Motion, Sony, and Ericsson), dubbed the Rockstar Consortium, that closed a deal to buy Nortel's $4.5 billion patent portfolio. Part of the spoils Apple enjoyed as part of the acquisition, the United States Patent and Trademark Office (USPTO) officially recorded the assignment of the voicemail screening patent to reflect Apple, Inc. as its owner earlier this month.

Currently, iPhones allow users to see their voicemails in list form through "visual voicemail," a technology that was added by Apple in 2011 and which was the subject of the much talked about U.S. Patent Number 7,996,792. With visual voicemail, users do not have to call a voicemail line to access voicemails by audio, but can simply press play on the touch screen display to hear a message. With the new addition of the technology set forth in the '034 patent, visual voicemail will be taken one step further as a message will play automatically in real time as it is being left, giving users the option to answer right then, rather than having to wait until the voicemail is complete to listen to it and then return the call.

Patent Filings Point to "Hot Corners" as Part of New Samsung Smartphone Interface

February 6, 2014,

samsung.jpgCalifornia - A series of recently unveiled patents give a glimpse into what we might see as part of the next line of Samsung smartphones. With the new Samsung Galaxy S5 set to be released in March, all eyes are on the Korean based company for what's to come for the new generation of devices. After doing some digging, Korean Intellectual Property Rights Information Service (KPRIS) was able to uncover patent documents that offer some fresh details about the new phones.

Among the new developments showcased in the filings is a new feature called "Hot Corners," which comes as part of Samsung's efforts to make its larger screens easier to navigate. With the overall size of smartphones growing (Samsung's Galaxy Mega has one of the biggest screens on the market, at 6.3 inches), the company has been looking for new ways improve ease of use.

The new "Hot Corners" concept will be featured in the revamped TouchWiz interface and will make it so that one-handed operation is more manageable on the large phones. The "Hot Corners" platform of the new TouchWiz features four semi circles in each corner of the display. Each corner has a few shortcuts to commonly accessed applications and phone functions, such as weather, maps, and favorite calls.

In addition to the more accessible "Hot Corners" home display, the patent filings describe some other features to be included in the updated interface, including a more socially focused music and media application. Specifically, the patents describe ways in which users will be able to see which of their friends have listened to a song that they are listening to and what ranking that friend gave the song. Beyond that, the new TouchWiz music app will allow Samsung users to comment back and forth on songs and videos, similar to Spotify or YouTube.

With the new Touchwiz patents coming out so close to the release of Samsung's 2014 flagship device, it is almost certain that these new features will be included as part of the S5 package. The new device is said to be packed full of new technology, including an improved camera, updated operating system and a faster processor. With all of the added features, the S5 is set to sell for a cool $650.

Samsung Patent Reveals Plans for a Futuristic Foldable Smartphone Display

January 6, 2014,

samsung.jpgCalifornia - The next generation of Samsung smartphones will likely feature a game changing foldable dual screen, as revealed by a patent filed in Korea. The Seoul-headquartered company confirmed its plans to make the foldable screens a reality, with its CEO, Kwon Oh-hyeon, stating at an analyst's conference last month that it "would lead innovation by introducing the 'foldable' display in 2015." Given that the patent was recently found to have been filed back in 2012, experts have expressed concern over whether the new technology could actually hit the worldwide market by 2015.

Regardless of the timing of the foldable screen's introduction to the mainstream market, the newly surfaced patent filing has people excited. The very detailed patent application notes that the screen may fold by means of a hinge, or possibly just by bending. In addition, it provides a real life glimpse at the many possible applications of the display by including several artistic configurations of the new device in action.

Among those that stand out the most are a rendering of a "clipboard" on one half of the screen and a message display in the other, whereby the user can find and drag files or pictures into the message half of the display. There is also an example of an e-book type of display, which makes the folding smartphone look very much like a traditional book, with pages on both sides that the user may flip through. The filing also suggests the potential for expanded video conferencing capability with the folding screen as well as an embodiment of the way that the screen could fold backwards to stand up on a desk or table and then connect to other nearby devices for interactive gaming.

Samsung has previously filed patent applications for smartphones with flexible concave screen displays, which are set to materialize in the company's unveiling of its Galaxy Round phone, rumored to hit shelves next year. Samsung is not the first to jump on to the bendable screen trend. Electronics rivals including LG, Sony, and Microsoft have already filed similar patent applications for their own variations on the flexible display. But despite the brewing competition, Samsung appears to be ahead of the pack as it seems that this application is the first to showcase a display that can actually fold in half.

Beardo Sues over Bearded Hats Patent Dispute

November 19, 2013,

shaver.jpgCalifornia - In a complaint filed last Wednesday, Beardo, Inc. brought a lawsuit under the name of its parent company, Stat Ltd., claiming that three other companies have infringed on its popular hat design. The Beardo hats, which are sold online and in stores across the nation, are similar to traditional ski hats or beanies except that they feature an attached piece in the shape of a beard that covers the face. In its complaint, Beardo claims that two California companies and one in Utah willfully infringed on the design, for which it holds a patent.

The patent, which is entitled, "Combined ski face mask and hat", covers the entire hat and "beard" portion of the accessory and was filed in August of 2011. The allegedly infringing companies, namely Beard Head, Bearded Apparel and Neon Eaters, have not yet responded to the claims against them, but Beardo has demanded that all three immediately stop producing their own hats and that they also pay compensatory and punitive damages. Beard Head offers three types of beard hats that range from "Stubble" to "Long" while Neon Eater offers a "Lumberjack" hat with a detachable beard.

In the complaint, Beardo argues that its "design is inherently distinctive, or alternatively, has acquired secondary meaning" and that, "The famousness and popularity of Beardo's design is reflected in the significant efforts Beardo (and/or its owner) have taken to publicize its products, in its significant publicity Beardo's design has received, and by its significant popularity amongst consumers of combined ski facemasks and hats." To prove its popularity among consumers, Beardo points out that at the time of the complaint, it had 165,737 'likes' on its Facebook page, while Beard Head had 15,869 'likes' and Neon Eaters had only 350 'likes.'

According to the Beardo website, consumers can now purchase hats with attached beards, detachable beards or no beards at all, in addition to facemasks and other accessories. Currently, the products are available to customers in seven countries, including founder Jeff Phillips' home country of Canada. Given that Phillips describes Beardo as his "brainchild" on the company's "About" page, in addition to the recent pop culture craze over all things moustache and beard-related, it is likely that this is not the last we will hear about the fight over these quirky accessories.

New Google Patent Filing Claims Heart Hand Gesture for Snapping Pictures

October 17, 2013,

Glass-google.jpgCalifornia - Google, Inc. was granted a patent on October 15th which will let users of its upcoming Google Glass take pictures simply by making hand gestures. The patent, which lists two Northern California Google employees as inventors, is aptly titled "Hand gestures to signify what is important." It describes a method compatible with its soon-to-be released Google Glass device, by which users can put their hands together to create a heart shape over a certain real life object, thereby "liking" it and creating a heart shaped picture. It goes on to detail how customers can make an L shape over an object in order to take a more traditional rectangular photo.

The method set forth in the recent patent, numbered 8,558,759 by the United States Patent and Trademark Office (USPTO), seems to build upon the current internet application trend of "liking" photos and posts. This feature is included in some of the world's most popular web-based applications, including Facebook and Instagram. By allowing Glass users to perform a physical action in relation to a real object in the world to take a picture, it seems that Google has found a way to take "liking" to the next level.

The wearable computer developed by Google is currently in the final stages of development by Google X, the secretive branch of the company known for its production of ultramodern technologies and devices. The much anticipated product features an optical head-mounted display that looks much like a pair of futuristic eyeglasses. Glass has a screen, camera, touchpad and lenses that work in conjunction on an Android operating system.

While it is uncertain if the features described in the new patent will actually come to fruition as part of the Google Glass product, it adds to the certainty that Google is doing all it can to reserve its right to protect all technological advancements related to Glass. Currently, there is no exact consumer release date for Glass and analysts have been left to speculate about the price point. However, for those who truly cannot wait to get their hands on it, a quick eBay search shows a few listings for Glass at a cool $6,000.

Facial Recognition Patent Infringement Claim Lodged Against Toshiba

July 9, 2013,

face.jpgCalifornia - Technology company CeeColor Industries, LLC filed a complaint on July 2nd against Toshiba America, Inc. in Delaware Federal Court, alleging patent infringement.

At issue is technology for facial recognition software, which CeeColor Industries claims it holds exclusive patent rights over. The Delaware-based limited liability company is accusing Toshiba of manufacturing products using this software, which it claims is an infringement of CeeColor's patent protection.

CeeColor alleges that Toshiba, a Delaware Corporation, violated its patent for software that triggers a device's webcam to take regular photos to determine if the user is within close proximity. If the user is determined to be at the computer, the system activates the computer with no effort required of the user and then disables controls once the user leaves.

This technology was installed on Toshiba's Qosmio line of laptops, which was first introduced in 2010. Toshiba's facial recognition technology was seen as an innovative way to protect the privacy of the user and the security of the device.

CeeColor claims that Toshiba's use of the technology is an intentional, direct violation of its patents without its permission. The complaint alleges that this patent violation has done irreparable harm to CeeColor and the company is seeking judgment against Toshiba.

The patents named in the lawsuit are both titled "Security system with proximity sensing for an electronic device." The first, U.S. Patent Number 6,002,427, was registered by the U.S. Patent and Trademark Office in late 1999 and the other, which followed in May 2003, is U.S. Patent Number 6,570,610.

CeeColor has worked to defend its patent rigorously. It previously filed claims against other technology companies for infringement of the same patents. Lawsuits are currently pending in Delaware Federal Court against Sensible Vision, Inc. and Citizen Watch Co. of America, LLC.

The complaint filed by CeeColor demands monetary damages for the alleged infringement as well as attorneys' fees and costs associated with trial. It also requests a trial by jury.

Jury Rules No Gift Card Patent Infringement by Barnes & Noble

June 13, 2013,

books-stack.jpgCalifornia - Barnes & Noble Inc. scored a big win in federal court June 7th when a jury found that it did not infringe on gift card technology developed by Alexsam Inc. This is first of many upcoming trials related to claims of patent infringement brought by Alexsam against other large retailers.

The lawsuit, filed in federal court in the Eastern District of Texas, alleged that Barnes & Noble developed technology for gift card activation that had already been patented by Alexsam in U.S. Patent Nos. 6,000,608 and 6,189,787. Alexsam sought $72 million in damages from Barnes & Noble for the infringement.

First brought in 2010, this lawsuit originally named seven major retailers as defendants. In January, a judge ruled that the cases against each defendant should be pursued individually. Companies named in the lawsuit include Best Buy Co. Inc., Toys R Us Inc., The Gap Inc., J.C. Penney Co. Inc. Home Depot USA Inc., and McDonald's Corp.

The jury in this case sided with Barnes & Noble, agreeing that the gift card activation technology developed by the major bookseller was substantively different than that invented by Alexsam, and that there was no patent infringement.

However, the court's decision was not as sweeping as the major retailer defendants would have liked. U.S. District Court Judge Michael Schneider rejected the argument brought by all of the defendants collectively that the patents held by Alexsam should be deemed unenforceable due to inequitable conduct. Defendants argued that Alexsam lied to the U.S. Patent and Trademark Office in 2010 when its patent was under review by not disclosing previous inventions that predated Alexsam's creation. Judge Schneider was unconvinced, denying the claim based on lack of convincing evidence.

Barnes & Noble's case was the first of the lawsuits brought by Alexsam to reach trial. This judgment marks the first victory amongst the companies facing patent infringement claims. The next case set to see trial is against The Gap, scheduled to start June 24. Best Buy struck a settlement deal with Alexsam in May.

Alexsam has previously had success in defending its patents for gift card technology. In May, it won a verdict against telecommunications company IDT Corporation for violation of patents '608 and '787. The jury in that case awarded almost $10 million in damages to Alexsam.

Proctor & Gamble Alleges Infringement of Whitestrips Patents

May 29, 2013,

teeth.jpgCalifornia - CAO Group Inc., a company headquartered near Salt Lake City, Utah founded by Dr. Densen Cao, PhD was sued last week by Procter & Gamble Co., the well-known Ohio-based consumer goods conglomerate. Apart from dental products, CAO Group develops and manufactures a variety of different products like forensic lighting, diode lasers used in veterinary medicine, and billboard lighting.

P&G has taken issue with CAO Group's dental products, accusing the company of infringing on its patented system of teeth whitening strips. The technology P&G hopes to protect is covered in 3 patents pertaining to its Crest Whitestrips brand.

According to the allegations in the complaint, filed in District Court in Ohio, CAO Group's "Sheer Film" products such as "Sheer White!," "Sheer DesenZ," and "Sheer FluorZ" use the same method as Whitestrips in which a thin, moldable film containing an active additive is placed over the teeth, pressed against them and worn for some length of time to whiten and produce other effects of oral care. P&G is striving for an injunction to prevent infringement of its patents as well as damages, interest, and attorneys fees.

The U.S. patents in question are No. 7,122,199 entitled "Method for Whitening Teeth", Patent No. 5,989,569 entitled "Delivery system for a tooth whitener using a permanently deformable strip of material", and Patent No. 6,045,811 entitled "Delivery system for an oral care substance using a permanently deformable strip of material." P&G believes CAO Group's plastic films containing a carbamide peroxide solution infringe its patents by using the same application techniques. Further, P&G alleges CAO Group's products encourage consumers to also infringe on its patents.

Procter & Gamble, which had nearly $84 billion in sales last year and placed fifth as one of the World's Most Admired Companies, claims that over 2 billion people used Crest Whitestrips in 2011. P&G began in the 1880's with the creation of "Ivory" soap, which became famous for being able to float in water.

P&G believes CAO Group's infringement of its patents was done knowingly and intentionally.

CAO Group calls its method "the most significant advance in teeth whitening in nearly a decade" and claims to own more than 60 issued and 80 pending US and international patents to cover the technologies it has created.

MasterCard Sued in Virtual Payment Patent Infringement Case

May 1, 2013,

creditcard.jpgCalifornia - An inventor by the name of John D'Agostino filed a complaint in a Delaware U.S. District Court accusing MasterCard, Inc. of infringing on his patent for a "System and method for performing secure credit card transactions". D'Agostino's patents, No. 7,840,486 issued in 2010 and No. 8,036,988 issued in 2011, involve a payment method whereby a third party has "custodial control" of the consumer's information to secure purchases made online or by other means in order to avoid having to provide the actual credit card number.

MasterCard uses a similar technology called "inControl." D'Agostino believes MasterCard, Discover, Citigroup and possibly others have known about his patent for over 10 years and are now infringing. The complaint alleges that MasterCard is willfully infringing in a complete disregard for D'Agostino's rights.

MasterCard was formed in 1966, and was originally called "Master Charge" until 1979. It is no stranger to litigation. Both it and Visa lost a class-action lawsuit filed in January 1996, paying over $2.5 billion in damages for price fixing on debit card interchange fees and card swiping fees. In 2010, another anti-trust lawsuit came to a head with a settlement reached between it and the U.S. Justice Department. And, in 2012, a judge decided to grant approval of a settlement agreement reached between all the major credit card companies and merchants and trade associations who felt Visa and MasterCard's interchange fees were unreasonably high and had been conspiratorially fixed.

MasterCard previously tried to have D'Agostino's patents re-examined believing some of the patent claims were invalid, but the U.S. Patent & Trademark Office denied the request. According to D'Agostino, MasterCard has also made threats to challenge the patents if he didn't accept its licensing agreement offer, which he claims was for an unreasonably low amount of money.

The complaint alleges Discover's "Secure Online Account Numbers" and Citigroup's "Virtual Account Numbers" use the same technology and tools because each uses a confidential transaction code. D'Agostino's patents feature this same concept.

To date, none of the credit card companies have made a comment on the case.

CBS and NBC Sued in Podcasting Patent Infringement Cases

April 17, 2013,

iphone.jpgCalifornia - Both CBS Corp. and NBC Universal Media LLC were sued in separate Texas federal court actions by Personal Audio LLC, a Beaumont, Texas company who claims to be "pioneers in playlists and podcasting." The lawsuits stem from claims by Personal Audio that CBS and NBS are infringing on one of its five patents, U.S. Patent No. 8,112,504 B2. The patent at issue covers transmission of audio programming through the internet.

Personal Audio feels that the audio versions of television shows podcast by CBS and NBC infringe its patent. Specifically, Personal Audio is alleging that the CBS podcasts for news programming such as 60 Minutes, CBS Evening News and Face the Nation infringe its patent. NBC podcasts alleged to be infringing include the Nightly News with Brian Williams, The Rachel Maddow Show, and Meet the Press.

Personal Audio's patent covers "an audio program and message distribution system in which a host system transmits information regarding episodes to client subscriber locations". It is alleging that both CBS and NBC are using software and hardware such as servers and data storage in a manner that directly infringes its patent.

Should Personal Audio prevail in the lawsuit, it appears that CBS and NBC will not be forced to discontinue podcasting the shows. Instead, it is more likely that they will enter into licensing agreements with Personal Audio.

CBS and NBC are not the first to be sued by Personal Audio for patent infringement. Personal Audio has already initiated lawsuits against, Togi Entertainment Inc. and Ace Broadcasting Network LLC, owner of the most-downloaded podcast program "The Adam Carolla Show."

In another proceeding, Personal Audio secured a $12 Million judgment against Apple two years ago over similar patents related to a downloadable musical playlist and playback system. Richard Baker, Personal Audio's VP of Licensing commented: "It's unfortunate that an inventor has to resort to litigation in order to get people to respond to offers for amicable licensing discussions. The inventors are just looking to be compensated for their hard work and the risk they took to bring this technology to the industry."

It is unknown thus far how CBS and NBC plan to respond to the allegations.

ITC Sides with Microsoft in Patent Claim

March 28, 2013,

game-controller.jpgCalifornia - The long, on-going battle between Microsoft Corp. and Motorola Mobility, Inc. (owned by Google) over the Xbox 360 gaming console could be coming to end based on the most recent decision by the International Trade Commission. Last Friday, Administrative Law Judge David P. Shaw announced that Microsoft was not in violation of Motorola's wireless connectivity patent, No. 6,069,896.

Motorola, obviously unhappy with the decision, still has a chance to convince the ITC to alter the decision by submitting a response. However, the decision will stand unless the ITC modifies it by July of this year.

Motorola has been seeking an import ban on the Xbox due to the alleged patent infringement. The Xbox is a video game console released by Microsoft on November 15, 2001. It represents Microsoft's first foray into the gaming console market.

Microsoft believes Motorola's patents fall into the area of licensing rules called "FRAND" or "fair, reasonable and non-discriminatory terms." FRAND forces businesses with patents to license certain technologies if they constitute a general standard in a particular industry. Microsoft did not deny that it used technology patented by Motorola. Instead Microsoft took the position that Motorola wasn't allowing Microsoft to license the technology at the reasonable rates set out by FRAND. Motorola was insisting that Microsoft pay a 2.25 percent royalty on every Xbox 360 sold, at a cost of approximately $4 billion per year.

The original lawsuit was filed with the International Trade Commission in November of 2010. Motorola based its claims against Microsoft on a total of five patents. Initially Judge Shaw invalidated one of the patents. Now all the patents cited in the action except one have been invalidated or dropped from the complaint.

Regarding the determination, Microsoft's corporate vice president and deputy general counsel made the following statement: "We are pleased with the Administrative Law Judge's finding that Microsoft did not violate Motorola's patent and are confident that this determination will be affirmed by the Commission. The ITC has already terminated its investigation on the other four patents originally asserted by Motorola against Microsoft."

The two companies will still face one another in two subsequent Federal lawsuits which have been put on hold pending the ITC's decision in this matter.

Frito-Lay Loses SCOOPS! Tortilla Chip Patent Fight

March 7, 2013,

chips-guacamole.jpgCalifornia - A Texas jury sided with BOWLZ chips maker Medallion Foods, Inc. saying that the company did not infringe Tostitos SCOOPS! manufacturer Frito-Lay North America Inc.'s patent for bowl-shaped tortilla chips.

PepsiCo, Inc. subsidiary Frito-Lay alleged that Ralcorp Holdings subsidiary Medallion had stolen its patented design for making the unique bowl-shaped tortilla chips and claimed that it purposely tried to confuse consumers by using similar packaging design and colors.

"Defendants' bowl-shaped tortilla chips and accompanying package are an apparent intentional effort to imitate the famous, successful trademark and packaging of Frito-Lay's Tostitos SCOOPS! tortilla chips," the complaint read.

However, the jury found that Frito-Lay had failed to prove that Medallion's store brand of chips sold at Wal-Mart stores infringed its method for making the chips, that it had infringed the packaging of the product, that Medallion's product would dilute the SCOOPS! brand in any way, or that Medallion was engaging in unfair competition by using similar packaging designs.

The food fight started when Frito-Lay sent a cease and desist letter to Medallion in early February 2012 accusing the company of infringing its intellectual property and demanding that it stop producing the BOWLZ chips within two days because of the purported infringement.

Medallion refused to comply because it believed it had not done anything wrong. When the cease and desist deadline passed, Medallion filed a lawsuit against Frito-Lay in Arkansas federal court requesting a declaratory judgment that its chip does not infringe on Frito-Lay's trademarks and patents. The case was dismissed later that year.

Frito-Lay responded to Medallion's lawsuit by filing a separate lawsuit that same month in Texas federal court, which resulted in the trial that concluded Friday. The complaint accused Medallion of infringing its patent-protected method for making the bowl-shaped chips and also accused Medallion of copying it packaging.

The jury, however, found that Medallion's methods for making its chip are different than the methods described in Frito-Lay's patent and disagreed that the packaging would cause confusion among consumers. Frito-Lay had requested $4.5 million in damages and an injunction preventing the company from continuing to make the BOWLZ chips.

Complete Genomics Claims It Did Not Infringe DNA-Sequencing Kit Patents

February 22, 2013,

dna-strand.jpgCalifornia - Complete Genomics Inc. argued in front of a California federal judge on Wednesday that its genome-testing kits do not infringe Illumina Inc.'s patents, claiming it produced sufficient evidence that the gene probes used in its testing kits are different from Illumina's probes.

Complete Genomics, based out of the Bay Area, told U.S. District Judge Elizabeth LaPorte of the Northern District of California that its kits do not infringe Illumina's patents because the kits use a different probe than the one protected by U.S. Patent No. 6,306,597. It argued that it has provided sufficient evidence and expert declarations that show it sequencing methods are different from Illumina's methods.

According to Complete Genomics, Illumina's entire argument against Complete Genomics' motion for summary judgment is based on the presumption that Complete Genomics' sequencing methods would not work unless it used Illumina's patented probe. However, Complete Genomics claims Illumina did not provide declarations from experts in the field that are familiar with the technology or any other evidence to support its assertions.

Illumina admitted that it chose not to gather expert declarations because it believed it had sufficient evidence to combat Complete Genomics' motion for summary judgment without them. Counsel for Illumina, Kevin Flowers, requested that Judge LaPorte allow him to question co-founder and Chief Scientific Officer of Complete Genomics Radoje Drmanac, arguing that he would easily be able to determine if the company is still using the probes that allegedly infringe Illumina's patents.

Judge LaPorte said that Illumina had not sufficiently proven that deposing Drmanac would be imperative to its argument, but she granted Illumina's request, saying it would not be much of an inconvenience and it would go a long way to leave the parties feeling satisfied with a ruling on the case.

The case was initially filed in San Francisco, California in 2010. Illumina and its subsidiary filed the lawsuit accusing Complete Genomics of infringing three patents related to technology used in DNA-sequencing kits, including the '597 patent. Complete Genomics' claims that the '597 patent covers probes with "annealing temperatures whose maximum and minimum values differ from each other by no more than 1 degree centigrade." Complete Genomics claims the methods it uses involves a 60 degree centigrade temperature spread.

OxyContin Manufacturer Sues Generics Makers for Patent Infringement

February 6, 2013,

pills.jpgCalifornia - Purdue Pharma LP and Grunenthal GmbH filed a lawsuit against two generic drug makers, claiming their planned generic versions of OxyContin will infringe two patents that cover the "abuse-proof" version of the painkiller.

According to the complaints filed in New York on Friday, Watson Pharmaceuticals Inc., now owned by Actavis Inc., and Impax Laboratories Inc. filed abbreviated new drug applications with the U.S. Food and Drug Administration for a generic form of oxycodone hydrochloride extended-release tablets for seven different dosage strengths. Purdue and Grunenthal claim the planned generic forms will infringe at least one of two patents relating to the controlled-release version of OxyContin.

According to the FDA, OxyContin is a semi-synthetic opioid and a Schedule II controlled substance due to its high risk of addiction.

The patents-in-suit, both titled "Abuse-proofed dosage form" are owned by German-based Grunenthal, which licenses the patents to Connecticut-based Purdue. The patents protect a specific version of OxyContin that is coated in a plastic-like polymer to help prevent tampering and abuse of the drug. The polymer prevents the pill from being ground into a fine powder and becomes unusable if added to water, but it can still dissolve normally in the stomach.

Watson and Impax both sent a letter to Purdue in December 2012 informing the company of their plans to file ANDAs for a generic version of the painkiller and stating that the patents for the drug are not valid, unenforceable or are not infringed by their planned generics.

Purdue and Grunenthal claim the patents are valid and that the companies cannot reasonably conclude that the generic forms of the drug are not covered by the terms of the patents or that the generic versions would not infringe the patents.

OxyContin is a very profitable painkiller, making Purdue nearly $2.8 billion in U.S. sales in 2011. Purdue claimed that the infringement by the companies "will cause plaintiffs irreparable harm for which they have no adequate remedy at law and will continue unless enjoined by this court."

Purdue requested a declaratory judgment that the planned generics will infringe the patents, an injunction prohibiting the companies from releasing generic versions of OxyContin until the patents expire in November 2023, costs and attorney fees.

Supreme Court to Rule if Planting Patented Seeds Constitutes Infringement

January 21, 2013,

seedling.jpgCalifornia - Monsanto Co. asked the United States Supreme Court to uphold a ruling that a farmer infringed its Roundup Ready soybean seed patent when he planted the seeds, arguing that if it ruled otherwise it would undercut patent rights for products that can easily be reproduced.

In the brief Monsanto filed prior to the oral arguments scheduled for February 19, Monsanto asked that the court should dismiss Vernon Bowman's argument that Monsanto's patent rights were exhausted when the company allowed the seeds to be sold. Monsanto argues that the Federal Circuit ruled correctly when it said Bowman infringed its patent rights by planting the seeds he purchased and creating more of the patented seeds.

Monsanto argued that the doctrine of patent exhaustion states that the patent owner loses the right to control its patented product after an authorized sale, but the doctrine only covers the actual product sold.

In its brief to the court, Monsanto stated that the doctrine of patent exhaustion "cannot apply to other articles, such as the new soybeans petitioner grew, that have never been sold. Monsanto's patent rights in those soybeans were thus not exhausted."

Patent law does not allow a consumer who has purchased a patented item to recreate the product based on the template of the original, and Monsanto argues that just because seeds are grown instead of manufactured does not mean it should not have the same patent rights.

Monsanto also argued that if the court holds that Monsanto's patent rights in the seeds were exhausted, it would take away the incentive to undergo the expensive process of developing products that can be easily replicated because there would be little patent protection.

Inventors "would find it impossible to maintain the exclusivity conferred by the patent laws the moment he commercialized the invention: Every sale would create a new potential competitor with rights to make, use and sell new copies of the invention," Monsanto said.

Bowman argues that the Federal Circuit's finding that he is liable for infringement for planting seeds creates an exception for self-replicating patented products in the doctrine of exhaustion giving those products an unprecedented level of patent protection, which he claims should not be allowed.