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Patent court rules on Microsoft, Amado case
Patent Law | 2008/02/27 09:13
A federal court which hears patent appeals told a lower court on Tuesday to reconsider damages that Microsoft must pay a Guatemalan inventor for infringing his software in its popular Office Suite. The U.S. Court of Appeals for the Federal Circuit tossed out the damages award of 12 cents per copy because the lower court failed to explain how it calculated the award.

At issue is a software program, which was patented by inventor Carlos Armando Amado, that links databases and spreadsheets. Amado sued Microsoft in 2003, alleging that several versions of Office Suite infringed his patent.

A jury ruled in favor of Amado and awarded him 4 cents per infringing unit. The case was appealed and then remanded to a district court, which tripled the damage award.

In the latest appeal, Microsoft asked for damages to be held at the jury award of 4 cents per copy of Microsoft's Office Suite sold with the infringing software. Amado asked for $2.00 per copy, an amount ordered held in escrow.

"Because the district court failed to adequately explain the basis for its award of $0.12 per infringing unit sold during the stay of the permanent injunction, however, and because recent Supreme Court action may affect post-verdict damages, we vacate in part and remand," the appeals court said.

The appeals court said it took no position on the proper amount of damages, saying that "logically" the award should "fall somewhere between" 4 cents and $2 per copy.

The new ruling also said that the U.S. District Court for the Central District of California "did not abuse its discretion" by dissolving its permanent injunction barring Microsoft from using the software.



Research In Motion sues Motorola over patents
Patent Law | 2008/02/18 10:39

BlackBerry-maker Research In Motion has sued Motorola, over what the Canadian company says are patent infringements and "exorbitant" licensing fees, according to court documents. The civil action, filed on Friday in U.S. District Court for the Northern District of Texas, alleges that Motorola infringed on a number of patents held by RIM.

In addition, RIM alleges that Motorola "is demanding exorbitant royalties...for patents that Motorola claims are essential to various standards for mobile wireless telecommunications and wireless computing that RIM practices."

This includes technology that allows mobile telephone handset users to use Wi-Fi, RIM said.

At the same time, Motorola is refusing to acknowledge or pay royalties for certain patents held by RIM, the BlackBerry-maker said.

RIM claims that Motorola's response to the "declining fortunes" of its own handset business can been seen in dramatic increases in royalties charged to RIM. None of the allegations has been proved in court.

RIM's worldwide subscriber base of about 12 million includes business executives, politicians and professionals who rely on the BlackBerry to send secure e-mails. BlackBerry has been expanding from its mainstay enterprise market into the consumer sector with sleeker handsets that offer a range of services in addition to e-mail.



Boston Scientific to fight $431.8M patent ruling
Patent Law | 2008/02/13 11:23

In one of the largest awards ever in a U.S. patent matter, a Texas jury has ordered Boston Scientific to pay $431.8 million in damages after ruling the company's made-in-Minnesota heart stents infringe on a doctor's patent. Natick, Mass.-based Boston Scientific said Tuesday the federal court jury in Marshall, Texas, ruled the company's Taxus Express and Taxus Liberte stents infringed on the patent of Dr. Bruce Saffran, an interventional radiologist in New Jersey. The jury also found Saffran's 11-year-old patent is valid.

In a statement, Boston Scientific said it believed the jury's verdict is unsupported by both the evidence and the law. As a result, the company said it would seek to overturn the verdict in post-trial motions and, if unsuccessful, appeal to the U.S. Court of Appeals.

"We do not intend to record a charge at this time because we believe we will prevail on appeal," said company spokesman Paul Donovan.

Barbara Wrigley, a patent attorney with Oppenheimer Wolff & Donnelly in Minneapolis who was not involved with the case, said the jury award easily stands as one of the 10 largest ever in the U.S. An appeal likely would take about two years, Wrigley estimated, and the matter could drag on even longer if the case is then sent back to the lower court for reconsideration.

"It's not unusual for an individual inventor to win an award like this," Wrigley said, adding a jury's perception is of a David-like underdog going up against a Goliath-like
corporation.

Stents are metal mesh tubes used to prop open heart arteries, and the Taxus stent has generated billions in sales for Boston Scientific's stent division in Maple Grove. The stent is coated with drugs that prevent arteries from re-clogging - a development that helped make stents blockbuster products in 2003 and 2004.

Gary Hoffman, an attorney who represented Saffran, said his client came up with the essential concept behind drug coated-stents while completing his residency at a hospital in Boston. Saffran worked at home with makeshift materials in coming up with the idea for placing a layer of material on devices that could "directionally deliver a drug to damaged tissue," Hoffman said.

Saffran applied for a patent in 1995 and received it two years later, said Hoffman, who is with Dickstein Shapiro in Washington, D.C. It is valid, he said, until 2013. The inventor also has a lawsuit against New Jersey-based Johnson & Johnson, which has dominated the drug-coated stent market along with Boston Scientific.

"Dr. Saffran is an independent inventor, and his contributions to the advancement of medical technology needed to be recognized and rewarded," Hoffman said.

Saffran still is considering whether to seek an injunction against the sale of the Taxus products, Hoffman said.

Johnson & Johnson won such an injunction last year in a separate patent case involving a Medtronic spinal product, which Fridley-based Medtronic had to remove from the market.

To Larry Kurland, a partner in the intellectual property group with the St. Louis-based law firm Bryan Cave, said the award speaks volumes about the attitude of juries in the eastern district of Texas like the one that heard the case. That district, lawyers say, has a reputation for being plaintiff-friendly.

"They tend to believe if you've got a patent ... you must have done something that makes you entitled to something," Kurland said.



US patent court rules for Tivo, against Echostar
Patent Law | 2008/02/01 08:39

EchoStar Communications Corp infringed a TiVo Inc patent in building digital video recorders and must pay nearly $74 million in damages, a court that specializes in patent cases ruled on Thursday.

The U.S. Court of Appeals for the Federal Circuit said in its decision that it partially affirmed a verdict from a federal district court in Texas.

That lower court had ruled that EchoStar's digital video recorders infringed what it called the "software" claims of a TiVo patent. But the appeals court reversed a portion of the lower court's decision which said the EchoStar devices also infringed on what it called "hardware" claims.



US patent court rules for TriMed, against Stryker
Patent Law | 2008/01/29 07:58

A U.S. patent appeals court ruled in favor of TriMed Inc on Tuesday in a suit which accused Stryker Corp of infringing its patent for an implantable device to be used for broken bones. The U.S. Court of Appeals for the Federal Circuit reversed a ruling by the U.S. District Court for the Central District of California and sent the case back for a rehearing.

TriMed had accused Stryker, one of the biggest makers of artificial hips and knees, of selling a device for wrist fractures that infringed TriMed's patent for an implantable device that would attach to stable portions of broken bones and hold the fractured portions in place.

The district court had given a summary judgment of non-infringement. TriMed appealed. "We hold that Stryker has failed to demonstrate that there is no genuine issue of material fact that its accused devices do not infringe," the appeals court said in its ruling.

"The grant of summary judgment of non-infringement must be reversed," the court said. "We remand for further proceedings consistent with our opinion and in view of the entire record."



US Supreme Court hears LG-Quanta patent case
Patent Law | 2008/01/17 06:07
The Supreme Court on Wednesday appeared ready to make it harder for patent owners to demand licensing fees from companies throughout the manufacturing supply chain.

The case before the court, which began when a South Korean consumer electronics maker sought to enforce three patents against a Taiwanese maker of laptop computers, has implications for many industries.

LG Electronics Inc. entered into a broad patent licensing agreement in 2000 with Intel Corp., which then sold chips with LG's technology to Quanta Computer Inc. and other computer manufacturers. LG's lawyer, Carter Phillips, argued that Intel's license didn't extend to the computer makers and once Quanta installed the chips into computers, it infringed LG's patents.

Maureen Mahoney, Quanta's lawyer, countered that under the legal doctine of "patent exhaustion," once Intel made a sale of the chips to Quanta pursuant to its license with LG, LG could no longer seek royalties from companies downstream in the manufacturing process.

Several justices, including Stephen Breyer, seemed to agree.

"All that we would do by finding in your favor is destroy the patent exhaustion doctrine," he told Phillips.

The case has attracted a significant amount of attention from the high tech, automotive and biotechnology sectors, with over 25 parties filing friend of the court briefs in the case.



Chinese chip-equipment maker faces U.S. lawsuit
Patent Law | 2008/01/02 05:26

A legal battle is shaping up in California involving a Chinese startup that makes equipment used to produce semiconductors.


Advanced Micro-Fabrication Equipment (AMEC), of Shanghai, was sued in California by Applied Materials, which claims the company misappropriated its trade secrets. But lawyers for the Chinese company asked the judge to dismiss the suit, arguing the U.S. court has no jurisdiction over AMEC's activities.

AMEC's motion for dismissal will be heard by Judge James Ware of the U.S. District Court for the Northern District of California, on Feb. 11.

Applied's lawsuit, filed in October and amended last month, claims AMEC used its trade secrets to develop etch and CVD (Chemical Vapor Deposit) tools that are used to make chips. AMEC's tools will compete against similar products from Applied, which cost millions of dollars each. Applied is seeking an injunction from the court to prevent the misappropriation of its trade secrets and wants punitive damages as well as a declaration that it owns patent applications recently filed by AMEC.

Applied identified four former employees in the suit, including AMEC founders Gerald Yin and Aihua Chen.

Applied's amended complaint describes Yin, who left Applied in 2004 to start AMEC, as a former corporate vice president and chief technology officer who "managed the etch product group and had broad access to Applied confidential information and trade secrets concerning its etch tools." In addition, the complaint says Chen at one point served as general manager of Applied's CVD product group and had access to proprietary technology related to those tools.

To bolster its case against AMEC, Applied noted that the former employees identified in the lawsuit signed agreements that give Applied all rights to inventions made during their employment, and prevent them from using Applied's confidential information for anyone else's benefit. Under the agreement, any patents filed by the former employees within one year of leaving Applied are "presumed to have been conceived or made during their employment with Applied and would belong to Applied."

As a result, Applied's complaint lays claim to two AMEC patent applications filed in China on August 5, 2005, that name Yin and other former Applied employees as inventors. These patents should belong to Applied as the patent applications were made "one year and three days after Yin left applied" and therefore must be based on information that Yin disclosed to AMEC during the one year period, the complaint said.

AMEC subsequently filed patent claims in Japan and the U.S. based on the Chinese patent applications. Applied's complaint also claims these patent applications as its own, noting Applied filed its own patent applications covering the same technologies.

In response, AMEC's motion to dismiss argues that the U.S. court has no jurisdiction over the Chinese company.

"In this case, there is no jurisdiction over AMEC Inc., because the allegations of the (amended complaint) relate exclusively to actions that took place in China. None of Applied's claims arises out of allegations concerning contact with California," the motion said, adding any legal action by Applied against AMEC should be heard in a Chinese court instead.



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