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Recent Judgments

LANDMARK’S LIGHT-EMITTING DIODE FACING FILING INACCURACY

FACT: Landmark Screens, LLC (“Landmark”), inventor of a LED electronic billboard, filed a petition against the final decision of the United States District Court for the Northern District of California, rejecting its state law fraud claim against Morgan, Lewis & Bockius (“MLB”) and Thomas D. Kohler (“Kohler”).

ISSUE: Landmark Screens, LLC (“Landmark”) has invented a light-emitting diode (“LED”) electronic billboard. According to this invention, billboard’s large size, high-quality images and brilliance effectively displays advertising and also provides content in digital format for which advertisers are beneficiated due to its reduced costs and less time dependent operation. For the effective commercialization of this technology Landmark retained Thomas D. Kohler to prepare and file a patent application for the afore said invention. Kohler filed an incomplete (916) divisional application in USPTO on behalf of Landmark. USPTO in its due course of prosecution informed Kohler that Landmark’s application contained multiple inventions. Kohler amended the claims to avoid multiplicity of the invention. But in this process Kohler failed to include copies of specific drawings and specifications and his transmittal letter failed to incorporate by reference materials filed earlier with the original ’096 application. Due to which under 35 U.S.C. § 102(b), Landmark’s own ’096 application became prior art against the ’916 divisional application.

JUDGMENT: It was held that their petition for granting the 916 application with an earlier filing date was not a satisfactory ground to establish the fact. Landmark eventually filed suit alleging malpractice, negligence, and breach of fiduciary duty and reached a partial settlement. Whereas the state court rejected the remaining claims due to the lack of subject matter of jurisdiction. Landmark filed the same claims in federal court, adding claims for breach of contract and fraud. The district court had rejected all except the fraud claim under a one-year limitations period and later rejected the fraud claim under a three-year limitations period. The Federal Circuit turned around. As according to California equitable tolling law, the state law fraud claim was timely filed in the United States District court. Finally the Damages Order and remand the case for trial on the fraud claim was given up.

 

COPYRIGHT INFRINGEMENT A FACT OF MISREPRESENTATION

FACT: Copyright Act, 1957 Copyright Infringement-The Plaintiff is the owner of the copyright in repertoire of songs. The Defendant operating a social networking website www.myspace.com provides the users to upload audios, videos, pictures and also material which includes, not yet released songs and other infringing material. The Defendant authorizes users to freely upload and distribute contents through downloading and streaming of the contents. The Plaintiff issued legal notice to the defendant to remove infringing material from its website. Due to the lack of jurisdiction this led to misrepresentation of fact to the plaintiff. The defendants had no control over the content as it was so uploaded on the website. According to the opposition by the defendant under S 79 of the IT Act 2000, the Plaintiff contented that the copyrighted work, communicated to the general public is an act of infringement by the defendants.

ISSUE : Acts of the defendants are regarded as an act of infringement under the provision of Section 51(a) (i) and Section 51 (a)(ii) of the Act.

JUDGMENT: The act of the defendants' may become infringing if and only if the defendants do not allow the repeated uploads to happen after the notice has been served in the said works. [Para 54] Copyright Act, 1957 Section 51(a)(ii).

The use of the words or the exact elaborated meaning of the word- "any place"-denotes that it includes a common PUBLIC PLACE or LIBRARY or any OTHER KIND OF PLACE or PHYSICAL PLACE or place at the INTERNET OR WEB SPACE.

Thus, by virtue of conjoint reading and interpretation one can easily say that the infringement or the miss-appropriation of law of copyright can also be in the cases where there are acts of authorizing the infringement by anyone without permission.


FEDERAL CIRCUIT AFFIRMS INVALIDITY OF TEVA'S PATENT ON ROSUVASTATIN FORMULATION

FACTS: In a precedential opinion filed today, the Federal Circuit affirmed the invalidity of Teva's U.S. Patent No. RE39,502 under 35 U.S.C. § 102(g)(2). Teva's '502 patent claims a rosuvastatin formulation comprising "a stabilizing effective amount" of crospovidone. This post describes the district court decision and provides background on the case.

ISSUE : Whether, to prove prior invention under § 102(g)(2), AstraZeneca was required to prove that it appreciated the stabilizing effect of crospovidone in its drug formulation ?

JUDGMENT: In affirming the district court's answer to that question in the negative, the Federal Circuit traced a line of cases that it said demonstrate "consistent applications of the same rule." According to the court, an "unrecognized, accidental duplication" is not a prior invention.

There lies no dispute in this case that AstraZeneca manufactured rosuvastatin tablets falling within the scope of the 502 patent claims before Teva conceived and reduced to practice its claimed invention. The Court continued that the prior inventor does not need know everything about how or why its invention worked. Nor must it conceive of its invention using the same words as the patentee would later use to claim it.

The court explained that AstraZeneca had to appreciate that the formulation it asserted as its invention was stable and what the components of this formulation were. There is no question that AstraZeneca had this appreciation. However, AstraZeneca did not need to appreciate which component was responsible for the stabilization. Teva made other arguments as well, but the Federal Circuit summarily disposed of them.


INFRINGEMENT CASE OVER FORZID TRADEMARK DISMISSED BY MADRAS HIGH COURT

FACTS : The Petitioner UBPL is engaged in the manufacturing and selling of pharmaceutical preparations including injections with the FORZID trademark. UBPL claims that since 2002 it took steps to launch CEFTAZIDIME injections under the trademark FORZID and entered into a license agreement with M/s. Oscar Remedies Pvt. Ltd. (ORPL), Haryana for manufacturing the same. UBPL filed an application for registration of the said trademark using the words "FOR" and "ZID", the latter derived from the generic drug ceftaZIDime. Several manufacturers of CEFTAZIDIME injections use trademarks with the suffix "ZID" which is common in the trade.

In 1999 OCPL had coined and adopted the unique trademark ORZID with respect to a pharmaceutical preparation containing CEFTAZIDIME. OCPL obtained manufacturing license for the product marketed under the trademark ORZID with respect to export sale and domestic sale. OCPL applied and registered the trademark ORZID in respect of medicinal and pharmaceutical preparations claiming use of the mark since May 1999.

ISSUE : Whether an interim injunction should be granted for passing off or infringement? The High Court invariably arrives at a prima facie conclusion based on the materials placed on record at that stage.

JUDGEMENT : The High Court of Madras held that OCPL would not be entitled to an injunction as prayed for "despite the fact that the plaintiff (OCPL) is admittedly the prior user of the trade mark and that both the marks "ORZID" and "FORZID" per se have phonetic similarity". The writ petition and the pending application were dismissed with costs of Rs. 5,000/- to be paid by UBPL to OCPL within a period of four weeks. The interim order is vacated.


INFRINGEMENT CASE OVER FORZID TRADEMARK DISMISSED BY MADRAS HIGH COURT

FACTS : The Petitioner UBPL is engaged in the manufacturing and selling of pharmaceutical preparations including injections with the FORZID trademark. UBPL claims that since 2002 it took steps to launch CEFTAZIDIME injections under the trademark FORZID and entered into a license agreement with M/s. Oscar Remedies Pvt. Ltd. (ORPL), Haryana for manufacturing the same. UBPL filed an application for registration of the said trademark using the words "FOR" and "ZID", the latter derived from the generic drug ceftaZIDime. Several manufacturers of CEFTAZIDIME injections use trademarks with the suffix "ZID" which is common in the trade.

In 1999 OCPL had coined and adopted the unique trademark ORZID with respect to a pharmaceutical preparation containing CEFTAZIDIME. OCPL obtained manufacturing license for the product marketed under the trademark ORZID with respect to export sale and domestic sale. OCPL applied and registered the trademark ORZID in respect of medicinal and pharmaceutical preparations claiming use of the mark since May 1999.

ISSUE : Whether an interim injunction should be granted for passing off or infringement? The High Court invariably arrives at a prima facie conclusion based on the materials placed on record at that stage.

JUDGEMENT : The High Court of Madras held that OCPL would not be entitled to an injunction as prayed for "despite the fact that the plaintiff (OCPL) is admittedly the prior user of the trade mark and that both the marks "ORZID" and "FORZID" per se have phonetic similarity". The writ petition and the pending application were dismissed with costs of Rs. 5,000/- to be paid by UBPL to OCPL within a period of four weeks. The interim order is vacated.


Fractus Won $23 Miilion In Antenna Patent Infringement Suit Against Samsung

Facts: The Plaintiff 'Fractus' a Spain based company which sells antennas for mobile phones had accused the Defendants 'Samsung Electronics Co. Ltd., et. al' of infringing four of its patents covering mobile phone antenna technology. The four patents in issue are owned by Fractus. Samsung contested the allegation of infringement as well as the validity of the claims of those patents. The evidence produced by Fractus revealed that Samsung destroyed documents during the trail and it was also proved that Samsung had not taken any prior patent license for antenna technology from Fractus. The Spanish Company pleaded for a royalty of 1 cent per phone before the Hon'ble Court.

Issues: Whether patent owned by Fractus is valid and infringed by Samsung?
Whether patent infringement of Samsung is willful?

Judgment: The Jury found that the four patents owned by Fractus are valid as Samsung failed to invalidate those patents. Based on clear and convincing evidence produced by Fractus, the Jury also found Samsung liable for infringement of the said four patents and pronounced $23 Million in favor of Fractus. Further, the Jury pronounced that the patent infringement of Samsung was willful.


Boston Wins $19 Million Damages in a Coronary stent patent Infringement Suit

Facts: In 2009 Boston Scientific Corp. (Boston), a maker of stents used to prop open coronary arteries, sued Johnson & Johnson’s Cordis Corp.(Cordis) for infringing Boston’s U.S. patent ‘5922021’ (‘021’), issued in July 1999 and titled ‘Intravascular stent’. A heart stent is a metal mesh tube used to hold an artery open and improve blood flow after it is surgically cleared of blockages. Drug eluting stents like the one in this case release medication to reduce the risk of re-blockage.
A U.S. District Judge granted summary judgment to Boston, finding that Cordis’ patent infringement is a matter of law, since it has the same architecture as three other sizes of stents that were found to infringe the same claim of the patent. Boston had argued that three sizes of the Cypher stent were infringing, and a jury returned a verdict in favor of Boston in 2005. Cordis asked for a re-examination of the patent-in-suit in October 2009. In September, a patent examiner rejected three claims of the patent-in-suit on the ground of obviousness, but Boston overcame that challenge in December. Cordis filed a second request for re-examination in January, and in February the USPTO issued a non-final office action rejecting one claim of the ‘021’ patent as anticipated and obvious. Cordis moved the Court to delay the trial until the USPTO finished its re-examination, but Hon’ble Judge stating that ‘a final determination by the PTO could take years,’ denied the motion and sent the case to a jury.

Issues: Whether there was any willful infringement of the plaintiffs’ patent (‘021’)? Whether Defendant’s motion to stay trial on damage is maintainable?

Judgment: The Hon’ble Court found that Cordis’ act amounts to willful infringement and denied Cordis’ motion to stay trial on damages. The Hon’ble Court grants a motion for summary judgment of infringement and awarded $19 million as damages to Boston.


FUJIFILM CORPORATION WINS PATENT INFRINGEMENT SUIT BROUGHT BY ST. CLAIR INTELLECTUAL PROPERTY CONSULTANTS, INC.

FACTS: In 2003 St. Clair sued Fujifilm including seven other digital camera manufacturers for infringing four U.S. patents before the Federal District Court in Delaware. All four patents share common specifications and cover electronic "still video cameras" that save digital photographs in user-determined memory formats for use on personal computers (PCs).

The District Court in 2004 interpreted the claims of the four patents, and a jury entered a verdict of infringement of all four patents based on the District Court's claim interpretation.

Fujifilm then appealed against the District Court's claim construction ruling and urged the Federal Circuit to reverse the jury verdict. Fujifilm pursued its challenge to the District Court's ruling even after a final judgment and appeal were delayed several years, during which St. Clair initiated a second litigation against Fujifilm Corporation for the same patents and made demand for damages from sales in 2004 - 2010.

ISSUES: Whether the District Court erred while interpreting St. Clair's patents?

JUDGMENT: The Court of Appeal for the Federal Circuit issued a decision that accepted Fujifilm's position on claim interpretation and reversed District Court's judgment of infringement. The Court went on and concluded that "we hold that the District Court erred in construing the asserted claims, and, accordingly, we reverse the judgment of infringement". The Federal Circuit directed the District Court to enter a judgment that Fujifilm's digital cameras do not infringe the St. Clair's patents. Further, on March 29, 2011, the Federal Circuit denied St. Clair's petition for rehearing.


Federal Circuit Reversed Invalidation Judgment of A Radiation Patent (Hologic, Inc. v. SenoRx, Inc., (Fed. Cir. Feb. 24, 2011))

FACTS: Hologic, Inc. (Plaintiffs-Appellants) holds U.S. Patent 6482142 ('142 patent') relating to balloon brachy-therapy, a type of radiation therapy for cancer treatment in which a balloon is inserted into the body at or near a tumor or other proliferative tissue disease site. Hologic, Inc. in a suit before the US District Court for the Northern District of California has alleged that SenoRx, Inc. (Defendant-Appellee) is infringing its patented technology. The company claims that SenoRx's balloon brachy-therapy device, the Contura Multi-Lumen Balloon infringes its 142 patent and its parent patent. SenoRx conceded infringement of claims 1 and 8 of the 142 patent, but argued that the asserted claims were invalid.
The District Court held a hearing and issued its claim construction order, citing that invalidity exists in the claim 1 of '142 patent' and did not allow Hologic's proposed claim construction further. Thereafter, an appeal rises from the decision of the District Court, granting summary judgment of invalidity of claim 1 of the '142 patent'.

ISSUE: Whether the District Court's invalidity finding was based on an erroneous claim construction?

JUDGMENT: The Court of Appeal for the Federal Circuit finds that while the location of the asymmetry of the radiation sources was not explicitly recited in the claim, asymmetry is a relative concept that must be read in view of the specification. In particular, the court pointed to the "summary of the invention" and other parts of the specification, and determined that the patentee clearly contemplated that the asymmetry referred to displacement from the longitudinal axis of the balloon.

The Court further held "because the District Court's invalidity finding was based on an erroneous claim construction", we reverse and remand the judgment.


UNIVERSITY RESEARCHER AWARDED $700,000 AS A CO-INVENTOR

FACTS: The plaintiff was a researcher working in a collaborative research program between École Polytechnique de Montréal (EPM) and McGill University (MU). Both the universities have their own Intellectual Property (IP) policies. The plaintiff performed some of the work at EPM, using its facilities and equipment, under the supervision of another EPM researcher.

In 1996 a report on the invention was submitted by the researchers including the present plaintiff to MU and the University had identified them as the inventors and agreed to share revenues generated from the invention with EPM. In 1997 MU assigned its rights to Polyvalor which is a limited partnership established to fund the commercial development of inventions made at EPM. EPM has a 50% stake in Polyvalor. In 2001 the plaintiff came to know that a company had been established to commercialize the invention, with MU and Polyvalor giving shares in the NASDAQ-listed company as payment for the grant of license rights in the invention. Thereafter, the plaintiff reached an agreement with MU for a share of the revenue made from the commercialization of his invention. When the plaintiff approached Polyvalor, it refused to settle. Issue was raised over the rights and obligations of a university over inventions made by its academic staff. The plaintiff claimed his share from the revenues generated by an invention he had co-invented. Previously, the lower Court held that the plaintiff's share should be calculated based on the revenues received by Polyvalor, which should have granted the plaintiff $1.4-million.

ISSUE: Whether the plaintiff has a right to a share of the revenue generated by the selling of shares of a company whose business is based on the plaintiff's invention?

JUDGMENT: The Quebec Appeal Court held that the plaintiff is entitled to $715,000, plus interest, after it found that the IP policy formulated by EPM applied not only to inventors who are its employees but also to inventors who use the school's resources or services.


DOMAIN NAME DISPUTE BETWEEN SWAROVSKI AKTIENGESELLSCHAFT V. SARENZA SA, WIPO

FACTS: The plaintiff, Swarovski Aktiengesellschaft, is a producer of cut crystals, genuine gemstones and created stones. The domain name bijouxswarovskifrance.com which was in dispute was registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn. The plaintiff is the registered owner of the trademarks SWAROVSKI in various countries around the world.

The SWAROVSKI trademark has generated vast good will and has become famous in connection with jewelry. The plaintiff also developed a formidable presence on the Internet platform and is the owner of several domain names containing the name "Swarovski" such as <swarovski.com> and <swarovski.net>. The Administrative Panel, WIPO found that the disputed domain name <bijouxswarovskifrance.com> was registered on May 10, 2010 by the respondent. Disputed domain name currently redirects to the domain name <swarovskiparis.net>, which is to a website offering jewelry for sale and includes tabs that contain the name SWAROVSKI. The plaintiff had sent a cease and desist letter to the respondent informing it regarding the plaintiff's intellectual property rights on the mark 'SWAROVSKI' but did not receive any reply.

The plaintiff argued that the disputed domain name is identical or confusingly similar to its SWAROVSKI trademark and that the additional descriptive prefix 'bijoux' (jewelry in French) and suffix 'France' are insufficient to avoid confusing similarity between the SWAROVSKI trademark and the disputed domain name. The respondent did not reply to the plaintiff's contentions.

ISSUE: Whether the respondent is liable for violation of 'Domain Name' incorporating the trademark owned by the plaintiff?

WIPO ADMINISTRATIVE PANEL DECISION: The Panel found that the plaintiff established prima facie cases inter alia due to the fact that the plaintiff has not licensed or otherwise permitted the respondent to use its SWAROVSKI trademark or a variation of it. The Panel also found that the plaintiff's mark is registered since 1965 and the respondent has registered and used the mark in bad faith.

The Panel found that the respondent was liable for trademark violation owned by the plaintiff under paragraphs 4(i) of the Uniform Domain Name Dispute Resolution Policy and Rule-15 of the Rules for Uniform Domain Name Dispute Resolution Policy. The Panel ordered "that the disputed domain name <bijouxswarovskifrance.com> be transferred to the plaintiff".


COURT AWARDS OF $130 MILLION FOR BREACHING LICENSE AGREEMENT FOR A SUPERBUG ANTIBIOTIC

FACTS: The US based Johnson & Johnson Inc. had signed to an agreement with Swiss based Basilea Pharmaceutica Ltd. to conduct clinical trial of a superbug antibiotic named ceftobiprole. This antibiotic targets so called superbugs which are responsible for many hospital-acquired-infection deaths (called Complicated Skin and Skin Structure Infections (cSSSI)). Basilea had invented a novel anti Methicillin Resistant Strains of S. aureus (MSRA) broad-spectrum antibiotic and received regulatory approval from Swissmedic for the treatment of complicated skin and soft tissue infections including diabetic foot infections.

Basilea is accusing Johnson & Johnson of having made mistakes in testing the drug, which led to it being rejected by EU (European Committee for Medicinal Products for Human Use (CHMP)) and US health regulators (FDA). Earlier this year Johnson ended a partnering deal with Basilea and had returned the rights of ceftobiprole to Basilea after European and U.S. authorities decided not to accept the drug because of doubts regarding the reliability of the results of the trial. Johnson was acting as Basilea's drug sponsor and was also in charge of the trials for ceftobiprole, but health authorities of EU and US said these had not been done in compliance with good clinical practice. Basilea argued that due to wrong clinical trial conducted by Johnson the EU and US authority has denied permitting the said drug in their regions.

ISSUE: Whether Johnson was liable for conducting wrong clinical trial for which EU and US regulatory authorities had denied permitting ceftobiprole into their regions?

ARBITRATORS JUDGMENT:
The Tribunal formed at Netherlands Arbitration Institute reiterated that EU regulatory authority (CHMP) found that phase-III studies to support the Marketing Authorization Application (MAA) had not been conducted in compliance with Good Clinical Practice (GCP) by Johnson. The tribunal found Johnson of breaching the license agreement with Basilea and awarded an amount $130 million, including lost milestones, other damages and interest in favor of Basilea. This award is immediately enforceable.


$442 MILLION AWARD IN FAVOR OF SANOFI FOR PLAVIX PATENT INFRINGEMENT SUIT

FACTS: The Plaintiff Sanofi, a Paris based company had filed a patent infringement suit against Toronto-based Apotex & Ors, in 2002 and had immediately won a preliminary injunction against them. The patent here is US Patent No. 4,847,265 ('265') relating to Clopidogrel Bisulfate (the chemical name for Plavix). Later in 2007, a Judge found that Sanofi's patent on Plavix, the world's 2nd biggest selling drug, was valid and enforceable, and that Apotex had violated the patent by manufacturing and distributing a generic form of the drug.

It is notable that before the Court barred Apotex from continuing the infringement Apotex flooded the drug market with its generic version of Plavix in 2006. In 2008 a subsequent judgment was pronounced by the Federal Circuit affirming the previous verdict of the Court. The United States Supreme Court also had denied Apotex's petition for certiorari in November 2009.

ISSUE: Whether Apotex is liable to pay the amount of damage prayed by Sanofi?

JUDGMENT: It has been already decided by the Supreme Court that Apotex has infringed Sanofi's '265' patent. Regarding the damages, the Court held that: "upon finding for the claimant the Court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the Court under 35 U.S.C. 284." The US District Court for the Southern District of New York concluded that "Sanofi's motion for summary judgment on its claim for $442,209,362 in damages is granted. Sanofi is also entitled to prejudgment interest on that ward at the averaged annual prime rate...".


€5.7 MILLION AWARD TO LOUIS VUITTON MOET HENNESSY FOR SELLING COUNTERFEITED PRODUCT BY EBAY

Facts: In 2008 Louis Vuitton Moet Hennessy (LVMH) and other LVMH companies obtained a victory over trade mark suit before the Paris Commercial Court. The case was originated in 2006 when LVMH commenced proceedings against eBay for using misspelled trade mark LVMH mark through Yahoo and Google search engines. Generally, eBay should have purchase related keywords which includes misspelled terms, to direct web traffic towards their website. The Commercial Court held that while purchasing misspelled terms such as "Louis Viton" and "Wuiton", eBay enabled counterfeiters to flog their wares towards eBay. The Court ruled that US company eBay Inc. and Swiss company eBay International AG was negligent while allowing the sale of counterfeit goods on their auction sites between the year of 2001-06, and ordered eBay to pay almost €40 million damages to various companies of the LVMH group, including Dior and Louis Vuitton. Thereafter, eBay appealed before the Hon'ble Paris Court of Appeal to reduce down the damage.

Issues: Whether eBay was liable for trade mark infringement?

Judgment: The Paris Court of Appeal confirmed that eBay did not fulfill the requirements to benefit from the liability exemptions for hosting services providers. The Court expressly had referred to and quoted the decision of the European Court of Justice (ECJ) in LVMH v Google Inc, in which the judges considered that in the Preamble to the European Union E-commerce Directive (2000/31/EC) where the exemptions from liability established in that directive cover only cases in which the activity of the information society service provider is "of a mere technical, automatic and passive nature", which implies that the service provider "has neither knowledge of nor control over the information which is transmitted or stored". This Appeal Court applied this definition to eBay's activities to rule that eBay could not be considered a mere hosting provider, but was also a broker, thereby confirming the Commercial Court's decisions to prevent eBay from any further direct or indirect trade mark infringement and allowed €5.7 Million damages in favor of LVMH.


TRUEPOSITION WIN $43 MILLIONS IN CELL PHONE PATENT BATTLE AGAINST ANDREW CORP.

FACTS: The Plaintiff TruePosition, a subsidiary of Liberty Media Corporation, is a leading provider of wireless location technologies and solutions. Previously TruePosition had taken action against Andrew for infringing a patent directed to use of technology known as Uplink Time Difference of Arrival (U-TDOA) to determine the location of wireless phones on the wireless system's control channel, which allows the location of phones to be tracked even when they are not in use. TruePosition's Patent No. 5327144 (hereinafter '144') or "control channel" patent is particularly important for safety and security applications. During the September 2007 a Delaware District Court Jury found that Andrew was involved in willful infringement of the said '144' patent while it was involved in selling its Geomatrix wireless location system to the Saudi Telephone Company (STC).

In the post-trial proceedings, the District Court awarded TruePosition $23.25 million in the form of compensatory and punitive damages. Subsequently, Andrew continued to ship products during these post-trial proceedings, and TruePosition re-opened the judgment for further proceedings against Andrew, leading the District Court to award TruePosition an additional $10.1 million in compensatory damages, $9.6 million punitive damages, applicable pre-judgment and post-judgment interest, including attorneys' fees. The Court also issued a permanent injunction that prohibits Andrew Corporation from making, using, selling, or offering to sell the various infringing Geometrix® products. Thereafter, Andrew Corporation made an appeal before the U.S. Court of Appeals for the Federal Circuit (CAFC).

ISSUES: Whether Andrew Co. was involved in willful infringement? And whether the damage can be allowed in favor of the TruePosition?

JUDGMENT: While pronouncing the judgment the Hon'ble U.S. CAFC has found that Andrew was involved in willful patent infringement by analyzing the whole fact itself and affirmed a $43 million judgment in favor of TruePosition and awarded permanent injunction against Andrew.


BILSKI V. KAPPOS, US SUPREME COURT RULING AGAINST PATENTING OF A MERE BUSINESS METHOD

FACTS: The appellant Bernard L. Bilski and Rand A. Warsaw had filed a patent application for a 'method of hedging risk in the commodities trading' in 1997. Petitioners' seeks protection for a number of claims which are capable of explaining how commodities buyers and sellers in the energy market can protect, or hedge, against the risk of price changes. The Examiner of USPTO repudiated it as an invention because it is not implemented on a specific apparatus and merely manipulates an abstract idea and solves a purely mathematical problem without any limitation to a practical application, therefore, the invention is not directed to the technological arts. In appeal before Board of Patent Appeals and Interface (BPAI), USPTO affirmed the rejection and held that 'if there is a transformation of physical subject matter from one state to another' is a patent-eligible subject matter and non-physical financial risks and legal liabilities of the commodity provider, the consumer, and the market participants is not patent-eligible subject matter. Further, in an appeal before the US Court of Appeals for the Federal Circuit (CAFC), the Court held two test that a claimed process is surely patent-eligible under 35 USC 101, if (a) It is tied to a Particular machine or apparatus, or (b) It transforms particular article into a different state or thing ('Machine-Transformation Test (the test)'-quoted from State Street Bank & Trust Co. v. Signature Financial Group Inc.). Thereafter, this case came before the US Supreme Court.

ISSUES: Whether the CAFC erred by creating the so-called "machine or transformation" test, which requires a process to be tied to a particular machine or apparatus, or transform an article into a different state or thing, in order to be patentable subject matter? and Whether the machine or transformation test contradicts Congressional intent that Patent protect 'method of doing or conducting business' (35 USC 273)?

JUDGMENT: The Court held that-Firstly, "although the test of §101 is broad, it is not without limit," citing Chakrabarty, Benson, and Diehr case; Secondly, the "machine-or-transformation" test “has repeatedly helped the Court to determine what is a patentable process”; Thirdly, while the test "has always been a 'useful and important clue,' it has never been the 'sole test' for determining patentability." It is rather 'an important example of how a Court can determine patentability under §101'; the CAFC's mistake was in treating it as the 'exclusive test'; and Fourthly, 'although the machine-or-transformation test is not the only test for patentability, this by no means indicates that anything which produces a 'useful, concrete and tangible result' . . . is patentable. In addition to these, the Court denied the petition.


FUJI FILM WON $16 MILLION IN LENS-FITTED FILM PACKAGES PATENT INFRINGEMENT CASE

FACTS: This case relates to single-use cameras or Lens-Fitted Film Packages (LFFPs). Fuji Film Corp. owns U.S patents related to LFFP. Once the LFFP is used by a consumer, the film processor opens the LFFP and processes the film and does not return the empty LFFP (shell) to the consumer. The defendant Jazz Products used to refurbish the empty LFFPs and sell it as new LFFP in the market.

In 2005 Fuji sued Benun, Jazz and others for patent infringement. After Bankruptcy Court for the District of New Jersey shut down Jazz, PE supplied Jazz with LFFPs that were refurbished by PE's Subsidiary company PC from China. Later on Jazz purchased the Jazz Photo Corp's inventory about LFFPs made by PE and PC (collectively polytech). The District Court made preliminary injunction against Jazz from selling in or to the US. Later on Jazz again started re-importation of the LFFPs which was in question and the District Court found defendants liable for contempt of the preliminary injunction based on the evidence that the re-imported LFFPs were infringing as determined by the sampling process. In 2009 the defendants moved in limine to bar reference to prior litigations and administrative actions and to collaterally stop Fuji from litigation.

ISSUE: Whether the Defendants are liable for patent infringement?

JUDGMENT: At the close of Fuji's case, defendants moved for judgment as a matter of law (JMOL) under Fed. R. Civ. P. 50(a) on Fuji's infringement claim based on defendants refurbishing Achiever-brand LFFPs. Defendants' JMOL motion was denied. The jury found willful infringement of Fuji's patents by the defendants and awarded $16 million in favor of Fuji Film Corp.


BAKER AWARDED $25 MILLION OVER A TRADE SECRET SUIT RELATING TO OILFIELD DRILL BIT (BAKER HUGHES INC. V. VAREL INTERNATIONAL INC.):

FACTS: Baker Hughes one of the world’s largest oilfield equipment suppliers sued its rival, Varel International (world's largest independent drill bit supplier) claiming that the smaller company cloned one of Baker Hughes’ best-selling drill bits (7-7/8 inch tri-cone drill bit). Baker Hughes requested an injunction banning the sale of Varel’s cloned bits. It is alleged that Varel managers who used to work at Baker Hughes allegedly obtained stolen internal design specifications from Baker, some with the word “confidential” and used them to copy a proprietary oilfield drilling bit for Varel’s product line. It is specifically contended by Baker Hughes that a Varel engineer, Tze Liang Lee allegedly provided copies of Baker Hughes documents containing design specifications and training manuals created at the Hughes Christensen technology division in the Woodlands, north of Houston. The same documents bear the digital footprint of a fax machine registered to Varel’s Oklahoma City office, according to the lawsuit.

ISSUE: Whether Varel and its employee can be held liable for stealing Baker's trade secret?

JUDGMENT: While pronouncing the judgment awarding $25 Million, the Jury of the Texas State Court considered the fact that Varel earned $5.9 million in profits from the trade secrets and avoided $1.5 million in R&D costs by copying the drill bit in 2004. Jurors also awarded exemplary damages of $17.8 million, or triple the profit figure, after finding that Varel acted with malice.


EUROPEAN UNION COURT INVALIDATES PEPSI POG DESIGN REGISTRATION

Facts: In 2003 a Spanish manufacturer named Grupo Promer Mon-Graphic (Promer) pitched its tazos to Frito Lay, a PepsiCo subsidiary Company. Tazos also known as rappers or pogs are small promotional toys included with food products aimed at children. The pitch was a confidential matter. On 4th February 2004, PepsiCo applied for the design registration for "promotional item[s]" for games. Subsequently, Promer applied for invalidity of the design arguing that PepsiCo's design lacks novelty and individual character according to Article 25(1)(b) of Community Design Law and Regulation, as Promer had earlier filed for Registered Community Design (RCD) for "metal plate[s] for games" and that PepsiCo's design was in conflict with Promer's prior design (Article 25(1)(d)).

Later on the Invalidity Division invalidated PepsiCo's RCD on the basis of that it was "in conflict" with the prior design, but as Promer's RCD had not been published at the time of PepsiCo's RCD application, it could not be taken into account as a prior design for the purposes of Article 25(1)(b).

Issue: Whether PepsiCo's RCD was in conflict with Promer's earlier design and reversed the Invalidity Division on the facts?

Judgment: The Board of Appeal envisaged that the design freedom of a designer of tazos is extremely limited and therefore the minor differences in PepsiCo's design were enough to create an overall different impression on the user. Promer had alleged that PepsiCo's application was made in bad faith - the Board had no hesitation in finding that bad faith is not a ground of invalidity. The General Court, in a closely argued decision, has affirmed the Board on several points, but overturned the overall finding in relation to invalidity.


INVALIDITY OF GENE PATENTING-RULED BY THE UK COURT (ELI LILLY & CO. V. HUMAN GENOME SCIENCES INC.)

FACTS: The case relates to a protein called Neutrokine Alpha, its antibodies and the polynucleotide sequence which was first discovered by Human Genome Science (HGS) and filed for a patent (EP 0,939,804 (UK)) in 1996. HGS and GlaxoSmithKline started clinical trials to develop an antibody for Neutrokine Alpha for the treatment of Lupus. At the same time Eli Lilly also had initiated its R&D to develop another antibody for a different condition. Eli Lilly moved to the Chancery Division (Patent Court) and subsequently in 2008 the trial Court held the patent invalid. Later on in 2009 this case moved to the Technical Board of Appeal (TBA) of EPO that allowed HGS's appeal based on some more restricted claims. This appeal has accordingly been conducted on the basis of the TBA's allowance for some claims in favor of HGS. Eli Lilly moved to the High Court of Justice Court of Appeal (Civil Division) and argued that the patent is invalid, since it did not satisfy the criteria of industrial application under Article-57 of the European Patent Convention, 1973 as well as under EC Biotech Directive 99/44.

ISSUES:
Whether the Patent was obvious and not susceptible of industrial application?

JUDGMENT: The Court held that if an invention does not comply with Article-57 of the EPC then it is not a patentable invention and it may be revoked under Section-72(1) of the UK's Patent Act 1977. The Court also opined that allowing patenting of chemicals whose use is unknown will subvert the patent system and would diminish research by others rather than encourage it. Therefore, the Court held that the patent is invalid as it has failed to show its commercial application.


ABBOTT LAB LOOSES BLOOD GLUCOSE TEST STRIP AND SENSOR PATENT BATTLE (ABBOTT LABORATORIES V. DICKINSON & CO. AND NOVA BIOMEDICAL CORPORATION)

FACTS: Previously in 2008, Therasense Inc. (Known as Abott Diabetes Care Inc.) and Abbott Laboratories (together called as the plaintiffs') filed a suit for infringement of its U.S. Patent No. 5,628,890 ("the '890 Patent") against the Dickinson & Co. and Nova Biomedical Corporation ("together called as the defendants'). The '890 patent was related to an electrochemical sensors for measuring glucose levels in blood and the sensor comprising two electrodes 'the working electrode (claim 11)' and 'the counter electrode (claim 12)'. The plaintiffs' filed patent infringement suit before the U.S. District Court for the Northern District of California accusing that the defendants' involved in infringing claims 11 and 12 of the said '890 patent by making, using, and selling a product called BD-Test Strips . The defendants' denied the infringement and asserted that the claims 11 and 12 of the patent are invalid under 35 U.S.C §§ 102, 103 and 112. Defendants' also asserted that the said claims are obvious or anticipated by two prior patents (U.S. Patent No. 5,120,420 ("Nankai") and U.S. Patent No. 5,582,697 ("Ikeda"). The Jury found that the Defendants' infringed claims 11 and 12 under the Doctrine of Equivalents and also found that claims 11 and 12 were invalid. After the Jury verdict the District Court pronounced judgment in favor of the Defendants'. Hence, the Plaintiffs' made an appeals against the District Court's Judgment before the U.S. Court of Appeals for the Federal Circuit (CAFC).

ISSUE: Whether claims 11 and 12 of the '890 patent are invalid?

JUDGMENT: While pronouncing the judgment in favor of defendants the Court opined that "in sum, we hold that claims 11 and 12 would have been obvious over Nankai as a matter of law. The erroneous jury instruction on the law of anticipation could not have changed the verdict of "anticipation or obviousness," and obviousness based on Nankai alone is sufficient to support that verdict as a matter of law". Therefore the U.S. CAFC affirmed the invalidity of claims 11 and 12 of the '890 patent and held that the Court does not have jurisdiction over defendants' cross-appeal.