The Prior Art

In ACLU Suit, Judge Rules Myriad's Genetic Patents Invalid

Last year, several doctors' groups, together with the ACLU and Public Patent Foundation, filed a lawsuit seeking to invalidate patents on two genes related to breast cancer and owned by Utah-based Myriad Genetics. The plaintiffs, who can be viewed as arguing more broadly against all genetic patents, claimed in the suit that such patents are not only illegal under the nation's patent laws, but also unconstitutional.

On Monday afternoon, the plaintiffs won. Ruling on summary judgment motions filed by both sides, New York federal district court Judge Robert Sweet ruled on summary judgment invalidated Myriad's patents on the BRCA1 and BRCA2 genes. In his 152-page opinion [PDF], Sweet wrote that the patents in question cover parts of the natural world and therefore don't conform to section 101 of U.S. patent laws, which those govern what qualifies as patentable subject matter.

Sweet agreed with the ACLU's basic argument that the "isolated" DNA that Myriad claimed to have patented is still a product of nature, and can't be covered by patents. He wrote: "It is concluded that DNA's existence in an 'isolated' form alters neither this fundamental quality of DNA as it exists in the body nor the information it encodes. Therefore, the patents at issue directed to 'isolated DNA' containing sequences found in nature are unsustainable as a matter of law and are deemed unpatentable subject matter."

Pat Lit Weekly: FedEx Sends Scott Harris Patent Packing

This week, a Scott Harris patent bites the bar-code dust, for now. And a close look at how it made its way from application to the courtroom shows how a lawyer-inventor was able to claim that FedEx infringed his intellectual property with every package it shipped.

Scott Harris is a former big-firm patent attorney who is also, according to his patents and related lawsuits, responsible for a wide array of technological innovations: from anti-spam software to toasters to "enhancing touch and feel on the Internet."

Over the years, Harris's patents have been used to sue a wide range of companies, including Dell, FedEx, Motorola, and Google. The Harris patent that had progressed furthest towards trial, No. 6,666,377, is controlled by BarTex Research LLC, a patent-holding company that filed an infringement suit against FedEx in the Eastern District of Texas two weeks after it was formed there. In the company's complaint, BarTex lawyers at the Chicago patent boutique Niro, Scavone, Haller & Niro claim that the existence of the '377 patent, which covers bar code-scanning technology, means FedEx should make the holding company a royalty payment on every package it ships.

But BarTex suffered a setback in that lawsuit last month when E.D. Texas Judge Leonard Davis finalized a claim construction order that could wind up invalidating the '377 patent. BarTex's attorneys have stipulated as much if Davis' claim construction is allowed to stand—something they hope to prevent. On March 16, they filed papers indicating they will appeal Davis's Markman order to the Court of Appeals for the Federal Circuit. (Read Judge Davis' order finalizing the claim construction [PDF].)

Patent Litigation Weekly: Digging Beneath the Surface of Apple v. HTC

This week: Good luck getting any lawyers in Silicon Valley to talk--even on deepest background--about this week's hot patent litigation story. That doesn't mean there isn't plenty of history and context to consider when assessing Apple's risky gambit.

Apple's lawsuit against HTC comes well into the Internet age, after a 10-year run of "troll" lawsuits has transformed the patent litigation landscape to the point that such suits now make up the bulk of many Silicon Valley litigators' practice.

It's fairly unusual in the modern era for a market leader to initiate a patent suit. Which is not to say large operating companies don't sue for patent infringement. They do. But on the relatively rare occasions when they do launch such litigation, it tends to fall into a couple of categories.

New York Times Publishes Graphic Featuring Nonexistent Patent Lawsuits

Saw an interesting chart in the New York Times this morning (via Techdirt) titled "An Explosion of Mobile Patent Lawsuits." Check it out:

Pretty big explosion! But some parts of the chart looked strange to me—specifically, Nokia's supposed barrage of seven patent lawsuits. Nokia, like a lot of companies, has litigated against Qualcomm over patent royalties, and I sure noticed Nokia's lawsuit against Apple and Apple's countersuit. But had I somehow managed to miss Nokia filing patent lawsuits against Sharp, Hitachi, LG, Toshiba, and Samsung?

Nope. After checking PACER, I can say that those lawsuits just don't exist. NYT blogger Nick Bilton cited this IHT article as his source, which seems to conflate Nokia's two patent disputes—one with Qualcomm, the other with Apple—with a broad price-fixing lawsuit over LCD displays it launched in December. But that lawsuit doesn't have anything to do with patents, intellectual property, or smartphones. The defendants in that litigation include such companies as Philips and AU Optronics, which aren't in this chart (or in the smartphone business for that matter). 

Nor could I find any recent example of Blackberry manufacturer RIM suing Sharp Electronics, as the chart shows, either in a U.S. District Court or at the International Trade Commission.

Whittling the "explosion" down to the correct size would require deleting 6 of the 16 (or roughly one-third) of the cool-looking interconnected lines, and would make the Hitachi and Toshiba globes drop off the chart as well. Doing that would also leave Kodak (a non-competitor in the smartphone space) responsible for a big chunk of the remaining action.

There are, of course, still plenty of real smartphone patent suits to go around. No need for The New York Times to add in extras.

UPDATE: The New York Times updated their post.

 

PubPat Releases Claim Construction Dictionaries

Does the word "user" mean a person or a machine? And when you say "connected," does that necessarily mean directly connected?

If your eyes are rolling back in your head while you're reading this, consider yourself normal. If you're getting excited, then you might love claim construction hearings, those patent litigation proceedings during which lawyers argue about the meaning of words—especially the meaning of everyday words. Other than the trial itself, the claim construction process is the most important part of a patent lawsuit, one that's been required since the Supreme Court's Markman decision in 1995. How a court decides to define a particular term can put an accused product definitively within, or outside of, the patent claims at issue in a lawsuit.

Now, the Public Patent Foundation has released a free "Claim Construction dictionary" that the group predicts could well reduce the expense and difficulty of conducting research on patents. In fact, David Garrod, who edited the dictionary, believes they could make researching patent claims—whether in connection with a claim construction hearing, or an infringement opinion—"dramatically cheaper."

Patent Litigation Weekly: RPX Fattens Up On Saxon Innovations Patent Portfolio

A novel International Trade Commission case that expanded the limits of what the agency would consider a "domestic industry" has ended with the holding-company plaintiff that initiated that suit, Saxon Innovations, selling the lion's share of its patents to patent-defense aggregator RPX Corporation.

Under the deal, RPX acquires all but ten of Saxon's 180 patents, which originated with chipmaker AMD Corporation, for an undisclosed sum. The remaining 10 patents go to a patent-enforcement company called Norman IP Holding, which is managed by the same people who managed Saxon. Saxon has ended its innovative ITC litigation against Palm Inc., Nokia, Panasonic, Samsung, HTC, and Research in Motion, as well as two related federal lawsuits in the Eastern District of Texas.

Saxon is owned by Altitude Capital Partners, a New York private equity firm that invests in patent litigation. In a statement announcing the RPX deal, Altitude's managing partner, Rob Kramer, said he is proud of the profits Saxon's litigation has produced for the investment firm and especially proud that it was a Saxon suit that persuaded the ITC—the federal agency tasked with protecting the U.S. market from unfair trade practices—that a holding company with two full-time employees is indeed a "domestic industry" worthy of protection.

“I want to especially thank Saxon Chief Executive Officer, Bill Marino, for conceiving of and executing the novel approach of demonstrating domestic industry in the International Trade Commission,” Kramer said. “His entire management team and all of our strategic partners made great contributions to accelerate our realization of such outstanding returns."