Martin Schwimmer, lead attorney for Leason Ellis and author of the Trademark Blog.
Earlier this year Leason Ellis LLP, an intellectual property law firm located in White Plains, New York, filed a complaint against USA Trademark Enterprises, Inc. of Sarasota, Florida, and its principals Timea Csikos and Andras Nemeth. The multi-count complaint alleged that USA Trademark Enterprises engaged in false advertising and unfair competition by marketing a catalog of trademark registrations, which offers no value because the published information is freely available in the online records of the U.S. Patent and Trademark Office. The complaint alleged that the defendants are further confusing consumers into thinking that the catalog is legitimate by sending unsolicited notices designed to make it appear as though USA Trademark Enterprises, Inc. is an official government enterprise or otherwise affiliated with any entity associated with the trademark registration process.
Yesterday Leason Ellis announced that the case has been resolved with the signing of a consent decree and Settlement Agreement. Without a doubt this can be characterized as nothing short of a complete and total victory. The judgment was entered by the Hon. Edgardo Ramos of the United States District Court for the Southern District of New York.
Last week, on Friday, June 15, 2012, Merck (NYSE: MRK) announced the U.S. District Court for the District of New Jersey (Judge Peter G. Sheridan) ruled against the company on the issue of patent infringement in its suit against Apotex Inc. and Apotex Corp. See Non-Published, Redacted Opinionand Court Order. The patent at issue in the decision was U.S. Patent No. 6,127,353, which covers the active ingredient in Nasonex® and which provides exclusivity the expiration of the patent on April 3, 2018. The District Court decision did, however, confirm the patentability of the claims in question, finding Apotex’s challenges for anticipation and obviousness unpersuasive.
The case at issue in the Merck announcement was styled Schering Corporation v. Apotex, Inc. 3:09-cv-06373. So why was Merck announcing this adverse decision? In November 2009, Merck completed a $41 billion acquisition of Schering-Plough. See Merck completes acquisition of Shering-Plough. This acquisition, making Schering a fully owned subsidiary, was reportedly part of an attempt to diversify as they seek to weather the recession and cope with the unpredictability of drug development. See Merck to buy rival for $41 billion.
In a complaint filed December 18, 2009, Schering claimed that the Abbreviated New Drug Application (ANDA) filed by Apotex constitutes patent infringement of the ’353 patent, which was issued to Schering on October 3, 2000 and claimed priority of an international patent application first filed pursuant to the Patent Cooperation Treaty (PCT) on September 6, 1991.
Means-plus-function claiming has been disfavored (by and large) since at least 1994 when the Federal Circuit handed down its decision in In re Donaldson, where the Federal Circuit sitting en banc explained:
If one employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.
In other words, if it is not in the specification then the fact that it may be a “means” to accomplish the function does not save you. Means that accomplish the recited function that are not within the specification of a patent application are not captured by the claims.
Means-plus-function claiming is not very popular in many technical disciplines because of how narrowly limited the claims are to what is specifically disclosed. Over the years, however, mean-plus-function claiming has continued with various levels of popularity for those who deal with computer-implemented methods (i.e., software). After all, software is just a series of steps directing a machine (typically a computer) to perform certain processes to accomplish a result. Thus, “means for” doing something remained a rather descriptive way, at least generally speaking.
Last month the Federal Trade Commission announced that Skechers USA, Inc. agreed to pay $40 million to settle charges that the company deceived consumers by making unfounded claims in a variety of advertisements. The claims made by Skechers that were determined to be unsupported related to advertisements that claimed that Shape-ups would help people lose weight, and strengthen and tone their buttocks, legs and abdominal muscles. See Stipulated Final Judgment and Order.
Under the Federal Trade Commission Act advertising must be truthful and non-deceptive, advertisers must have evidence to back up their claims; and advertisements cannot be unfair. The FTC will consider an ad deceptive if it contains a statement – or omits information – that is (1) likely to mislead consumers who are otherwise acting reasonably under the circumstances; and (2) material to a consumer’s decision to buy or use the product. The FTC will consider an ad to be unfair if it is: (1) likely to cause substantial consumer injury that a consumer could not reasonably avoid; and (2) not outweighed by the benefit to consumers.
IPXI is a a financial exchange that facilitates non-exclusive licensing and trading of intellectual property rights with market-based pricing and standardized terms. At the core of the business model is what IPXI calls a “Unit License Right” or ULR. According to IPXI, “ULR contracts transform private licensing of technology into consumable and tradable products, allowing for improved market transparency, smooth technology transfers, and increased efficiencies.” Essentially, ULR contracts will eliminate the inefficiencies that plague traditional bilateral licensing efforts because the exchange will act as an intermediary between patent owners and potential licensees, with rights being exchanged on an open market.
When attempting to determine whether an invention is patentable it is necessary to go through the patentability requirements in an effort to see whether patent claims can be drafted that will be usefully broad and that will be distinguishable over the prior art. I recently wrote about the patentability requirements, providing an overview of patentability.
Where the rubber meets the road when it comes to patentability is often with respect to determining whether an invention is non-obvious, which is one of the five patentability requirements. It has always been difficult to explain the law of obviousness to inventors, business executives and law students alike. Since the United States Supreme Court issued its decision in KSR v. Teleflex five years ago it has become even more difficult to provide a simple, coherent articulation of the law of obviousness that is at all intellectually satisfying. That is in no small part due to the fact that the determination about whether an invention is obvious is completely subjective.
If you look at the Federal Circuit cases it seems that there is an awful lot of reasoning (if you can call it that) that justifies a conclusion already formed. Simply stated, the state of the law of obviousness allows a decision maker to make a determination about obviousness that seems appropriate from a subjective standpoint and then weave the “reasoning” to justify the conclusion already reached.
Australia’s Ambassador and Permanent Representative to the World Trade Organization, Tim Yeend, and Director General Francis Gurry (Photo: WIPO/Berrod)
Geneva, June 15, 2012 — Australia and the World Intellectual Property Organization (WIPO) today signed an agreement detailing how an AUD$2 million Australian contribution would assist least-developed and developing countries improve their intellectual property systems.
Australia’s Ambassador and Permanent Representative to the World Trade Organization, Tim Yeend, said Australia’s contribution built upon existing cooperation between WIPO and IP Australia in relation to the provision of IP-related technical assistance and capacity building in the Asia-Pacific region.
Geneva, June 15, 2012 — The stage is set for a new international treaty that would extend the protection for audiovisual performers, granting them both economic and moral rights similar to those already recognized for music performers. Over 500 negotiators from WIPO’s 185 member states, as well as actors, industry and other stakeholder organizations will meet in Beijing from June 20 to 26, 2012 to finalize discussions on an international treaty to update the intellectual property rights of audiovisual performers, such as film and TV actors and actresses. The meeting will be opened on June 20, 2012 at the China World Hotel by WIPO Director General Francis Gurry and high ranking Chinese State and Beijing Municipality officials.
The Diplomatic Conference on the Protection of Audiovisual Performances, convened by WIPO and hosted by the Government of the People’s Republic of China, is the culmination of over twelve years of negotiations. It is expected to result in a treaty that will strengthen the economic rights of many struggling film actors and other performers and could provide extra income from their work. It will potentially enable performers to share proceeds with producers for revenues generated internationally by audiovisual productions. It will also grant performers moral rights to prevent lack of attribution or distortion of their performances.