Does Focusing on Single Embodiment Limits the Patent Specification?

This issue was handled by the United States Court of Appeals for the Federal Circuit in the SCRIPTPRO LLC, SCRIPTPRO USA, INC., Plaintiffs-Appellants v. INNOVATION ASSOCIATES, INC., Defendant-Appellee decided on August 15, 2016. This was an appeal from the United States District Court for the District of Kansas in No. 2:06-cv-02468-CM, Judge Carlos Murguia. United States District Court for the District of Kansas had granted summary judgment that claims 1, 2, 4, and 8 (“asserted claims”) of U.S. Patent No. 6,910,601 are invalid for lack of written description. This decision was appealed by ScriptPro, LLC and ScriptPro USA, Inc. (collectively “ScriptPro”).

Details of the patent at issue:

US20040039482

This patent relates to a collating unit operable to automatically store prescription containers dispensed from an automatic dispensing system for subsequent retrieval by an operator.

Parties agreed that claim 8 is representative of the asserted claims. Claim 8 has been reproduced below for the convenience:

Claims 8:

A collating unit for automatically storing prescription containers dispensed by an automatic

dispensing system, the collating unit comprising:

an infeed conveyor for transporting the containers from the automatic dispensing system

to the collating unit;

a collating unit conveyor positioned generally adjacent to the infeed conveyor;

a frame substantially surrounding and covering the infeed conveyor and the collating unit conveyor;

a plurality of holding areas formed within the frame for holding the containers;

a plurality of guide arms mounted between the infeed conveyor and the collating unit conveyor and operable to maneuver the containers from the infeed conveyor into the

plurality of holding areas; and

a control system for controlling operation of the infeed conveyor, the collating unit conveyor,

and the plurality of guide arms.

In 2006, ScriptPro had sued Innovation Associates, Inc. (“Innovation”) for patent infringement in 2006. After ScriptPro filed suit, Innovation petitioned for, and the United States Patent and Trademark Office (“PTO”) instituted, inter partes reexamination. During reexamination, ScriptPro amended the asserted claims, adding language to claims 1 and 2, and rewriting claim 4 into independent format. Claim 8 was not amended. District court granted summary judgment that the asserted claims are invalid for lack of written description. Details of the decision are: ScriptPro, LLC v. Innovation Assocs., Inc., 762 F.3d 1355, 1356 (Fed. Cir. 2014) (“ScriptPro I”). This decision was reversed by the federal circuit which held that district court erroneously determined that the specification limits the invention to a collating unit that requires use of sensors to determine whether a holding unit is full.

On remand, Innovation moved again for summary judgment that the asserted claims are invalid for lack of written description. In this second appeal, Innovation argued that the specification “unambiguously limits the manner in which the collating unit achieves automated storage of prescription containers . . . based on the availability of an open storage position and patient-identifying information” but the asserted claims “broadly claim a collating unit for ‘automatically storing’ absent any limitation that makes [them] commensurate with the invention” as described in the specification. In response, ScriptPro argued that the specification describes associating stored containers with a specific patient as one, but not the only, goal of the ’601 patent, such that the specification does not limit the claimed invention to sorting and storing based on patient-identifying information. The district court granted Innovation’s motion.

Federal circuit de novo reviewed the grant of summary judgement. In second appeal, ScriptPro argued that the district court erred by interpreting the ’601 patent’s specification as limited to sorting by patient-identifying information. The problem, according to ScriptPro, was that the district court’s focus on one purpose of the ’601 patent caused it to erroneously determine the scope of the invention. Federal circuit agreed with ScriptPro that the specification does not limit the claimed invention to sorting and storing prescription containers by patient-identifying information. The ’601 patent discloses multiple problems that the invention solves and many, of these solved problems involve sorting prescription containers by patient-identifying information, not all of them do.

Federal circuit agreed that as innovation argues, that much of the ’601 patent’s specification focuses on embodiments employing a sorting and storage scheme based on patient-identifying information. But a specification’s focus on one particular embodiment or purpose cannot limit the described invention where that specification expressly contemplates other embodiments or purposes. This is especially true in cases, where the originally filed claims are not limited to the embodiment or purpose that is the focus of the specification.

Federal Circuit reversed the decision of the court and remanded back the matter to the district court again with the costs to ScriptPro. Copy of the judgement can be accessed here.

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: swapnil@khuranaandkhurana.com.

Only Common Sense Not Sufficient to Prove Obviousness Over Prior Art

Can the grant of patent be rejected on the obviousness criteria based only on common sense? This issue has been handled by United States Court of Appeals for the Federal Circuit in the case of ARENDI S.A.R.L., Appellant v. APPLE INC., GOOGLE INC., MOTOROLA MOBILITY LLC, Appellees, decided on August 10, 2016. On December 2, 2013, Apple Inc., Google, Inc. and Motorola Mobility LLC (collectively “Appellees”)) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 7,917,843 (the “’843 patent”), which is owned by appellant Arendi S.A.R.L. (“Arendi”). On June 9, 2015, the Patent Trial and Appeal Board (“Board”) issued a decision finding claims 1-2, 8, 14-17, 20-21, 23-24, 30, 36-39, and 42-43 would have been obvious.

Details of the patent at issue:

US20080313159

This patent is related to a method, system and computer readable medium for name and address handling, and more particularly to a touch screen, keyboard button, icon, menu, voice command device, etc. provided in a computer program, such as word processing program, spreadsheet program, etc., and coupled to an information management source for providing address handling within a document created by the computer program.

The parties agreed that claim 1 of the ’843 patent is representative of the claims on appeal.

Claim 1:

Claim 1 has been reproduced below for the A computer-implemented method for finding data related to the contents of a document using a first computer program running on a computer, the method comprising:

displaying the document electronically using the first computer program;

while the document is being displayed, analyzing, in a computer process, first information from the document to determine if the first information is at least one of a plurality of types of information that can be searched for in order to find second information related to the first information;

retrieving the first information;

providing an input device, configured by the first computer program, that allows a user to enter a user command to initiate an operation, the operation comprising (i) performing a search using at least part of the first information as a search term in order to find the second information, of a specific type or types, associated with the search term in an information source external to the document, wherein the specific type or types of second information is dependent at least in part on the type or types of the first information, and (ii) performing an action using at least part of the second information;

in consequence of receipt by the first computer program of the user command from the input device, causing a search for the search term in the information source, using a second computer program, in order to find second information related to the search term; and

if searching finds any second information related to the search term, performing the action using at least part of the second information, wherein the action is of a type depending at least in part on the type or types of the first information.

The sole prior art reference on appeal was U.S. Patent No. 5,859,636 to Pandit (“Pandit”). Pandit was filed on December 27, 1995, and teaches recognizing different classes of text in a document and providing suggestions based on it.

Arendi had sued Appellees and several other technology companies alleging infringement of claims of the ’843 patent and related patents. Appellees responded by filing a petition requesting an IPR of claims 1-44 of the ’843 patent. The Board instituted review of claims 1, 2, 8, 14-17, 20, 21, 23, 24, 30, 36-39, 42, and 43, and declined to institute review of the other challenged claims.

PTAB found that it would have been obvious, as a matter of common sense, to modify Pandit to include the required preliminary step of searching for the identified number in the address book in order to avoid multiple entries of the same address.

The single question at issue at Federal Circuit was whether the Board misused “common sense” to conclude that it would have been obvious to supply a missing limitation in the Pandit prior art reference to arrive at the claimed invention. Federal Circuit agreed that common sense and common knowledge have their proper place in the obviousness inquiry.

According to the Federal Circuit, the Appellees failed to show why it would be common sense for the “Add to address book” function to operate by first searching for entries with the same telephone number.

Federal circuit observed that Rather than clearly explaining with concrete examples what benefit searching for entries with the same number would achieve, Appellees keep returning to their general mantra that Arendi’s argument against searching for a number would apply equally to a search based on a name. Yet the burden is Appellees’ to provide more than a mere scintilla of evidence of the utility of a search for a telephone number before adding the number to an address book, where such a search is not “evidently and indisputably within the common knowledge of those skilled in the art.

Federal circuit observed that reasoned analysis and evidentiary support are important in obviousness analysis.

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: swapnil@khuranaandkhurana.com.

Can Inventors Who Contribute to Only One Claim or One Aspect of One Claim of a Patent, may be Listed on Patent?

This question was handled by United States Court of Appeals for the Federal Circuit in the case of VAPOR POINT LLC, KEITH NATHAN, KENNETH MATHESON, Plaintiffs-Cross-Appellants DON ALFORD, JEFFEREY ST. AMANT, Counterclaim Defendants-Cross-Appellants v. ELLIOTT MOORHEAD, NANOVAPOR FUELS GROUP, INC., BRYANT HICKMAN, Defendants-Appellants, decided on August 10, 2016.
Vapor Point, L.L.C., Keith Nathan (“Nathan”), and Kenneth Matheson (“Matheson”) (collectively “Vapor Point”) had sued Elliott Moorhead (“Moorhead”), NanoVapor Fuels Group, Inc., and Bryant Hickman (“Hickman”) (collectively “NanoVapor”) in the United States District Court for the Southern District of Texas, seeking to have Nathan and Matheson recognized as joint inventors under 35 U.S.C. § 256 on NanoVapor’s U.S. Patent Nos. 7,727,310 (“the ’310 patent”) and 8,500,862 (“the ’862 patent”). NanoVapor responded by suing Vapor Point, seeking to have Moorhead recognized as a joint inventor under 35 U.S.C. § 256 on Vapor Point’s U.S. Patent Nos.7,740,816; 7,803,337; 8,337,585; 8,337,604; 8,337,763 and for declaratory relief regarding inventorship of NanoVapor’s ’310 and ’862 patents. After a four-day evidentiary hearing, the district court issued an order granting Vapor Point’s motion for correction of inventorship and denying each of NanoVapor’s motions. Vapor Point moved for exceptional case status and attorneys’ fees. The district court issued a final judgment correcting inventorship, dismissing the action with prejudice, and denying Vapor Point’s motion for exceptional case status and attorneys’ fees. NanoVapor appealed the district court’s order on inventorship and its dismissal of the case. Vapor Point crossappealed the same order to the extent it holds that the case is not exceptional and that an award of attorneys’ fees is not warranted.
The patents-in-suit are generally directed “to the removal of volatile fuel vapors, also known as volatile organic compounds (‘VOCs’), from storage tanks and other holding vessels, generally in the oil and gas industry.
“NanoVapor is an industry leader in the field of [VOC] containment, including a process called Vapor Suppression System developed by Moorhead that aims to control or eliminate combustible and toxic gases in fuel storage and transfer operations. After working with Moorhead to help market this technology, Nathan became Chief Operating Officer of NanoVapor in 2007. NanoVapor later hired Matheson to help with the “commercial embodiment” of the technology being developed.
Consistent with § 256, the district court held a four-day evidentiary hearing to determine inventorship of the patents-in-suit. After the hearing, the district court issued an order denying NanoVapor’s claims of inventorship and granting Vapor Point’s to the extent Nathan and Matheson sought to be added to the ’310 and ’862 patents as additional inventors. In that decision, the district court addressed the “four key concepts in the ’310 and ’862 patents”: (1) using biodiesel as a vapor capture medium; (2) removing VOCs from a vessel containing fuel vapors and introducing them into a vapor capture medium (such as biodiesel); (3) using a particulatizer to create micro-sized VOC particles for treatment; and (4) using diffusion plates to distribute micro-sized particles across the vapor capture medium. The district court found that Nathan contributed to the conception of the first three of these four key concepts and that Matheson contributed to the third and fourth concepts. The district court denied NanoVapor’s claim that Moorhead should be a named inventor on Vapor Point’s patents. Because NanoVapor did not join Nathan and Matheson—now deemed to be two of the inventors of the patents-in-suit—in the infringement claims against Vapor Point, Vapor Point argued that NanoVapor “did not have standing to pursue [its] claim for infringement of the ’310 patent, eliminating any claim against Vapor Point.
Federal circuit found that the district court did not err in dismissing the case after determining inventorship. Federal circuit further found that the district court did not abuse its discretion in denying Vapor Point’s motion for exceptional case status and attorneys’ fees. Therefore, federal circuit affirmed the decision by holding that all inventors, even those who contribute to only one claim or one aspect of one claim of a patent, must be listed on that patent. A co-inventor does not need make a contribution to every claim of a patent. A contribution to one claim is enough.

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: swapnil@khuranaandkhurana.com.

U.S. District Court Confirms Validity of Patent For UCB Pharma’s Vimpat®

UCB Pharma, a Belgian pharmaceutical company, announced on 14th August 2016 that the U.S. District Court for the District of Delaware confirmed the validity of its U.S. reissued patent RE38551 related to anti-epileptic drug Vimpat® (lacosamide). The patent challenge was brought by generic drug makers who had questioned the validity of the UCB’s patent which is scheduled to expire in March 2022.

Vimpat®, one of four key products for UCB Pharma, generated net sales of 379 million euros ($423.7 million) in the first half of 2016. Vimpat® is indicated for use alone or as add-on therapy in the treatment of partial-onset seizures in patients with epilepsy who are 17 years of age or older.

In 2013, UCB had sued numerous generic drug companies, including New York-based generics maker Argentum Pharmaceuticals, after they applied ANDA application to market a generic version of Vimpat® in the United States. In late May, Argentum Pharmaceuticals won an inter partes review of UCB’s patent by the USPTO’s Patent Trial and Appeal Board (PTAB).

The Delaware district court has ruled that UCB’s patent covering the epilepsy drug Vimpat® is valid. The Court upheld the validity of the UCB’s patent after issuing a sealed opinion on the patent. The court’s favorable decision for UCB now guarantees patent protection for Vimpat® until 2022.

Anna S. Richo, executive vice president and general counsel for UCB stated “We are pleased with Delaware Chief Judge Stark’s decision”. “This confirms the strength of our intellectual property for Vimpat®”.

The decision is currently under seal and will be released following an order from the court.

About the Author: Antony David, Senior Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at:antony@khuranaandkhurana.com.

Movie Titles and their Protection in India

Ms. Shreya Shrivastava, an intern at Khurana & Khurana, Advocates and IP Attorneys looks into the aspect of protection of Movie titles in India along with the parameters to avail the same.

What’s in a name? That which we call a rose by any other name would smell as sweet.” Turns out this quote by William Shakespeare does not hold true for the Producers of motion pictures. A name is an identity for a person, product, company, books or movies.

When it comes to choosing a title for a movie, film makers are very particular about the uniqueness and suitability. A title that is catchy and distinctive finds a place in the minds of the audience instantly and thus lots of money and efforts are put into achieving the right one.

The conventional practice followed by the film producers is to get the plot or titles registered with the film industry associations like Indian Motion Picture Producers’ Association;Film Writers’ Association; Television Producers’ Guild of India; Association of Motion Pictures and Television Program Producers and Film and Western India Film Producers Association. These associations are working consistently to endorse and encourage the production of motion pictures and to protect the commercial interest of films produced in India. Before registering a title, the association usually verifies the registration of same or deceptively similar title with other associations. However such registration has no effect on any legal proceedings, it only establishes precedence in the adoption title.

Under Indian Copyright Act, protection is conferred on literary works, dramatic works, musical works, artistic works, cinematograph films and sound recording but not to titles alone. Thus copying of a title alone and not the plot of the movie, the characters, songs etc does not fall under the ambit of copyright protection. It is common, rather it is imperative, to give title to literary or entertainment works. The literary work produced by the author or the work of entertainment produced by a producer needs a name. It is only then that such work would be identified. The term ‘literary title’ is used to encompass the titles of books, periodicals, newspapers, plays, motion pictures, television series, songs, phonograph records, cartoon features and the like.[1]

Movie titles in India may be registered under Class 41 of the Trademarks Act 1999. Movie titles can be bifurcated into two heads, that is, titles of series of movies, like for instance ‘Munna bhai MBBS’ and ‘Lage raho munnabhai’ and title of a single movie. In case of a single movie title, it must be established that the title has acquired secondary meaning amongst the public at large. The test of secondary meaning for literary titles is basically to determine whether in the minds of a significant number of consumers, the title in question is allied with a single source of the literary work.

In Kanungo Media (P) Ltd. v. Rgv Film Factory And Ors.[2] Kanungo media had produced a Bengali documentary movie titled Nisshabd, which had won numerous awards in various significant film festivals but was not released commercially. The plaintiff challenged the use of their highly acclaimed film title Nisshabd by the defendant for its upcoming Bollywood movie. The Court held that while the title of a literary work could be protected under the trademark law, in order to prove likelihood of confusion, it would be vital to establish consumer recognition and secondary meaning. The Court denied the relief of injunction based on the fact that the plaintiff’s film has not acquired secondary meaning. Also plaintiff approached the court very late after huge expenses had been made by defendant in advertising, promoting the movie and other marketing strategies and thus there was delay in filing the suit.

In Biswaroop Roy Choudhary v. Karan Johar[3] , Producer Biswaroop Roy filed a suit in the High Court seeking permanent injunction to restrain Karan Johar from using the title “Kabhi Alvida Naa Kehna”. The title had been filed by Karan Johar with the Association of Motion Pictures and TV Program Producers and the Film and Television Producers Guild of India also. The court dismissed the petition on the grounds that where words or phrases in common parlance are sought to be used with exclusivity, the Court should take care to determine which of the parties has ended its journey or traversed appreciably longer way in the use of such words as a trademark or as a title.[4]

In the case of Warner Bros. Entertainment Inc. and Anr v. Harinder Kohli and Ors.[5], the plaintiffs of the registered Trademark ‘HARRY POTTER’ alleged infringement of Trademark and sought a permanent injunction from the use of the title ‘Hari Puttar’, which was registered with Indian Motion Picture Producers’ Association and the Guild and was ready for commercial release. The Court dismissed the case due to the fact that the Harry Potter films meet the entertainment needs of an exclusive audience who can distinguish between films based on a Harry Potter book and a film which is a Punjabi comedy. Confusion of Hari Puttar with the plaintiff’s popular trademark Harry Potter was unlikely and also on grounds of delay.

It is thus clear from the above case decisions of the court that by mere registering a movie title either with any of the independent trade associations or as a trademark with the Registry may not be enough of the protection in title rights. Even though registering it is advisable but in order to establish one’s right over the title it is imperative that consumer recognition and secondary meaning is adduced to it. In order to do that, one has to actually use the trademark. Even if the work has not been released, a sufficient amount of pre-release publicity of the title may cause a title to acquire recognition sufficient for protection. Relevant evidence from which secondary meaning for a literary title may be inferred as a question of fact include: (1) the length and continuity of use; (2) the extent of advertising and promotion and the amount of money spent; (3) the sales figures on purchases or admissions and the number of people who bought or viewed plaintiff’s work; and (4) the closeness of the geographical and product markets of plaintiff and defendant.[6] Also, delayed approach to the court to enforce one’s right in the titles can also be of loss to the plaintiff.

Any cinematographic work is identified by its title for decades. People conceptualize the idea behind the work by associating it with the title and hence it is becoming a perquisite to register it in order to protect and preserve the commercial interest in the film. The registration not only provides exclusive right over the title but also restrains the unauthorized use or adoption by another.

[1] McCarthy on Trademarks and Unfair Competition, Third Edition (1995) Vol. I

[2] 138 (2007) DLT 312

[3] 131 (2006) DLT 458, 2006 (33) PTC 381 Del

[4] Supra

[5] 2008(38)PTC185(Del)

[6] Kanungo Media (P) Ltd. vs Rgv Film Factory And Ors. 138 (2007) DLT 312

India’s First IP Crime Unit Launched in Telangana State

Piracy is one of the major evil Indian IP industry is facing for decades and the same is growing day by day rooting into the system causing irreparable loss to the economic reputation of the country. As per the report by Ernst & Young, Indian films industry has sustained loss of around USD 959 (Rs. 4,411 Crores) million and 5, 71,896 jobs in the year 2008 due to piracy.[1] Further various incidents regarding piracy in the film industry seems to be increasing and recently the incident related to the online leak of movie “UDTA PUNJAB” before two days of its release had made headlines. However Indian Judiciary has taken timely steps to control the piracy by passing John Doe orders wherein identities of the Defendants are not known but the whole site suspected providing the pirated versions is blocked. UDTA PUNJAB is not the only movie which is victim of the piracy, there are numerous movies that falls prey of piracy, some of which are reported while others go unnoticed. Latest incidents of piracy in the Bollywood industry have been in headline every now and then, which palpably is a sheer discouragement to the IPR holder as well as economic system of the country. Even Telangana Film Chamber of Commerce recently claimed that there were 14,000 sites and 89,000 illegal downloads of the movies causing loss in millions of rupees.[2] The issue related to piracy and infringement of IPR in India ultimately impacts its economic reputation which is not at all desirable.

Reportedly, in order deal with the menace of piracy, Telangana Intellectual Property Crime Unit (TIPCU) is launched as India’s first unit to deal with the Intellectual Property Crime. It is set up under the cyber crime wing of the CID to deal with complaints pertaining to online piracy particularly illegal download and spread of movies. Pertinently, TIPCU being first of its kind of state level unit in India seems to be vigilant step by the state government in setting up a special unit dedicated to tackle with the serious and organized intellectual property crime such as piracy, with prime focus on offences committed using an online platform. Modeled upon UK’s Police Intellectual Property Crime Unit (PIPCU), TIPCU’s main task will be to monitor online piracy and recommend blocking of websites providing pirated contents, identify the perpetrators and pursue action. Reportedly, TIPCU’s will also prosecute the pirates and choke their revenue sources. The taskforce is expected to start work in the next few months. It will have representatives from cyber crime police, state IT ministry, internet service providers, the Telugu film industry, legal experts and financial experts.[3] Further TIPCU is also expected to deal with the measure to control illegal online activities, including child pornography. Thus it seems that the horizon of the unit is duly kept wide in order to confront all the wrongs being carried out through online platforms with special focus on piracy. It is a commendable step by the Telangana Government which inculcates deterrence among the wrong doers who indulge in such illegal activities of piracy. Thus units like TIPCU are essential to curb the menace of the Piracy and intellectual property infringement in India, which ultimately helps retain confidence among the authors/creators/ owner towards their Intellectual Property rights in India. Now the actual effective working of the unit is expected to speak louder than words and help clear the menace of piracy issue. Further, it is the need of the hour to have such units throughout India, as the piracy is the issue that is also being faced by the Bollywood as that of the Tollywood. Launch of TIPCU has already set a trend across other Indian states to have such units established which would actively help curbing the menace of piracy in India.

About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Abhijeet@khuranaandkhurana.com

[1] http://www.financialexpress.com/archive/piracy-a-serious-threat-to-indian-film-industry/592752/

[2]http://www.thehindu.com/todays-paper/tp-national/tp-andhrapradesh/tipcu-to-tackle-online-piracy/article8771495.ece

[3] https://www.telanganastateofficial.com/tipcu-telangana-intellectual-property-crime-unit-formed/

CO2 Solutions Wins Patent Challenge Against Akermin in Denmark

CO2 Solutions Inc, a leader in the field of enzyme-enabled carbon capture technology, has successfully defended its broad intellectual property (IP) rights to its enzyme-enabled carbon capture technology in a case brought against it by U.S.-based Akermin Inc. in Denmark.

Based in Quebec City, CO2 Solutions Inc. is an innovator in the field of enzyme-enabled carbon capture and has been actively working to develop and commercialize the technology for stationary sources of carbon pollution. CO2 Solutions’ technology lowers the cost barrier to Carbon Capture, Sequestration and Utilization (CCSU), positioning it as a viable CO2 mitigation tool, as well as enabling industry to derive profitable new products from these emissions. CO2 Solutions has built an extensive patent portfolio covering the use of carbonic anhydrase, or analogues thereof, for the efficient post‐combustion capture of carbon dioxide with low‐energy aqueous solvents.

The Danish PTO’s decision came in response to a challenge filed by Akermin Inc., a U.S. company that had intended to utilize similar CO2 capture technology for a biogas-related project in Denmark, known as ENZUP. CO2 Solutions had notified Akermin’s Danish ENZUP partners of their impending infringement of the CO2 Solutions’ registered Utility Model BR 2014 00144, subsequent to which Akermin Inc. filed a request for re-examination with the Danish PTO for invalidating the CO2 Solutions’ utility model.

The Danish Patent and Trademark Office (DKPTO), after reexamination, upheld the validity of the issued claims in the CO2 Solutions’ registered Utility Model BR 2014 00144 entitled “System For CO2 Capture Using Packed Reactor and Absorption Mixture with Micro-particles including Biocatalysts”. In the re-examination decision, the DKPTO held the claimed subject matter was novel and distinct over the prior art, and maintained all the claims of the registered utility model in un-amended form.

Independent Claim 1 of DK 2014 00144 (U1) reads as follows:

A system for capturing CO2 from a CO2-containing gas comprising a packed reactor configured for contacting the CO2-containing gas with an absorption mixture within, the absorption mixture comprising a liquid solution and micro-particles, the micro-particles comprising a support material and biocatalysts supported by the support material and being sized and provided in a concentration such that the absorption mixture flows through the packed reactor and that the micro-particles are carried with the liquid solution to promote dissolution and transformation of CO2 into bicarbonate and hydrogen ions, thereby producing a CO2-depleted gas and an ion-rich mixture comprising the micro-particles.

“This decision is the third in Denmark upholding all of our intellectual property claims in the face of vigorous opposition by Akermin and other ENZUP partners,” stated Evan Price, President and Chief Executive Officer of CO2 Solutions.

“The decision clearly confirms our ownership of the IP related to enzyme-enabled carbon capture, the most economical and cleanest commercial technology available to date for this purpose. While we offered the ENZUP partners a single commercial license for use of the CO2 Solutions’ IP in their project, it appears that, pursuant to this decision, Akermin has indefinitely ceased operations and the ENZUP project itself, in Denmark, has been cancelled. CO2 Solutions welcomes initiatives to implement carbon capture technology, but shall defend the Corporation’s IP wherever we observe actual or imminent infringement on our rights, as we have done successfully in Denmark.” Evan Price further stated.

With 70% of global energy demand currently met through the burning of carbon-based fuels, and the demand predicted to double by 2035, the world faces a growing challenge that includes reducing climate change causing carbon dioxide (CO2) emissions while not damaging a fragile global economy that is sustained by these abundant fossil fuels. Additionally, substantial opportunities exist for the utilization of CO2 in a broad range of industrial applications from enhanced oil recovery, to beverage carbonation, pulp and paper production, greenhouses, and chemical production, many of which also provide a carbon sequestration opportunity.
CO2 Solutions is addressing these challenges as the leader in the field of enzymatic CO2 capture. CO2 Solutions’ patented technology allows for the low-cost capture of CO2 from stationary emissions sources such as oil production operations, power and steam plants and metals production facilities, while leveraging existing solvent-based gas scrubbing approaches already known to industry. In turn, CO2 Solutions is positioning CO2 capture and sequestration as a viable climate change mitigation tool as well as enabling industrial customers requiring CO2 to lower their acquisition costs for existing and new applications.

About the Author: Antony David, Senior Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at:antony@khuranaandkhurana.com.

Jurisdiction for Trademark and Copyright Suits after Bombay High Court’s Decision

It’s really not settling down when it comes to jurisdiction of infringement of trademarks and copyrights. In INDIAN PERFORMING RIGHTS SOCIETY LTD. Versus. SANJAY DALIA AND ORS: (2015) 10 SCC 161 decided on July 01, 2015, Hon’ble Supreme Court (SC) dealt with the extent to which section 62 of the Copyright Act,1957 and section 134 of the Trademark Act, 1999 provide the convenience to Plaintiff in terms of instituting suit for infringements. SC agreed that both section 62 and section 134 are inclusive in nature, and provide additional forum to the plaintiff to sue defendant at places where plaintiff is residing or carrying on business or personally works for gain in addition to places provided by the section 20 of CPC i.e. places where defendant is residing or carrying on business or personally works for gain or where cause of action has arisen. But SC made it clear that section 62 and section134 do not give plaintiff authority to institute a suit at subordinate place if no cause of action has arisen there and cause of action has arisen at the place of registered office. By observing so, SC made it clear that section 62 and section 134 are not interpreted to the detriment of Defendant.

After this decision by SC, in ULTRA HOMES CONSTRUCTION PVT. LTD Versus PURUSHOTTAM KUMAR CHAUBEY & ORS FAO (OS) 494/2015 & CM 17816/2015 decided on January 20, 2016, Hon’ble division bench of Delhi High court held that, plaintiff being a corporation (which includes a company), can sue at additional places as discussed below:

Jurisdiction for Trademark

According to this decision, plaintiff cannot choose to file suit at the place of Principal office in case it has subordinate office and cause of action has arisen at such place. An in-depth analysis of inclusive nature of the section 62 and section 134 and effect of the above mentioned two decisions on the jurisdictions available to plaintiff was done by IIPRD.

In decision given on June 15, 2016 in respect of SUIT NO. 516 of 2013 and SUIT NO. 632 of 2014, Hon’ble Bombay High Court decided that Dalia decision by SC does not take away the privilege of the plaintiff to file suit at the place of principal place of business or registered office even if it has subordinate place and cause of action has arisen at such place or defendant resides or carries on business there. To support his views, Justice Patel of Bombay HC relied on the discussion of SC on “carries on business”, where SC observed that registered office of a company is the principal place of business as generally it is place where controlling powers are exercised. Justice Patel said that Dalia decision intended to avoid only abuse that can result when cause of action has arisen at the place of registered office of plaintiff and he chooses to file a suit at such a place where he has subordinate place and neither cause of action has arisen nor defendant resides or carries on business there.

With the contrary decisions of DB of Delhi High Court and Bombay High Court on whether plaintiff has the privilege to file suit at the place of its registered office when it also has a subordinate place and cause of action has arisen at such a place, the position remains unsettled. It would be interesting to note stand of the Supreme Court on the same.

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: swapnil@khuranaandkhurana.com.

Update On Pune Office: Change of Address

Kind Attention..!

This is to update our Patrons that in the wake of our growing client demand, we have changed our Pune office address to a new one which is more centrally located in the heart of city facilitating our patrons, existing and future ones in Pune, Maharashtra and surrounding region to reach us easily and in a hassle free manner.

Kindly note our new Address for PUNE Office as below:

Khurana & Khurana, Advocates and IP Attorneys
Office No. 206, 2nd Floor, Citymall,
University Road, Ganesh Khind,
Shivaji Nagar, Pune – 411007, Maharashtra, India
Tel: +91-(020) 65223365
E-Mail id: info@khuranaandkhurana.com

REQUEST ALL OUR PATRONS TO KINDLY UPDATE THE CONTACT DETAILS FOR OUR PUNE OFFICE AS MENTIONED ABOVE AND ALL FURTHER COMMUNICATIONS FOR PUNE OFFICE TO BE MADE THERETO

Post Prosecution Pilot Program (P3): A Commendable Decision by USPTO

On Monday 11 July, USPTO announced a new pilot program (P3), intended to boost the prosecution efficiency. Under the P3 program, an applicant can file a request for consideration after final rejection, statement that he is willing and available to participate in the event, along with copy of response to a final rejection, and optionally proposed non-broadening amendment to the one or more claims. The program provides an opportunity to the applicant to make an oral prosecution to a panel of examiners, and then receive a written decision from the panel.

Duration of the initiative:

The P3 pilot is scheduled to start from 11 July 2016 and will continue till earlier of 12 January 2017 or receipt of 1,600 compliant requests by USPTO. There are multiple technology centres involved in this initiative and one or more of them shall stop accepting further requests as soon as their counter reaches 200.

Eligibility:

To participate in the P3 pilot program, applicant has to file a request within 2 months from the mailing date of final rejection, and before applying a notice of appeal. USPTO is providing facility to the applicant, to present an oral presentation to a panel of 3 examiners, during the conference. To apply for P3 Pilot program the requirements are as follows:

  • A request form to apply under P3 pilot program;
  • A statement within the Request Form that the applicant is willing and available to participate in a P3 conference with the panel of examiners;
  • A response under 37 C.F.R. 1.116 comprising no more than 5 pages of arguments (exclusive of amendments) to final rejection; and
  • Optionally a proposed non-broadening amendment to one or more claims.

There is no fee required to participant in the program. The goal of the P3 pilot program is to reduce the number of appeals take to patent trial and appeal board. It will also hopefully reduce the request for continued examination (RCE) filing after final rejection.

The USPTO is also requesting comments from the public, and suggestion to improve the prosecution process. The patent office plans to evaluate the public feedback to the pilot program so as to achieve its goals. Comments and suggestion can be sent by email on: afterfinalpractice@USPTO.gov, or by post to: USPTO, mail stop comments patents, office of commissioner for patents, P.O. Box 1450, Alexandria, VA 22313 – 1450. View the USPTO Notice for more details.

About the Author: Saurabh Kumar Jain, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Saurabh@khuranaandkhurana.com.