Monthly Archives: June 2011

IIPRD and Khurana & Khurana open Branch Office in Pune

Khurana & Khurana, Advocates and IP Attorneys (K&K) along with its sister concern, an  IP Consulting Firm IIPRD announce that they have opened up a branch Office in Pune in wake of the rising client requirements and towards their goal of expanding their operations across India.

K&K is one of the fastest growing full service IP Law Firms in India representing Indian and International clients ranging from small start-ups to Fortune 200 companies giving them the same experience across the board. K&K has, in it’s third year of practice, has made an entry as a Leading IP Law Firm in “Patent and Trademark Practice Areas” in Legal 500 in 2010 on the basis of the recommendations received by our esteemed Clients. K&K is now a member of APAA (Asian Patent Attorneys Association), International Trademark Association (INTA), AIPPI (International Association for the Protection of Intellectual Property) and LES (Licensing Executives Society).

IIPRD, on the other hand, has emerged as a premier Intellectual Property Consulting and Commercialization/Licensing Firm with a diversified business practice providing services in the domain of Commercialization, Valuation, Licensing, Transfer of Technology and Due-Diligence of Intellectual Property Assets along with providing complete IP and Patent Analytics and Litigation Support Services to International Corporates and Global IP Law Firms.

Pune Branch Office Address:

D-1, HDFC Colony,
Pimpri-Chinchwad,
Mumbai-Pune Road,
PUNE, Maharashtra, India

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ENERCON INDIA LTD. (EIL) VS. ENERCON GMBH (EG)

This article is directed to interested persons who have not been regularly following the Enercon Case, one the few patent litigation battles which have seen the light of day and is setting new standards in decision making on issues relating to formality rejections and obviousness/inventive step issues. This article puts a quick snapshot of what has happened so far in the contention along with the facts involved in the case:

Introduction Facts:

  1. EG is among the world’s leading wind turbine manufacturers and had set up EIL in 1995 having 56% stake in the company. After company level disputes EIL litigated against EG with as a result retaining control of EIL and Mr. Mehra remaining the Managing Director of the company.
  2. Disputes over certain Licensing agreements led to EIL filing invalidation appeals/revocation petitions at the Intellectual Property Appellate Board for 23 patents (in the name of Mr. Wobben) of EG in Jan 2009. After hearing both parties through October and November, 2010, a bench of the IPAB, consisting of Mr. S. Chandrasekharan sitting as Technical Member and Ms. S. Usha sitting as Judicial Member revoked 12 EG’s patents. Decision of IPAB on the preliminary matters relating to Misc. petitions, dated 27’th July 2010, can be seen here in which IPAB directed miscellaneous petitions to be considered along with the respective original Revocation applications thereby dismissing the writ petition.
  3. EG made an appeal against this preliminary order of the IPAB, praying for the Madras High Court to issue a writ of certiorari to strike down the impugned order. Judgment is made available here. The issue at discussion was the whether Mr. Yogesh Mehra, MD, of EIL, had the locus standi to maintain the application for revocation. On the one hand, according to the respondent, Mr.Yogesh Mehra relied on a Board resolution dated 27.04.2007, which according to them authorized him to institute suits and proceedings on behalf of the company. This was contraverted by the writ petitioner EG by stating that the resolution dated 27.04.2007 was void and non-est. The Madras High Court relied on the decision by the Hon’ble Supreme Court in the case of M/s. Fomento Resorts and Hotels Ltd. and specifically took note of the fact that when, there is a possibility of appeal all issues have to be taken up and decided. As the facts of the case clearly indicate that there is a definite possibility of appeal against the decision of the Tribunal and the present writ petition itself is one such illustration. Therefore, court ordered that the Tribunal rightly directed miscellaneous petitions to be considered along with the respective Original Revocation Applications thereby dismissing the writ petition.
  4. Substantive disclosures of how the 12 patents were striked down have not been right now made available but one such order was for Patent No. 199045 dated 3’rd December 2010 has been shared by MIPR.
  5. Furthermore, even though issues relating to locus standi were raised by the EG’s counsel which discussed on whether Mr. Mehra could be considered as an interested person, our discussion is strictly on the technical side of patent revocation and not on the legalities relating to authorization of Managing Director who has not been duly authorized by the Board of the Indian Company viz. EIL to sign the revocation application and further his ability also to file the affidavit in respect of the revocation application for the revocation of the subject patent..

Analysis of One Exemplary Patent:

Indian Patent No. 199045 (Corresponding WIPO Application can be accessed here)

Abstract:

The present invention concerns a wind power installation having a tower head of the wind power installation, comprising a flange for receiving a connection which is suitable for receiving the tower head ,f the wind power installation. Therefore the object of the invention is to provide a tower of a wind power installation having a flange for receiving a connection, wherein the tower does not suffer deformation in respect of its cross-section, in particular in the region of the flange, by virtue of the inherent weight of the tower, during manufacture and/or transport. A tower of a wind power installation for carrying a tower head of the wind power installation, comprising a flange for receiving a connection which is suitable for receiving the tower head of the wind power installation, characterized in that there is provided a partition or a ring bulkhead in the tower interior at a spacing of between preferably 1.0 m and 7.0 m from the flange, and the partition or the ring bulkhead substantially forms a disc which is connected to the tower wall in the tower interior and passes through the tower.

First Independent Claim as granted:

1. A wind power installation having a tower head of the wind power installation, comprising: a tower for supporting the tower head, the tower having an interior and a flange for receiving a connection that is suitable for receiving the tower head of the wind power installation; and a ring bulkhead in the tower interior at a spacing of between 1.0 m and 7.0 m from the flange, wherein the ring bulkhead substantially forms a disc that is connected to an interior wall of the tower.

Reliance was made on US Patent No. 3,761,067 having cited portions Col 1 (Lines 3-5) disclosing cooling towers, Col 1 (Lines 25-30, and Lines 43-44) for giving relation to the same problem that patent under revocation is attempting to provide a solution for, Col 1 (Lines 46-54) and Col 1 Lines 62-65 disclosing stiffening rings for force distribution, wherein the rings are ring or disc shaped.  ‘067 therefore disclosed the proposed inventive step of the subject patent by disclosing a ring structure in the tower, wherein the ring is disc shaped.

It was furthermore stated that a tower having a flange was already admitted by the Applicant of the patent under contention to be existing in the art and hence made part of the Background section of the patent application by stating that “A flange is usually provided at the end of the tower, in the case of the steel towers. That flange forms the flat support surface of the tower for receiving an azimuth mounting, in which respect ball-type rotational connections as are known in the general art are predominantly used as the azimuth mounting. This is shown in Figure 1.” Hence a flange for receiving a connection of a tower head couldn’t be considered as an inventive step.

Reliance was also made on US Patent No. 1,947,515 titled Elevated Tank wherein Page 2 Lines 90-99 was submitted to have disclosed use of a ring 27 which was riveted or welded circumferentially within the tower.

Reliance was also made on US Patent No. 4,261,931 titled “Cooling tower with fluted wall” discloses with cited portion being Col 5, Lines 30-40 wherein horizontal circular rings were disclosed to withstand the compressive loads.

Reliance was also made on US Patent No. 4,010,580 on similar inventive step grounds.  It was also stated that all the above four cited prior art references have not been discussed or been deliberated before in the prosecution for the corresponding patent in other geographies including US, EP, or India and hence the prior arts are valid and should be considered relevant.

It was finally concluded that “Comparing the inventive features in ’067 patent and the inventive features as construed from the principal claim 1, no difference in the invention claimed in the claim of the impugned patent could be perceived or notices.” It was therefore ordered by Mr. S. Chandrasekharan sitting as Technical Member and Ms. S. Usha sitting as Judicial Member that the application for revocation of patent has been allowed.

  1. After having 12 of its patents striked down by IPAB, EG, in Feb 2011, surprisingly filed an appeal before the writ jurisdiction of the Delhi High Court against the Orders of the IPAB striking down 12 patents belonging to Dr. Wobben even though the case would typically have come under the jurisdiction of Madras High Court as IPAB that heard the revocation proceedings was based on Chennai and not in Delhi.
  1. In April 2011, it has also been reported that Enercon GMBH has also filed further writ appeals before the Madras High Court against the Orders of the IPAB revoking several of his patents. The appeals have therefore been filed in both the jurisdictions
  1. In the latest bit of update on the progress of the case, Enercon GMBH filed applications for withdrawal of three of its appeals for counterclaim against 3 of its revoked patents were accepted by the Delhi High Court. As the appeals against the other 9 revoked patents are going on in Madras High Court, it is quite possible that these 3 withdrawn appeals might get filed at the Madras High Court for consistency and other possible reasons.

About the Author: Mr. Tarun Khurana, Partner and Patent Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: Tarun@iiprd.com.

Clear and Convincing …Says US Apex

This blog is just an update of the US Supreme Court hearing in the case “Microsoft Vs. i4i”.  For more details about the initial proceedings, please click here to visit my earlier blog “Clear and Convincing evidence” posted on January 10th 2011.

The patent act indicates that issued patents are “presumed valid.” 35 U.S.C. § 282. In this case, Microsoft challenged the strength of that presumption — arguing that a low “preponderance” standard for proving invalidity should be sufficient rather than the higher “clear and convincing” standard required by the Court of Appeals for the Federal Circuit. The Supreme Court verdict was “We consider whether §282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.” Microsoft will now likely be forced to pay the $290 million judgment for infringing i4i’s patents.

The Supreme Court has rejected Microsoft’s argument and affirmed the Federal Circuit’s strong presumption of proof. Justice Sotomayor delivered the opinion for seven of the justices. By the time Congress enacted §282 and declared that a patent is “presumed valid,” the presumption of patent validity had long been a fixture of the common law. According to its settled meaning, a defendant raising an invalidity defense bore “a heavy burden of persuasion,” requiring proof of the defense by clear and convincing evidence. That is, the presumption encompassed not only an allocation of the burden of proof but also an imposition of a heightened standard of proof. Under the general rule that a common-law term comes with its common-law meaning, we cannot conclude that Congress intended to “drop” the heightened standard proof from the presumption simply because §282 fails to reiterate it expressly.

The Supreme Court similarly rejected Microsoft’s alternative proposal that the presumption of validity be weakened for validity challenges that were not considered by the USPTO during prosecution of the application. However, the Court did agree with Judge Rich’s American Hoist opinion that “new evidence” of invalidity likely carries more weight than evidence that had been previously considered and rejected by the Patent Office. In what may become the most litigated aspect of the decision, the Supreme Court says:

“Simplifying, if the PTO did not have all material facts before it, its considered judgment may lose significant force. And, concomitantly, the challenger’s burden to persuade the jury of its invalidity defense by clear and convincing evidence may be easier to sustain. In this respect, although we have no occasion to endorse any particular formulation, we note that a jury instruction on the effect of new evidence can, and when requested, most often should be given. When warranted, the jury may be instructed to consider that it has heard evidence that the PTO had no opportunity to evaluate before granting the patent. When it is disputed whether the evidence presented to the jury differs from that evaluated by the PTO, the jury may be instructed to consider that question. In either case, the jury may be instructed to evaluate whether the evidence before it is materially new, and if so, to consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence. Although Microsoft emphasized in its argument to the jury that S4 was never considered by the PTO, it failed to request an instruction along these lines from the District Court. Now, in its reply brief in this Court, Microsoft insists that an instruction of this kind was warranted. That argument, however, comes far too late, and we therefore refuse to consider it.”

In its opinion, the court acknowledged policy arguments both for and against a strong presumption of validity (Citing Lemley & Lichtman), but in the end decided that it was bound to follow Congress and the common law precedent.

Author – Veera Raghavan Rajendran,
Patent Specialist, IIPRD.
The Author of the Blog can be reached: Raghavan@iiprd.com.

Kurian’s Sudden Exit Surprises the Industry

The Controller General of Patents, Designs and Trademarks at the Indian Intellectual Property Office Mr. P.H. Kurian has made a sudden and surprising request to exit from his role, a shock to the entire IP fraternity keeping in mind the initiatives and drives he undertook during the leadership.

Mr P.H. Kurian was appointed as the first IAS officer to head the Indian Intellectual Property office in February 2009. He revolutionized the operations of the Indian Intellectual Property Office with his fresh thinking, innovativeness and enthusiasm. He is instrumental in bringing the much needed transparency in the practices at the Office.

Some of his contributions in bringing about the reform at the Indian Patent and Trademark Office deserve a mention here:

Deficiency                                                      Kurian’s Achievement
Lack of “Transparency” Digitization of the Patent Records;

Examiner-Application communications go online; All major records and communication available online including forms filed allowing the much craved for transparency.

Slow Filing either physically or through courier Introduction of the e-filing facility for patent applications. All prosecution history online.

He also made efforts by putting in request to allow for mandatory e-filing and now mandatory e-filing is part of the New Patent Rules 2011

Unsolicited visits and meetings of the Applicants and the Patent Agents with the examiners/controllers and other Corrupt Practices Kurian made the system stricter and restricted such visits. He has made provisions for special time and a special space in the office for such discussions.
Understaffing and Lack of Expertise He initiated the recruitment drive and has been appointing more Patent Examiners not only in number but he selected examiners from the specialized area of focus and has put into different subject area groups
Slow disposal of patent oppositions He issued a circular in 2009 asking that all pending opposition decisions to be disposed of expeditiously and also stated that pre-grant decisions should be issued within one month and post-grant decisions within 3 months of the final hearing
Loss of 44404 Trademark files Presented an undertaking in the Delhi High Court to reconstruct the missing files with the help of registered owners of the trademark. And issued Public Notice.
Approachability He allows mails to be cc’ed or marked to him in case certain cases were not responded back in time or needed immediate attention or were not attended to properly by the regional IP Offices
Trademark Examination practices Each TM Application earlier used to get examined where it was filed. Now each application goes randomly to different TM Offices across Delhi, Mumbai, Chennai, Kolkata, and Ahemdabad ensuring unbiased examination procedures.
Shuffling of TM Examiners TM Examiners were regularly shuffled across offices to ensure minimization of corrupt practices.
Online TM Examination Report The examination reports for Trade Mark Applications are now available online and publicly visible to ensure complete transparency.

How would his Exit impact the Patent and Trademark Office:

Firstly, on our brief talk earlier today with one of the senior Officials of the Patent Office, we understand that Mr. Kurian has right now only requested for the exit from the Government. Whether the Government allows him to exit from the present role is yet to be known and therefore the exit is far from confirmed at the moment.

His exit might allow the same rudimentary practices to creep back in Patent Offices and favor a specific section of IP fraternity. However, we believe it all depends on how strongly have the values been instilled in the present examiners by the practices that Mr. Kurian initiated and how well they are abided by during the course of development of IP Culture in India.

What could have prompted his departure?

What surprises us the most is why Kurian would want to resign when he is doing exceptionally well in his role and has been appreciated a lot for the kind of reforms he has brought at the Patent and Trademark Office. In case a positive outlook is given to the picture, it might well be part of a routine exercise of shifting IAS offices across different roles based on specific requirements. However, the negative outlook gives an impression that the reason of his exit might be the pressure of work that he might be suffering from. He had recently issued a public notice towards the process of the reconstruction of the lost Trademark Files and in context of the same he was reported to have said that “We are doing so many exercises together so that this will not be repeated. I want to do it meticulously,”

Affect on Domestic and International Patent Holders:

            Even though the existing systems are improving to bring more clarity in the way IP applications are processed, a lot still needs to be done in the manner in which Patent holders feel comfortable interacting with IP Officials and to avoid them feel like they are communicating with a conventional Govt. Office. The examination process needs to be speeded up, be made more deadline oriented, and so much deliberation is still needed on current and prevalent practices such as submission of Form 3, Form 27 among other formalities. The affect therefore might not be immediate but would completely be dependent on the next Controller.

Replacement

Finding a replacement might take time but an existing Controller of Patents might, for the meantime, be asked to come into his shoes. Choice of the next controller would have to be made very diligently based on his/her past work profile and established credibility.

We don’t foresee any problems in the short term as the existing practices, especially Patent practices, are fairly well established but going forward, strong initiatives would be continuously needed and be well implemented to ensure that IPs issued in India hold merit in terms of enforceability.

We are optimistic of the development of the Indian IP on the right path and hope his exit would not shatter our hopes to see the robust Indian Patent Office on the lines of the USPTO and EPO.

About the Author: Ms. Meenakshi Khurana, Patent Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: Meenakshi@iiprd.com.

BRUCE N. SAFFRAN Vs. JOHNSON & JOHNSON and CORDIS CORPORATION

Introduction

A patent infringement suit filed by Bruce N. Saffran, a New Jersey Radiologist (“Plaintiff”) against Johnson & Johnson (J&J) and Cordis Corporation (“Defendants”) claiming that defendants directly infringed U.S. Patent No. 5,653,760 (filed Aug. 9, 1995) (the `760 patent;) entitled “Method and Apparatus for Managing Macromolecular Distribution”. Defendants’ accused products are the Cypher drug-eluting stents (including the Cypher Select and Cypher Select Plus) for which they were nailed with $482 million verdict. Case ruled in United States District Court, E.D. Texas, Marshall Division.

About the patent ‘760

 The ‘760 patent discloses a medical device preferably drug eluting implantation device used for the treatment of damaged tissues such as cardiac vessels and/or injured bones.

Claim 1 of the patent states:

A flexible fixation device for implantation into human or animal tissue to promote healing of a damaged tissue comprising:

a layer of flexible material that is minimally porous to macromolecules, said layer having a first and second major surface, the layer being capable of being shaped in three dimensions by manipulation by human hands, the first major surface of the layer being adapted to be placed adjacent to a damaged tissue,

the second major surface of the layer being adapted to be placed opposite to the damaged tissue,

the layer having material release means for release of an at least one treating material in a directional manner when said layer is placed adjacent to a damaged tissue, the device being flexible in three dimensions by manipulation by human hands,

the device being capable of substantially restricting the through passage of at least one type of macromolecule therethrough.

Dispute on Claim Elements by both Parties

Claim Term/Phrase Plaintiff’s Proposed Construction Defendants’ Proposed Construction
1. “device” At least a layer as disclosed in the claim “A single sheet of material”
Defendants’ Argument: Defendants seek a construction of “device” as “a single sheet of material.” Defendants argue the specification limits “device” to a single sheet of material.

Plaintiff’s Argument: Plaintiff argues that “device” should not be construed as a “single sheet of material” because there is no clear intention to limit the claim scope to a “sheet” in the specification. Instead, Plaintiff argues the specification shows that a “sheet” is merely a preferred embodiment of the “device.” Plaintiff also states that there are also other embodiments of the “device” disclosed in the specification such as “spray” or “coating” embodiments. Therefore, “device” cannot be limited to “sheet” because then it could not encompass the “spray” or “coating” embodiments discussed in the specification.

Court Statement: Court refuses Defendants “sheet” limitation for the term “device”, and agrees with Plaintiff that a “sheet” is merely a preferred embodiment or “an embodiment” of the “device”.

2. “layer” “any thickness of material” “a single layer (one and one layer)”
Regarding this issue, the court rejects Plaintiff’s appeal not to construe the term “layer” as “a single layer” and is in favor of Defendants’ statement “a single layer (one and one layer)” after reviewing of the intrinsic record. Hence, the Court construes the term “layer” as “a single layer.”

 

3. “that is minimally porous to macromolecules” “that is capable of substantially containing macromolecules on one side of the material” “that is substantially impermeable to macromolecules”
With this phrase, the Court agrees to Plaintiff’s statement “that is minimally porous to macromolecules” modifies the term “material” and not “layer” in the claim phrase, and rejects Defendants’ seeking to clarify that “a layer of flexible material that is minimally porous to macromolecules” does not encompass a layer on a stent that leaves uncovered mesh holes which allow macromolecules to freely move through them.
4. “the layer having material release means for release of an at least one treating material in a directional manner when said layer is placed adjacent to a damaged tissue” “to release a drug preferentially directionally or undirectionaly towards the damaged tissue when placed adjacent to the tissue” “releasing the treating material solely in the direction of the damaged tissue”
The Court agrees with Plaintiff that the treating material is released “preferentially” in the direction/towards the damaged tissue which specification states multiple times that the drug is released “preferentially” towards the damaged tissue. The Court does not agrees with Defendants’ phrase “solely in the direction of the damaged tissue” as the word “solely” implies that the drug must be completely and only (i.e., 100%) directed towards the damaged tissue and thus considered to be too limiting and not supported in the specification like the “preferentially” language.
5. “lysis of chemical bond” “breaking a chemical bond” “hydrolysis of chemical bond”
The Court agrees with Plaintiff’s phrase “lysis of chemical bond” meaning to be “breaking a chemical bond” and disagrees with Defendants’ argument for considering “lysis” to be shorthand of “hydrolysis”.

 Defendants’ Argument on above Court’s statement:

Defendants seek judgment as a matter of law (“JMOL”) that (1) there is no infringement; (2) the patent-in-suit is invalid; (3) there is no willful infringement; and (4) there was not sufficient evidence to support $482 million in damages.

1.      Non-Infringement:

Defendants argue that they did not directly infringe any of the claims of ‘760 patent and states that there is no sufficient evidences to prove Cypher stents infringing Plaintiff’s claimed invention. But the Court based on the five disputed limitation concludes and proves Defendants product infringing Plaintiff’s ‘760 patent. The five points being:

a.     Capable of Being Shaped in Three Dimensions by the Manipulation of Human Hands.

b.     The Layer is “Minimally Porous” to Macromolecules.

c.     The Material Release Means Limitation

d.     The “Device” Being Flexible in Three Dimensions by Manipulation of Human Hands

e.     The Device Being Capable of Substantially Restricting the Through Passage of at least One Type of Macromolecule.

2.      Validity:

Defendants seeks that claims of ‘760 patent is invalid and is rendered obvious in the light of (1) U.S. Patent No. 5,282,823 (“Schwartz”); (2) Schwartz in combination with U.S. Patent No. 5,545,208 (“Wolff”); and (3) Schwartz in combination with Langer, R.S. & Peppas, N.A., Present and Future Applications of Biomaterials in Controlled Drug Delivery Systems, Biomaterials 2:201-14 (1981) (“Langer”). However, Plaintiff provided sufficient evidences that the `760 Patent was not obvious in light of Schwartz, Schwartz in combination with Langer, or Schwartz in combination with Wolff. Hence, the Court DENIES Defendants’ motion for judgment as a matter of law on the grounds of invalidity.

3.      `Willful Infringement:

Due to lack of sufficient proofs/evidence provided by Plaintiff, the Court GRANTS Defendants’ motion for JMOL stating that Defendants did not willfully infringe the ‘760 patent.

4.      Damages:

Defendants seek judgment as a matter of law that they would not award Saffran $482 million in damages arguing that licenses relied on by Plaintiff were improper. But the Court DENIES Defendants’ motion for JMOL and concludes there are sufficient evidence supports to find damages & 482 million.

Conclusion:

From the above law suit it is found that Defendants’ motion for JMOL is GRANTED-in-part and DENIED-in-part. The Court DENIES Defendants’ motion for JMOL on the issues of infringement, validity, and damages because the Court concludes that sufficient evidence supports the jury’s verdict on these issues. The Court, however, GRANTS Defendants’ motion for JMOL on the issue of willful infringement because the Court holds, as a matter of law, that there was no willful infringement. Had, the Defendants’ proposed product been modified in either its structural and/or functional aspects, it would not have infringed Saffran’s claimed invention. But finally due to proper and core analysis on the overall case with substantial evidences, the Court has rendered a justified verdict saving the Plaintiff from heavy damages by awarding him $482 million.

Author – Minusmita Ray,
Patent Consultant, IIPRD.
The Author of the Blog can be reached: Minusmita@iiprd.com.