Wednesday, June 30, 2004

Teva to appeal adverse decision on Accupril in D. N. J.

Israel's Teva Pharmaceuticals said on June 30, 2004 that it would appeal the decision by the federal District Court of New Jersey that the claims of Warner-Lambert's patent for Accupril tablets are valid, enforceable, and infringed by Teva.

EFF publishes its "target list" of ten patents to be re-examined

Number 1 on EFF's "top ten" list is Acacia's digital media transmission patent, which Acacia considers to cover "the transmission and receipt of digital content via the Internet, cable, satellite and other means." The EFF believes that Acacia, which has already sued several large communications companies, is unfairly targeting small audio- and video-streaming websites. [There are actually several relevant Acacia patents; see for example U.S. Patent 5,132,992.]

Acacia got a lot of publicity about a year ago when it sued a number of pornography sites. Acacia CEO Paul Ryan said: "It was only the adult entertainment companies who refused to even go into
discussion with us, so that's why we chose to enter into litigation." In turn, one of the adult entertainment representatives said: "They've been quoted as saying we're 'low-hanging fruit' and we're just a mere distraction. Small businesses are not going to want to fight it out to the tune of $2.5 million. They don't make that much money in a year."

Ryan also said: "It [the patent] really is the process. It's the compression, the digitization, the transmission, and the reception."

In June, Acacia sued cable and satellite TV companies in ND Cal over five distinct patents.

Update on July 13, 2004:
NEW YORK, July 13 (in part from Reuters) - Shares of Acacia Research Corp. a maker of video-on-demand technology, plummeted more than 41 percent on Tuesday after a federal judge performed claim construction analysis (Markman) for the company's patents in an infringement suit against adult entertainment companies.

From press release by Acacia on July 13, 2004:
On July 12, 2004, the Judge issued a Markman ruling interpreting claims from 2 of the 5 U.S. patents that Acacia refers to as its DMT(R) or Digital Media Transmission portfolio. These 2 patents are being asserted against certain adult entertainment companies in litigation that is pending in the District Court for the Central District of California.

The ruling is a 40 page decision, the details of which are being studied by Acacia's attorneys. The Judge defined certain terms from the patents and requested additional briefing and expert testimony on other terms.

Based upon those terms that the Judge did define, Acacia believes that at least 6 patent claims asserted in this case are being infringed by the defendants. Following the additional briefing and motions requested by the Court, Acacia may have additional claims that are being infringed by the defendants in this case. In order to be liable for patent infringement, only one patent claim need be infringed to entitle the patent holder to damages and the injunctive relief sought by Acacia.

One issue that was in dispute in the litigation is whether these patents apply to the Internet. The Court's ruling on the meaning of certain claim terms, in Acacia's judgment, make clear that the scope of these patents cover the transmission of digital content over the Internet.

On certain claim terms, particularly certain terms in claim 1 of the '992 Patent and in the '702 patent claims, the Judge has raised issues of indefiniteness, for which he wants to hear expert testimony on what a person "skilled in the art" believes those terms to mean. The parties were not permitted to introduce such expert testimony at the earlier Markman hearings. In non-legal terms, indefiniteness means that a term in a claim is written in a manner that one of ordinary skill in the art would not understand an aspect of the invention.

The Court does not currently have any expert testimony before it to make that determination, which is why expert testimony has been requested. Acacia's goal is to convince the Court that these terms in the claims are not indefinite by presenting this evidence. Regardless of the outcome on these terms, Acacia has several other claims that are not indefinite and the company believes are being infringed.

The Court has scheduled a conference call for August 17, at which time the Judge will set a schedule for briefing and oral arguments on motions that the parties wish to file. Acacia anticipates filing several motions for the Court to consider, and anticipates that the defendants will do so as well. Oral arguments will probably be scheduled in the fall, with decisions coming in the following months.

In Markman proceedings, it is typical for both sides to win certain issues and lose certain issues. This case is no different, and the meaning of several claim terms has still not been decided. This is one step in what is typically a long process. Acacia continues to believe that it has a strong argument of infringement against Internet, cable and satellite providers of digital content.

Acacia also recently filed a lawsuit in the Northern District of California against certain cable and satellite companies for infringement of all 5 of Acacia's U.S. DMT(R) patents. Acacia believes that the favorable claim constructions provided by the Court suggests that Acacia will receive favorable claim construction on the identical and similar terms of the '863 patent claims and the terms of the other patent claims being asserted against the cable and satellite companies.

Acacia has entered into 151 license agreements for its DMT(R) technology for cable television services, corporate websites, e-learning, hotel in-room entertainment, and online entertainment, movies, music, news, and sports.

Tuesday, June 29, 2004

Issue of high patent grant rate at the U.S. Patent Office

In recent proposals for patent reform made by the Federal Trade Commission and by the National Academy of Sciences, there has been discussion of the possibility that the grant rate of patents by the United States Patent and Trademark Office [USPTO] is high compared to the grant rate of other industrialized countries, including that of Japan and those of Europe. This discussion began with papers of Quillen and Webster that suggested that the grant rate might be as high as 97% and more reasonably is at least 85%. Although the actual uncorrected grant rate at the USPTO is typically in the range 62 to 68%, Quillen and Webster suggested the higher numbers based on an analysis of continuing applications (including continuations, divisionals, and continuations-in-part). It is likely that the analysis of Quillen and Webster is flawed both legally and methodologically, and that recent work by Clarke [Robert A. Clarke, U.S. Continuity Law and its Impact on the Comparative Patenting Rates of the U.S., Japan, and European Patent Office, 85 J. Pat. & Trademark Off. Soc'y [JPTOS] 335 (2003)], which places the corrected grant rate at less than 75%, is more accurate.

Schon again

Recently, a Japanese television station asked to interview me about the scientific fraud incident involving Jan-Hendrik Schon. Although there has been a perception within the U.S. that the Schon incident showed that the system worked, the Japanese interviewers are interested in the potential liability of Bell Labs/Lucent, the co-authors, and the journals which published the fraudulent work to all those who read the work, believed in the work, and invested resources based on a belief in the work. Part of the unresolved problem is the unwillingness of the scientific journals to publish criticisms of trendy work, as happened, for example, in the failure of Nature to publish the work of Solomon of IBM concerning Schon, a critique that proved to be correct (The letter of Paul Solomon to Nature is reproduced in Lawrence B. Ebert, “Say Goodnight, Gracie,” Intellectual Property Today (June 2003)). Independently of the ultimate resolution of “who is right,” the publication of well-reasoned commentaries alerts the readership of potential issues. Apparently, scientific journals and law reviews (e.g., the claim within the Harvard Law Review that the USPTO grants 97% of submitted applications) alike can be aware of problems with their published material, and yet do nothing to correct it.