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Making biofules at your backyard @ $1 per gallon April 29, 2008

Posted by mais in Innovation, Patent, USA.
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E-fuel 100 Microfueler developed by Floyd Butterfield and Thomas Quinn, offers the flexibility to generate biofuel (Ethanol @ $1/gallon) at your backyard. This system is compact like a washing machine and operates on sugar content and yeast. Read more on NYT coverage

Perhaps, innovative part of the system is an advance membrane distiller, which separates water from ethanol at lower heat and fewer steps than other ethanol systems

Critics flaunted the claims and said that sugar costs 20-cents per pound, and system requires 10 to 14 pounds to make a gallon of ethanol, hence it is not viable to produce ethanol But Butterfield and his Silicon Valley finance whiz/business partner Thomas J. Quinn swears you can buy “inedible sugar” from South of the Border for 2 to 3 cents per pound.


Open Source Intellectual Property May 14, 2005

Posted by mais in India, Patent.
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Open Source isn’t just for code anymore…

What do fashion, yoga, and libraries have in common? All are dealing with the issues of “intellectual property” and “open source.” The fashion industry has a long history of valuing creativity and accepting the sharing and “remixing” of fashion ideas. Meanwhile, a teacher of the 5000 year old practice of yoga has copyrighted his methods and poses and is being opposed by an “open source yoga” movement. And, at the recent O’reilly Emerging Technology Conference, the theme was “Remix your world” and included Lawrence Lessig speaking about copyright, and Cory Doctorow spelling out the dangers of Digital Rights Management, and a fascinating presentation by Clay Shirky on Ontologies. Read on…

* Ready to Share
On January 29, 2005, the Norman Lear Center held a landmark event on fashion and the ownership of creativity. The event had an incredible variety of participants including John Seely Brown (former Chief Scientist of Xerox Corporation), musician and producer T Bone Burnett, Danger Mouse (creator of the Grey Album), and Siva Vaidhyanathan (Professor of Culture and Communication at New York University).

More than any other industry, fashion treats a far larger portion of its creative output as a commons – shared resources that can be freely reused and transformed by other creators.

Ready to Share is funded in part by a generous gift from the Center for the Public Domain. For lots more information see the press coverage and press releases page. For a quick overview of the issues, see the opinion piece, Control of creativity? Fashion’s secret By David Bollier and Laurie Racine. Christian Science Monitor, September 09, 2003.
* Bikram goes to the mat, By Hilary E. MacGregor. Los Angles Times, March 21, 2005.

After he sued an Orange County yoga studio for copyright and trademark infringement in 2002, a small group of yogis went on the counterattack. Taking a page from the “open source” movement in the computer software world, they called themselves “Open Source Yoga Unity.”

* O’Reilly Emerging Technology Conference, March 2005, San Diego, Ca.
o press coverage
o Doctorow: All Complex Ecosystems Have Parasites by Cory Doctorow, For the O’Reilly Emerging Technology Conference. San Diego, California, 16 March 2005.

Likewise, DRM has exacted a punishing toll wherever it has come into play, costing us innovation, free speech, research and the public’s rights in copyright. And likewise, DRM has not stopped infringement: today, infringement is more widespread than ever. All those costs borne by society in the name of protecting artists and stopping infringement, and not a penny put into an artist’s pocket, not a single DRM-restricted file that can’t be downloaded for free and without encumbrance from a P2P network.

o Lessig: Re:MixMe. Audio (MP3) of presentation by Lawrence Lessig, Professor of Law, Stanford Law School, Thursday, March 17.
o Shirky: Ontology is Overrated: Links, Tags, and Post-hoc Metadata. Abstract of presentation by Clay Shirky, Wednesday, March 16.

Ontology, far from being an ideal high-order tool, is a 300-year-old hack, now nearing the end of its useful life. The problem ontology solves is not how to organize ideas but how to organize things–the Library of Congress’s classification scheme exists not because concepts require consistent hierarchical placement, but because books do.

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PATENTS -FACTS and MYTHS April 12, 2005

Posted by mais in Patent.
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There is no guarantee that an invention, design, or plant that is
patented will sell. In fact, most patents do not generate income for
their owners. (See sidebar)

A U.S. patent is only enforceable in the United States.

Patents are not issued for great ideas or mere suggestions. Patents are granted to people who (claim to) “invent or discover any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”—to quote the essence of the U.S. statute governing patents.

A patent provides protection for your intellectual property, but when you are deciding if you should apply for a patent you should keep in mind that: 1) it takes work and it can be expensive to obtain a patent, and 2) patents protect your invention for a limited term, but they also disclose your information. Disseminating information while protecting inventors is one of the reasons patent offices exist. If you have invented something you think you can profit from but still want to keep the important details secret, you may opt not to get a patent.

The government does not get involved in testing or verifying submitted inventions to see if they work.

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I/P Updates: A Three-Layered Patenting Strategy February 6, 2005

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I/P Updates: A Three-Layered Patenting Strategy – News and Information for Intellectual Property Practitioners: “A Three-Layered Patenting Strategy
When Russell Krajec developes a patent strategy for a client with an emerging technology, he looks at ‘three specific layers of coverage’ from both the technology and business aspects of a client. As discussed in his artcle for Law.com, the first layer describes the basic underpinnings of the new technology and usually covers the first embodiments of the technology. The second layer is the ‘tool’ layer, covering the tools required to use the technology, and the third layer is the ‘application’ layer, detailing new uses and application of the technology.”

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Twenty Steps for Pricing a Patent December 15, 2004

Posted by mais in patent Valuation.
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I/P Updates: Twenty Steps for Pricing a Patent – News and Information for Intellectual Property Practitioners: “Twenty Steps for Pricing a Patent
The ability to appraise patents can be important for GAAP financial reporting purposes under FASB nos. 141 and 142, especially for auditors and valuators in high-tech industries in which there are lots of business combinations. Here are the ’20 Steps for Pricing a Patent’ according to J. Timothy Cromley, CPA, an accredited senior appraiser with the Valuation Advisory Services Group of JPMorgan Chase & Co:

1. Check whether the patent is in force.
2. Identify the business context.
3. Gather information including file history, business plans, licenses, etc.
4. Assemble a valuation team with expertise in patent law, an understanding of monopolies, business valuation skills, and a background in the technology of the patent
5. Read the patent or carefully interview an independent patent attorney who has.
6. Investigate the patent’s claim scope.
7. Talk with a patent attorney.
8. Inquire about the patent’s validity.
9. Inquire into blocking patents.
10. Investigate foreign patent protection.
11. Consider synergies among patents
12. Consider the remaining life of the patent.
13. Analyze any prior royalties paid for the patent.
14. Inquire into any actual or threatened litigation involving the patent.
15. Identify the next-best alternative technologies.
16. Estimate a demand curve for the patented item.
17. . Determine the patented product’s point of profit maximization.
18. Consider the applicability of traditional valuation approaches.
19. Do an income-approach valuation.
20. Write the patent valuation report.”

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Anchen files ANDA for Wellbutrin XL (buproprion) November 22, 2004

Posted by mais in Drugs, Patent, USA.
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Anchen files ANDA for Wellbutrin XL (buproprion)

Anchen files ANDA for Wellbutrin XL (buproprion)

By Lawrence B. Ebert

Taiwan-based generic company Anchen Pharmaceuticals has submitted an abbreviated new drug application (ANDA) to the FDA for Biovail’s Wellbutrin XL (once daily dose of bupropion for depression).

Litigation over bupropion has been extensive. Current issues are NOT about the drug itself (the composition of which is off patent) but about the formulations for controlled delivery of the drug. The Excel and Impax decisions of the Court of Appeals for the Federal Circuit have involved interpretation of the foreseeability prong of the US Supreme Court decision in Festo (535 US 722 (2002)).

Wellbutrin is a drug used to treat depression, but the underlying chemical is also used for smoking cessation (marketed as ZYBAN). Of depression, the chemical is different from Paxil, Prozac and Zoloft, and as a result, Wellbutrin can often successfully treat people with depression whose condition has not improved from taking these other drugs.

Although the chemical of Wellbutrin and Zyban has been off patent as a composition of matter for a long time, in 1995 Glaxo received a patent for the extended release formula of Wellbutrin SR. In 1999, generic drug manufacturer Andrx filed two ANDAs with the FDA seeking to sell generic versions of extended release Wellbutrin and Zyban. Andrx argued that because its generic used a different method of extended release, that it did not infringe on Glaxo’s patent. Four other generic manufacturers followed Andrx’s lead, and several have received tentative approval to manufacture and market their generic versions. In February of 2002, the US District Court for the Southern District of Florida ruled that Andrx did not violate Glaxo’s patent and therefore should be allowed to manufacture and market its generics. On appeal, however, the Federal Circuit Court of Appeals held that the district court in Florida erred in its construction of the patent infringement claims.

Glaxo owns U.S. Patent No. 5,427,798 (the ’798 patent) directed to controlled sustained release tablets containing bupropion hydrochloride. Pharmacologically, bupropion (m-chloro--t-butylaminopropiophenone) is a monocyclic aminoketone antidepressant. See U.S. Patent No. 4,393,078 (issued July 12, 1983) (the ’078 patent). These compounds treat depression and inebriation. In addition, they facilitate the cessation of smoking by producing neural stimulation in mammalian systems. See ’798 patent, col. 1, ll. 5-10; ’078 patent, col. 1, ll. 29-39; U.S. Patent No. 3,819,706 (issued June 23, 1974). To avoid the need for multiple dosages with the attendant fluctuations in plasma bupropion concentrations, Glaxo invented a sustained release formulation of the compound. While bupropion hydrochloride itself was separately patented, Glaxo obtained the ’798 patent to protect its sustained release formulation of the drug. Glaxo markets this patented sustained release formulation as Wellbutrin®SR for treatment of depression and as Zyban® for smoking cessation. The key ingredient for achieving sustained release in this invention is hydroxypropyl methylcellulose (HPMC), which is a partly O-methylated and O-(2-hydroxypropylated) cellulose. In oral preparations, HPMC extends drug release by transforming into a gel that swells upon ingestion. The hydrogel state of HPMC releases bupropion hydrochloride from an ingested tablet over a period of time.

The ’798 patent claims a sustained release tablet containing an admixture of bupropion hydrochloride and HPMC. However, many of the claims as originally filed did not recite HPMC as a limitation. During prosecution on the merits in the United States Patent and Trademark Office (Patent Office), the examiner rejected the claims that did not recite HPMC for lack of enablement under 35 U.S.C. § 112, 1. Glaxo amended those claims to overcome the rejection.

The first independent claim of the ’798 patent states:

1. A controlled release tablet comprising 25 to 500 mg of bupropion hydrochloride and hydroxypropyl methylcellulose, the amount of hydroxypropyl methylcellulose to one part bupropion hydrochloride being 0.19 to 1.1 and said tablet having a surface to volume ratio of 3:1 to 25:1 cm-1 and said tablet having a shelf life of at least one year at 59deg to 77deg F. and 35 to 60% relative humidity, said tablet releasing between about 20 and 60 percent of bupropion hydrochloride in water in 1 hour, between about 50 and 90 percent in 4 hours and not less than about 75 percent less in 8 hours.

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The WTO angle and TRIPS November 22, 2004

Posted by mais in IP Systems, Patent, TRIPS, WTO.
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The WTO angle and TRIPS: “The WTO angle and TRIPS

By Lawrence B. Ebert

Of the Ballmer quote: ‘Someday, for all countries that are entering the [World Trade Organization], somebody will come and look for money owing to the rights for that intellectual property.’

Section 5, Article 27, paragraph 1 of TRIPS recites:

1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. (5) Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.

Paragraphs 2 and 3 don’t say anything about business method or software patents.


David Berlind writes: Given the significant overlap between the members of the WTO and the European Union [EU], I’m having a tough time imagining how, if Europe can’t uphold patents on software, the WTO can. One poster observed that the EU could take the position that business methods/software are not a ‘field of technology’ or perhaps even ‘inventions.’ Further, if the USA did even try to get WTO to force a change in the EPC, the EU would counter-attack with TRIPS complaints about various aspects of the US patent system which currently favour US-based inventors. –> Mutually assured standoff.

Berlind also wrote of the WTO remark: ‘the easiest way to get rid of a potential customer forever is to sue them. Especially when that customer is a government. Governments usually have pretty big budgets.’

Within the US, patent holders have sued customers. Go back to the days of the Selden patent on the automobile. One of the advertising slogans for licensed cars was ‘Don’t buy a lawsuit.’ Henry Ford said that this tactic by the Selden patent holder (ALM) launched Ford’s business. In the pharma business today, many claims on drugs are written such that patients, doctors, and pharmacists could be sued for use of competitor’s infringing drugs. For example, this could have happened with omeprazole. But, of course, it didn’t. In the area of copyright, there have been some exemplary suits brought by the RIAA against consumer-infringers, but this is tricky business.

A different website gives a different example.

–>Up to now, not many users have faced such threats. When asked for an example of a user actually getting sued over intellectual property rights, Microsoft spokesmen go back four years.

In 2000, Allan Konrad, a computer scientist, sued three dozen corporations, including General Motors, Ford Motor, The Boeing Co., Daimler Chrysler, United Air Lines and Eastman Kodak. Konrad held three patents and ownership to the mechanism of Web-based delivery of information. He went after corporations serving Web information from back-end databases.

‘Microsoft worked to get IBM, Sun and AOL, whose products were also implicated, to step in collectively on behalf of our customers. We hired one law firm to defend them, paid the cost of that. The outcome was very positive, the infringement claims were thrown out,’ said David Kaefer, director of business development at Microsoft.

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Navigating the patent maze: Nap Hal November 13, 2004

Posted by mais in India, IP Systems, Litigation, Patent.
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Navigating the patent maze: Nap Hal – Comments Addressed: “Nap Hal – Comments Addressed

An interested reader commented on the post in which I expressed approval for the decision of the Indian Government to not oppose the European Patent, now owned by Monsanto, that used Nap Hal. The reader raised several points that I would like to address. I also hope that it evokes more discussion on this topic area.

(Sidebar – there are currently 5 parties opposing this patent, including Greepeace and the European Flour Milling Association)

The reader raises several points. The first point, quoted below, speaks to whether the patent claims are in violation of the European Patent Convention.

The Patent in question explicitly claims a wheat variety, and so is squarely in violation of the European Patent Convention.??

The short answer is that the patent in question (EP 0 445 929) does not claim any plant varieties. The claims are directed to soft-milling wheat with particular characteristecs, flour prepared from that wheat, dough or batter prepared from the flour, edible products made from the dough or batter, and biscuits made from the flour.

The second point of the reader is that ‘the disclosure of the patent shows that the genetic traits which are key to the patent (double null allele in glu-D1 gene) were wholly derived from the landrace developed in India, namely, Nap Hal.’

I’m not sure what the reader’s objection is other than the landrace came from India. In fact, the landrace was obtained from a public germplasm bank. The accession was placed prior to the Convention on Biological Diversity, so that treaty does not control the situation. Until the CBD, typically there were no restrictions on accessions or, in the case of the CGIAR the restrictions regarding intellectual protection placed on germplasm held in FAO Trust were limited to the variety itself and did not extend to derivatives (such as the wheat claimed in the Monsanto”

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Posted by mais in Drugs, Litigation, Patent.
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IPKat – fishing for IP stories for YOU: “Friday, October 29, 2004
Yesterday in Case C-53/03 Synetairismos Farmakopoion Aitolias & Akarnanias (Syfait) and Others v Glaxosmithkline AEVE Advocate General Francis Jacobs gave his Opinion as to whether a drug company may plead the threat of parallel trade as an excuse for limiting the amount of IMIGRAN, LAMICTAL and SEREVENTIT it sends to pharma wholesalers in ‘cheapo’ regimes. In his conclusion he recommends that the European Court of Justice rule as follows:
‘(1) A pharmaceutical undertaking holding a dominant position does not necessarily abuse that position by refusing to meet in full the orders sent to it by pharmaceutical wholesalers only by reason of the fact that it aims thereby to limit parallel trade.
(2) Such a refusal is capable of objective justification, and thus of not constituting an abuse, where the price differential giving rise to the parallel trade is the result of State intervention in the Member State of export to fix the price there at a level lower than that which prevails elsewhere in the Community, given the combined circumstances of the European pharmaceutical sector at the current stage of its development, and in particular:
�- the pervasive and diverse State intervention in the pricing of pharmaceutical products, which is responsible for price differentials between the Member States;
�- the regulation by the Community and the Member States of the distribution of pharmaceutical products, which establishes nationally demarcated obligations upon pharmaceutical undertakings and wholesalers to ensure the availability of adequate stocks of those products;
�- the potentially negative consequences of parallel trade for competition, the common market, ”

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The Use of Exculpatory Opinions in Defending Against A Charge of Willful Infringement (12/05/04) from Mondaq October 22, 2004

Posted by mais in Litigation, Patent.
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McDermott Will & Emery – United States – The Use of Exculpatory Opinions in Defending Against A Charge of Willful Infringement (12/05/04) from Mondaq:

The exercise of intellectual property rights has become a mainstay of business over the last 10 years. Indeed, business models are proliferating where obtaining patents for the purpose of licensing and enforcement are the sole activity of the enterprise. Even among those entities that routinely engage in R&D or the manufacture and sale of products, more and more are investing in the acquisition of IP rights, and many have realized that enforcement of those rights against competitors is an effective tool in protecting markets and/or generating revenue. As a consequence, corporate executives and general counsels are likely to face, at least once in their careers, a charge that their companies are infringing upon another entity’s intellectual property rights.

Especially threatening is the receipt of a notice that your company’s products infringe patents held by another. The threat is worrisome for a variety of reasons. First, the threat is often leveled at a company’s core technology, changes to which are almost never trivial. Second, patent infringement carries with it the very real threat of devastating injunctive relief. Finally, damages in such cases, while nominally calculated in terms of a reasonable royalty or lost profits, may, at the discretion of the court, be enhanced up to three times for so-called willful infringement. In order to navigate this minefield and defend themselves against claims of willfulness, many companies engage counsel in order to obtain advice as to whether their actions violate valid patent rights of some third party and/or how to avoid such violations by design arounds. This article, addresses defenses to a charge of willfulness, and in particular, some of the issues which may arise when relying on opinions of counsel as a defense to a patent owner’s claim of willful infringement.

The “Totality of the Circumstances” Test

When considering whether an infringer acted in bad faith, thereby supporting an increased damage award, courts look at a “totality of the circumstances,” including (1) whether the infringer copied the invention of another; (2) whether the infringer, when it knew of the other’s patent, investigated the scope of the patent and formed a good-faith belief that it was either not infringed, invalid or both; (3) whether the infringer mounted a substantial (albeit unsuccessful) challenge in the issues of validity and infringement; (4) the closeness and complexity of the legal and factual issues presented; (5) whether the infringer engaged in good faith efforts to design around the patent; and (6) the infringer’s behavior in the litigation. 1 Because there are few situations where sufficient evidence of actual copying or litigation conduct egregious enough to find willfulness are present, the primary focus for courts when considering willful infringement claims is usually on whether an alleged infringer has formed a good-faith belief that its conduct was justified.

In the seminal case, Underwater Devices, Inc. v. Morrison-Knudsen Co.,2 the U.S. Court of Appeals for the Federal Circuit imposed as affirmative duty on a potential infringer to exercise due care to determine whether or not its activities are infringing. This duty includes obtaining competent legal advice from counsel before initiating possibly infringing activity. The requirements for an opinion of counsel as evidence of good-faith in defense to a charge of willful infringement has led to several problems relating to waiver of the attorney-client privilege with respect to such opinions, and often to matters beyond the scope of the opinions.

Following Underwater Devices, in Kloster Speedsteel AB v. Crucible Inc.,3 the Federal Circuit found that silence by the accused infringer on whether it obtained legal advice relating to infringement could warrant an adverse inference that the accused infringer either had not obtained an opinion (as required by Underwater Devices) or that the opinion was adverse. The Court followed its Kloster Speedsteel decision with its holding that the failure of an infringer to introduce an exculpatory opinion of counsel at trial could lead to an adverse inference instruction to the jury. Fromson v. Western Litho Plate & Supply Co.4 Thus, although the test for determining willful infringement ostensibly requires a multifaceted review of the totality of circumstances, the Federal Circuit jurisprudence has, for many years, imposed an opinion requirement. In the view of many, the opinion of counsel “requirement,” coupled with the adverse inference, has led to a serious erosion of attorneyclient privilege.

Waiver of the Attorney-Client Privilege

Under the present state of the law, in addition to the affirmative duty to seek and obtain advice-of-counsel, if a company finds itself in a lawsuit facing a charge of willful infringement it is all but required to disclose the legal advice it received relating to infringement and/or validity. In other words, by merely raising the willful infringement claim, a patent owner presents the accused infringer with the Hobson’s choice of either waiving its attorney- client communications or confronting an adverse inference instruction on the issue of willfulness. Most choose waiver.

The “choice” mandated by the Federal Circuit authority requires considerations not found in any other area of law. The most obvious is the effect and scope of the privilege waiver resulting from reliance on an opinion of counsel. There is no question that reliance on opinions of counsel as evidence of goodfaith results in a waiver of privileged communications. The thorny question facing accused infringers is just how broad a waiver results. Accused infringers agonize over this question and district courts have found the task of line drawing to be a daunting one. The uncertainty on this issue is well illustrated by the following quote from a court struggling to fairly decide the issue:

“In few, if any, areas of the law has the tail taken to wagging the dog as vigorously as in the privilege waiver disputes endemic to patent infringement cases. Defendants often rely upon an advice-ofcounsel defense when confronting the threat of enhanced damages for willful infringement. The consequent waiver of privileges and protections that the adviceof- counsel defense entails, however, is now the basis of innumerable disputes like the one at bar, distracting the court and the parties from addressing the fundamental questions of infringement and validity. It seems that a whole subspecialty of opinion practice has developed as part of infringement defense strategy. Litigation resources are heavily invested in delaying the moment when an accused infringer must choose between relying on advice-of-counsel or maintaining typical privileges, or in seeking bifurcation on the issue of willfulness, or in trying to control the scope of waiver, once the advice-ofcounsel route is taken.” Rhodia Chimie, et al. v. PPG Industries, Inc. 5

Scope of Waiver

It is long settled that if an accused infringer chooses to rely on an advice-of-counsel defense, it waives privilege with respect to the communications transmitting the reliance opinion. Thorn EMI North America, Inc. v. Micron Tech.6 Materials considered by reliance counsel in rendering the opinion, but not communicated to the accused infringer, are typically protected as work product and are not discoverable. EMI No. Am. See also, Dunhall Pharm., Inc. v. Discus Dental, Inc.;7 and Steelcase, Inc. v. Haworth, Inc.;8 Even when a work product waiver occurs it is not unlimited in time but ends once a lawsuit is filed.9

However, some courts have extended the waiver to include all communications between the client and counsel, in some instances including trial counsel. Haney v. Timesavers, Inc.10 (Broad waiver found where “document logs show that a number of documents were sent from the [defendant’s trial counsel] to the [reliance opinion counsel] and to others concerning infringement and validity…as a result, [trial counsel] has provided opinions to advise [defendants]);” FMT Corp. v. Nissei ASB Co.;11 Electro Scientific12 (Trial counsel implied that communications with reliance opinion counsel were substantial.); Matsushita Elec. Corp. v. Loral Corp.13 (Defendant patentowner’s defense of good faith litigation was based on opinion given by trial counsel.); Carl Zeiss Jena GmbH v. Bio-Rad Labs. Inc.14 (Written and oral reliance opinion were given by trial counsel.); Fonar Corporation, et al. v. Johnson and Johnson15 (Various outside lawyers’ authored opinion signed by in-house counsel.).

While the scope of the waiver in any given case cannot be accurately predicted, the cases provide some guidance that will help counsel limit the potential scope of the waiver.

First, where practical, opinion counsel should be separate from trial counsel. Broad waivers, including trial counsel’s work product, have been found where trial counsel also rendered an opinion regarding the infringement or validity matters at issue. While the different counsel can be members of the same law firm, the risk of a broad waiver is mitigated if they are not.

Second, opinion counsel and trial counsel should not communicate on the substance of the opinions lest it be inferred that trial counsel influenced opinion counsel. Broad waivers have resulted where trial counsel and opinion counsel share information and theories. Though opinion counsel may be able to bring trial counsel “up to speed” more quickly, it must be remembered that opinion counsel was engaged to provide objective advice on issues of infringement and validity. Trial counsel’s view on whether opinion counsel was articulate and appropriately analytical is only marginally relevant to trying the substantive defenses of the particular action. In preparing an opinion memo, the opinion writer typically has no more than a commercial validity search report and/or a relatively abbreviated consultation with a person knowledgeable about the accused device or method. When this is compared to the resources typically available to defense counsel, it is no wonder that different prior art and different or additional reasons for asserting non-infringement are likely to percolate up. As long as the opinion was competent as delivered and was relied upon in good faith by the client, the Underwater Devices criteria are met.

Third, avoid any appearance of “opinion shopping.” Don’t engage counsel to prepare an opinion and then stop the process in favor of a new counsel without good cause to do so.

Are the Winds of Change Blowing?

Based upon recent actions, the Federal Circuit appears to be keenly aware that these scopes of waiver issues—sequela to the duty to obtain an opinion and the negative inference imposed if the opinion is not produced to the plaintiff—need to be reviewed and addressed. Recently, the Court sua sponte decided to review en banc certain issues regarding exculpatory opinions, waiver and the adverse inferences. In Knorr-Bremse Systeme Fuer Nutzfahrzeuge GMBH v. Dana Corp., et al.,16 the Court asked for amicus submissions on the following questions: (1) Is the adverse inference appropriate when an accused infringer invokes the attorney-client privilege and/or work-product doctrine with regard to willful infringement? (2) Is it appropriate to draw an adverse inference with respect to willful infringement when the accused infringer has not obtained legal advice? (3) Should the existence of a substantial defense to infringement be sufficient to defeat liability for willful infringement even where no legal advice has been obtained?

At least 14 amicus briefs were submitted. With near unanimity, the amici answered the Court’s questions as follows: (1) The adverse inference is inappropriate when a defendant invokes the attorney-client privilege and/or work-product doctrine with regard to willful infringement. (2) It is not appropriate to draw an adverse inference even when a defendant has not secured legal advice. (3) The existence of a substantial defense to infringement should be sufficient to defeat a willfulness claim regardless of whether legal advice was sought and obtained. Some parties went even further, asking the Court to simply abolish the Underwater Device rule. As of this writing, oral argument has been completed and the patent bar eagerly awaits guidance from the en banc Federal Circuit.

Given the Court’s request and the overwhelming call for change, it appears that some Federal Circuit guidance on these issues may soon be forthcoming. However, until that happens, it is important to understand the opinion “requirement” and the attendant attorney-client privilege waiver virtually inherent in presenting a defense to a charge of willful infringement.

Paul Devinsky Stephen J. Akerley Paul Devinsky, a Washington, D.C. based-partner, concentrates his practice on patent, trademark and copyright litigation, counseling and prosecution and on trade secret litigation. Stephen J. Akerley, a partner in Silicon Valley, focuses his practice on high-profile patent, trade secret, trademark and copyright cases as well as technology-related commercial disputes.


1 See, e.g., Anjimoto Co. v. Archer-Daniels-Midland Co., 228 F.3d 1338 (Fed. Cir. 2000); SRI Int’l Inc. v. Advanced Tech. Labs. Inc., 127 F.3d 1462 (Fed. Cir. 1997); Gustafson, Inc. v. Intersystems Indus. Prods., Inc. 897 F.2d 508, 510 (Fed. Cir. 1990) (“Willfulness is determined from the totality of the circumstances….”); and Bott v. Four Star Corp., 807 F.2d 1567, 1572 (Fed. Cir. 1985).

2 717 F.2d 1380, 1389-90 (Fed. Cir. 1983).

3 793 F.2d 1565, 1580 (Fed. Cir. 1986).

4 853 F.2d 1568, 1572-73 (Fed. Cir. 1988).

5 Civil Action No. 01-389-KAJ, Memorandum Opinion, October 8, 2003.

6 837 F. Supp. 616 (D. Del. 1993).

7 994 F. Supp. 1202, 1205-06 (C.D. Cal. 1998).

8 954 F.Supp. 1195 (W.D. Mich. 1997).

9 Dunhall, supra.

101995 U.S. Dist. LEXIS 15222, *8-9 (D. Ore. 1995).

111992 U.S. Dist. LEXIS 21500, *7, 24 U.S.P.Q.2D (BNA) 1073 (N.D. Ga. 1992)

12175 at F.R.D. 539, 540 (N.D. Cal. 1997).

131995 U.S. Dist. LEXIS 12880, *1-4 (S.D.N.Y. 1996).

142000 U.S. Dist. LEXIS 10044 *1.

15227 U.S.P.Q. (BNA) 886, 887 (D. Mass. 1985).

16Case Nos. 01-1357, – 1376, 02-1221, – 1256 (Fed. Cir.); on appeal from the U.S. District Ct for the Eastern District of Virginia (Case No. 00-CV-803).

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Detectability and Software Patents October 16, 2004

Posted by mais in Litigation, Patent, software.
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Bloglines | My Blogs: “Detectability and Software Patents
By krajec on Patents in Business
Some software ideas suffer from a unique problem: detectability. When an embodiment of an idea is expressed in a language that is compiled and distributed as executable code, how can that idea be detected? If it cannot be detected, there is no way to know if someone infringes.
There are many ways patents may be used. In some cases, patents merely buttress a resume, an advertising brochure, or a marketing message. These patents sometimes can also deter other competitors from entering the market and act as a deterrent effect.
Enforceable patents that protect the foundational technologies of a company should be detectable. In other words, the patent owner should be able to detect when a competitor is unlawfully copying his idea and take measures to enforce the patent.
Some of the most creative and ingenious ideas fall into the first category. For example, a very clever and improved sorting algorithm used deep in the bowels of a software application may be tremendously novel, useful, and non-obvious, but it makes little business sense to patent that technology. The sorting algorithm is best protected as a trade secret, even if the executable code is widely distributed under a license. A competitor may use a completely different sort algorithm to achieve the same result, even if the competitor�s algorithm is much more cumbersome.
Patents of the second category typically focus on the overall function of a software application, relate to interfaces used by the application, or define data structures. In each case, clear and immediate detection of infringement is possible. Patents covering this second category are much better suited to licensing or infringement enforcement.
For the Patent Office, it may be enough that an invention is novel, useful, and non-obvious, but for ”

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No Progress on Bio/TK Disclosure for Patents September 30, 2004

Posted by mais in EU, India, IP Systems, Patent, TRIPS, WTO.
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I/P Updates: TRIPS: No Progress on Bio/TK Disclosure for Patents – News and Information for Intellectual Property Practitioners: “TRIPS: No Progress on Bio/TK Disclosure for Patents
According to an article in BRIDGES Trade BioRes, Vol. 4 No. 17 23 September, 2004
, the Council for Trade-related Aspects of Intellectual Property Rights (TRIPS) considered a proposal by Brazil, India, Pakistan, Peru, Thailand, and Venezuela on September 21, 2004 suggesting a checklist of issues to be covered in negotiations on biodiversity, traditional knowledge and folklore. The proposal elaborates on possible disclosure requirements in patent applications relating to the source and country of origin of a biological resource and/or traditional knowledge used in an invention.

The US and Japan again voiced their opposition to using the checklist. No substantive progress was made and the meeting closed after one day rather than the scheduled two. The next TRIPS Council is reportedly scheduled for December 1-2.
posted at 1:58 PM ”

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So you want to monitor a patent- August 20, 2004

Posted by mais in Patent.
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So you want to monitor a patent%3F %7C IP News Blog: “So you want to monitor a paten -Submitted by Carey.

35 U.S.C.  The folks at Varchars have come up with a neat little perl hack that allows you to keep track of a patent at the USPTO. Set this up as a cronjob  and you have an automatic and easy way to keep track of applications as they pass through the patent process. Very neat. Thanks to ResearchBuzz for the link.”

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WAR FOR DRUGS…….. August 16, 2004

Posted by mais in Drugs, Patent.
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Drug Wars: six lawyers discussing genrics Vs big Pharma drug war
In our roundtable, pharma lawyers dissect the changes in Hatch-Waxman, the costs of patent litigation, and the blurring line between generic and branded drug companies.
IP Law & Business/August 2004 ”

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Who lost it…. plant breeder or farmer or we August 16, 2004

Posted by mais in Litigation, Patent, USA.
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Navigating the patent maze: Court Decisions: “Schmeiser v Monsanto
By this time, most of you have heard that ‘Monsanto won’ over Percy Schmeiser in the Canadian Supreme Court. Actually, Mr Schmeiser was found to have infringed Monsanto’s patent but no damages were assessed. It was a close decision and a momentous one for two main reasons. Several commentators have written about how genetically-engineered plants are essentially, if not expressly, protectable because of the gene introduced. In another blog entry, I will discuss that issue. For this entry, however, I raise the possibility that the Court has defined ‘use’ of a patented invention in such a way that that there may now be an exemption for basic science research in Canada.
Monsanto Canada Inc v Schmeiser 2004 SCC 34.

In particular, the court defined ‘use’ as utilization with a view to production or advantage. The use then that interferes with the rights granted to the patent owner is infinging. Amazingly, the Court characterized deprivation of their rights when ‘another person, without licence or permission, uses the invention to further a business interest.’
Does this imply that a use that is not commercial or furthering a business interest is non-infringing? Would a research use in the confines of a non-profit or educational institute be non-infringing?
There are several ways that the Canadian Courts can go. For example, the Canadians, like their southern neighbor counterpart court, may say that essentially all uses have a business purpose, even universities who may ‘use’ in furtherance of their business of education and money raising. Or, they may hold that that commercial use is not the only use that can be infringing. The Canadian Supreme Court hints that the latter route is appropriate when they write ‘Even in the absence of commercial exploitation, the patent holder is entitled to protection.”

In Schmeiser’s case, Mr Schmeiser contended that he didn’t use the patented gene, which conferred resistance to roundup, because he didn’t spray the canola crop with the herbicide. But, the court still found ‘use’ of the invention because Mr Schmeiser’s business was growing canola, and he grew canola containing the patented seeds. Furthermore, he had the advantage of the stand-by use, meaning that he could have sprayed Roundup ™ or could have sold the seed to other farmers who didn’t want to pay the fee to Monsanto.

Where does this leave those who may use a patented invention in the context of research? Without clarification of this issue by the Canadian courts, I wouldn’t assume that there is now a research exemption. That said, despite what is likely a huge amount of infringment of patents in university settings, very rarely are universities and scientists there ever stopped from using a patented invention. For more on this subject, I refer you to this article: “Accessing other people’s technology for non-profit researchAJARE.pdf Australian Journal of Agricultural and Resource Economics 46:3 389-416 (September 2002).

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New rules of US patent practice July 27, 2004

Posted by mais in Patent.
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New Rules for US patent Practice

this is quite an Interesting artice by William F. Heinze mailto:Bill.Heinze@tkhr.com

Effective December 28, 2001, the U.S. Patent and Trademark Office has changed its Rules of Practice in Patent Cases with regard to claiming the benefit of prior-filed applications. The changes were made in order to implement provisions of the American Inventors Protection Act of 1999 for eighteen-month publication of patent applications. Here is a brief analysis of these changes announced in the Federal Register Notice of December 28, 2001.

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Necessity’s Progeny — Nipper’s Patent Law Blog: Caselaw July 15, 2004

Posted by mais in Patent, USA.
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this link offers a good information on a latest case.. have a look over it,….

Necessity’s Progeny — Nipper’s Patent Law Blog: Caselaw06038004L.jpg is a good website for a comprehensive web search.

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Patent Examiner Training-USA July 15, 2004

Posted by mais in Patent.
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I found it Interesting …… well with the wide spreading globalization .. perhaps we would see the day of globl IP Agent

Necessity’s Progeny — Nipper’s Patent Law Blog: Patent Examiner Training: “Patent Examiner Training”

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Necessity’s Progeny — Nipper’s Patent Law Blog July 15, 2004

Posted by mais in Patent.
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Necessity’s Progeny — Nipper’s Patent Law Blog

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