Anticipate This!™ | Patent and Trademark Law Blog

Tafas v. Dudas; SmithKline Beecham Corp. v. Dudas – Hearing Today.

Posted in Litigation Commentary by Jake Ward on February 8, 2008

The Summary Judgment hearing for Tafas/GSK v. USPTO in U.S. District Court (E.D. Virginia) is scheduled for today, Friday, February 8, 2008, at 10:00 AM.  As previously posted by AT!, the litigation is related to the USPTO’s proposed claims and continuations rules and a preliminary injunction of the rules is presently in place.  See here, here, here, and here.  The Patent Docs have some exceptional background on the litigation, including copies of briefs filed, here.

Some are speculating that a decision from Judge James C. Cacheris may be rendered from the bench today.  The PLI Blog will be report-blogging on the case throughout the day.  Stay tuned.

JW Update (2/8/08 – 2:05PM) – Per Gene Quinn at the PLI Blog, the court has taken the matter under advisement and has recessed for the day.  A decision is expected within the next few days to weeks.

Scrabulous: Not a Triple-Word Score.

Posted in General Commentary, Litigation Commentary by Mike Dockins on January 21, 2008

According to Reuters, Mattel and Hasbro have recently warned Facebook that the online application Scrabulous may be infringing Mattel and Hasbro’s copyright and, presumably, trademark in relation to the popular board game Scrabble®. 

If you have not yet been hooked by the Scrabulous phenomenon, consider yourself lucky. Sources indicate that it can be quite addictive.  Scrabulous has a registered user base of 2.3 million, 600,000 of which play the game daily.  The move to shut down Scrabulous has also prompted a new community on Facebook named “Save Scrabulous”.  The “Save Scrabulous” community has over 12,000 members.

So is there copyright infringement?  Independent creation is a defense to copyright infringement, but only if independent creation is a possibility.  If you were to put enough monkeys with typewriters in a room on Mars, for example, they may independently create Shakespeare and have a valid copyright in the work. 

One test for copyright infringement is access and substantial similarity.  The creators of Scrabulous cannot in good faith claim, however, that they never had access to Scrabble®.  The game of Scrabble® is sold in 121 countries in 29 different languages. One hundred million games have been sold worldwide, and estimations are that Scrabble is found in one out of every three American homes. 

As for substantial similarity, well, we have not played Scrabulous ourselves, so it is impossible to make a first-hand determination.  However, below is a comment from one of the more reasonable Scrabulous fans at “Save Scrabulous”, as reported at this Forbes article:

The copyright infringement is obvious and, in retrospect, the developers of Scrabulous should have done more to create their own spin on it [rather than using the same color schemes and numerical systems and having the rules to Scrabulous game link to the Scrabble Wikipedia page].

You be the judge.  Images of the respective games are reproduced below.

 Scrabulous Image           Scrabble Image

Scrabulous                            Scrabble®

Access?  Check.  Substantial similarity? Check. 

But what about trademark infringement?  In trademark law, two words or phrases do not have to be identical for there to be a trademark infringement.  An infringement may be found wherever there is a likelihood of confusion as to the source, sponsorship, or ownership of the goods (or services).  A likelihood of confusion in this instance appears to be very high.  The goods (the game) are nearly identical in the way they are played as well as how they look.  Further, the marks themselves are very similar, sharing the same first five letters (S-C-R-A-B).

Similar marks?  Check.  Substantially identical goods?  Check.  Trademark infringement seems to be yet another obstacle the Scrabulous makers will have to hurdle.

So what options do Facebook and/or the creators of Scrabulous (JW Edit – 1/25/2008; good comment tekel) have?  The most reasonable recourse may be to consider selling Scrabulous to Mattel/Hasbro, or obtaining a license as soon as possible.  Any comments from our readers?

Quanta Computer v. LG Electronics: Notable Quotes from the Oral Arguments.

Posted in Litigation Commentary by Jake Ward on January 16, 2008

Per usual, we will preface our thoughts with the following disclaimer:  “It is generally a futile effort to predict how the Supreme Court will rule on any given issue.”  That being said, below are some quotes that we found of particular interest:

Transcript at page 4.

JUSTICE STEVENS: Ms. Mahoney, can I just get one thing straight in my mind. Which transaction triggered the exhaustion doctrine in your judgment, the general license to Intel or the sale by Intel to Quanta.

MS. MAHONEY (ON BEHALF OF PETITIONERS): I think they work in combination here, Your Honor, because once the sale was — once the license was entered into with Intel and once unrestricted rights were given to make, use and sell components that would infringe, otherwise infringe these patents, there was really nothing else that could happen – 

Transcript at page 8.

CHIEF JUSTICE ROBERTS: So the parties are unwilling to spell out exactly how this is going to work out in their contract, and each side, it prefers to take their chances on how the Federal Circuit’s going to rule. It’s easier to sell these things if they’re not encumbered by these additional license requirements and the manufacturer presumably gets a lot more, but there’s a lot of uncertainty, uncertainty that could have been cured by how the contract was drafted, and people prefer to live with that uncertainty and litigate rather than clear it up in the contract.

Transcript at pages 19-20.

CHIEF JUSTICE ROBERTS: A mere license can prevent the application of the patent-exhaustion doctrine?

MR. HUNGAR (ON BEHALF OF THE UNITED STATES, SUPPORTING THE PETITIONERS): Well, only at the — only at the level of the licensee. That is, if it is true, as Ms. Mahoney said, if the — if LG here had given a restricted license that restricted the right to sell, that said you can only sell in these instances, and if Intel then sold outside those permitted instances, that would be patent infringement.

CHIEF JUSTICE ROBERTS: And it would be patent infringement by the use of the product by the people that Intel sold to?

MR. HUNGAR: Yes, because it was an unauthorized sale.

Transcript at page 21.

JUSTICE BREYER: But you couldn’t put in -you are authorized to sell the bicycle pedals that I have patented only if you impose a restriction that will tell the bicycle user that he must send me a check for $15 in addition to whatever he pays you. That sounds unlawful under contract law.

MR. HUNGAR: Well, it might be lawful. You could certainly do what, in fact, I think some of the seed companies –

JUSTICE BREYER: Or you are going to have -I mean, there’s a doctrine that you cannot impose equitable servitude’s upon chattel.


Transcript at pages 23-24.

MR. HUNGAR: Fine. If they have that restriction and they sell and they do not — they do not obtain the contractual promise of the party that they are obligated to obtain, they’re violating the terms of their right to sell. It’s patent infringement by the seller, and if the buyer uses it it’s patent infringement by them as well.

CHIEF JUSTICE ROBERTS: Exactly. That’s the critical point. You’re telling me that if the buyer, in other words, the kind of third person in this chain, uses the patented article in a way that is contrary to the license that was given to the second person in the chain, then he is liable for contributory infringement under the patent laws and not, as I understood you to answer to Justice Breyer, only under contract law.

Transcript at page 44.

JUSTICE SOUTER: They’re saying the reason they have done so is that the following distinction is significant. There’s a distinction between a license that says you can’t sell this unless certain conditions are satisfied and, on the other hand, a license that says you can sell this, but if you sell it to a buyer who is described by conditions A and B, you’ve got to tell the buyer that we’re going to make a claim against A and B. And the ones — in the first example, there is a limit to the right to sell. In the second example, there is no limit on the right to sell, but there’s a warning about what we’re going to do if you do sell under certain conditions. And I think they’re saying that unless you have a contract of the former sort which limits your right to sell, then when you do sell, exhaustion applies and whatever you may do against the ultimate buyer is — is a contract problem or what-not, but it’s not — it’s not a matter of patent.

MR. PHILLIPS (ON BEHALF OF THE RESPONDENT): Right, and the problem –

JUSTICE SOUTER: Number one, do you think I am being correct in characterizing, describing the distinction they make?

MR. PHILLIPS: I think so.

JUSTICE SOUTER: And B, if I am, why isn’t that distinction an answer to your argument?

MR. PHILLIPS: Because, because it ignores the fact that there are separate patents involved in this case. There is no question that — there is an issue. I mean I don’t think there’s a question that -you know, as to how far you can go down the road in trying to condition a particular sale. I thought this Court may have resolved this already. Mallinckrodt leaves that issue open, but that’s not — that’s not the question.

The issue here is if I sell to you, Justice Souter, a particular chip, whether I condition it or not, I think that’s — to me that’s unenforceable. But the question is, can you then take that chip and use it to violate a separate patent? And the reason you know that it’s not exhaustion –

Transcript at page 50.

MR. PHILLIPS: To be sure, Intel has the authority to sell these things, and it has the authority to sell — it depends on what the things are. It has the authority to sell the chips. It has the authority to sell the systems, but what it doesn’t have the authority to do is to allow somebody downstream to take the chips and put them into the separately patented systems, and the — and the people downstream know that they don’t have that entitlement.

Transcript at page 53. 

MR. PHILLIPS: . . .It seems to me the fundamental issue here is they have a limited right when they purchase that product. They didn’t get the right to make other products. They didn’t get the right to breach or infringe a completely separate patent. And that is the basis on which the judgment of the Court of Appeals, which is all that is before the Court, should be affirmed.

Quanta Computer v. LG Electronics: Oral Arguments Transcript.

Posted in Litigation Commentary by Jake Ward on January 16, 2008

The link to the transcript for the January 16th oral arguments before the SCOTUS in Quanta Computer, Inc. v. LG Electronics, Inc. can be found here.

Sinorgchem v. ITC & Flexsys America – Update.

Posted in Litigation Commentary by Jake Ward on January 4, 2008

Flexsys has issued a press release responding to the CAFC’s recent decision regarding the patent infringement suit with Sinorgchem.  See previous AT! posts on the ongoing litigation here , here, and here

An excerpt from the Flexsys press release follows:

ST. LOUIS – December 27, 2007 — Solutia Inc. today announced that its Flexsys subsidiary will soon be filing a petition for rehearing by all of the judges of the Court of Appeals for the Federal Circuit (CAFC). This matter involves Flexsys’ ongoing patent infringement dispute with Sinorgchem regarding process technology for the manufacture of 4-ADPA and its PPD derivatives.  In July 2006, the International Trade Commission (ITC) ruled in favor of Flexsys. Last week, a three-judge panel of the CAFC ruled 2-1 that Sinorgchem had not literally infringed Flexsys’ patents, and remanded the case to the ITC to determine whether Sinorgchem had infringed under the doctrine of equivalents.

“We will be moving quickly to file a petition for rehearing,” said Tim Wessel, vice president, Antidegradants and Crystex®. “Importantly, the ITC exclusion order that prohibits Sinorgchem’s importation of 4-ADPA and 6PPD into the United States remains in full effect.  We agree with the strongly worded dissent that the ITC decision should be upheld.”

Notably, a patent infringement action against Sinorgchem Co. and South Korean tire maker Korea Kumho Petrochemical Company is also pending before the U.S. District Court (N.D. Ohio) and will likely follow the ITC case when litigation relating to Sinorgchem’s appeal of the ITC ruling is completed.

JW Note:  It appears likely that the petition for rehearing en banc (full bench) by Flexsys will be granted, particularly in view of Judge Newman’s compelling dissent in the panel opinion.  From a practitioner’s standpoint, the outcome of this matter should be very interesting indeed. 

No Discovery in GSK v. USPTO.

Posted in Litigation Commentary by Jake Ward on November 27, 2007

Per Gene Quinn at the PLI Blog (link),  the Eastern District of Virginia has ruled from the bench that there will be no discovery and that Summary Judgment motions are due for GSK and Tafas by December 20, 2007.

USPTO Enjoined From Making Rules Effective.

Posted in Litigation Commentary by Jake Ward on October 31, 2007

Per the distinguished gentlemen at the PLI Blog (link), GSK has succeeded in its injunction hearing at District Court (E.D. Virginia) this morning.  A preliminary injunction has been issued to block the new claims and continuations rules from taking effect tomorrow, November 1st, as orginally scheduled.  A decision on the merits of GSK’s case will be made in the coming months.

According to John White, “there was an audible sigh in the courtroom when Judge Cacheris said the rules were enjoined.” It is safe to say that many more audible sighs will be heard today in patent law offices nation-wide.

JW Update, 5:42 PM:  The Preliminary Injunction order was just released.  May be found at the AT! here.  Many thanks to Gene Quinn and John White at the PLI Blog for staying on top of this matter and keeping the IP blogosphere updated throughout the day!

Unabashed About Their Typical Prosecution Strategy.

Posted in Litigation Commentary by Jake Ward on October 29, 2007

The U.S. Patent Office has filed a reply brief in GSK v. USPTO, available via Patently-O here.

AT! notes one set of comments in the brief that state: 

Plaintiffs are unabashed about their typical prosecution strategy . . .

whereby Plaintiffs file

. . . a first patent application containing a broad disclosure with the understanding that [they] will prosecute narrower and/or additional patent claims in continuing applications, based on further extensive research.

While this type of strategy may be advantageous to Plaintiffs and others, its effects on the efficiency of the USPTO are profound.

Also notable in the Patent Office’s arguments is the statement that the USPTO will suffer considerably more harm than Plaintiffs if the Court issues a preliminary injunction.  Specific harm alleged by the Patent Office includes: 

1) the loss of revenue due to the considerable time spent in preparing and training (and retraining if necessary) USPTO employees on the new rules;

2) expected critical computer system problems due to changes made to the computer systems in anticipation of the new rules; and 

3) the hampering or halting of the anticipated synergistic effect of the new rules when combined with other recent and proposed rules (accelerated examination, IDS, alternative claims, etc.) to “begin healing [the] wounded [patent] system.”