The U.S. Court of Appeals for the Federal Circuit in Washington yesterday stood behind a lower court ruling, saying the judge made “no reversible error” in upholding the validity of four patents on the drug. The court also said the judge was correct to invalidate two other patents that expire in 2017.
The ruling protects a product that generated $682.2 million in U.S. sales last year for Lilly. The Indianapolis-based company is facing patent expirations on three of its top-selling drugs by 2013, accounting for more than 40 percent of revenue. Last month, Lilly lost an appeal over cancer medicine Gemzar and is challenging a ruling over attention-deficit treatment Strattera.
“Protection of intellectual property rights is extremely important to the biopharmaceutical industry and the patients we serve,” Lilly General Counsel Robert A. Armitage said in a statement. “We will continue to vigorously defend our rights, in order to support the development of the next generation of innovative medicines.”
He said Lilly will consider whether to appeal the invalidity ruling on the patents that expire in 2017, related to the particle size of raloxifene, the active ingredient in the drug. Outside the U.S., Evista generated $348.1 million in 2009 sales, the company said Jan. 28.
Lilly is trying to speed drug development with mixed results. It halted trials of a late-stage experimental Alzheimer’s drug last month, one of eight drugs it had in the third stage of testing generally required by U.S. regulators. Effient, a blood-thinner Lilly introduced in the U.S. in August 2009, “got off to a slower start than we anticipated,” Chief Executive Officer John Lechleiter said in July.
Lilly’s best-selling drug, the antipsychotic Zyprexa, loses patent protection in October 2011, while antidepressant Cymbalta and insulin Humalog face generic competition in 2013.
Teva, based in Petah Tikva, Israel, received U.S. Food and Drug Administration approval for its generic version of Evista just before the nonjury trial began in March 2009.
Teva, which claimed that Lilly’s Evista patents are obvious variations of known science, had been prepared to begin marketing the drug before the trial. Officials with the company didn’t immediately return messages seeking comment.
The case is Eli Lilly & Co. v. Teva Pharmaceuticals USA, 2010-1050, U.S. Court of Appeals for the Federal Circuit (Washington). The lower court case is Eli Lilly v. Teva, 06-cv- 01017, U.S. District Court, Southern District of Indiana (Indianapolis).
Kodak Seeks IPhone, BlackBerry Patent Royalties
Eastman Kodak Co., the 130-year-old company that popularized film photography, is trying to gain ground lost in the digital revolution by using its collection of patents to target Apple Inc. and Research In Motion Ltd.
Kodak says one of its 1,000 digital-imaging patents entitles it to royalties on every Apple iPhone and RIM BlackBerry with an image-preview camera feature. In a case that started yesterday, Kodak is betting the U.S. International Trade Commission in Washington will back its complaint and block imports of the smartphones if a payment agreement isn’t reached.
Chief Executive Officer Antonio Perez is using Kodak’s history of innovation to help fund a shift to digital devices as a drop in demand for traditional film products cut revenue by almost half since he took over in 2005 to $7.6 billion last year.
Steven Sasson, a retired Kodak engineer who was called as the company’s first witness yesterday, said at the hearing that the preview feature is used in every digital camera and phone with a camera. Kodak contends it invented the digital camera and has picked other patent fights over the technology with Sony Corp. and Panasonic Corp.
Kodak’s patent 6,292,218 that is in dispute in the Apple and RIM case, was issued in 2001. It’s for an electronic camera that can preview low-resolution versions of a moving image while recording still images at a high resolution. Higher resolution requires more processing power and storage space on the electronic device.
“We have had discussions for years with both Apple and RIM in an attempt to resolve this issue amicably, and we have not been able to reach a satisfactory agreement,” said David Lanzillo, a Kodak spokesman.
Marisa Conway, a RIM spokeswoman, said the Waterloo, Ontario-based company doesn’t comment on pending litigation. Amy Bessette, a spokeswoman for Cupertino, California-based Apple, also declined to discuss the case.
The ITC judge is scheduled to release his findings in January. The ITC only has the authority to block imports of products that violate U.S. patents. The iPhone is made in China and imported into the U.S., while the BlackBerry is made in Mexico and Canada, according to the Kodak complaint.
Apple and RIM are also striking back. Apple filed its own patent-infringement case at the ITC against Kodak products, and RIM has a civil lawsuit in federal court in Texas challenging the validity of Kodak patents, including the one in the ITC case.
Kodak, which popularized mass photography with the Brownie and Instamatic cameras, has lost about 86 percent of its stock market value in the past three years.
The invention at issue in the ITC case builds on the in- camera display of a digital camera to let a person see what the image would look like before they take the picture, said Sasson, the former Kodak engineer.
The feature furthers the vision of Kodak founder George Eastman to “make photography easy for the everyday person,” Sasson said at the hearing. “People find it useful and it helps them make better pictures, easier.”
The Kodak case is the first of several involving Apple that will be ramping up at the ITC. Apple has pending fights with smartphone makers HTC Corp. and Nokia Oyj, Taiwanese integrated circuit maker Elan Microelectronics Corp., and patent owner S3 Graphics Co.
The case is In the Matter of Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof, 337-703, U.S. International Trade Commission (Washington).
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Univision Copyright Case Transferred, TuneSat Technology Used
The copyright-infringement case against Broadcasting Media Partners’ Univision Communications unit was transferred from New York federal court to Los Angeles, according to court filings.
The New York-based Spanish-language broadcaster, was sued in June for copyright infringement by the owner of a catalogue of independent music.
Disc Marketing LLC of Pasadena, California, which does business as 5 Alarm Music, accused the broadcaster of incorporating recordings into its programming without authorization. In the complaint, Disc Marketing said it used TuneSat LLC’s proprietary technology to “locate and tabulate instanced of unauthorized exploitation of materials in its catalogue.
According to the TuneSat website, the company offers “the most accurate and effective audio fingerprinting technology spoliation for the broadcast media industry.” It says it uses the technology to ensure rights holders “are being properly compensated for uses of their content.”
SESAC, a Nashville, Tennessee-based performance rights group, uses TuneSat to detect music in television broadcasts, and in June, Vivendi’s Universal Music Publishing Group signed an accord to do likewise.
Univision was notified of the alleged infringements a year ago and has “failed to cease its unauthorized and infringing activities, acknowledged wrongdoing” and failed to compensate Disc Marketing for damages, according to court papers.
The suit involved more than 30 of Disc Marketing’s recordings, which the company claims were broadcast more than 300 “separate and distinct times.”
Disc Marketing claims the alleged infringement is “willful, intentional and purposeful, in disregard of and with indifference to” its rights.
The company asked the court to order Univision to halt its alleged infringement, and for awards of money damages, litigation costs and attorney fees. Univision has not yet filed an answer to the complaint.
The case is Disc Marketing LLC v. Univision Communications Inc., 1:10-cv-04597-RWS U.S. District Court, Southern District of New York (Manhattan).
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Karsten’s Ping to Let Apple Use Trademark for Social Network
Cupertino, California-based Apple introduced Ping as part of a presentation of a new iPod media player yesterday. The $99 device also will deliver first-run movie rentals for $4.99 and work with Netflix Inc.’s online service.
‘Ping’ is a social network that lets users “follow” others, Apple Chief Executive Officer Steve Jobs said yesterday when the new iPod was revealed.
Liberty Media Sues to Protect ‘Corbin Fisher’ Trademark
Liberty Media Holdings LLC, a San Diego-based provider of gay-oriented adult content, sued 14 named and 500 unnamed defendants for trademark infringement.
The company is the holder of the Corbin Fisher trademark and operates the CorbinFisher.com website “which provides services of interest to the adult entertainment community,” according to the complaint filed Aug. 31 in federal court in San Diego.
The defendants are accused of being cybersquatters, using domain names confusingly similar to the trademark. They use these divert to divert traffic from Liberty’s own website, according to court papers.
Among the defendants are providers of domain registration identity-masking services. These include Domains by Proxy Inc., PrivacyProtec.org, WhoIsProtector Inc., Direct Privacy ID 826c9, and WhoIs Privacy Protection Services Inc. They are sued for contributing to the “illegal cybersquatting activities” of other defendants.
Liberty Media asked the court to order all defendants to quit infringing the trademark, and the transfer of all allegedly infringing domain names. It also seeks money damages, including $100,000 per infringing domain name registered by, used by, or trafficked by each defendant, and awards of all profits defendants realized through their acts of infringement.
Additionally, the company asked that the damages be tripled, and for awards of attorney fees and litigation costs.
Liberty Media is represented by Marc. J. Randazza of the Randazza Legal Group of San Diego. He is best known for his Legal Satyricon blog and for a letter he wrote as Corbin Fisher’s general counsel, offering $100,000 to Levi Johnston, the father of Republican vice presidential candidate Sarah Palin’s grandchild, to be the subject of a film in which he would masturbate on camera. Johnston refused the offer.
Liberty Media’s case is Liberty Media Holdings LLC v. James March, 3:10-cv-01809-WQH-BLM, U.S. District Court, Southern District of California (San Diego).
Facebook Wins Transfer of Facebook.me Internet Domain Name
Facebook Inc., the Palo Alto, California-based social network with more than 500 million users, was successful in its efforts to seek transfer of the facebook.me domain name.
A mediator from the World Intellectual Property Organization ordered the transfer from a resident of the United Arab Emirates. Amjad Abbas had insisted he acquired the name as part of a collection of domain names he pursued as a hobby, according to the WIPO decision.
Abbas has also argued that he intended to use the domain name to point to his personal Facebook page at www.facebook.com/amjadone. He registered the domain name in 2008 and had offered it for sale on a website for a minimum price of $2,000, according to the decision.
The mediator said he did not find persuasive Abbas’ contention that he had acquired the Facebook domain name and other domain names “for no other purpose than to impress his friends.”
Abbas “had not been making any ‘fair’ or ‘legitimate’ use of the domain name,” the mediator found, and ordered that it be transferred to Facebook.
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Orrick Scores IP Appellate Specialist from O’Melveny & Myers
Davies, who joins from O’Melveny & Myers LLP of Los Angeles, spent seven years on the appellate staff of the U.S. Department of Justice’s civil division representing the U.S. Patent and Trademark Office, the Copyright Office and the Federal Communications Commission.
He’s known for his representation of the government’s interests in a high profile case testing several key elements of patent law. That case is Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., also known as SMC Corp., 1:88-cv-01814-PBS, U.S. District Court for the District of Massachusetts (Boston).
Davies is a former judicial clerk for Judge Karen LeCraft Henderson of the U.S. Court of Appeals for the D.C. Circuit.
He has an undergraduate degree from Yale University and a law degree from the University of Chicago.