Myriad, Microsoft, Franklin Mint: Intellectual Property

A legal dispute over Myriad Genetics Inc. (MYGN)’s patents for a breast cancer test may decide what type of genetic research is eligible for intellectual property protection in the U.S.

The test compares a patient’s DNA to a known genetic sequence to determine the odds of breast cancer developing. A federal judge said last year gene sequences “are not markedly different” from what occurs in nature and can’t be patented. The U.S. Court of Appeals for the Federal Circuit in Washington, specializing in patent law, plans to hear arguments April 4.

Patents limit the right to use gene sequences, reducing the number of scientists who can discover causes or treatments of inherited diseases, according to the American Civil Liberties Union, which filed the suit. The Washington trade group for makers of biotechnology drugs counters that patents create an economic incentive to develop new products.

“The entire biotechnology industry is watching this case,” said John Iwanicki, an attorney with Banner & Witcoff in Boston who specializes in helping biotechnology companies obtain patents. “They have spent years and invested multibillions of dollars in isolated gene sequences and that may all go away. Nobody is going to spend the time to find an isolated gene sequence unless it has a commercial purpose and function.”

U.S. District Court Judge Robert Sweet in New York invalidated elements of seven patents held by Salt Lake City- based Myriad last year. The appeals court will decide whether the identification of a genetic sequence, separated from the strand of DNA, is sufficiently inventive to qualify for patent protection.

Acting Solicitor General Neal Katyal said in a court filing he plans to argue that some isolated DNA shouldn’t be eligible for a patent.

It may be the first time the solicitor general, the nation’s top courtroom lawyer, argues in the Federal Circuit since its creation in 1982, said Don Dunner of Finnegan Henderson in Washington, a patent lawyer who specializes in cases before the court.

In a court filing, the Justice Department said “the chemical structure of native human genes is a product of nature, and is no less a product of nature when that structure is ‘isolated’ from its natural environment than are cotton fibers that have been separated from cotton seeds or coal that has been extracted from the earth.”

A ruling limiting gene patents would hurt companies such as Cambridge, Massachusetts-based Metabolix Inc. (MBLX), which makes biodegradable plastic without petroleum using a genetically modified microbe, and universities studying genes to find new treatments, he said. Metabolix didn’t comment.

Myriad charges as much as $3,340 for each breast cancer test covered by the patent and Medicaid programs in 32 states cover the costs, with another two planning to add it, according to Rebecca Chambers, a Myriad spokeswoman. Medicaid programs in 16 states and the District of Columbia don’t pay for the tests, she said.

The company has a financial assistance program for low- income and uninsured patients.

DNA, a chemical compound that carries genetic information such as skin tone, eye color and sex, influences development of conditions such as obesity, diabetes and bipolar disorder. The information is encoded on segments of DNA called genes, which are responsible for inherited traits and are in turn made up of thousands of nucleotides in different sequences.

A 2005 study reported in the journal Science estimated that 20 percent of known genes are covered by patents. The patent office, which has declined to comment publicly on the Myriad case, still processes patent applications under guidelines it established a decade ago.

The case is Association for Molecular Pathology v. Myriad, 10-1406, U.S. Court of Appeals for the Federal Circuit (Washington). The lower court case is Association for Molecular Pathology v. U.S. Patent and Trademark Office, 09cv4515, U.S. District Court for the District of New York.

RIM Joins HTC, Samsung in Signing License Agreement With IV

Research In Motion Ltd. (RIM), the Canadian maker of the BlackBerry smartphone, has joined Samsung Electronics Co. and HTC Corp. (2498) in taking a license to the patent portfolio owned by Intellectual Ventures.

According to IV spokeswoman Kasey Hakmagyi, these are the only three makers of mobile devices who have taken licenses to the Bellevue, Washington-based company’s 30,000 IP assets.

The licenses could provide the three companies with defensive shields against future patent-infringement suits. Already makers of mobile devices are embroiled in a number of patent-infringement cases in federal court and before a government agency that has the power to exclude infringing products.

The U.S. International Trade Commission said March 25 that it would review findings that Apple Inc. (AAPL)’s iPhone and RIM’s BlackBerry didn’t violate a patent belonging to Rochester, New York’s Eastman Kodak Co. (EK) Samsung of Gyeonggi, Korea, already settled with Kodak a dispute over the same patent. Taoyuan, Taiwan-based HTC, which is the target of a patent suit filed by Apple in March 2010, signed a license agreement with Redmond, Washington-based Microsoft Corp. (MSFT) in April 2010.

For more patent news, click here.

Trademark

Microsoft, Apple Bring in Language Experts in ‘App Store’ Fight

Microsoft Corp. and Apple Inc. have turned to dueling linguistics experts in their battle over Apple’s attempt to register “App Store” as a trademark.

In Microsoft’s corner is Ronald R. Butters, the retired head of Duke University’s English department and linguistics program.

Apple has brought on board Robert A. Leonard, a professor of linguistics at Hofstra University. His area of specialization is forensic linguistics, according to his university website.

In a Feb. 28 filing to the U.S. Patent and Trademark Office, Leonard -- who said he’s been paid $350 an hour for his services -- said his research indicated that the predominant use of the term “app store” is as a proper noun referring to Apple’s online marketplace for applications.

Generic use of “app store” represents “a minority of the total uses of that term,” he said in his report. He also noted that there were “very few hits” on that term before Cupertino, California-based Apple announced the opening of its app store in March 2008.

Leonard also noted that Apple’s competitors may have used either “app” or “store” in their names for similar online marketplace, “the fact that they avoided using the combined phrase ‘App Store’ is further recognition that App Store has achieved brand significance with consumers.”

In a 76-page report filed March 29, Butters, who said he’s paid $400 an hour for his research, criticized Leonard’s findings. He said Leonard gave no indication of his basis for selecting items as generic or non generic, “thus the reliability of his conclusions are otherwise open to considerable doubt.”

He contends that “it is clear from standard linguistic semantic and lexicographical analysis that the compound noun app store means simply ‘store at which apps are offered for sale.’”

Apple applied to register the term as a trademark July 7, 2008, according to the patent office database. Redmond, Washington-based Microsoft filed documents in opposition to the registration July 6, 2010.

‘Hokie’ Mark Fraudulently Obtained, Real Estate Company Claims

A Virginia real estate brokerage that was sued for trademark infringement by Virginia Polytechnic Institute and State University has responded by claiming the school obtained the disputed mark fraudulently.

Hokie Real Estate Inc., of Blacksburg, Virginia, was sued for infringement in federal court in Roanoke, Virginia, on Oct. 18.

The school had objected to the use of “Hokie,” which it claimed it had used since the 1890s. The word is “a made-up word, a coined term with no meaning,” the school said in its court papers.

After a 2007 shooting in which 31 students and faculty members died, the phrase “we are all hokies” was used to show solidarity with the university.

The real estate company said the school’s application to register the term was fraudulent in its claim that the term had been in use in the 19th century. According to its research, the real estate company said the first documented use of the term comes much later than the school claimed.

It asked the court to order the patent office to cancel the school’s “Hokie” registration, and the destruction of all items marked with the term. Additionally, it asked for an award of the school’s profits realized from the sale of “Hokies” items, and for awards of money damages, attorney fees and litigation costs.

The real estate company also asked that the infringement case brought by the school be dismissed.

Virginia Tech is represented by John H. Thomas of Thomas & Karceski PC of Richmond, Virginia. Hokie Real Estate is represented by Keith Finch, Brian Scott Wheeler, and James Robert Creekmore of the Creekmore Law Firm PC of Daleville, Virginia.

The case is Virginia Polytechnic Institute and State University v. Hokie Real Estate Inc., 7:10-cv-00466-GEC, U.S. District Court, Western District of Virginia (Roanoke).

Franklin Mint, Victorious in Diana Case, to Make Kate Bride Doll

Franklin Mint LLC, the closely held maker of collectible items that won a trademark suit in collection with a doll depicting Princess Diana, will be offering a doll showing Prince William’s bride in her wedding dress.

According to the Exton, Pennsylvania-based company’s website, the doll will feature an exact copy of Catherine Middleton’s dress and hairstyle. It will cost $295 and be shipped sometime in the summer of 2011.

Franklin Mint is already selling a 16” doll dressed like Middleton on the day her engagement to Prince William was announced. That doll sells for $195.

Princess Diana’s memorial fund sued Franklin Mint in federal court in Los Angeles in May 1998 for selling unauthorized mementos of the princess, who died in a car crash in Paris in 1997. The charity lost the case and was sued for malicious prosecution by the mint, which is presently selling a doll depicting Princess Diana in the dress she wore to her 1981 wedding for $295.

Tusker Mattresses Sued Over Use of Tuskys Mark in Uganda

Tusker Mattresses Ltd., a Kenyan supermarket chain, was sued for trademark infringement by a Uganda company that sells arts and crafts, Uganda’s New Vision news website reported.

Tuskys, which specialized in indigenous crafts, registered the mark in Uganda for arts and crafts in 2008, according to New Vision.

The company objects to the supermarket chain’s use of the name “Tuskys” for its new stores in Uganda, according to the news website.

The craft store is seeking money damages for having been denied exclusive use of its trademark, New Vision reported.

For more trademark news, click here.

Copyright

BC Tells Students Use of Wireless Router Infringes Copyrights

Boston College’s Information Technologies Services has told students that the use of a wireless router is a “common example of copyright infringement.”

According to the guidelines posted on the service’s website, wireless routers can give others the opportunity to share illegal material, “giving the appearance that you are the guilty party.”

Under the 2008 Higher Education Opportunity Act, universities are required to make an annual disclosure to students about campus policies related to copyright law. The schools also must implement a plan to combat unauthorized distribution of copyrighted content.

For more copyright news, click here.

To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at vslindflor@bloomberg.net

To contact the editor responsible for this story: David Rovella at drovella@bloomberg.net

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