Becton, Bayer, OpenMind, Invenergy: Intellectual Property

Becton, Dickinson & Co. won a partial appeal of a $5 million patent-infringement verdict that favored Retractable Technologies Inc. on technology used to protect health-care workers from accidental needle sticks.

Becton’s 3-milliliter Integra syringe doesn’t infringe Retractable’s patents, the U.S. Court of Appeals for the Federal Circuit in Washington said in a decision July 8 that reverses part of a 2009 jury verdict. The court upheld the remaining portion of the jury’s finding, that Franklin Lakes, New Jersey-based Becton’s 1-milliliter Integra product does infringe.

Becton no longer sells the smaller syringe “so there is no impact to our customers,” said Liz Ryan Sax, a spokeswoman for the company. Little Elm, Texas-based Retractable sued in June 2007, claiming Becton used its innovations without permission. The patents cover Retractable’s VanishPoint-brand syringes, which contain spring-loaded needles, according to the complaint.

A federal jury in Marshall, Texas, found that both devices infringed Retractable’s patents, and awarded $5 million as compensation. U.S. District Judge David Folsom later told Becton to stop using the technology, an order that was put on hold pending outcome of the appeal.

Retractable’s product has a feature in which pushing the plunger after the injection is complete releases the needle holder from a retaining ring so that it retracts back into the syringe body without coming into contact with a health worker, court papers show.

In finding the 3-milliliter Integra doesn’t infringe two Retractable patents, the Federal Circuit said the inventions are limited to a one-piece structure, while the Becton syringe has multiple parts.

“I understand how a perfectly competent trial judge can be persuaded by the siren song of litigation counsel to give the jury wide scope regarding what is claimed,” Circuit Judge S. Jay Plager wrote. “But it is a song to which courts should turn a deaf ear if patents are to serve the purposes for which they exist, including the obligation to make full disclosure of what is actually invented, and to claim that and nothing more.”

The case is Retractable Technologies Inc. v. Becton, Dickinson & Co., 2010-1402, U.S. Court of Appeals for the Federal Circuit (Washington). The lower court case is Retractable Technologies Inc. v. Becton Dickinson and Co., 07cv00250, U.S. District Court, Eastern District of Texas (Marshall).

Bayer’s Patent for Yasmin Revoked by European Patent Office

The European Patent Office decided to revoke Bayer AG’s formulation patent for the Yasmin group of contraceptives, opening the company’s second-best-selling product to increased competition.

An appeals board of the patent office annulled an earlier decision that had rebuffed a challenge brought by Novartis AG’s Hexal unit, Bayer said in a statement on its website July 8. Bayer will decide on possible next steps after studying the reasons for the ruling, the company said.

“We are disappointed by the decision,” said Flemming Ornskov, head of strategic marketing general medicine at Bayer HealthCare Pharmaceuticals. “We remain confident that we can maintain our European leadership position in women’s health-care with innovative product launches.”

Bayer, Germany’s largest drugmaker, had sales of 1.11 billion euros ($1.58 billion) with the Yasmin, Yasminelle and Yaz birth-control pills last year, making them the company’s biggest-selling drug after the multiple sclerosis treatments Betaferon and Betaseron.

Generics of Yasmin and Yasminelle are already sold in some markets including Poland, Friederike Lorenzen, a Bayer spokeswoman, said in an interview. It’s too early to speculate about financial implications of the ruling, she said.

Apple Told to Pay $8 Million in Patent Trial Over IPod Playlists

Apple Inc. was told to pay closely held Personal Audio LLC $8 million after a federal jury in Texas found that the maker of iPod music players infringed patents for downloadable playlists.

Personal Audio, a patent licensing company with an office in Beaumont, Texas, sued Apple in 2009 for $84 million in damages, claiming infringement of two patents. The jury found that the patents were infringed, and upheld their validity July 8, according to Personal Audio’s lawyer, Ron Schutz of Minneapolis-based Robins Kaplan Miller & Ciresi LLP.

The inventions cover an audio player that can receive navigable playlists and can skip forward or backward through the downloaded list. Apple contended that it wasn’t using the inventions, and that the patents were invalid.

The iPod generated $8.3 billion in sales last year for Cupertino, California-based Apple, about 13 percent of its total revenue.

The case is Personal Audio LLC v. Apple Inc., 09cv111, U.S. District Court for the Eastern District of Texas (Lufkin).

For more patent news, click here.


Lumber Liquidators Sues Connecticut Company for Infringing Marks

Lumber Liquidators Holdings Inc., a seller of flooring products, sued a Connecticut competitor for trademark infringement.

Fox Flooring Inc., of Bridgeport, Connecticut, is accused of using trademarks for various floorings belonging to Toano, Virginia-based Lumber Liquidators.

According to the complaint filed July 7 in federal court in New Haven, Connecticut, Fox also has used on its website photos and product descriptions belonging to Lumber liquidators. This was done without permission, according to court papers, and violates the Virginia company’s copyrights

Lumber Liquidators claims it has suffered irreparable harm and that the public is confused by Fox’s actions.

The company asked the court to bar further infringement of its trademarks and copyrights, and for awards of money damages, attorney fees and litigation costs. Claiming the infringement is deliberate, Lumber Liquidators requested extra damages to punish Fox Flooring for its actions.

Fox Flooring didn’t immediately respond to an e-mailed request for comment.

Lumber Liquidators is represented by Mark S. Gregory of Martin Chioffi LLP of Stamford, Connecticut.

The case is Lumber Liquidators Inc. v. Fox Flooring Inc., 3:11-cv-01078-AWT, U.S. District Court, District of Connecticut (New Haven).

For more trademark news, click here.


Adult-Film Company Claims Infringers Engage in Civil Conspiracy

OpenMind Solutions Inc., a maker of adult films, accused 39 unnamed defendants of committing a civil conspiracy to distribute a film without authorization.

The unnamed defendants used the BitTorrent file-sharing protocol to distribute OpenMind’s “Throated 30” film without authorization, according to the complaint filed July 6 in federal court in San Francisco.

OpenMind acknowledged in its pleadings that the decentralized nature of the BitTorrent protocol has stymied efforts at combating copyright infringement.

“Because there are no central servers to enjoin from unlawfully distributing copyrighted content, there is not a primary target on which to focus anti-piracy efforts,” OpenMind said in the complaint.

The decentralization that makes the BitTorrent protocol “an extremely robust and efficient means of transferring enormous quantities of data also acts to insulate it from anti-piracy measures,” the film company said in court papers.

The conspiracy allegations flow from the nature of the BitTorrent distribution protocol that “necessitates a concerted action by many people in order to disseminate files,” according to the complaint.

OpenMind argued that the unnamed defendants are properly joined in one suit even if they weren’t engaged in one single BitTorrent “swarm,” or data-sharing event, “because they have contributed to the chain of data distribution due to their prior involvement in like swarms.”

The film company asked the court to order the defendants to halt their infringing behavior, and to find them liable to a claim for civil conspiracy. Additionally, OpenMind seeks money damages, and awards of attorney fees and litigation costs.

OpenMind is represented by Brett L. Gibbs of Chicago’s Steele Hansmeier PLLC. On its website, the firm lists the most pirated film of the week. On July 7 that film was Ridley Scott’s “Robin Hood.”

The case is OpenMind Solutions Inc., v. Does 1-39, 3:“11-cv-03311-MEJ, U.s. District Court, Northern District of California San Francisco).

For more copyright news, click here.

Trade Secrets/Industrial Espionage

Media Outlets Seek Access to Wind-Power Project Cost Data

Montana’s Public Service Commission agreed to keep confidential price and cost information that was provided by unsuccessful bidders for a wind-power project, the Billings Gazette reported.

Two media outlets objected, saying the information isn’t a trade secret that should be protected, according to the newspaper.

The two losing bidders -- Chicago-based Inveneregy Inc.’s Invenergy Wind LLD and Sagebrush Energy of Jackson, Wyoming -- had asked that the commission to keep that information secret, the newspaper reported.

The Gazette reported the media outlets are arguing that because the winning bidder, Denver’s Compass Wind LLC, permitted its information to be disclosed, the unsuccessful bidders data isn’t a trade secret because it can’t be for one company and not another.

IP Moves

Perkins Coie Adds Fish & Richardson’s Joseph Reid to IP Group

Perkins Coie LLP hired Joseph P. Reid for its IP practice group, the Seattle-based firm said in a statement.

Reid, a patent litigator, joins from Boston’s Fish & Richardson PC. His areas of expertise include life sciences, computer software and hardware, consumer electronics, video and audio processing, pharmaceuticals, medical devices, semiconductors, wireless networking, automotive systems and e-commerce. Reid will practice in the firm’s San Diego office.

He has an undergraduate degree in biology from Duke University, a master’s degree in physiology from the University of California at Davis, and a law degree from Notre Dame University.

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