Qualcomm was found liable for infringing Broadcom’s US Patent No. 6,847,686. The district court entered a permanent injunction and ordered Qualcomm to pay a royalty for sales of infringing products.
On appeal, the Federal Circuit held that the ‘686 patent was invalid as anticipated. Qualcomm filed a motion asking the district court to return the approximately $11 million it had paid in royalties as a result of the injunction. In granting Qualcomm’s motion, the district court reasoned that Qualcomm was entitled to restitution under theories of civil contempt and implied license grounds.
State waived sovereign immunity in choice of law provision
November 17, 2007
In Baum Research and Development Company et al. v. University of Massachusetts at Lowell, No. 2006-1330, 2007 WL 2937300 (Fed. Cir. Oct. 10, 2007) Charles Baum was the inventor of a device for testing baseball bats of varying construction. He was awarded two U.S. patents for his inventions. Charles Baum and Baum Research and Development (collectively “Baum”) entered into a Confidential License Agreement with the University of Massachusetts at Lowell (“University”). The Agreement included the following section III-3. Governing law.:
“This Agreement will be construed, interpreted and applied according to the laws of the State of Michigan and all parties agree to proper venue and hereby submit to jurisdiction in the appropriate State or Federal Courts of Record sitting in the State of Michigan.”
A dispute arose between Baum and the University, and Baum filed suit in the United States District Court for the Western District of Michigan alleging breach of contract and patent infringement. The University asserted it was immune from suit based on its Eleventh Amendment sovereign immunity.
The district court denied the University’s motion to dismiss based on sovereign immunity, and ruled that the University waived its immunity by agreeing to submit to jurisdiction in the appropriate State or Federal Courts in Michigan. More specifically, the district court reasoned that “by agreeing to this provision [III-3], Defendant affirmatively agreed to resolve in federal court any disputes that may arise.”
The University appealed the district court decision to the Court of Appeals for the Federal Circuit, which hears all appeals involving questions relating to patent law. The Federal Circuit affirmed the district court decision that the University waived its immunity and was subject to suit in district court for patent infringement. The Federal Circuit reasoned that “the contract between Baum and the University is not ambiguous as to the mutual obligations to submit to jurisdiction of the state and federal courts in Michigan, and that the University thereby wavied its Eleventh Amendment immunity.”
As a general rule, a State cannot be sued in federal court without its consent. Certain types of cases, such as patent infringement suits, involve matters of federal law and can be filed only in federal court. Thus, a State cannot be sued for patent infringement without its consent. According to the court in Baum, however, a State effectively consents to suit in federal court and can be sued for patent infringement, among other federal causes of action, by agreeing to a choice of law provision in which the parties submit to jurisdiction in the appropriate state or federal courts of a given state.
New patents for West Virginia inventors
August 21, 2007
The following U.S. patent was issued last week to West Virginia inventors:
7,256,384 Signal-enhancement system for photodetector outputs
Inventors: Gottesman, Tal (Morgantown, WV)
Mcgee, Bernard J. (Wheeling, WV)
Bose-Mullick, Vikram A. (Morgantown, WV)
The following U.S. patent applications were published last week for West Virginia applicants and/or assignees:
20070191559 Single catalyst low, medium and high density polyethylenes
Inventors: Kolb, Rainer (Kingwood, TX)
Szul, John F. (Hurricane, WV)
Assignee: Univation Technologies, LLC (Houston, TX)
20070190130 Protein hydrolysate excipients
Inventors: Mark, William Antonio (Morgantown, WV)
Hall, Lloyd Thomas (Doswell, VA)
New patents for West Virginia inventors
August 10, 2007
The following U.S. patents were issued this week to West Virginia inventors and/or assignees:
7,253,315 Process for preparing fluorocarboxylic acids
Inventors: Fu, Ta-Wei (Vienna, WV)
Swearingen, Steven H. (Wilmington, DE)
Ichida, Takuya (Settsu, JP)
Yoshii, Shigeyuki (Settsu, JP)
Assignee: Daikin Industries, Ltd. (Osaka, JP)
E. I. du Pont de Nemours and Company (Wilmington, DE)
7,252,755 Viscosity modification of heavy hydrocarbons
Inventors: Kiser, Melvin D. (Huntington, WV)
Boyer, David C. (Huntington, WV)
Assignee: Marathon Ashland Petroleum Co. (Findlay, OH)
7,252,605 Articulated football goal including sacrificial crossbar
Inventor: Snider, James L. (Bridgeport, WV)
The following U.S. patent applications were published this week for West Virignia applicants and/or assignees:
20070186283 Apparatus and method for providing program protection engineering, security management, and report preparation for sensitive and classified projects
Applicants: Brumbaugh, Kenneth Leroy (Ashburn, VA)
Low, Howard Bruce (Shepherdstown, WV)
Hamilton, Gregory Chase (Rockville, MD)
Davis, James Elbert JR. (Manassas, VA)
Fan, Wendy Yijun (Centreville, VA)
20070185298 Organosilicate resin formulation for use in microelectronic devices
Applicants: Baikerikar, Kiran K. (Midland, MI)
Feng, Shaoguang (Midland, MI)
Hetzner, Jack E. (Reese, MI)
Maher, John M. (Charleston, WV)
Mills, Michael E. (Midland, MI)
Popa, Paul J. (Auburn, MI)
Strittmatter, Richard J. (Batavia, IL)
Wilson, Larry R. (Beaverton, MI)
20070184918 Golf tee setting device
Applicant: Ritchie, John I. JR. (Ridgeley, WV)
20070182552 Security screening and support system
Applicants: Dugan, Regina E. (Rockville, MD)
McVeigh, Thomas Emory (Shenandoah Junction, WV)
Kotowicz, Jacek (Fairfax, VA)
20070181733 Wire/fiber ring and method for manufacturing the same
Applicants: Hanusiak, William (Bridgeport, WV)
Hanusiak, Lisa (Bridgeport, WV)
Spear, Steven (Bridgeport, WV)
Rowe, Charles (Wheeling, WV)
Parnell, Jeffery (Chelmsford, MA)
Assignee: SEQUA CORPORATION (Hackensack, NJ)
20070181617 Container insulator capable of being rolled-up
Applicant: Ramsey, Chevy T. (Idamay, WV)
New patents for West Virginia inventors
August 3, 2007
No U.S. patents were issued this week to West Virginia owners
The following U.S. patent applications were published this week for West Virginia applicants and/or assignees:
20070176155 Flame-Retardant Magnesium Hydroxide Compositions and Associated Methods of Manufacture and Use
Inventors: Granada, Jr., Lemuel O. (Manistee, MI)
Innes, James (Mount Vernon, WA)
Smith, David Morgan (Kearneysville, WV)
Wajer, Mark (Nottingham, MD)
Assignee: Martin Marietta Materials, Inc.
20070175738 Conveyor belt
Inventors: Neely, D. Joseph (Gerrardstown, WV)
Neely, Aaron Brantly (Gerrardstown, WV)
Assignee: Ashworth Bros. Inc. (Winchester, VA)
20070175566 Method of increasing the load capacity of a radial tire
Inventors: Frank, Maurice Jacob (Akron, OH)
Wilton, Steven Michael (Van Buren, AR)
Wilkinson, Lance Reed (Mogadore, OH)
McMahon, Brian Ernest (Akron, OH)
Sticklen, Nicholas Lynn (Winfield, WV)
Assignee: The Goodyear Tire & Rubber Company (Akron, OH)
20070174957 Body-contoured tub
Inventor: Greeno, Scott (Shepherdstown, WV)
Independent Inventors Conference
August 3, 2007
The 12th annual Independent Inventors Conference will be held September 13-15 in Raleigh, North Carolina. It is sponsored by the United States Patent Trademark Office (USPTO), North Carolina State University, and the National Inventors Hall of Fame® Foundation. Registration fee is $100 ($90 for seniors).
New patents for West Virginia inventors
July 30, 2007
The following U.S. patents were issued last week to West Virginia inventors and/or assignees:
7,247,368 Stealth foam and production method
Inventor: Rogers, Darren Kenneth (Wheeling, WV)
Assignee: Touchstone Research Laboratory, Ltd. (Triadelphia, WV)
7,246,719 Adjustable storage rack for a vending machine
Inventors: Mason, II, Paul L. (Inwood, WV)
Sprankle; David A. (Hagerstown, MD)
Assignee: Automated Merchandising Systems Inc. (Kearneysville, WV)
7,246,492 Progressive solar based power generating system
Inventors: Hendrix, John Perry (Bluefield, WV)
Hendrix, Mei Yun (Bluefield, WV)
Hendrix, Joshua Fong (Bluefield, WV)
7,246,423 System and method for in-line production of insulated glass units for custom windows
Inventors: Holden, Randall (Salem, WV)
Stewart, Brian (Pennsboro, WV)
Assignee: Simonton Building Products, Inc. (Parkersburg, WV)
The following U.S. patent applications were published last week for West Virginia applicants and/or assignees:
20070173618 Miscible polycarbonate polyester blends
Inventors: Shaikh, Abbas Alli G. (Bangalore, IN)
Kumar Pal, Subodh (Bangalore, IN)
Ravi, Gomatam Raghavan (Bangalore, IN)
Ramaraju, Deepak (Bangalore, IN)
Rajeswaran, Ramesh (Bangalore, IN)
Kannan, Ganesh (Evansville, IN)
Shi; Xiaodong, (Morgantown, WV)
Zhang, Huiping (Evansville, IN)
Chambers, Charles (New Harmony, IN)
20070172802 Portable early learning sensory toy set for babies and infants
Inventors: Adams, Stephanie (Harpers Ferry, WV)
MacMillan, Stephanie (Leesburg, VA)
20070172669 Heat Shrinkable Film with (Meth)acrylate Resin Curable Adhesive
Inventors: Amon, Moris (Beachwood, OH)
Blackwell, Christopher J. (Twinsburg, OH)
Ghiam, Farid F. (Beachwood, OH)
Harman, Patricia Ann (Morgantown, WV)
Kaul, Payal (San Jose, CA)
Rajan, Sunder R. (Mentor, OH)
Williams, Richard K. JR. (Gibsonia, PA)
20070172637 Decorative sheets having enhanced adhesion and penetration resistant laminates prepared therefrom
Inventors: Hayes, Richard A. (Beaumont, TX)
Smith, Rebecca L. (Vienna, WV)
20070172636 Decorative sheets having enhanced adhesion and laminates prepared therefrom
Inventors: Smith, Rebecca L. (Vienna, WV)
Hayes, Richard A. (Beaumont, TX)
20070172593 Polymeric coating formulation and steel substrate composites
Inventors: Sinsel, John A. (Weirton, WV)
Loen, Mark V. (Steubenville, OH)
Bailey, Michael S. (Landenberg, PA)
20070170928 Apparatus and method for measuring physiological characteristics of an intact trachea in vitro
Inventors: Fedan, Jeffrey S. (Morgantown,, WV)
Jing, Yi (Morgantown, WV)
Scott, Michael Van (Greenville, NC)
Assignee: The Government of the U.S.A. as represented by the Secretary of the Dept. of Health and Human Svcs.
20070170278 Ultrasonic fuel injector
Inventors: McNichols, Patrick Sean (Hortonville, WI)
Ehlert, Thomas David (Neenah, WI)
Zuehlke, Timothy R. (Oregon, OH)
Meyer, Andrew Enis (Harpers Ferry, WV)
Bromfield, George (Salt Lake City, UT)
Assignee: Kimberly-Clark Worldwide, Inc. (Neenah, WI)
20070170277 Ultrasonic liquid delivery device
Inventors: Ehlert, Thomas David (Neenah, WI)
McNichols, Patrick Sean (Hortonville, WI)
Zuehlke, Timothy R. (Oregon, OH)
Meyer, Andrew Enis (Harpers Ferry, WV)
Bromfield, George (Salt Lake City, UT)
Assignee: Kimberly-Clark Worldwide, Inc. (Neenah, WI)
20070170276 Ultrasonic fuel injector
Inventors: McNichols, Patrick Sean (Hortonville, WI)
Ehlert, Thomas David (Neenah, WI)
Zuehlke, Timothy R. (Oregon, OH)
Meyer, Andrew Enis (Harpers Ferry, WV)
Bromfield, George (Salt Lake City, UT)
Assignee: Kimberly-Clark Worldwide, Inc. (Neenah,WI)
20070170275 Ultrasonic fuel injector
Inventors: Ehlert, Thomas David (Neenah, WI)
McNichols, Patrick Sean (Hortonville, WI)
Zuehlke, Timothy R. (Oregon, OH)
Meyer, Andrew Enis (Harpers Ferry, WV)
Bromfield, George (Salt Lake City, UT)
Assignee: Kimberly-Clark Worldwide, Inc. (Neenah, WI)
20070170041 Conveyor Belt Cleaning System
Inventors: Hall, John (Winfield, WV)
Proposed patent rules changes
July 27, 2007
The U.S. Patent & Trademark Office (USPTO) has announced that its proposed patent prosecution rules changes have been reviewed by the Office of Management and Budget (OMB), and the final rules are expected to be published later this summer. The proposed changes affect continuation applications, requests for continued examination, multiple patent applications having the same filing date, and the number of claims in applications.
The proposed changes would basically make it more difficult to file additional or follow-on patent applications for variations of an invention, more difficult to extend the examination of an application, and more difficult to include numerous claims in applications. The USPTO believes that these changes would relieve some of its backlog of patent work, but the American Intellectual Property Law Association, the American Bar Association Section of Intellectual Property Law, and other groups oppose the changes. See here, here, and here.
Provisional patent application pitfalls
July 24, 2007
Here’s a good article on provisional patent applications. As the author points out, there is no such thing as a provisional patent. A provisional patent application ("provisional") must be followed up within a year by a non-provisional patent application ("non-provisional") that claims the benefit of the filing date of the provisional, otherwise the provisional simply goes abandoned.
A provisional must contain a written description that would enable any person skilled in the relevant technology to make and use the invention that is subsequently claimed in the non-provisional. Ideally, the provisional should contain the same level of detail as the non-provisional except that claims are not needed in the provisional. In reality, however, many "bare bones" provisionals are filed — some for good reasons and some for not-so-good reasons.
New patents for West Virginia inventors
July 23, 2007
The following U.S. patents were issued last week to West Virginia inventors and/or assignees:
7,246,174 Method and system for accessing and managing virtual machines
Inventors: Sciandra, John R. (Annapolis, MD)
Cottrell, Brian (Orma, WV)
Sabean, John (Severn, MD)
Assignee: Nacon Consulting, LLC (Annapolis, MD)
7,245,723 Chaotic communication system and method using modulation of nonreactive circuit elements
Inventors: Hinton, Sr., Daniel E (Arnold, MD)
Dew, Nelson R (Ghent, WV)
Longtin, Laurance P (Vienna, VA)
Gardner, Charles P (Dumfries, VA)
Martin, Shannon W (Richmond, VA)
Edwards, Michael C (Clifton, VA)
Berkley, Antwong L (Arlington, VA)
Bowser, Steven M (Vienna, VA)
Assignee: Science Applications International Corporation (San Diego, CA)
7,244,814 Variant Tat proteins and methods for use thereof
Inventors: Mathews, Michael B. (Monclair, NJ)
Pe’ery, Tsafi (Monclair, NJ)
Reza, Syed (Cross Lanes, WV)
Assignee: University of Medicine & Dentistry of New Jersey (New Brunswick, NJ)
7,244,779 Oxygen-scavenging resin compositions having low haze
Inventors: Tung, Deborah (Tallmadge, OH)
Sisson, Edwin A. (Medina, OH)
Leckonby, Roy A. (Granville, IL)
Assignee: M & G USA Corporation (Apple Grove, WV)
7,243,804 Method and apparatus for supporting tools in a door jamb
Inventor: Miller; Rodney B. (Middlebourne, WV)
The following U.S. patent applications were published last week for West Virginia applicants and/or assignees:
20070167618 Manufacture of cellulose esters: recycle of caustic and/or acid from pre-treatment of pulp
Applicants: Wang, Linfu (Blacksburg, VA)
Stogner, Henry P. (Bluefield, WV)
Fallon, Denis G. (Blacksburg, WV)
Kizer, Lawton E. (Blacksburg, VA)
Toney, Charles E. (Newport, VA)
Batson, Billy C. (Pearisburg, VA)
Assignee: Celanese Acetate, LLC
20070167578 Catalyst composition comprising shuttling agent for ethylene multi-block copolymer formation
Applicants: Arriola, Daniel J. (Midland, MI)
Carnahan, Edmund M. (Fresno, TX)
Cheung, Yunwa Wilson (Lake Jackson, TX)
Devore, David D. (Midland, MI)
Graf, David D. (Midland, MI)
Hustad, Phillip D. (Manvel, TX)
Kuhlman, Roger L. (Charlestown, WV)
Shan, Colin Li Pi (Pearland, TX)
Poon, Benjamin C. (Lake Jackson, TX)
Roof,Gordon R. (Midland, MI)
Stevans, James C. (Richmond, TX)
Stirn, Pamela J. (Midland, MI)
Wenzel, Timothy T. (Charleston, WV)
20070167529 Antimicrobial compositions for treating fabrics and surfaces
Applicants: Walton, Rebecca A. (Newport Beach, CA)
Chapman, Bill H. (Martinsburg, WV)
20070167336 Water-miscible metal working fluids with reduced aerosol inhalation toxicity
Applicants: Combs, George G. (McMurray, PA)
Browne, Edward P. (South Charleston, WV)
Assignee: Bayer MaterialScience LLC (Pittsburgh, PA)
20070167335 Water-miscible metal working fluids with reduced aerosol inhalation toxicity
Applicants: Combs, George G. (McMurray, PA)
Browne, Edward P. (South Charleston, WV)
Assignee: Bayer MaterialScience LLC (Pittsburgh, PA)
20070167315 Catalyst composition comprising shuttling agent for ethylene copolymer formation
Applicants: Arriola, Daniel J. (Midland, MI)
Devore, David D. (Midland, MI)
Carnahan, Edmund M. (Fresno, TX)
Hustad, Phillip D. (Manvel, TX)
Kuhlman, Roger L. (Charleston, WV)
Wenzel, Timothy T. (Charleston, WV)
20070166365 Fentanyl suspension-based silicone adhesive formulations and devices for transdermal delivery of fentanyl
Applicants: Miller, Kenneth J. (St. Albans, VT)
Govil, Sharad K. (Essex, VT)
Bhatia, Kuljit Singh (Scottsdale, AZ)
Assignee: Mylan Pharmaceuticals, Inc. (Morgantown, WV)
20070165914 Systems and methods relating to AFIS recognition, extraction, and 3-D analysis strategies
Applicants: Werthiem, Kasey (Bridgeport, WV)
Walajtys, Jeff (Schenectady, NY)
Assignee: LumenIQ, Inc.
