Work-Product Immunity for Patent Holding Co.

After an in camera review, Judge Ward holds that documents a patent-holding company shared with potential investors, under a non-disclosure agreement, to secure funding for litigating and licensing an acquired patent were protected under work-product immunity.  The court explaining: “Some documents reveal Inpro’s overall litigation and licensing strategy and others provide information—such as balance sheets including licensing and litigation revenues—that show the implementation of that strategy.  All of the documents were prepared, however, with the intention of coordinating potential investors to aid in future possible litigation.  The Court holds that these documents are protected by the work product protection.”   Mondis Technology, Ltd. v. LG Elecs., Inc., Nos. 2:07-CV-565-TJW-CE, 2:08-CV-478-TJW, 2011 WL 1714304, *2-*3 (E.D. Tex. May 4, 2011).  For additional discussion and case authority on this topic see Annotated Patent Digest § 42:41.50 Patentee and Financiers of the Litigation; and § 42:161 Prepared in Anticipation of Litigation.

Refusing to Read into Claim a Requirement of FDA Approval

Court rejects contention that a claim to drug composition that was useful to treat an aliment had to meet FDA standards for approval.  The court concluded that because “FDA approval is irrelevant to proceedings before the Patent and Trademark Office” it would not read into the claims the suggested requirement of FDA approval to find that the treatment was useful.  Allergan, Inc. v. Sandoz Inc., 2011 WL 1599049, *8-*10 (E.D. Tex. Apr. 27, 2011).  For additional discussion and case authority on this topic see Annotated Patent Digest § 4:192 “Treat” and § 1:8 Patent Rights do Not Trump State or Federal Regulatory Prohibitions.

False Marking Relator has a Right to a Jury Trial

Ruling that because a qui tam action under § 292(b) seeks a legal remedy, in view of the monetary penalty, a Seventh Amendment right to a jury trial applies.  U.S. ex rel. Hallstrom v. Aqua Flora, Inc., No. CIV S-10-1459 KJM-EFB, 2011 WL 1668984, *2-*3 (E.D. Cal. May 3, 2011). For additional discussion and case authority on right to jury trials see Annotated Patent Digest § 39:135 Supreme Court Cases Addressing Right to Jury Trial.

Patent Deemed to “Issue” as of 12:01 am EDT In an issue of first impression, a district court has held that a patent “issues” as of 12:01 am on the day of issuance even if the Patent Office website does not list the patent as issuing until later that day. Encore Wire Corp. v. Southwire Co., No. 3:10-cv-86-BMGL, 2011 WL 833220, *4 (N.D. Ga. Mar. 4, 2011); Cerro Wire Inc. v. Southwire Co., No. 3:10-CV-87-BMGL, 2011 WL 833224 (N.D. Ga. Mar. 4, 2011) (same holding). In the two Southwire cases, the district court faced a first-to-file dispute where the declaratory judgment plaintiffs filed their actions at 12:02 am and 12:07 am EDT on the day that the patent issued, and the patentee filed its own actions at 12:10 am CDT (i.e., 1:10 am EDT). In an effort to defeat the first-filed status of the declaratory judgment actions, the patentee argued that because the PTO did not post the patent on its website of issued patents until about 12:30 am EDT, the declaratory judgment actions had been filed before the patent had issued, and therefore they lacked subject matter jurisdiction. Concluding that the statutes and regulations were silent on the specific issue of what precise time a patent should be deemed to have “issued,” the court accepted the declaratory judgment plaintiffs’ policy arguments that a rule treating all patents as having issued at 12:01 am EDT on the date of issuance best serves the patent law. Accordingly, the court found the declaratory judgment actions to be the first-filed action. Although not referring to it, the district court’s analysis seems supportable by the Supreme Court’s rationale in Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926). There the Court held that disclosures in a U.S. patent become prior art as of the filing date of the application, rather than its issued date, so that the applicant cannot profit from the delays of the PTO. In an instruction that seems applicable to determining the “issue” time of a patent, the Court instructed in Milburn that “the delays of the patent office ought not to cut down the effect of what has been done.” Id. at 401. Accord Hazeltine Research, Inc. v. Brenner, 382 U.S. 252, 255-56 (1965) (following Milburn).