Patent Legislation

August 2, 2011

Gian Biologics v. Biomet, Patent Infringement Lawsuit Over Centrifuge Tube Assembly, Transferred to the Northern District of Indiana

South Bend, IN – A patent infringement lawsuit that was originally filed in the District Court of Delaware was transferred to the Northern District of Indiana. Patent lawyers for Gian Biologics LLC of Delaware filed a patent infringement suit in the District Court of Delaware alleging Biomet, Inc. of Warsaw, Indiana infringed patent no.6,835,353 CENTRIFUGE TUBE ASSEMBLY, which has been issued by the US Patent Office.

The patent at issue is used for holding blood and separating blood product in to discrete components. The complaint alleges that Biomet makes, uses, sells, offers for sale and/or imports infringing products, namely several Biomet product lines including Plasmax Concentrator and Gravitational Platelet Separation Systems. The complaint alleges one count of patent infringement and seeks injunction, damages, attorney’s fees and costs. Gian’s patent attorneys filed the complaint in October 2010.

The case has now been transferred to the Northern District of Indiana by stipulation of the parties. It appears that initially Gian resisted transfer, and the Delaware District Court allowed limited discovery on the issue of transfer. According to the Delaware IP Law Blog, it was revealed that Gian had only been incorporated in Delaware for four months before the lawsuit was filed. The Delaware District Court had then stayed further discovery until the venue issue was resolved and noted it had doubts about whether the case should remain its court. In the parties’ stipulation agreeing to transfer, it was noted that “In order to conserve resources – and in light of the fact that the parties are engaged in a parallel patent infringement case in Germany that is scheduled for a bench trial on November 8, 2011 – Gian has concluded that the most efficient resolution would best be accomplished through a stipulated transfer at this time.”

Practice Tip: 28 U.S.C. 1404 allows transfer of a case from one district court to another by order of the court or by stipulation and consent of the parties.

June 24, 2011

Patent Reform Passes U.S. House of Representatives

By Overhauser Law Offices, LLC

Washington, D.C. – The United States House of Representatives has passed H.R. 1249, the Leahy-Smith American Invents Act, which is said to be the most dramatic change to patent law since the 1950s. The Senate’s patent reform bill passed in March, and Indiana Intellectual Property Law News blogged about the bill here. Funding of the US Patent and Trademark Office was a continuous issue in the debate, and this issue will have to be addressed by the Senate before the bill can go to President Obama. The House and Senate will now conference to attempt to consolidate their bills, and additional votes may be needed before the reform goes to President Obama. The White House released a statement congratulating the House on the bill.

The vote was 304 in favor and 117 opposed. Indiana’s Representatives Buschon, Carson, Donnelly, Pence, Rokita, Stutzman, and Young voted in favor of the bill while Representatives Burton and Visclosky voted against the bill. A webcast of the hearing on this bill is available here.

Practice Tip: While many have praised this legislation, some patent attorneys expect that a great deal of litigation will be necessary in the coming years to flush out changes in the patent laws.

March 10, 2011

U.S. Senate Passes Patent Reform Bill

By Overhauser Law Offices, LLC

Washington, D.C. – Yesterday the United States Senate passed a landmark patent reform bill that will adopt a first-inventor-to-file system. Senate Bill 23 will also create an independent funding system and create a post-grant review process. The Senate has been looking at patent reform since 2005. Indiana Senators Dan Coats and Richard Lugar both voted in favor of the bill, which passed 95-5.

The bill now goes to the U.S. House of Representatives, where it will first be heard by the Judiciary Committee. The chairman of the judiciary committee, Representative Lamar Smith, has already made favorable comments about the bill. In a press release, he stated “Adopting a first-inventor-to-file standard creates certainty about patent ownership and makes it easier for American innovators to apply for patents around the world. The post-grant review process helps to reduce frivolous lawsuits filed by holders of weak or overbroad patents. And allowing for the third party submission of prior art helps prevent bad patents from being granted in the first place. These are just a few of the many provisions for which there is widespread support.”

February 4, 2011

Senate Judiciary Committee Unanimously Approves Patent Reform Bill

By Overhauser Law Offices, LLC

In an action that would affect patent applicants in Indiana and other states, the Senate Judiciary Committee on February 3, 2011, approved an Amendment to S. 23, patent reform legislation to implement a first-inventor-to-file system, revise provisions on damages awards, create a new post-grant review system, and grant the PTO fee setting authority. The vote was 15-0.

The amendments approved were: (1) to delete provisions addressing willful infringement; (2) to delete provisions that would have repealed the requirement that Federal Circuit judges live within 50 miles of the District of Columbia; and (3) to add a provision addressed stating that the Federal Circuit’s exclusive appellate jurisdiction as including compulsory counterclaims arising under patent law.

Note: Some other changes have been made to the legislation to refine and clarify language or to make changes that conform to other provisions. For example: