Tag Archives: Pittsburgh IP Law

Patent Pilot Program in Certain U.S. District Courts

On December 17, 2010, Congress approved H.R. 628, a bill for a decade-long pilot program in which certain U.S. district courts will encourage enhancement of expertise in patent cases among district judges. During the Pittsburgh Intellectual Property Law Association Federal Judges Appreciation Luncheon & CLE Program’s Federal Judges Roundtable Discussion on March 16, 2011, Chief Judge Lancaster stated that he put in a request for the Western District of Pennsylvania to be one of at least six district courts that will be selected for the program.

The pilot program will allow district judges to request to hear patent cases. Those district judges who request to hear patent cases are then designated by the chief judge to hear them. In a participating district, a patent case will be able to be removed from a non-designated judge’s case load and then randomly re-assigned to a district judge designated to hear patent cases. The program is intended to “create a cadre of judges who gain advanced knowledge of patent and plant variety protection through more intensified experience in handling the cases, along with special education and career development opportunities” co-sponsor Hank Johnson, Jr. (D-GA) remarked.

The courts that are eligible to participate in the program are either: (1) the 15 district courts with the largest number of patent and plant variety protection cases filed in calendar year 2010; or (2) district courts that have adopted or certified the intention to adopt local rules for patent and plant variety protection cases. The Director of the Administrative Office will select at least: (1) three district courts with at least ten authorized district judgeships in which at least three judges have made a request to hear patent cases; and (2) three district courts with less than ten authorized district judgeships in which at least two judges have made a request to hear patent cases. During the ten year pilot program, periodic reports to the House and Senate will be made including comparison data between designated and non-designated judges on issues such as their reversal rates by the CAFC.

- Katie Cooper

Patent Infringement Suit in the District Court for the Western District of Pennsylvania

Ames True Temper, Inc. filed suit in the Western District of Pennsylvania against Southern Sales & Marketing Group, Inc. claiming patent infringement. Ames’ principal place of business is located in Camp Hill, Pennsylvania.

The complaint alleges that Southern Sales is infringing U.S. Patent No. 6,360,484, entitled “Planter and method of manufacturing same”. The abstract for the invention reads as follows:

A decorative planter includes a base having upper and lower portions and a flange disposed about the outer periphery of the upper portion. The planter also includes a collar dimensioned to encompass the upper portion of the base. The collar has a mechanical interface which engages the flange such that the collar and the flange form a decorative rim about the upper portion of the planter. The present disclosure also relates to a method of forming a decorative planter which includes the steps of: a) forming a base having upper and lower portions and a flange disposed about the outer periphery of the upper portion; b) forming a collar dimensioned to encompass the upper portion of the base, the collar having a mechanical interface dimensioned to mechanically engage the flange; and c) engaging the collar and the flange to form a decorative rim about the upper portion of the base.

An answer has not yet been filed.

Bayer Patent Suit

On Wednesday, July 1, 2009, counsel for Bayer Schering Pharma AG, Bayer Healthcare Pharmaceuticals, Inc. and Schering Corporation filed a complaint in the United States District Court for the District of Delaware against Teva Pharmaceutical Industries, Ltd. and Teva Pharmaceuticals USA, Inc.  In the complaint Bayer claims that Teva has infringed their Patent No. 6,362,178 for “2-Phenyl Substituted Imidazotriazinones As Phosphodiesterase Inhibitors” also known as LEVITRA, a drug approved by the U.S. Food and Drug Administration for the treatment of erectile dysfunction.  Schering Corporation currently has exclusive rights through a license to market and sell LEVITRA across the United States. 

 According to the complaint, Teva notified Bayer of their knowledge of Patent ‘178 through a letter dated May 19, 2009, and that they did not believe it to be a valid and enforceable patent though a reason was not provided.  The letter also notified Bayer that Teva filed an Abbreviated New Drug Application with the U.S. Food and Drug Administration for Vardenafil Hydrochloride Tablets, a generic version of LEVITRA, which uses the same active ingredient, vardenafil HCl.

 Bayer claims that Teva had prior knowledge of Patent ‘178 before filing for approval from the U.S. Food and Drug Administration to manufacture and sell the generic version and because vardenafil HCl is contained in the generic version, this action infringes Patent ‘178.  Bayer is seeking a judgment ordering that the effective date of any FDA approval for Teva to make, use, offer for sale, sell, market, distribute, or import Teva’s product be no earlier than the expiration date of Patent ‘178; a judgment declaring that making, using, selling, offering for sale, marketing, distributing, or importing Teva’s product prior to the expiration date of Patent ‘178 will infringe Patent ‘178; and an award of attorneys’ fees and Plaintiffs’ costs and expenses in this action.

 Counsel for Teva has not yet filed a response.

Change to rule for Amending PCT claims

The United States Patent & Trademark Office Rule for amending claims in a Patent Cooperation Treaty (“PCT”) Application changed effective July 1, 2009. 37 CFR 1.485 is the rule pertaining to amending PCT claims. The rule change is effective for any amendments made to claims filed after July 1, 2009. Prior to July 1, 2009 Applicants were only required to submit replacement pages for the pages that contained changes. After July 1, 2009 Applicants are required to submit a complete set of claims with any amendment to the claims.