Tag Archives: Patent Litigation

University of Pittsburgh Files Notice of Appeal to the Federal Circuit

pittThe University of Pittsburgh has been in a patent litigation suit with Varian Medical Systems, Inc. since the University of Pittsburgh filed a patent infringement suit in the U.S. District Court for the Western District of Pennsylvania on April 13, 2007. The University of Pittsburgh owns two patents pertaining to image-guided radiation therapy technology: U.S. Patent No. 5,727,554 entitled “Apparatus responsive to movement of a patient during treatment/diagnosis” and U.S. Patent No. 5,784,431 entitled “Apparatus for matching X-ray images with reference images.”

On September 1, 2009, the Court entered a judgment in favor of the Defendant.

The University of Pittsburgh filed a Notice of Appeal to the United States Court of Appeals for the Federal Circuit on October 28, 2009.

– Katie Cooper

API Technologies Settles Data Network Patent Infringement Case Against Facebook et al

data systemAPI Technologies, LLC owns U.S. Patent No. 6,859,699 entitled “Network-Based Method and System for Distributing Data.” On May 12, 2009, API Technologies filed suit in the United States District Court for the Eastern District of Texas alleging patent infringement against Facebook, Inc.; Amazon.com, Inc.; Amazon Web Services LLC; AOL LLC; Mapquest, Inc.; Bebo, Inc.; Truveo, Inc.; Best Buy Co. Inc.; CBS Corporation; CBS Interactive Inc.; CBS Interactive Media Inc.; CNET Investments, Inc.; CNET Networks, 2 Inc.; Last.FM Limited; The Dun & Bradstreet Corporation; Hoover’s, Inc.; Google Inc.; Android, Inc.; Thomson Reuters Corporation; Thomson Reuters PLC; Thomson Reuters U.S. Inc.; Thomson Reuters U.S.A. Inc.; Reuters America, LLC; and Yahoo! Inc.

API claimed that defendants infringed the ‘699 Patent “by, among other things, making, using, selling and/or offering for sale systems and/or methods for providing data using a data transmission network covered by one or more claims of the ‘699 Patent.”

API provided the example that:

Facebook provides users with systems or methods, including Application Programming Interfaces, for providing user interfaces for soliciting selections of desired data. Facebook then uses the data transmission network to receive an input signal representing a selection of desired data, and retrieves and transmits that data. Facebook then generates license codes with embedded information that is related to a valid product code associated with a specific device or system. Facebook requires the use of such license codes to access the desired data.

Several defendants filed answers to the complaint. On October 13, 2009, an order granted a motion to dismiss the case subject to the terms of a confidential settlement agreement dated September 22, 2009.

According to BusinessWeek, API Technologies, LLC provides software solutions to the gaming, law enforcement and security industries.

– Katie Cooper

Kennametal Files Patent Infringement Suit

patKennametal Inc. filed a patent infringement suit against Sandvik, Inc., Seco Tools Inc., and Walter USA, Inc. on June 29, 2009 in the United States District Court for the Western District of Pennsylvania.

The complaint alleges that defendants infringed U.S. Patent No. 5,722,803 (“Cutting Tool and Method of Making the Cutting Tool”) and U.S. Patent No. 7,530,772 B2 (“Drill, Such as a Twist Drill”) through their manufacture, use, sale, offer for sale, and/or importation of coated cutting tools and drills.  The defendants’ Answers are due September 8, 2009. 

Kennametal is a company located just outside of Pittsburgh, Pennsylvania in Latrobe. According to Kennametal’s website, Kennametal is a leading global supplier of tooling, engineered components, and advanced materials that are consumed in production processes. Kennametal applies powder metallurgy, materials science and mechanical engineering technologies to cemented tungsten carbides, high-speed steels, ceramics, industrial diamonds, and other material compositions to produce products that have resistance to heat, impact, corrosion, pressure and wear. Kennametal’s annual sales are approximately $2 billion, with 12,000 employees worldwide and operations in over 60 countries.

– Katie Cooper

University of Pittsburgh Prevails in Federal Circuit Patent Case

The University of Pittsburgh was recently involved in an inventorship dispute involving U.S. Patent No. 6,777,231 for “Adipose-Derived Stem Cells and Lattices” that issued August 17, 2004.  The United States Court of Appeals for the Federal Circuit decided on July 23, 2009 that two University of Pittsburgh researchers completed conception of the claimed invention before the appealing researchers contributed their efforts, and therefore are not joint inventors of the claimed invention.

 Drs. Katz and Llull are researchers at the University of Pittsburgh studying adipose (fat) tissue in humans.  In March 2000, the University of Pittsburgh filed an international patent application listing seven named inventors, which issued as U.S. Patent No. 6,777,231.  In October 2004, the University of Pittsburgh filed this action seeking removal of the other five inventors, including Marc H. Hedrick, a REBAR researcher. 

 The district court held a hearing to construe the patent claims.  The term “adipose-derived” was among the constructions disputed.  The REBAR researchers argued that the construction should be limited, while Katz and Llull argued for a plain meaning.  The district court determined that the specification supported the plain meaning.  The district court then found that Katz and Llull had conceived the claimed invention as construed prior to Hedrick’s arrival at the University of Pittsburgh.  The REBAR researchers appealed the construction of “adipose-derived” and the conclusion that they were not joint inventors of the claimed invention.  

  • The inventors named in an issued patent are presumed to be correct.  A party alleging misjoinder of inventors must prove its case by clear and convincing evidence.  The movant must show that the persons to be removed did not contribute to the invention of any of the allowed claims. 


  • Conception is the formation in the mind of an inventor of a definite and permanent idea of the complete and operative invention.  The test for conception is whether the inventor had an idea that was definite and permanent enough that one skilled in the art could understand the invention.  For conception to be complete, an inventor does not have to know that his invention will work.  He must only show that he had the complete mental picture and could describe it with particularity.  (Discovering that the invention actually works is part of its reduction to practice.)  In a joint invention, each inventor must contribute to the joint arrival at a definite and permanent idea of the invention. 

See University of Pittsburgh v. Hedrick et al., No. 2008-1468 (Fed. Cir. July 23, 2009).

 The district court held, and the Federal Circuit affirmed, that clear and convincing evidence existed to show that Katz and Llull conceived of each claim of the invention before the arrival of Hedrick.

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.