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Monthly Archives: December 2009

False Marking—Federal Circuit Case Law

Posted by Bruce Wu on Posted in General

The Federal Circuit once capped the penalty for violating the marking at $500 for each action of false marking (no matter how many articles were marked). However, the good old days are now gone. 

As enunciated by the Federal Circuit in The Forest Group, Inc. v. Bon Tool Co., __ F.3d __ (Fed. Cir. 2009)(Moore, J.) on December 28, 2009, the court interpreted the 1952 amendment of the marking statute to hold that each violation of the marking statute under 35 U.S.C. § 292(a) occurs for each article sold: “Whoever marks … any unpatented article [with] the word ‘patent’… for the purpose of deceiving the public . . . shall be fined not more than $500 for every such offense.”

Now, $500/article…that can be a lot of money!

New Nano Reporting Rules Under Section 8 of the Toxic Substances Control Act

Posted by Bruce Wu on Posted in EPA; Nanotech Regulation

EPA is poised next year to propose a new rule requiring manufacturers of nanomaterials to submit data on production, exposure and available safety information, as the agency moves towards stricter rules in the wake of lackluster results from a voluntary Bush-era initiative.

The agency is developing a rule under Section 8 of the Toxic Substances Control Act to “establish reporting requirements for certain nanoscale materials,” according to the EPA’s recently published unified agenda. Manufacturers would be required to provide EPA with information on “production volume, methods of manufacture and processing, exposure and release information, and available health and safety data” under the rule.

The information “will provide EPA with an opportunity to evaluate the information and consider appropriate action under TSCA to reduce any risk to human health or the environment,” the agenda says. A notice of proposed rulemaking is slated for June 2010.

USPTO Announces Expedited Examination of Green Technology Patent Applications

Posted by Bruce Wu on Posted in Patent

On December 7, 2009, the USPTO announced that it will implement a green technology pilot program (Pilot Program) to expedite the examination of patent applications directed to certain green technology inventions. While eligibility is currently limited to applications filed before December 8, 2009, the USPTO has hinted toward expanding the program if successful. We will continue to monitor this program as it progresses into 2010.

Nanotube Electronics

Posted by Bruce Wu on Posted in Electronic Devices

Carbon nanotubes are a promising material for making display control circuits because they’re more efficient than silicon and can be arrayed on flexible surfaces. Until recently, though, making nanotubes into transistors has been a painstaking process. As The Technology Review recently pointed out, researchers at the University of Southern California have now demonstrated large, functional arrays of transistors made using simple methods from batches of carbon nanotubes that are relatively impure. 

SOL(e)D!—Kodak to Sell OLED Business to LG

Posted by Barry S. Wilson on Posted in Electronic Devices

In 1987, Eastman Kodak researchers Dr. Ching W. Tang and Steven VanSlyke opened the gates to a flurry of innovations related to organic light emitting diodes (OLEDs). More than 20 years later, Kodak announced today that it will sell substantially all the assets associated with its OLED business to a group of LG companies. 

With Tang and VanSlyke’s novel two-layer structure (with separate hole and electron transporting layers) as a starting point, researchers have steadily continued to make patentable advancements in this relatively new field. From new device architectures incopororating nanoscaled charge carrier transport promoters, to new and stable organic semiconductors capable of emitting and absorbing at various wavelengths, OLED technology has been incorporated into solid-state lighting products and displays applications such as screens for mobile phones, digital cameras, and televisions. The technology has also spurred innovations related to flexible electronics, flexible displays, and even contributed to knowledge for photovoltaics applications. 

In addition to selling their OLED business, Kodak has entered into a technology cross-license agreement with LG, bringing an end to patent litigation related to their imaging technologies, and a push to end the U.S. International Trade Commission’s investigations following complaints by both companies.

Connecting Nanotechnology, the Economy, and IP Law – Part 2

Posted by Barry S. Wilson on Posted in General

As government stimulus money makes its rounds to the R&D sector, nanotechnology companies are slowly getting their fair share of much needed research grants (for example: see here, here and here). While the influx of fresh cash-on-hand could very well be used to hire from the pool of surplus researchers left in the wake of layoffs, companies may need to take appropriate steps to further protect their IP interests. Companies must therefore ensure that tools such as non-compete and non-disclosure agreements are enforced in order to limit the chance that a new employee (or former-employee’s) unintentionally, but inappropriately divulges trade-secrets. 

In instances where new research or joint development opportunities arise, companies should also consider additional measures when the possibility exists that employees share knowledge with collaborators, or unknowingly divulge trade secrets to the new employee about similar technologies acquired while with their former employer.  

Recently, Foley & Lardner attorney Steven Rutt, PhD, gave a talk at the inaugural conference of  the American Society for Nanomedicine in Potomac, Md. As part of his talk, Dr. Rutt presented strategies for companies considering new joint development ventures. Some of these strategies include:

  • Avoid ambiguous "boundaries" in the scope of work
  • Inventory trade secrets ahead of time; consider provisional filings
  • Limit the technical field with caution, as some limitations may not be amended later
  • Limit the personnel involved; consider a single person as a controller but be cautious when one person works on multiple projects
  • Limit importation of new technology
  • Limit duration of joint development
  • Define technology to be developed
  • Define exit plans including ownership

Connecting Nanotechnology, the Economy, and IP Law – Part 1

Posted by Barry S. Wilson on Posted in General

During a down economy, many nanotechnology companies rely heavily on government grants as the influx of funds from private investors decreseases.  As a result, these companies become particularly sensitive to IP disputes since many grants place limits on the use of funds to subsidize legal costs.  In some cases, nanotechnology companies may risk bankruptcy if issues dealling with  trade secret misappropriation, determintation of joint or sole inventorship, and breach of joint development agreements lead to litigation battles.  Thus, stemming from the highly collaborative nature between many nanotech startups, universities, private laboratories, and their respective researchers, these entities must takes steps to ensure that their IP interests are protected throughout the R&D process, especially at the front-end. 

In a recent article published in Nanotechnology Law and Business, Foley & Lardner attorneys Reed Christansen, Stephen Maebius, Leon Radomsky, and Steve Rutt, PhD provide examples of nanotechnology companies seeking bankruptcy protection as a result of intellectual property litigation.  The authors also summarize steps that nanotech companies can take to protect themselves and to forestall litigation.