!020494 New stories about patent infringement lawsuits What follows are a random sample of patent news stories, including the first one dealing with a software patent that potentially is much more messy than the Compton patent. ------------------------------------------------------------------------------ #1994, Jan Andersen Consulting (Chicago, IL) now has exclusive rights to its MAC-PAC Expert Configurator software module, thanks to a recent patent awarded by the US Patent and Trademark Office. The Expert Configurator (patent number 5260866) has multilevel capabilities so customers can specify product features throughout multiple levels in a product's bill of materials (BOM). The system uses rule-based, decision-tree logic to validate customer-requested product options, calculate product prices and costs, and create production orders. It helps improve order accuracy, reduce inventory and production costs, and maximize customer service. The potential installed base for these systems is huge, according to Eric Keller of the Gartner Group. He believes any engineer-, assemble-, or make-to-order company producing customized or semi-customized products would need a product configurator. Those companies include aerospace and defense manufacturers, small job shops, and computer vendors satisfying customer specified system configuations. The patent broadly protects Andersen Consulting's invention of an expert system used to facilitate order entry, pricing, costing and production for manufacturers whose products at multiple BOM levels. "It will be interesting to see how Andersen attempts to enforce this patent", observes Keller, "and what aspects of their product are covered". [Managing Automation 1/94, 15] ------------------------------------------------------------------------------ #1994, Jan Enzon (Piscataway, NJ) signed a collaborative agreement with Creative BioMolecules (Hopkinton, MA) covering SCA and Creative Bio's Biosynthetic Antibody Binding Site (BABS) protein technology. Each company is free, under a non-exclusive license, to develop and sell products using the technology claimed by both companies' antibody engineering patents, without paying royalties to the other. Each company also would be free to market products in collaboration with third parties, but the third parties would be required to pay royalties on products covered by the patents. [Genetic Engineering News 1/1/94, 29] ------------------------------------------------------------------------------ #1994, Jan 11 Roche has entered into a Consent Order with the Federal Trade Commission with respect to the merger of a subsidiary of Roche Holdings and Genentech (FTC Docket No. C 3315). As part of such Consent Order, Roche has agreed to grant non-exclusive licenses upon written applications made until Decemeber 13, 2000 under its United States CD4-Based Therapeutic Patent Portfolio, which includes U.S. Patent Application Serial no 07/510,773 - "Chimeric CD4 Immunoglobulin Polypeptides" by Klaus Karjalainen and Andre Traunecker, filed April 18, 1990. Roche is willing to grant such non-exclusive licenses to all qualified applicants at a royalty not excess of one percent (1%) of net sales if only Process Patents are licensed, or three percent (3%) of net sales if Product Patents are licensed. The license agreement will contain other reasonable and customary terms and conditions. Copies of the FTC Consent Order and all relevant patents (as defined in the Order) are available from Roche upon written request. Any interested party should respond to: Hoffman-La Roche, Attn: George Gould, VP and Chief Patent Counsel, 340 Kingsland Street, Nutley, NJ, 07110. [USPTO Official Gazette 1/11/94, 1158 OG 347] ------------------------------------------------------------------------------ #1994, Jan Taiwan's two largest PC trade organizations have pooled their legal resources and are preparing to file suit against Japan's Hitachi over a disputed surface mount production patent owned by the Japanese company. The Taipei Computer Association and the Taipei Hsien Computer Manufacturers Association are responding to Hitachi's action last summer, when the Japanese company demanded that 33 Taiwanese and Korean PC outfits pay royalties of $10,000 to $3 million a year. At the time, Hitachi claimed that Taiwanese and Korean companies were illegally using in their products U.S. Patent Number 5,095,626, which is based on the concept that plastic-packaged surface-mount ICs should be placed in moisture-proog bags during shipment and storage. Taiwan's PC industry has denied any wrongdoing. [Electronic Buyer's News 1/17/94, 6] ------------------------------------------------------------------------------ #1994, Jan A hostile response to a tentative agreement to settle a patent dispute over the proposed Digital Signature Standard has forced the National Institute of Standards and Technology to return to negotiations. Last summer, NIST officials thought they finally settled the DSS public key patent dispute by granting Public Key Partners (PKP) of Sunnyvale, California, an exclusive worldwide license for the Digital Signature Algorithm (DSA) on which the DSS is built. In exchange for sublicensing rights, the PKP group agreed to endorse NIST's DSS proposal. But F. Lynn McNulty, associate director for computer security with NIST's Computer System Laboratory, said a majority of potential DSS users balked at the deal. NIST published the settlement terms for comment, and McNulty said all but 10 of the 270 comments were critical. Many DSS critics have argued that another algorithm promulgated by RSA Data Security (Redwood City, CA), is a de facto industry digital signature standard and that it would cost too much to comply with a separate government standard. Now NIST is attempting to hammer out a new settlement based on the comments, McNulty said. "The real hang-up continues to be the patent issue", McNulty said. "We're still trying to resolve it". Scientists at CSL designed the CSS to serve as a standard agency tool for verifying the senders and contents of messages transmitted electronically. CSL also prescribed the public key Digital Signature Algorithm (DSA). But PKP, which holds the rights to public key patents on behalf of Stanford University, MIT, and most recently, German professor Claus Schnorr, charged that CSL's proposed algorithm infringed upon these patents. NIST originally sponsored DSA research, and agencies are exempt from any licensing fees. PKP, however, has maintained that vendors that incorporate the standard into their products should pay royalties. [Government Computer News 1/24/94, 58] ------------------------------------------------------------------------------ #1994, Feb Intel Corporation said it settled several issues in a complex and long running patent infringement dispute with Cyrix Corporation. Under the settlement, Intel and Cyrix, agreed to drop patent infringement counterclaims involving a system of external memory and paging software known as the '338 patent. They also agreed on which third-party companies will be allowed to build Cyrix's microprocessor, which is part of the '338 system. The companies said they will ask the International Trade Commission to drop '338 related claims against a third company that used Cyrix chips. But Intel said it plans to proceed on a separate claim in the case involving the Cyrix customer's use of chips made by Advanced Micro Devices. The two companies' dispute over the '338 patent has been in U.S. court since 1992. They went to trial over the patent last month in federal court in Sherman, Texas. "This settlement ends the trial", an Intel spokesman said. But Intel said the settlement still leaves some '338 patent issues unresolved. It is appealing a decision in the Sherman federal court last month that Intel may not collect royalties from Cyrix customers who bought clones of Intel's 386 and 486 chips made by Cyrix's primary subcontractor. Cyrix is also seeking the court's permission for two other third-party factories to build cloned chips. [Wall Street Journal 2/3/94, B6] ------------------------------------------------------------------------------ #1994, Feb StarSight Telecast, developer of a one-touch interactive TV guide and VCR control service, has filed a patent infringement suit against United Video Satellite Group and its affiliate, Trakker Inc, which is also creating an on-screen guide. United Video has filed a countersuit seeking a declaratory judgment of patent non-infringement. StarSight, which has deals with Zenith and Goldstar to put its technology into TV sets and video cassette recorders, says it has more than 120 patent claims granted for its system. [AudioVideo International 2 or 3/94, 8] Greg Aharonian Internet Patent News Service