!030894 A variety of patent news stories Scientists pressure UK to allow one year grace period like in US Micron and Hyundai cross-license patents Roger Billings infringement suit against Novell proceeds to trial HP sues GenRad over infringement of circuit board testing patents U.S. Surgical loses suit of infringement against Johnson & Johnson Universal Electronics is not infringing Zenith's remote control patent Inventor can sue Reebok over Pump shoe technology Augat sues EPT over connector technology infringement #1994, Feb Pressure is growing on the British government to give research scientists a one-year 'grace period' after the publication of research findings in which to apply for a patent on their results. The change from the present policy of having to apply before publication would bring UK policies in line with those in the United States. The latest support for this proposal, which has already been recommended by the Science and Engineering Research Council, comes from the government's top science advisory committee, which also suggests that all biomedical research students be given training in the importance and evaluation of intellectual property rights. The recommendations are intended to help address what a committee chaired by Peter Doyle, director of research and technology for ICI plc, describes as a "development gap" between research laboratories and industrial exploitation, a gap which, the committee says, is a "particular difficulty" in Britain. One suggested remedy is the creation of a new programme, MEDILINK, by the Department of Trade and Industry, to increase "towards market" research and development through projects linking academic and industrial researchers. The current system for managing intellectual property in British universities is "underdeveloped and under-resourced", according to scientists contacted by the committee, and pressure to publish research quickly "has restricted the interaction between academia and industry". To avoid this - and presumably to give industry a chance to identify patentable discoveries in the scientific literature - it suggests legislation allowing both the British and the European Patent Offices to grant a one-year grace period. ------------------------------------------------------------------------------ #1994, Feb Micron Technology disclosed last week that it has reached a tentative patent cross-licensing agreement with Korea's Hyundai Electronics Industries. If completed, the agreement would encompass the patent - for anisotropic etch techniques - over which Micron filed an infringement complaint with the International Trade Commission in December 1992. Micron's complaint was heard by an administrative law judge last November; a decision is pending. If the cross-licensing agreement is finalized, Micron will withdraw its complaint. The agreement and the patent dispute are unrelated to DRAM dumping charges, which resulted in the ITC's leveling a tariff on Hyundai DRAMs imported into the United States. [Electronic Engineering Times 2/7/94, 2] Anisotropic plasma etching, which is used in fine-geometry manufacturing of IC devices such as 1-megabit and larger dynamic RAMs. Micron reached a cross-licensing agreement with Goldstar in June 1993 and dropped its ITC complaint against that company. ------------------------------------------------------------------------------ #1994, Feb After months of delay, inventor Roger Billings patent-infringement lawsuit against Novell is scheduled to go to trial September 19 in San Francisco. Billings and his Missouri-based International Academy of Science sued Novell in December 1991, claiming that the network software company copied his idea for server-based distributer computing with its NetWare product. Billings and his unaccredited academy are demanding $220 million in royalties. BankAmerica Corporation, also named in the suit as a major NetWare user, has since settled with Billings, agreeing to pay $125,000 to license his patent. Billings' attorney, Marc Brown of Poms, Smith, Lande & Rose in Los Angeles, blames Novell for the long delay in getting the case to trial. "Novell has been very successful in persuading the court to delay and delay this case", Brown says. "The court had to draw the line". Novell senior VP and general counsel David Bradford maintains that "the suit is without merit", and adds that the case could still be dismissed before trial. He argues that even if you assume everything Billings claims is true, the court could still rule Billings' patent invalid because, Novell maintains, similar technology existed before Billings applied for his patent. That ruling is unlikely, counters Brown, who says the court has had plenty of time to dismiss the case on those grounds. Novell has no plans to settle with Billings out of court, Bradford adds. Meanwhile, a Novell spokesman expresses confidence that the threat posed by Billings is minimal. "The case needs to have likely material financial impact on Novell to be listed" in the company's 10K filing to the Securities and Exchange Commission, he says. But apparently others at Novell are less confident: The company's 10K for fiscal 1993 mentions the Billings case prominently. ------------------------------------------------------------------------------ #1994, Feb 14 Hewlett-Packard filed suit against GenRad for alleged infringement of a patent covering the HP TestJet package, which detects opens on printed circuit boards with digital and mixed-signal surface-mounted (SMT) devices. GenRad responded by filing a complaint in U.S. District Court in Boston for declaratory relief from HP's patents. GenRad said it had applied for patents to support the hardware and software in its recently introduced competing Open Xpress digital opens testing technology "to resolve this issue expeditiously". "We have been attempting to settle this out of court since before GenRad introduced their Opens Xpress product", said Jack Trautman, GM of HP's Manufacturing Test division. "Hewlett-Packard has invested in solving the SMT opens detection problem since 1987 and has several issued and pending patents in this area. Our intellectual property relating to HP Testjet is extremely valuable to us. For several months, we have asked GenRad to either stop infringing or to reasonably compensate HP for our intellectual property. At this time, GenRad has not agreed to do either. Regrettably, they have left us with no alternative but to litigate the matter in court." HP introduced its HP TestJet about a year ago to detect opens on printed circuit boards with digital and mixed-signal surface-mounted devices. An enhancement, TestJet II, was introduced in October. James F. Lyons, GenRad president and CEO, said: "We believe that Hewlett Packard's existing patents on this technology are not valid. We have sought to discuss the matter with HP's management and amicably resolve the issues. We approached Hewlett-Packard over nine months ago concerning this issue; we regret both companies are engaged in litigation that could have been avoided. We have every conviction that GenRad will prevail". The failure to settle out of court is the latest instance of what appears to be bad blood between the board test competitors. GenRad recently beat HP in a face-off for an order, worth nearly $2 million, for eight board test systems to be installed at IBM's Greenock, Scotland, plant. HP's marketing manager for manufacturing test equipment, Rick Robinson, said HP had been unaware until a few weeks before the selection that the IBM benchmarking was comparing an existing HP production program "with one done by GenRad's best programmer with the purpose of blowing us out of the water". [Electronic News 2/14/94, 24] TestJet measures the capacitance between an IC's lead frame and the probe of a special fixture fitting over the device. TestJet II added connectors, sockets and switches to its device-test capabilities. Open Xpress injects an AC stimulus on each IC lead and measures the resulting voltage coupled through the device package. The voltage is detected on a plate located above the printed circuit board. ------------------------------------------------------------------------------ #1994, Feb 16 A federal jury in Hartford rejected a patent infringement suit U.S. Surgical Corporation brought against a Johnson & Johnson subsidiary. U.S. Surgical immediately announced plans to appeal. The suit involved an endoscopic, multiple clip applier, used in minimally invasive gallbladder and other surgery, made by Johnson & Johnson's Cincinnati-based Ethicon Endo-Surgery subsidiary. After a four-week trial before US District Court Judge Alfred V. Covello, the jury ruled the device infringed on U.S. Surgical's patented surgical device, which had fueled that company's growth in the early 1990s. But the jury also found that the U.S. Surgical patent was invalid because "the invention of the device would been obvious to a person of ordinary skill in the art", the judge said. Ethicon's product has been used on hundreds of thousands of patients and produced about $40 million in sales since it was introduced late in 1991. U.S. Surgical sued in March 1992. Johnson & Johnson can keep selling Ligaclip appliers. On February 16, a federal jury ruled that the Ligaclip device, used to seal off blood vessels in such procedures as gall-bladder removal, does not infringe on the patent for U.S. Surgical's Endo Clip. Johnson & Johnson introduced its pistol-like applier in 1991 and quickly grabbed $40 million in revenues - much of it at U.S. Surgical's expense. Profits and stock price have plummeted since. U.S. Surgical said it would appeal the jury decision; it also said it had hired investment bankers to examine "strategic alternatives". The company's stock plunged 21% on the news of Johnson & Johnson's win. ------------------------------------------------------------------------------ #1994, Feb Universal Electronics (Twinsburg, OH) said a court ruled that its remote controls do not infringe on a Zenith Electronics patent. Yesterday's ruling in U.S. District Court for the Northern District of Illinois ends a conflict that began in November 1990 when Zenith claimed that Universal Electronics' remote control products infringed certain patent rights. In January 1992, Universal Electronics filed an action seeking a determination that its remote control products don't infringe Zenith's patents. Universal Electronics expects Zenith to appeal the decision. Universal Electronics makes universal remote controls, mainly for home video and audio entertainment equipment. Zenith (Glenview, IL) makes color televisions, video cassette recorders and other consumer electronics products. ------------------------------------------------------------------------------ 1994, Mar A 77-year-old inventor has been given the green light to sue Reebok International over its Pump shoe technology. Robert E. Conroy of Arlington Heights, Illinois, claims he invented and patented the technology used to make inflatable shoes. Last year, U.S. District Judge Robert Keeton ruled in Reebok's favor, even before the matter went to trial. But a federal appeals court has disagreed, ruling in January that Conroy's suit deserves a trial. From 1974 to 1991, Conroy held a patent for his "athletic armor and inflatable bag assembly", which he claims works just like Reebok's pump, an inflatable contraption built into sneakers to make the shoes fit more smugly. He has sued for a percentage of Reebok's Pump profits from the shoe's introduction until the patent's December 1991 expiration. "We don't think there's any merit to Conroy's claim", Reebok general counsel John Douglas said yesterday. Reebok introduced the Pump in November 1989 and sold about 6 million Pump-equipped shows through 1991. The brought Reebok roughly $375 million in revenue and $60 million in operating profit, analysts say. In total, Reebok estimates that it has shipped more than 12 million pairs of Pumps worldwide. Each pair retails for $100 to $140. Reebok secured a patent on its Pump technology in October 1992 and proceeded to try to stomp out copycats. It has sued at least eight companies over the Pump, including J.C. Penney, L.A. Gear, Payless Shoesource, J. Baker and E.S. Originals. Though Reebok declined to say how much it recovered for infringements on the Pump, Douglas said the amount has been substantial. With three pending cases, including Conroy's, accusing Reebok of stealing the Pump idea, the shoes seems to be on the other foot. Two other inventors - one in Texas and the other in California - are claiming rights to the Pump. Unlike Conroy, neither hold patents, Douglas said. Conroy, a retired general contractor, said he began making an "air bladder" insert in 1967 for his two sons' hockey skates to protect their feet and make the skates fit better. ------------------------------------------------------------------------------ #1994, Mar Augat Incorporated last month filed suit against Electronic Precision Technology, alleging the German-owned company is infringing three patents covering Augat's programmable DIN connector designs. The suit, filed in a Boston federal court, charges that EPT is violating Augat patents 5259776, 5266043 and 5277606. EPT, based in Cambridge, Massachusetts, could not be reached for comment. Augat said it has been in contact with EPT since November 1993 seeking a resolution to the patent infringement. "Unfortunately, the management at EPT has chosen to ignore Augat's requests, continuing the unauthorized manufacture and sale of infringing products", the company said. Programmable DIN connectors represent a small portion of Augat's business, said Ron Hoover, vice president and general manager of the company's Interconnection Products Division in Attleboro Falls, Mass. The market for such connectors is growing, however, and ultimately could account for 2% to 5% of Augat's business, Hoover said. "We believe we're technology creative, and we intend to defend our patents", he added. Augat has sent letters to known EPT customers in an effort to help them avoid production disruptions related to EPT's alleged patent infringement. Augat said it has the capacity to handle the product requirements of any customer affected by the suit. "We know that several of our customers and EPT's have designed products around this connector system, and without supplies they would be in jeopardy", Hoover said. "We can configure our products to any application where EPT is selling". The products, which are primarily sold to the local-area network controller market, are designed for field applications where users need to disengage a backpanel from a daughtercard interconnect without losing power. Hoover believes that only Augat and EPT are manufacturing the programmable DIN connectors. ------------------------------------------------------------------------------ Greg Aharonian Internet Patent News Service