Asserted Patents in Texas Patent Suit.
|
Asserted Patent
|
Suit Status
|
Expired On
|
| USPN # 5,966,456 |
Ruled Invalid
|
02/05/2010
|
USPN # 6,381,354
|
Ruled Invalid |
02/05/2010 |
USPN # 6,459,806
|
Valid, Appeal pending
|
02/05/2010
|
USPN # 5,909,503
|
Valid. Appeal pending
|
02/05/2010 |
List of other expired patents from 1990 ('111/ '196 family):
|
Patent
|
Expired
|
Expiration Date
|
First Patent Application
07/475,111
filed Feb 5, 1990 |
Abandoned |
02/05/2010
|
USPN # 5,295,196 (First Patent)
(issued March 15, 1994) |
Yes
|
03/15/2011
|
USPN # 6,459,806
(issued Oct 1, 2002) |
Yes
|
02/05/2010
|
USPN # 5,966,456
(issued Oct 12, 1999) |
Yes
|
02/05/2010
|
USPN # 6,381,354
(issued April 30, 2002) |
Yes
|
02/05/2010
|
USPN # 5,909,503
(issued June, 1999) |
Yes
|
02/05/2010
|
USPN # 5,692,067
(issued Nov 25, 1997) |
Yes
|
03/15/2011
|
*** The table above only represented Patents that were asserted against AMRO's currency Discriminator Products or most relevant to the TX suit. This table does not represent a complete list of all expired Cummins-Allison patents.
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TEXAS Patent Litigation and Appeal
Updated on 03/15/2011:
On August 27, 2007, Cummins-Allison Corp. (“Cummins”) commenced an infringement action against Amro-Asian Trade, Inc. (“Amro”) and it's Korean manufacturer in the United States District Court for the Eastern District of Texas, Lufkin Division. Cummins alleged that Amro's imported SB1000/SB1100/SB1800 products infringed four patents: U.S. Patent Nos. 6,459,806 (“the ‘806 patent”), 5,966,456 (“the ‘456 patent”), 5,909,503 (“the ‘503 patent”), and 6,381,354 (“the ‘354 patent”).
A Jury Trial was concluded on October 7, 2009 and on October 30, 2009, the District Court of Texas issued a Memorandum and Order enjoined defendants from making, using, or marketing in the United States the SB-series products until February 5, 2010, the expiration date of the these four asserted patents. Further, Court declared asserted claim 55 of the ‘354 patent and claim 41 of the ‘456 patent invalid, but, upheld validity on '806 and '503 patent. After post-trial motions, Amro and SBM filed it's notice of appeal at the Federal Circuit Court in Washington D.C seeking reversal of Texas District Court's final rulings on '806 and '503 patents validity and damages awarded.
On March 11, 2011 Amro and SBM filed their appeal brief timely. Amro expects a decision from Federal Circuit Court in Washington D.C.around October, 2011(projected). More update will follow as our appeal proceed.
Updated on 06/16/2011:
On April 19th, Cummins filed their appeal brief and Cross-Appeal on one of the patent ('354) ruled invalid.
On June 15th, AMRO and SBM filed their response brief to Cummins's brief and Cross-Appeal.
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| REQUEST for Re-Examination of Newly issued Patents |
RE-EXAMINATION REQUEST NOTICE (EX-PARTES): 06/11/2011
AMRO recently initiated further ex-partes re-examination proceedings asking USPTO to further examine the below Cummins's patents (Newly issued with 4 to 6 years of extention), which were issued from Parent Patent Application '111 or first Patent '196 (filed in 1990 and 1992 respectively), on the ground of Non-Statutory Obvious-type Double-Patenting over Cummins's earlier issued patents.
** U.S. Patent # 7,536,046,499. Filing Date: 05/22/2011. Re-Examination Control No: 90/011703
** U.S. Patent # 7,672,499. Filing Date: 06/11/2011. Re-Examination Control No: 90/011719
AMRO stated in it's requst that the doctrine of non-statutory double patenting "prevents an applicant from extending patent protection for an invention beyond the statutory term by claiming a slight variant." Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline, PLC, 349 F.3d 1373, 1378, 68 U.S.P.Q.2d 1865, 1869 (Fed. Cir. 2003), citing In re Lonardo, 119 F.3d 960,965,43 U.S.P.Q.2d 1262, 1266 (Fed. Cir. 1997). It is a judicially-created doctrine fashioned to prevent the timewise expansion of the monopoly conferred by a patent by preventing two patents, issued at different times, from reading on or covering the same subject matter. See, e.g., Id. The rule against double patenting prevents a patentee from extending protection already obtained in one patent by getting a second patent with claims in somewhat different form. In re Goodman, 11 F.3d 1046, 1053, 29 U.S.P.Q.2d 2010, 2015 (Fed. Cir. 1993); Application of Schneller, 397 F.2d 350, 356, 158 U.S.P.Q. (BNA) 210, 215 (CCPA 1968).
AMRO expects PTO to make a decision on the request within next three months of the filing dates.
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REQUEST for EX-PARTES Reexamination of Patent '046 |
REQUEST for EX-PARTES Reexamination on '499 Patent |
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