Raymond Van Dyke: Merchant & Gould partner in DC

Raymond Van Dyke is a partner at Merchant & Gould’s Washington, D.C. office and focuses his practice in technology and intellectual property counseling, procurement, licensing, and litigation.

Ray has nearly 20 years experience representing technology companies in the intellectual property area, including strategic counseling, patent and trademark litigation, expert witnessing, and IP licensing portfolio management. He represents domestic and international companies in addition to universities in the biotechnology, pharmaceutical, medical, chemical, software, financial services, telecommunications, Internet, voice over IP (VoIP), and digital industries.

Ray’s extensive technical background in both information-based and life sciences-focused technologies enables him to effectively counsel clients in emerging and converging disciplines, such as bioinformatics, cheminformatics, genomics, pharmacogenomics and personalized medicine, nanotechnology, proteomics, and computational analysis.

He represents clients in federal, state, and international intellectual property litigation, mediation, and dispute resolution in patent, trademark, unfair competition, copyright, antitrust, and trade secret cases. He also enforces and litigates intellectual property rights before the U.S. International Trade Commission and U.S. Customs, prepares clients for hearings before the Federal Trade Commission, and advocates intellectual property and regulatory positions before Senators and Representatives, domestic and foreign trade associations, and ambassadors.

Ray counsels clients in a variety of matters, including infringement, validity, freedom to operate, right to use, reissue, reexamination, appeals, artists’ rights counseling, and other patent and trademark opinion work.

His non-legal work in the software industry and during his graduate studies focused on a variety of cross-disciplinary software applications and techniques, including protein and molecular visualization, animation and modeling, computational optimization, graphics, stimulators, and virtual reality for pharmacological, biophysical, and biochemical research with real-time haptic interface with a robotic force-feedback arm (a nanomanipulator); modeling and analysis of steric forces in protein deformations; designing relational databases for complex proteins from X-ray crystallography data; designing enhancements to UNIX C-Shell; signal and image processing and pattern recognition; 3-D texturing; and SPICE modeling semiconductor chip architecture and performance.

Education

University of North Carolina

• J.D., 1990
• President, American Indian Law Student Association
• M.S., Computer Science, 1989
• B.S., Mathematics, summa cum laude, honors
• Minor in Classical Greek, 1985

Wilbur Wright College, Chicago, IL

• AA, with honors

Bar Admissions

District of Columbia
New York
New Jersey
Texas
Virginia (pending)
U.S. Patent and Trademark Office
U.S. Supreme Court
USCA – Federal Circuit
USCA – 2d Circuit
USCA – 3rd Circuit
USCA – 4th Circuit
USCA – 5th Circuit
Southern District of New York
Eastern District of New York
District of New Jersey
Northern District of Texas
Eastern District of Texas
District of Columbia
U.S. Court of International Trade
U.S. Court of Federal Claims

Professional Affiliations

Ray is active in a variety of legal and technical organizations, and also teaches at two universities. Chair, Greater Washington, D.C. Chapter of the Licensing Executive Society Chair, Emerging Technology Committee, American Intellectual Property Law Association

Speeches and Publications

Ray is a regular speaker to legal, university, and professional audiences on various technology, intellectual property protection, and litigation issues, both nationally and internationally. His recent presentations analyze Supreme Court cases affecting intellectual property rights, proposed changes and reforms to the U.S. patent system, nanotechnology, software patenting, ethics, International Trade Commission litigation and procedures.

Medtronic wins $57M amid a sea of payouts

In the first phase of a patent infringement lawsuit Minneapolis medical device giant Medtronic filed against its fellow Twin Cities firm AGA Medical Corp, a San Francisco jury sided with Medtronic in federal district court — although the $57 million is only half the amount Medtronic asked for in the suit.

Medtronic accused AGA of infringing a pair of patents with AGA’s Amplatzer Occluder and vascular plug product lines. The decision also calls for AGA to pay 11% royalties to Medtronic on future U.S. sales of the devices through 2018.

AGA had a different outlook on the ruling. In a press release, AGA stated it looks forward to the second, non-jury phase “dealing with other issues of invalidity and unenforceability of the Medtronic patents”. Further litigation is slated to resume later this year and could affect the final outcome. The Medtronic patents in question cover self‐expanding medical devices using a metal alloy such as Nitinol, a shape memory alloy containing nickel and titanium that expands to its original shape after deployment.

The decision is a rare win for device giant Medtronic as recent weeks have brought a string of tough decisions to the company dockets. These include a nearly $180 million judgment against it in a pedicle screw patent dispute with DePuy Spine Inc., the recall of nearly 60,000 insulin infusion sets, its inclusion in a “qui tam” whistleblower lawsuit along with six other firms that stand accused of promoting the off-label use of microwave cardiac ablation products and bilking the Medicare system.

Also in the news, Medtronic made a $400 million settlement payment to Abbott Laboratories, preventing the companies from suing each other over heart stents or delivery systems for at least 10 years. The new agreement follows earlier deals this year resolving heart stent patent disputes with Boston Scientific and Johnson & Johnson, two other stent rivals. Medtronic now believes it has resolved or settled “substantially all” intellectual property litigation surrounding stent design and delivery.

Jury tells Microsoft to fork over $200M

A Texas jury sided with Toronto’s i4i and their US Patent 5,787,499 and ordered Microsoft to pay $200 million for patent infringement involving its Microsoft Office products.

i4i, a collaborative authoring and document-management software company, filed the case in March 2007. Karen Heater, President “felt vindicated” with the decision.

Patent Issues around Swine Flu Threat

The drug Tamiflu so far is the most effective treatment for combating the threat of

Demand for antiviral increased in 2004 with the threat of the virulent bird flu, and so all 50 states and many other nations now have large enough  stockpiles of the drug for 220 million people. Roche has stated it could ramp up production to 400 million courses a year.

The Obama administration said it would seek $1.5 billion from Congress to combat the threat of a swine flu pandemic and is in talks with Roche about increasing production. Those with high fevers and consistent symptoms within 48 hours of illness are appropriate patients to receive the drug. Other vulnerable populations such as the elderly and home bound are also being considered candidates for the antiviral.

The flu sweeping Mexico and now appearing in several other countries is a strain never seen before by experts; it is a mix of genetic material from humans, birds and pigs. CDC officials told a Senate hearing Tuesday the agency was considering whether to develop a vaccine for just this strain of flu or a combination of flu viruses.

Gilead Sciences, Inc., Foster City, CA, is the patent holder, (Patent #5763483 for oseltamivir) having been assigned it by the five named researchers who invented this particular compound. Gilead Sciences’ patent on oseltamivir will not expire until December 26, 2016. Originally discovered by Gilead, Tamiflu was licensed to Roche for late-phase development and marketing. Roche produces and markets the anti-viral medication oseltamivir (as “Tamiflu®”)

Roche has made 5 million courses of Tamiflu available to the World Health Organization and has licensed other manufacturers to make the drug. Earlier this month, Gilead was denied patent protection for Tamiflu (formally known as oseltamivir) by India’s Patent Protection Office, and so the Indian pharmaceutical maker Cipla Ltd. has since moved its own version of the drug into production.

Similar issues arose with the 2005 avian flu threat, when Taiwan amidst a rising threat and frustrating negotiations with Roche, eventually moved forward with production of a generic version of Tamiflu. As a show of good faith, Taiwan’s National Health Research Institutes did not market the drug and  limited it to public use.  Arguments were that the NHRI could produce the drug more quickly and at lower cost, and being that negotiations fell apart they moved forward with their generic in the interest of their people. These past and present issues raise concern over the handling of these situations by the pharmaceutical Roche, still trying to strongly enforce patent rights abroad when threats are imminent. Only time will tell but let us hope that all parties involved handle the delicate situation and more delicate threat appropriately.

Patent Law Changes Approved by Panel

After all the years of stalemate, it seems as if Congress has finally made some initial progress in their efforts to overhaul the U.S. patent system.  Yesterday, the Senate Judiciary Committee approved potential changes to U.S. patent laws by a 15-4 margin, reports CNNMoney.

One of the changes this bill would bring to the patent system is revising the calculations of damages in patent-infringement lawsuits.  The concept of a “gatekeeper,” to be played by judges, would be introduced and hopefully give judges clearer standards to use when rewarding damages.

However, not everyone is pleased with the bill.  Senator Orrin Hatch, co-sponsor of the Patent Reform Act of 2009, said the he “cannot support a bill that I know does not improve the status quo.”  Senator Jon Kyl complained that the approved revisions to this bill would actually make it easier to challenge patents, while Senator Tom Coburn objected because the bill doesn’t provide funding increases for the USPTO.

Technology and patent law groups have supported the compromised version, and Deputy General Counsel of Microsoft Horacio Gutierrez followed that trend.  He said, “Microsoft is pleased to support the Committee’s efforts and looks forward to more progress in this important matter.”

For those that are unaware, the House of Representatives passed patent law legislation in 2007, but a companion bill has failed to clear the Senate.  That fact may change in the near future.

Discovery Sues Amazon over Kindle

Although Amazon introduced the Kindle e-book reader in November 2007, it appears as if a similar patent was granted that same month to Discovery Communications.  That company, better known for its ownership of the Discovery Channel, filed a patent in 1999, with  most of the major features now incorporated in the Kindle.  As reported by Ars Technica, Discovery has now filed a suit against Amazon for patent infringement.

Discovery’s patent is called “Electronic book security and copyright protection system,” and the majority of the claims involve encrypting and delivering e-book contents.  But the patent contains over 170 clauses, most of them citing variations in which the encryption takes place at different points in the distribution.  The patent also explains that a patented book could be distributed over the Internet and on “a wireless telephone network.”  If that weren’t troubling enough for Amazon, the patent also covers most of Kindle’s content management system.

Discovery is not seeking an injunction with their lawsuit, but they are seeking “adequate [damages] to compensate Discovery for Amazon’s infringement.”  The suit also asks the court to impose a royalty agreement.

It is now for the court to decide if Amazon really did infringe on Discovery’s patents, or if these similarities are not guilty of infringement.  But Discovery has nine patents covering e-books in their portfolio, and it may be tough for Amazon to evade all of them.

Callaway & Titleist: The Drama Continues

For the better part of the past two years, Callaway and Titleist have been tied up in a patent infringement lawsuit.  Filed by Callaway, the lawsuit claimed that the Titleist Pro V1 balls violated Callaway patents.  The case ended last November, and the ruling awarded Callaway an injunction against Titelist.  However, Titleist is appealing that decision and they have also announced new ProV1 and ProV1x golf balls that they claim do not infringe on Callaway’s patents.

According to About.com, Callaway filed a new patent infringement lawsuit today and the company claims that the new versions of these golf balls still violate their patents.  As Callaway stated:

We were disappointed to discover that Titleist and Acushnet have again used patented Callaway technology in their Pro V1 golf balls. As long as Titleist – or any competitor – continues to introduce products that we believe infringe our patents, we will continue to seek relief in the courts. We expect to prevail in this second suit as well.

Acushnet (Titleist’s parent company) has also filed a suit today claiming that Callaway’s Tour i and Tour ix balls violate Titleist’s patents.  Their Executive V.P. said:

As the industry leader, we respect the valid intellectual property of others and expect others to respect ours. We believe that disagreements like these are best dealt with between the companies involved and we have repeatedly attempted to resolve these disputes. When these discussions failed, Callaway left us with no other course of action but to move forward with this lawsuit. We are hopeful that these matters can be resolved, but we will continue to protect our intellectual property rights.

It’s unlikely that consumers will have to concern themselves with the purchasing of either Titleist or Callaway golf balls.  Both of these companies will be tied up in court for several years, but of course, many golfers are hoping the two can come to some sort of licensing agreement.

Social Networking for Patents?

Times are rough at the USPTO.

Back in 2007, The Washington Post reported that if the agency shut its doors to catch up on the backlog of applications, it would take their 5,500 examiners at least two years, and countless cups of coffee to catch up.

Keeping up with the demand for patents is critical, as innovation and technological progress drive our economy.  Earlier this year, researchers launched a “peer-to-patent” pilot project.  Some have suggested that the addition of a social networking patent site could make the peer-to-patent program extremely efficient.

Obviously such a site would not mirror MySpace or Facebook, but the idea of a social network for patents could solve the time-consuming process of searching for prior art.  This necessary process can help determine whether or not the claims made in a patent are original, or if they have already entered the public domain.  If the claims of a patent are found quickly in prior art, a patent examiner can promptly move on to the next claim.

While the specifics of such a system would have to be planned out rather carefully, it could vastly improve the amount of time it takes an examiner to search through prior art.  Unfortunately, since the USPTO has yet to make a presence on other social networks, such a change is still nowhere in the foreseeable future.

Google to Become Offensively-Minded

In an attempt to deter frivolous lawsuits, Google Inc. had decided to change its legal strategy.  Instead of taking a defensive approach to any litigation brought against the company, Google is now going on the offensive to fight patent claims.  As reported by Bloomberg.com, the number of patent challenges against Google increased to 14 last year, after 11 in 2007 and three in 2006.

Google currently has 24 cases pending and didn’t settle any patent challenges last year, although Google has settled cases in each of the last four years.  Hilary Ware, Google’s managing litigation counsel, said that Google still isn’t opposed to settling when its warranted.  Still, Google does not want to be seen as an easy target.

Some have criticized Google’s new approach, as it will lead to more litigation.  Alan Fisch, a patent lawyer at Kate Scholer, agreed that how this hard-line approach can actually be quite risky.  “If you’re going to take a hard-line approach, you’d better back it up with victories,” he said.

GSK Reducing Drug Prices in Developing Countries

Last Friday, GlaxoSmithKline announced a plan that would reduce the prices of several patented medications in 30 of the world’s lowest-income countries.  According to the Wall Street Journal, GSK also said it would invest 20% of its profits from low-income countries into health clinics and other infrastructure.

More details of the plan reveal that GSK will lower the price of medications to 25% of what it would be in developed countries.  GSK plans to include drugs that will treat asthma, hepatitis B and malaria.  Although some GSK drugs are already sold in developing countries, this new plan will reduce the prices of those drugs if they cost more than the 25% mark.

GSK CEO Andrew Witty also announced his proposal of a voluntary patent pool that would fuel development of new treatments for neglected diseases.  Witty directed his comments towards other pharmaceutical companies who could make patents available to other third-party researchers.  Interesting enough, GSK did not include its HIV/AIDS research in the patent pool.  Witty stated that the patent pool is to focus on diseases that do not have treatments.

Of course, there must be monetary reasons as to why GSK would not place its HIV/AIDS research into the patent pool.  However, it is nice to see GSK taking initiative into solving problems in developing countries.

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