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Fall 2000
Discovering the power of invention


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We welcome news releases and items pertaining to your licensing and technology transfer activities.
Please submit to I.P.News, P. O. Box T, Willow Grove, PA 19090.


NEWSNOTES

An NSF brief on federal R&D spending shows that about 42% of the total obligations for R&D in 2000 will go to industry, approximately $32 billion. The brief noted that the numbers were culled from agencies’ fiscal 2000 budget requests and do not represent actual appropriations from Congress. The brief on federal R&D spending is available online at http://nsf.gov/sbe/srs/databrf/sdb00309.htm .

The U.S. Patent and Trademark Office will overhaul the way it examines applications and awards patents for basic methods for doing business on the web. There is much debate and criticism over broad patents granted in the "business-method" area. The patent office plans to add more checks and require a broader search of past practices.

The U.S. Patent and Trademark Office has issued for public comment proposed rules for reexamination of patent applications and for changes to examinations of applications. The reexamination rules are intended to allow for third parties to participate more fully in the review of a patent application in order to avert the time and expense of challenging a patent that has already been issued.

The Pharmaceutical Research & Manufacturers of America (PhRMA) has asked the U.S. Trade Representative to take actions against U.S. trade partners that erect market access barriers or fail to protect intellectual property. According to PhRMA, the worst offenders include Argentina, Egypt, and India for refusing to adopt effective patent protection for pharmaceutical products and for denying equitable market access to U.S. firms.

Senators Daniel P. Moynihan (D-N.Y.) and Judd Gregg (R-N.H.) are sponsoring an amendment that would allow Columbia University to collect millions of dollars in royalties on a drug process patent that expires in August. Columbia’s patent on co-transformation gene-splicing technology has been licensed to 34 companies that market 18 pharmaceuticals. Columbia says that since the process was introduced in the early 1980’s, sales of drugs produced by the co-transformation have totaled $28.3 billion. Columbia University received an average royalty of about 1%. Columbia is seeking a patent extension of 15 months which would generate additional millions in royalties. Under provisions of the 1984 Hatch-Waxman Act only patents on pharmaceutical products that are subject to FDA review are eligible for extension. Senators Gregg and Moynihan want to amend the law to incorporate drug process patents such as Columbia’s.

The University of Rochester has filed a patent infringement lawsuit against Searle. The U.S. Patent was awarded to the university which covers uses of all cyclooxygenase-2 or cox-2, inhibitors for any disease area. Searle’s celebrex (cox-2 inhibitors) was launched at the start of 1999 for treatment of osteoarthritis and adult rheumatoid arthritis. By year end sales of celebrex hit $1.51 billion. The University of Rochester hopes to gain royalties it estimates will be in the billions of dollars over the life of the patent.

 A Federal Jury has ruled that ExxonMobil did not infringe on Phillips Petroleum’s 1985 patent for low density polythylene (LDPE). Phillips alleged in a 1998 lawsuit that a grade of ExxonMobil’s metallocene linear LDPE, sold as Exceed, misappropriated technology protected by Phillips’s LDPE patent. Phillips had sought $158.4 million in damages.

Shanghai Petrochemical (SPC) has licensed Borealis’s Borstar polythylene technology for a 250,000-m.t./year plant to be built at SPC’s Jinshan complex.

Pavilion Technologies (Austin, TX) has formed an alliance with BP Amoco Chemicals, under which BP Amoco will license Pavilion’s control and optimization technology for its polythylene plants. BP Amoco joint venture partners and licensees will also be able to use Pavilion’s technology.

Pavilion Technologies has an agreement with DuPont to license DuPont’s process systems software. That deal gives Pavilion access to 15 DuPont patents and two software programs.

Institut Francais du Petrole (IFP) has agreed to license its hydrorefining technology to Petrobras, to be used in Petrobras’s Reduc refinery in Brazil. IFP has also signed a licensing agreement with Nigarjuna Oil Corp. for the installation of a 955,000-m.t./year diesel hydrotreating unit at Cuddalore, India.

Fluor Daniel has licensed ICI’s bichlor membrane-cell chlor-alkali technology for use in building large-scale plants. The agreement is not exclusive but Fluor is granted right of first refusal for all large-scale projects. The licensing package includes ICI’s FM21 and FM15 membrane cell technologies.

Azzawiya Oil Refining Co. (AORC), has awarded IFP a contract to provide process technology for an expansion of AORC’s Azzawiya, Libya refinery.

BASF Petronas Chemicals Sdn. Bhd. (BPC) has signed a maleic anhydride process licensing agreement with Huntsman Corporation. BPC will use Huntsman’s proprietary maleic anhydride technology in a maleic plant that will feed a butanediol unit in Gebang, Malaysia. The n-butane, fixed bed maleic plant will use Huntsman’s technology and catalyst. The downstream BDO and tetrahydrofuran plant will use Kvaerner Process Technology’s process of converting maleic anhydride into butanediol.

Eastman Chemical Company and Lurgi Oel Gas Chemie GmbH have entered into an agreement to offer and sublicense Eastman’s proprietary terephthalic acid technology. Eastman will contribute its manufacturing and operational experience to bring more value to the alliance.

DuPont Packaging has signed a letter of intent with Saudi International Petrochemical Company to license DuPont technology and participate with other parties in a joint venture for a new Saudi’s vinyl acetate monomer facility.

Sulzer Chemtech will supply technology for a $30-million ethanolamines plant planned by Oriental Union Chemical Corp. at Kaohsiung, Taiwan. The 40,000-m.t./year plant will be the first ethanolamines plant in Taiwan.

SNF Floerger (St. Etienne, France) plans to build five 20,000-m.t./year acrylamide plants by next year, using biocatalyst technolgy licensed from Mitsubishi Rayon. SNF completed a 20,000-m.t./year plant using Mitsubishi’s technology at Andrezieux, France last July.

Solutia Inc. is making a donation of the intellectual property rights of its nylon reactive pultrusion technology, including its related assets and equipment, to the University of Massachusetts at Lowell. The appraised value of the gift is $5.8 million.

Hickson Danchem (Danville, VA) has licensed specialty surfactant technology from Shell Chemical and will make alcohol ethoxycarboxylate at its Danville plant. Shell has licensed Hickson to use its Neodox trademark and sell the product worldwide.

General Chemical Corporation, and the University of Arkansas, have settled patent infringement litigation brought by them against Prince Agri Products (PAP). Under the settlement, PAP will cease manufacture, sale, distribution and marketing if its LitterAce product and any products containing aluminum sulfate, for animal litter bedding or manure treatment. General Chemical is the exclusive licensee for this technology developed by the University.

Proctor & Gamble Co. has sued Reckitt Benckiser over the latter company’s Resolve fabric cleaner. P&G says the product infringes on patents it holds for Febreze.

The licensing agreement between Abbott Park and Martek Biosciences Corp. should strengthen both companies position in the infant formula market. The non-exclusive agreement involves Martek’s technology pertaining to the use of long-chain polyunsaturated fatty acids (PUFAs)-docosahexaenoic acid and arachidonic acid-in infant formulas. Abbott will provide Martek with initial cash payments and ongoing royalties upon Abbott’s introduction of infant formula products using Martek’s PUFA technology.

PharmaPrint Inc. and ShenZhen ZeGu Venture Capital Co. Ltd. have signed a binding agreement to form a joint business entity that will sell a range of herbal-based health products in China and the Asia-Pacific region. PharmaPrint will own 51 percent of the new company and will contribute rights to its technology involving herbal extracts. China New Industries will contribute $6 million in cash and own 49% of the new company.

The U.S. unit of Aventis (Strasbourg, France) has filed a lawsuit in U.S. district court in Lubbock, Texas, claiming part ownership over patents that Monsanto now owns covering transgenic cotton. The suit alleges that in 1985-86 Norma Trolinder, a graduate student at Texas Tech University worked on techniques for regenerating transgenic cotton with researchers at Agrecetus. Monsanto acquired Agrecetus in 1996. Trolinder’s name, however, was not included as a co-inventor in the patent. Aventis wants the court to order the U.S. PTO to add her name to the patents. Trolinder and Texas Tech have transferred any patent rights they may win to Aventis.

 Nexell Therapeutics Inc. has filed a patent infringement suit, relating to its hematopoietic stem cell technology, against Miltenyi Biotec GmbH of Germany and its associated US companies. The suit, filed in the US District Court in Delaware, also charges Miltenyi with breach of contract and deceptive trade practices.

SmithKline Beecham (SB) is receiving extended US patent protection for its Augmentin anti-infective drug. Augmentin, a combination of amoxycillin and clavulanic acid generated sales of $1.8 billion last year and is SmithKline Beecham’s second biggest selling drug. SB has also been granted a new US patent for Augmentin which stems from an application for wider patent protection. This provides another 17 years of patent life for Augmentin.

Celgene Corporation granted an exclusive worldwide license (excluding Canada) to Novartis Pharma for the development and marketing of d-methylphenidate. Celgene also granted rights to all its related intellectual properties and patents.

Asahi Chemical and SmithKline Beecham have signed a license and development agreement for AZ40140, a beta-3 receptor agonist for treating obesity and diabetes.

AMBI Inc. has signed an exclusive licensing agreement that gives ImmuCell (Portland, ME) worldwide rights to develop and market new antibacterial drugs for animals using AMBI’s nisin and lysostaphin technologies.

Judge William G. Young of the U.S. District Court of Massachusetts has ruled that Aventis and Transkaryotic Therapies, infringe a major claim in one of Amgen’s patents on erythropoietin (EPO). EPO is a red blood cell growth stimulant used in the treatment of anemia. Estimated annual sales of the drug is about $4 billion. A trial has been scheduled to determine the validity and possible infringement of patents involved in the lawsuit.

Millenium Pharmaceuticals Inc. signed a letter of intent regarding the licensing of LPD-997, an investigational drug for the treatment of chronic asthma, to Taisho Pharmaceutical Co. Ltd. Taisho will hold an exclusive license to the drug in Japan, Asia and Europe while Millennium will retain rights for the rest of the world.

Protein Design Labs Inc. has signed multiple patent licensing agreements with Chugai Pharmaceutical Co. Ltd. which will pay PDL upfront signing and licensing fees totaling $6.04 million. Chugai will receive non-exclusive global licenses, under PDL’s antibody humanization patents. PDL has also entered into licensing and joint development agreement with Toagosei Co. Ltd., (Tokyo, Japan). The agreement is for an antibody developed by Toagosei and humanized by PDL and relates to regulation of blood vessel formation in tissues and tumors.

National Semiconductor Corp. will license its Reduced Swing Differential Signal (RSDS) digital interface technology for XGA Thin-Film-Transistor (TFT) Liquid Crystal Display (LCD) panels to Sharp Corp. (Japan). Both National and Sharp will provide chipset components for XGA TFT-LCD panels that incorporate RSDS technology.

GMT Microelectronics (Norristown, PA), and Peregrine Semiconductor Corp. (San Diego, CA) have an alliance in which Peregrine will license to GMT its silicon-on-insulator (SOI) technology and GMT will supply Peregrine with foundry services, as well as develop its own line of products based on the SOI process.

Lucent Technologies and Cypress Semiconductor Corp. are among 88 defendants named in a multimillion dollar lawsuit alleging "willful and deliberate" infringement of patents. The lawsuit was filed in the federal district court in Arizona by the Lemelson Foundation. The patents in question concern machine vision, automated identification and semiconductor manufacturing technology.

Qualcomm Inc. and Motorola have agreed to dismiss all claims against each other in a series of patent-infringement lawsuits, ending a complicated legal battle and allowing the two companies to forge a closer relationship.

Hewlett-Packard and Xerox Corporation announced that they have resolved all pending patent-infringement lawsuits against one another. With the settlement, Xerox and HP can focus on needs of their customers and competing in the marketplace.

Intel Corp. and 3DFx Interactive Inc. have agreed to mutual cross-licensing of certain respective graphics patents. The deal includes dismissal of all legal complaints pending between 3Dfx and Real 3D which was acquired by Intel last year.

A U.S. Federal District Court has ruled that Lexar Media Inc. (Fremont, CA) has infringed a solid state flash memory card patent held by SanDisk Corp. (Sunnyvale, CA). The court ruled that Lexar had indeed violated Patent 5,602,987 held by SanDisk. SanDisk has cross-licensing agreements with numerous companies including Sharp, Intel, Samsung, SST, and many others. The company is reported to have received over $50 million in royalties last year from these licenses.

Samsung Electronics Co. Ltd. has developed a new photoresist technology for 193-nonometer argon fluoride (ArF) lithography at 0.10 micron and below. Samsung has applied for patents covering its technology in nine countries, including the United States, Japan, and Taiwan. The company expects to receive about $6 million in royalties related to new technology over the next decade.

Amkor Technology Inc. and Unitive Advanced Semiconductor Packaging have signed a 10-year technology transfer and licensing agreement that will add electroplated wafer bumping capability to Amkor’s internal wafer bumping manufacturing line planned for Korea.

Mentor Graphics Inc. has filed a lawsuit against Quickturn Design and Cadence Design Systems for allege misappropriation of Trade Secrets, patent infringement, and other claims arising out of alleged use of certain "debugging " emulation technology developed by the Meta System division of Mentor Graphics.

    

 

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