Kolisch Hartwell Strategically Enforces Patent Rights in Handheld Microscopes

In 2007, Kolisch Hartwell was asked by Scalar Corporation of Japan to assist with enforcement of its patent rights in the United States.  Scalar is a pioneer in the field of microscopy, and in 1998 had launched the world’s first handheld digital microscope, which was co-invented by Scalar’s president Dr. Masao Yamamoto.  A modern version of Scalar’s handheld microscope is shown below.

Scalar’s handheld digital microscopes are self-illuminating and provide portable, real-time video and still imaging at a variety of magnification levels for industrial, scientific, medical, and educational purposes.  The Scalar microscopes can be used to obtain real-time images, such as the examples below, which were difficult or impossible to obtain with previous technology:

Human Hair at 200x
Circuit Board at 100x

Scalar owned a number of patents covering its digital microscope technology, including U.S. Pat. No. 5,442,489, which Scalar felt was being infringed by various U.S. companies.  Our team analyzed the Scalar ‘489 patent and identified several companies that we agreed were infringing the patent.  However, rather than immediately enforcing the patent against all of these companies, we decided to use a single enforcement action as a test case that would educate us about the prior art and the validity challenges we were likely to face.  We therefore filed an initial infringement action against one alleged infringer in 2007.

Based in part on prior art identified in the initial 2007 litigation, Scalar instituted an ex parte reexamination proceeding in the USPTO, which led to the issuance of a Reexamination Certificate on March 30, 2010.  The reexamined ‘489 patent included many claims that Scalar believed were substantially identical to the original patent claims, and that were still widely infringed throughout the microscope industry.  However, because the patent had been reexamined and a large amount of newly identified prior art had been considered by the USPTO, we were better prepared to withstand a validity challenge, giving us a stronger position in future enforcement actions.

After meeting with Scalar in Tokyo to finalize the remaining enforcement plans, Kolisch Hartwell filed ten additional federal patent infringement actions on behalf of Scalar against defendants in the microscope industry.  By the end of 2012, these actions had all been settled to Scalar’s satisfaction, without extensive litigation and the associated costs.  Part of our success in resolving these cases efficiently can be attributed to the strategy of bringing an early test case and requesting a subsequent reexamination of Scalar’s patent, which led to a strong validity position for the remaining enforcement actions.

A well-conceived litigation strategy can result in a favorable outcome without incurring the exorbitant costs typically associated with U.S. patent litigation.  At Kolisch Hartwell, we have been helping clients to develop and execute such efficient enforcement strategies for more than 60 years.  As a result of our relatively small size and our base location in Oregon, we can provide IP enforcement services more responsively and at a lower cost than large national IP firms. Learn more about our enforcement services, or see more details about how we assist foreign companies.