Judgment in Favor of Trovan September 8, 2000, on U.S. Patent no. 5,281,855 Litigation Trovan et al. v. Sokymat Case No. 99-1474, 1488

September 11, 2000

Santa Barbara --
The United States Court of Appeals for the Federal Circuit has confirmed the validity of U.S. Patent no. 5,281,855, and has confirmed that infringement of said patent has been conceded by Sokymat S.A. This ruling was in response to an appeal filed by Sokymat suggesting that the trial court abused its discretion in ruling in Trovan's favour.

The second argument by Sokymat concerned the issue of inventorship of U.S. Patent no. 5,281,855. This issue has been remanded by the Appeals Court for resolution by the District Court.

The cross appeal by Trovan et al. concerning the ownership of Ake Gustafson's U.S. Patent No. 5,572,410, which the District Court determined was owned by Mr. Gustafson, has been denied.

In unrelated legal action by Metget of Sweden, claims 12 - 24 of the European counterpart to the above-mentioned Gustafson U.S. patent no. 5,572,410, the EP 0573 469, have been ruled unenforceable by the German court, due to the existence of prior art. The value of this patent remains questionable.

For additional information in the United States please contact:

Electronic Identification Devices, Ltd.
Barbara Masin
telephone: 805-565-1288
fax: 805-565-1127
e-mail: bmasin@eidltd.com

Reflections on the voting process in SC19

by Joseph V. Masin, long-time delegate to WG3, on behalf of Trovan, Ltd.

March 2000 -- In these last few months we have witnessed the amazing spectacle of 27 nations voting in the forum of ISO/TC23/SC19, those votes being counted three times, and a different tally resulting each time.

Furthermore, some votes that were returned to SC19 in a timely fashion could not be found for inclusion in the vote. (It is perhaps interesting to note that all of the missing votes favoured withdrawal of ISO 11784/85).

It may be instructive to briefly summarize the history of this vote: On 5 March, 1998, Russia submitted a formal petition for vote by member nations of SC19. The request called for revision and/or suspension of the ISO 11784 and ISO 11785 standards, and provided an explanation itemising five major flaws in the standard. When the voting ballots were sent out by the SC19 secretariat, it was three months later, 15 June. The final response date was given as 15 September. In many countries of the northern hemisphere, this period happens to coincide with annual summer holidays, meaning that regular meetings of working groups and regular business activity are suspended or put on hold. Coincidence?

When the votes were counted by the SC19 secretariat, the initial tally of 5 October showed an overwhelming majority rejecting Russia's request. According to the tally, twelve nations favoured retention of the standard, seven favoured suspension and three abstained. [Click here to see the official result of the first tally ]

There were problems, however. Brazil, Chile and New Zealand, all P-member nations of SC19 and entitled to vote, were not even mentioned anywhere on the page. As it turned out, two P-member nations were incorrectly listed as O-members. O-members have observer status only, and their votes are not counted. Interestingly, both affected nations had voted in favour of suspension of the standard.

After a number of SC19 member nations contacted the SC19 Secretariat to complain, the Secretary consented to count the votes again. Now the tally was 9 to 12, still rejecting Russia's request, but the majority favouring retention of the standard as-is had narrowed somewhat. The P-member nations New Zealand, Brazil and Chile were now listed as 'not replying.' [Click here to see the official result of the second tally. ]

More official complaints by P-member nations followed. Mr. Zens retallied the votes a third time. The third tally showed 12 in favour of suspension and 12 in favour of the status quo. [Click here to see the official result of the third tally.]

According to ISO regulations, there must be a simple majority favouring a proposal in order to proceed with it. After the third tally, SC19 advised all inquirers that the vote was a tie and that, having fallen short by one vote, the Russian proposal was rejected. SC19 informed all inquirers that it considered the matter closed. It even brushed off the request of Sweden, which requested its vote to be correctly counted.
[Click here to see Sweden's vote.]
[Click here to see Sweden's request to have its vote removed from the tally 'not supporting addition of the proposed new work item.']

Judge for yourself whether New Zealand wished to retain the standard as-is:
[Click here and here to see New Zealand's clarification of its intent]

Three tallies... Three results... and, still, in the end, a lack of due process.

No further action was taken by SC19 until the Technical Programme Manager of ISO, Mr. F. Abram, wrote to the Secretary of SC19 on 20 November, 1998:
"[...] Having taken note of the above, it remains that there is a clear majority of members of ISO/TC23/SC19 willing to undertake further discussion and/or study on the five issues raised in the GOST-R. [...] As a minimum, appropriate answers should be given on each question put forward." The letter went on to recommend "a study of the concerned issues and to report back to subcommittee ISO/TC23/SC19 providing advices and or propositions for possible improvements of the concerned standards," [Click here to see the full text of the letter]

Five months later, on 14 April, 1999, the Secretariat of SC19 issued document ISO/TC23/SC19 N139, punting the problem back to WG3. It began by asserting that "As the result of voting (N137 Rev.1) is unequivocal [...]" That is an interesting choice of words considering the actual voting result, the rather unusual history of the vote count and the unresolved situation concerning the Swedish vote, and went on to say with studied understatement, "as there obviously exists an enormous need of discussion, the WG3 is asked to elaborate corresponding solutions [...]" [Click here to see the full text of the letter]

The WG3 leadership was, to put it mildly, an unenthusiastic recipient of the ISO Central Secretariat's suggestion to 'discuss' revisions to the standard. By April 1999, the WG3 had been restructured in such a way that all substantive discussion of standards was shunted over to a new entity called TWG. TWG meets separately from the working group and participation is by invitation only. TWG is in fact comprised exclusively of a select group of manufacturers, all vocal supporters of ISO 11784 and 11785 in its current, unamended form. [See statement of manufacturers.] TWG explicitly excludes manufacturers known to favour revision of ISO 11784 and 11785, as well as all delegates from the SC19 member nations.

At the April, 1999, meeting of WG3 in Lugano, in response to the ISO Central Secretariat's suggestion which was handed down via SC19, and pressure from the delegates of voting nations present at the meeting, the leadership of WG3 was forced to put the issue of revision on the agenda. The chairman of WG3 responded to pressure by national delegates by forming an ad hoc committee for the ostensible purpose of discussing revisions to the standard. it consisted of seven delegates. Interestingly, six of the seven hailed from nations that opposed revision of the standard. Three of these hailed from a single nation: Holland.

By September 1999, when it was discontinued, the ad hoc committee had not even been convened a single time. When confronted about this rather remarkable omission during the WG3 meeting of September 1999, the Chairman of WG3 admitted that he had never even attempted to convene the ad hoc committee. He also admitted, he had never invited input from the SC19 member nations. When pressed for the reason, he offered an excuse: his father "had been ill." He proceeded, in almost the same breath, to reprimand efforts made by the single ad hoc committee who hailed from a nation favouring revision (Canada) to solicit input from the SC19 member nations. He concluded by stating that, since there was no input from SC19 member nations, the issue was closed.

TWG announced in the same meeting that it had determined conclusively, in its closed session, that there was no need to revise the standard. This was no surprise, considering the fact that the membership consisted of companies that opposed revision of the standard in the first place. When one of the national delegates moved from the floor that a vote be taken to determine the wishes of the working group, the chairman flatly refused. It was clear that the majority of delegates present in WG3 favoured revision. The leadership of WG3, with loud, vocal support from certain manufacturers, ruled that there would be no voting, and that the request for discussion by the ISO Central Secretariat had been concluded and that the matter of revision was now closed. When delegates from P-member nations protested, they were shouted down. In fact, the official minutes of the meeting did not document the repeated motions made by WG3 members attempting to put the matter to a vote and protesting the lack of due process by the leadership of WG3.

Considering the means by which this seriously flawed standard has been upheld, in both SC19 and WG3, the legitimacy of the standard is questionable, at best. The documented problems with the standard have not been addressed either by WG3 or SC19. Inspite of the documented will of the majority of SC19 members, there has been no calling to account.

Within the structure of ISO, the technical committees and working groups operate with great latitude and independence, and are not directly subordinated to th Central Secretariat of ISO, which does not have the means to call them to order, even in the event of gross violations of due process. The authorities in the Central Secretariat have only the power of persuasion at their disposal, and the ability to make suggestions. Ultimately, the leadership of technical committees is not answerable to any higher authority.

Under the circumstances, then, there appears to be no process by which the egregious violations of due process in TC23/SC19 can be corrected. There is no provision for ensuring that the will of the majority of the P-member nations in SC19 is acted upon. The majority of SC19 has spoken: the standards are not suitable for use as currently written, and must be fixed. What did WG3 do? Nothing. What did SC19 do about what happened in WG3? Nothing.

As officials of ISO never cease to point out, users implementing ISO standards are on their own: they implement ISO standards at their own risk and responsibility. The fact that ISO 11784 and ISO 11785 carry the 'ISO' label is no guarantee for their quality or suitability to the job they purport to do. In fact there are major documented problems with the standard. Users implement them at their own risk and responsibility. The moral of this story is: User Beware.

Pfizer, Inc. Permanently Enjoined From Using Trovan Mark for its Antibiotic and Must Cancel its Mark in Trovan, Ltd. v. Pfizer, Inc. Trademark Infringement Case

Final Judgment of $143 Million entered against Pfizer, Inc.

February 25, 2000

Los Angeles, CA. --
US District Court Judge Lourdes G. Baird yesterday issued a permanent injunction against Pfizer, Inc. (NYSE:PFE), ordering the company to stop using the Trovan® mark as of October 16, 2000 and, until then, to "take immediate steps to...destroy all written marketing and promotional materials...and to stop making use of the word "TROVAN." The court canceled Pfizer's registration of the TROVAN mark with the US Patent Office, effective immediately. Final judgment in the amount of $143 million was entered against Pfizer, and the case sets an internationally important benchmark for trademark infringement and unfair competition cases [Trovan, Ltd. v. Pfizer, Inc., Case No. 98-0094 LGB (Mcx)].

Among other rulings issued yesterday, the Court declined Trovan's motion for treble damages or Pfizer's profits, finding that Trovan has already been "amply" compensated by the $143 million jury verdict, which was sufficient to "ensure that the guilty party will not return to its former ways and once again pollute the marketplace." The Court ordered Pfizer to pay prejudgment interest on that amount since the date of the October 12,1999 verdict. The case was tried by William E. Levin and Donald L. Abrams with the Laguna Beach, CA. law firm of Levin & Hawes. Percy Anderson and Robert F. Scoular from the Los Angeles office of Sonnenschein Nath & Rosenthal based in Chicago, IL. and Edward J. Horowitz of Los Angeles, CA. recently joined the litigation team.

"We have waited patiently for this day to come," said Joseph Masin, president of Electronic Identification Devices, Ltd., a co-plaintiff in the case, "and are pleased at the outcome. Now, our hope is that Pfizer and its management will be accountable for their wrongdoing and pay this judgment."

"In anticipation of an inevitable appeal and post-judgment motions," explained William E. Levin, "we have assembled an impressive appellate team that is committed every step of the way to protect and defend Trovanís rights. Pfizer may continue to use its vast financial resources to try and defeat justice, but we are confident that Trovan will prevail on appeal, upholding the jury's decision based on overwhelming evidence of blatant and egregious trademark infringement by Pfizer."

The trial began August 18, 1999, and, on September 22, the jury unanimously found Pfizer, Inc. liable for willful, bad faith trademark infringement and unfair competition, awarding Trovan, Ltd. $143 million in general and punitive damages on October 12, 1999. Trovan, Ltd. has used the Trovan® trademark since 1989 to globally market its system of biomedical electronic identification devices, and holds federal trademark registration No. 1649328 issued by the US Patent & Trademark Office in 1991, which became "incontestable" before the suit was filed. Trovan also has several US Food & Drug Administration approvals for its products.

Trovan, Ltd. is a British corporation based in Douglas, Isle of Man and owns the Trovan® trademark; Electronic Identification Devices, Ltd. is a California corporation based in Santa Barbara and is the exclusive North American distributor and a licensee of Trovan® products. Trovan, Ltd. globally markets a system of biomedical devices and also controls a portfolio of valuable patents for technology products such as radio identification systems, and it has recently expanded into pharmaceutical delivery systems.

Press Contact: Kathy Pinckert
Dial: 310-836-8355

Trovan, Ltd. Prevails in Destron Challenge to its Zipquill Technology

February 14, 2000

Santa Barbara, CA --
Trovan, Ltd., Electronic Identification Devices, Ltd. and InfoPet Identification Systems prevailed against the appeal by Destron Fearing [NASDAQ: DFCO] of Destron/IDI Inc. v. InfoPet Identification et al., Case No. 99-1373, to the US Court of Appeals for the Federal Circuit, which sought to hold Trovan, EID and InfoPet in contempt for marketing the TROVAN ZIPQUILL implantation technology.

"We are pleased that the courts vindicated our position that the TROVAN ZIPQUILL device is sufficiently different from Destron's U.S. patent no. 5,211,129, that any claim of infringement must be decided in a separate lawsuit," said Joseph Masin, president of Electronic Identification Devices, Ltd. "Destron's attempt to withhold the benefits of a superior animal identification technology from the U.S. market has been thwarted."

U.S. patent no. 5,211,129 held by Destron describes a glass encapsulated transponder that is implanted into animals by means of a syringe.

The TROVAN ZIPQUILL consists of a tiny tubular container which tapers to a sharp point. Inside is space for a small dose of antibiotic paste and/or for an identification transponder. The TROVAN device can be inserted very easily simply by pressing it, sharp point first, into skin with the thumb. No tools are necessary.

"The TROVAN device does not make an incision, or cut, in the skin as a syringe would. Rather it pierces the skin, allowing for rapid closure of the opening after penetration, thereby minimising tissue damage and trauma," said Joseph Masin.
"The TROVAN device is a biologically neutral starch capsule that is water soluble. It dissolves completely and is absorbed by the body within three hours of insertion. The TROVAN ZIPQUILL provides for unprecedented speed of application and eliminates medical waste. There is no transmission of infectious diseases, as can occur in reusable syringes, and no extensive personnel training is required." The TROVAN ZIPQUILL is protected by U.S. patent no. 5,549,560.

The US District Court for the District of Colorado, Judge Zita L. Weinshenk presiding, determined that the question of whether the TROVAN ZIPQUILL infringes Patent No. 5,211,129 is not appropriate in a contempt proceeding. When Destron appealed the court's ruling, the appellate court affirmed the ruling of the Denver court. The Judgment of the appellate court issued on February 10, 2000, one day after oral argument of the appeal.

TROVAN® products are used worldwide by governments, universities, and research facilities for animal identification applications, among others, ranging from the identification of salmon breeding stock to pet-recovery systems to livestock tracking.

Trovan, Ltd. is a British Corporation: Electronic Identification Devices, Ltd. is a California corporation based in Santa Barbara and is the North American distributor and a licensee of TROVAN® products, as is InfoPet Identification Systems, a Minnesota-based corporation.

Contact: Barbara Masin
Dial: 805-565-1288
e-mail: bmasin@eidltd.com