Samsung Electronics Co. and LG Electronics Inc., Asia's two biggest mobile-phone makers, won an appeals court ruling lifting a ban on U.S. imports of their newest models of handsets that run on Qualcomm Inc. chips.
The U.S. Court of Appeals for the Federal Circuit said yesterday that the International Trade Commission in Washington exceeded its authority in imposing a ban on the handset makers because they weren't named in Broadcom's complaint. The court also ordered the agency to reconsider the infringement finding.
Qualcomm, the world's biggest maker of chips that run mobile phones, argued in July that the import ban threatened to ``cripple the entire mobile-phone industry.'' The case involved almost all of the newest mobile phones using so-called third- generation, or 3G, technology that improves Internet connections.
``Broadcom knew the identities of all of our customers,'' Qualcomm lawyer Alex Rogers said in a phone interview. ``The ITC moves so quickly, it's very difficult to get everything done. In this case, if Broadcom had named these third parties, they could have come in to defend themselves.''
The ruling also affects handset manufacturers including Motorola Inc., Sanyo Electric Co., Kyocera Corp. and Foxconn International Holdings Ltd., and service providers AT&T Inc., Sprint Nextel Corp., Deutsche Telekom AG's T-Mobile and Palm Inc.
The Federal Circuit, which specializes in U.S. patent law, upheld the validity of the patent owned by Irvine, California- based Broadcom (BRCM:US). The patent, which expires in 2010, covers a way to save battery life when a phone is outside its usual network.
The ITC, in issuing the June 2007 ban of some phones using Qualcomm chips, decided the only way to stop imports of the chips that violate the Broadcom patent was to block phones that use them. That order, which would have limited the ability of the phone companies to introduce new models for last year's holiday season, was put on hold pending the appeal.
The Federal Circuit said the ITC could only issue the type of order it did if all the parties involved were named in the case and had a chance to respond. The handset makers and phone companies weren't allowed to argue the issue of infringement, although they did take part in a hearing on the ban.
Broadcom could only avoid that by showing it had no way to identify San-Diego-based Qualcomm's customers, the appeals court ruled.
``Broadcom knew when it filed its complaint that almost all of the accused chips entering the United States were incorporated into handsets by third parties, rather than being imported separately by Qualcomm,'' the Federal Circuit said.
Broadcom spokesman Bill Blanning said the Federal Circuit upheld the finding that the handset makers violate the patent. The ITC was ordered to re-examine whether Qualcomm intended that its chips, when acting with the handsets, violate the patent under a new standard set by the court in another case.
``We believe that Qualcomm's continued use of our patented technology would certainly meet the new standard of intent and be found to infringe,'' Blanning said.
The ITC could issue a new order blocking Qualcomm from bringing into the U.S. the small number of chips it uses for research and testing, the appeals court said.
The cases are Broadcom Corp. v. U.S. International Trade Commission in Washington, 2007-1164, and Kyocera Wireless Corp. v. ITC, 2007-1493. The ITC case is In the Matter of Certain Baseband Processor Chips and Chipsets, 337-543, U.S. International Trade Commission.
For more patent news from yesterday, click here
Marimekko, Dolce & Gabbana End Proceedings in Trademark Dispute
Marimekko Oyj, the Finnish textiles company whose bright- colored fabrics became a signature of contemporary Finnish design, and Italian fashion label Dolce & Gabbana SpA agreed to end legal proceedings against each other in a trademark dispute.
An agreement was reached yesterday on the handling of already-manufactured products bearing the Unikko poppy design and on a fee to be paid to Marimekko, the Helsinki-based company said yesterday in a statement, without being more specific. The fashion press had noted the similarity between the Marimekko design and the textile pattern used in some Dolce & Gabbana garments.
Dolce & Gabbana in July filed an application with the European Union's Office for Harmonization in the Internal Market disputing the trademark. Marimekko, which first used its splashy print on fabrics in 1964, had earlier challenged the Italian company's use of a similar flower pattern in Germany.
Marimekko licensed the Unikko design to Avon Products Inc. (AVP:US) for a collection of cosmetics released in June.
Morris Yacht Asks for Declaration Trademarks Aren't Infringed
Morris Yacht Inc., a maker of high-end semi-custom yachts, asked a federal court in Maine to declare it isn't infringing trademarks belonging to a Wisconsin boat-builder.
Melges Performance Sailboats of Zenda, Wisconsin, sent Morris Yacht a cease-and-desist letter April 11, demanding the company not attempt to register trademarks including the letter M in reference to different models and series of boats.
Melges asked Morris to phase out its use of the letter M in six months, according to the court file.
Morris has used the letter M as a designation for its various yachts since 2003, according to court papers. The company's small sailing yachts sell for as much as $750,000.
Melges had been using the mark since the early 1950s, the Wisconsin company said in its cease-and-desist letter.
Morris said it has ``no plans to quit using the M Series Mark or the M Series model designation for its sailboats.'' It asked the court to declare it's not infringing Melges' marks, and for an award of costs and attorney fees.
Anthony Dietz Pellegrini of Bangor Maine's Rudman & Winchell represents Morris Yacht.
The case is Morris Yacht Inc. v. Melges Performance Sailboats, 1:08-cv-00345-JAW, U.S. District Court, District of Maine (Bangor).
Cold.com Domain Name Auction: $1 Million Minimum Bid Required
An auction for the domain name ``cold.com'' will be completed Nov. 14, according to a statement from Patent Kinetics LLC, an IP strategy, evaluation and brokerage company.
The minimum bid accepted is $1 million, the company said in its statement. Among the likely bidders, the company suggested, would be makers of alcoholic and non-alcoholic beverages, ice cream and other dairy products, cold medicines and pharmacies; winter sports destinations, providers of refrigeration and cold storage facilities, and computer software and video games.
Domain names that have sold for more than $1 million include sex.com, which sold for $14 million; fund.com, which sold for $9.9 million; porn.com, which brought in $9.5 million; business.com, which sold for $7.5 million; beer.com, which brought in $7 million, and AsSeenOnTv.com, which sold for $2 million, according to Boston-based Patent Kinetics.
Hong Kong Customs Raids Photocopying Shops Over Copyrights
Customs Officials in Hong Kong conducted a two-week campaign against illegal photocopying and seized 174 infringing photocopies of books, according to a statement released through Media Newswire.
Police raided six photocopying shops, arrested five men and three women, and, in addition to the infringing books, seized six photocopy machines and six binding machines.
If those arrested are convicted of copyright infringement, they may face fines of as much as $50 for each infringing copy and a four-year prison term.
Customs officials conducted the raids after receiving information from copyright owners about possible illicit photocopying.
Martin Luther King Love Letters Central to IP Rights Fight
Martin Luther King's love letters to his wife Coretta Scott King are among the disputed writings in an intellectual-property rights battle between the children of the late civil rights leader, the Atlanta Journal Constitution reported yesterday.
King Inc., run by Dexter King, and established to control IP rights to his father's writings, signed a $1.4 million contract in May with Person Plc's Penguin Group for a biography of his mother. His sister, Bernice King, refuses to hand over the love letters for Penguin's author to use for background in writing a biography of their mother, according to the newspaper.
King Inc. is seeking an order from an Atlanta-based Georgia state court that would force Bernice King to surrender the letters to the biographer by the Oct. 17 deadline specified in the contract, the Journal Constitution reported.
Coretta Scott King kept the letters in a suitcase under her bed, and they were among her most cherished possessions, according to the newspaper.
New Measure Creating `Copyright Czar' Signed into Law.
A measure naming a cabinet-level ``copyright czar'' answerable to the U.S. government's executive branch was signed into law Oct. 13 by President George W. Bush.
Under the new law, the president has the authority to appoint the intellectual property enforcement coordinator, and the appointment is subject to confirmation by the U.S. Senate.
The bill -- known as the ``PRO IP Act'' -- increases statutory damages in civil counterfeiting cases, and strengthens remedies for the prosecution of criminal cases. Among items that can be seized are all copies ``claimed to have been made or used in violation of the exclusive right of the copyright owner,'' according to the bill's text.
The court can order the seizure to take place ``any time while an action'' under the law is pending.
The new bill is ``music to the ears of all who care about strengthening American creativity and jobs,'' Mitch Bainwol, chairman and chief executive officer of the Recording Industry Association of America, said in a statement. The Motion Picture Association of America and U.S. Chamber of Commerce also supported the measure.
``The PRO-IP Act sends the message to IP criminals everywhere that the U.S. will go the extra mile to protect American innovation,'' Tom Donahue, the Washington-based chamber's president and CEO, said in a statement. ``Congress and President Bush have done their part to support America's innovators, workers and consumers, who all depend on intellectual property.''
The Electronic Frontier Foundation, a San Francisco-based advocacy group focused on digital rights, said on Oct. 8 the rationale for the act is based on ``flawed, empty data'' about piracy's impact.
For more copyright news from yesterday, click here
For more trademark news from yesterday, click here
Honigman Miller Opens Kalamazoo Office, Adds Six IP Lawyers
Honigman Miller Schwartz & Cohn opened an office in Kalamazoo, Michigan, and hired one intellectual-property partner and five IP associates to help staff it, the Detroit-based firm said in a statement.
All of the new lawyers joined from Detroit's Miller, Canfield, Paddock & Stone. They are Jonathan P. O'Brien, Thomas A. Wootton, Andrew N. Weber, Kathryn D. Soulier, Kelly T. Murphy and Noel E. Day.
O'Brien, who joined the Honigman firm as a partner, does patent application, opinion and licensing work. He has represented clients whose technologies included inorganic and polymer chemistries, biotechnology, material science, physics, nanotechnology, mechanical engineering and pharmaceuticals.
He has an undergraduate degree in chemistry from Hope College, a doctorate in chemistry from Massachusetts Institute of Technology and a law degree from Michigan State University.
Day, who does patent application and opinion work, also has worked at Pillsbury Winthrop. Her academic background is in immunology and molecular biology.
She has an undergraduate degree in psychology and a doctorate in comparative and experimental medicine from the University of Tennessee, and a law degree from the University of San Francisco.
Wootton was a senior counsel at Pfizer Inc. (PFE:US) before he worked at Miller, Canfield. He joined Honigman as a partner.
He has an undergraduate degree from the University of California and a law degree from the University of California's Hastings College of Law.
Weber, who joins Honigman as an associate, has an undergraduate degree from Eastern Michigan University and a law degree from Michigan State University.
Soulier, who also joins Honigman as an associate, received her undergraduate degree from Kalamazoo College and her law degree from the University of Arizona.
Murphy, also an associate at the Honigman firm, has an undergraduate degree in biological sciences and a master's degree in molecular biology from Western Michigan University and a law degree from Catholic University of America.
Blank Rome Adds Akin Gump's Daniel E. Yonan to Its IP Group
Blank Rome (1219L:US) hired Daniel E. Yonan for its intellectual- property litigation group, the Philadelphia-based firm said in a statement Oct. 13.
Yonan was former counsel to Washington's Akin Gump Strauss Hauer & Feld (1117L:US) and has worked for Pillsbury Winthrop. Before he was a lawyer, he was a pharmaceutical-research scientist at Pfizer Inc.
A litigator, Yonan has represented Glenmark Pharmaceuticals Ltd.'s Glenmark Generics unit, Valent USA Inc., Sumitomo Chemical Co., VeriSign Inc. (VRSN:US), Artemi Ltd., Stamina Products Inc. and Cable & Wireless Plc.'s Cable And Wireless Internet Services unit, according to Bloomberg data.
He has an undergraduate degree from the University of Illinois and a law degree from the John Marshall Law School.
Pearl Cohen Opens Boston Office, Hires Sibley P. Reppert
Pearl Cohen Zedek Latzer, an IP specialty firm based in Tel Aviv, opened an office in Boston headed by new hire Sibley P. Reppert, the Boston Business Journal reported yesterday.
Reppert, who joins as a partner, previously worked at Lahive & Cockfield; Samuels, Gauthier, Stevens & Reppert; Posternak, Blankstein & Lund; Goodwin Procter (1176L:US); and Herrick & Smith. He also has served as chief executive officer of Incogno Corp. and LawRisk Inc., and as an officer in the submarine service of the U.S. Navy.
He has an undergraduate degree from Wesleyan University, a master's degree in philosophy from Oxford University, and a law degree from Harvard University.
For Bloomberg articles by lawyers on intellectual property Topics click here.
For daily Bloomberg legal analysis click here
To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at firstname.lastname@example.org.
To contact the editor responsible for this story: Patrick Oster at email@example.com