Bloomberg News

Roche, Siemens, ISYS-Google, Best Buy: Intellectual Property

June 07, 2011

(This is a daily report on global news about patents, trademarks, copyright and other intellectual property topics. Updates with Rambus in Patent section.)

June 7 (Bloomberg) -- The U.S. Supreme Court, in a ruling that limits the patent rights of research universities, threw out Stanford University’s suit against a Roche Holding AG unit over methods for testing the effectiveness of AIDS treatments.

Voting 7-2, the justices upheld a lower court’s conclusion that a scientist working at Stanford in Palo Alto, California, transferred his rights to the discoveries to a company whose line of business Roche later bought. Under the court’s reasoning, the transfer made the company a co-owner of three disputed patents.

The ruling is a setback for universities, which had contended the transfer was barred under a U.S. law that governs federally funded research. Universities said earlier that a ruling favoring Roche might cast doubt on patents stemming from hundreds of billions of dollars in research.

The decision is a victory for companies that collaborate with universities in research. Intel Corp., Eli Lilly & Co., Johnson & Johnson and Pfizer Inc. were among the companies that supported Roche, the world’s largest maker of cancer drugs.

The dispute turned on a 1980 law that allocates patent rights among the government, investors and institutions that receive federal money. Writing for the court in yesterday’s opinion, Chief Justice John Roberts said that law didn’t displace the longstanding principle that inventors have first claim to their discoveries.

“Although much in intellectual property law has changed in the 220 years since the first Patent Act, the basic idea that inventors have the right to patent their inventions has not,” Roberts wrote.

Justices Stephen Breyer and Ruth Bader Ginsburg dissented.

Universities are already in the practice of securing patent rights for work done by employees, said Steve Chang, a patent lawyer with Banner & Witcoff in Washington.

He said a victory for Stanford would have created “paranoia” in cases involving the transfer of rights by an employee to a third party.

“What would have happened is that each one of those third parties would have had to question whether the assignment they got from the employee effectively transferred anything,” Chang said. “There’s a chance the employee didn’t have rights to assign in the first place.”

The case is Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, 09-1159.

Siemens’s Osram Sues Samsung Claiming Patent Infringement (1)

Siemens AG’s Osram unit sued Samsung Electronics Co. and LG Electronics Inc. in the U.S. and Germany over flat-panel displays, Osram said yesterday in a statement.

Samsung is infringing some of 10 U.S. patents, Munich-based Osram said in papers filed yesterday in federal court in Wilmington, Delaware. It asked for damages and an order to stop the infringement.

“Samsung has, without authorization or license, infringed,” and “in a willful and wanton manner in deliberate disregard of the patent rights,” Osram contends in the complaint.

Osram said in its statement the patents involve technology used in LED displays for light-conversion and electrical and thermal connections in backlighting for TV sets and monitors. In addition to the U.S. suits, it sued LG in Japan, it said.

Complaints were filed with the U.S. International Trade Commission in Washington seeking to block imports of the Samsung and LG products. The ITC complaint against LG Electronics also accuses LG Innotek Co., which supplies LEDs to LG Electronics and is partly owned by the Seoul-based company.

The ITC is an independent agency that investigates allegations of unfair trade practices. It has the power to block products that violate U.S. patent rights. If it agrees to investigate the claims, its review will take from 15 to 18 months.

The Samsung ITC case is In the Matter of Light-Emitting Diodes and Products Containing Same, Complaint No. 2813, and the LG case is In the Matter of Certain Light-Emitting Diodes, Complaint. No. 2812, both U.S. International Trade Commission (Washington). The Delaware lawsuit is Osram GmbH v. Samsung Electronics Co., U.S. District Court, District of Delaware (Wilmington).

Freescale Agrees to License Rambus Patents to Settle Lawsuit

Rambus Inc., a designer of high-speed memory chips, said it settled a patent dispute with Freescale Semiconductor Holdings over inventions for memory controllers.

Freescale, the largest supplier of chips to the U.S. automobile industry, agreed to license the Rambus patents for five years for undisclosed terms, according to yesterday’s statement from Sunnyvale, California-based Rambus. The technology relates to “memory controllers and serial links in a broad range of logic integrated circuit products,” Rambus said.

Rambus filed the infringement complaint against Austin, Texas-based Freescale as part of a U.S. International Trade Commission case against Broadcom Corp. and Nvidia Corp. The case against those two companies is pending as a companion to a civil lawsuit filed in federal court in San Francisco.

Freescale raised $783 million in an initial public share offering last month.

The ITC case is In the Matter of Certain Semiconductor Chips and Products Containing Same, 337-753, U.S. International Trade Commission (Washington). The civil case is Rambus Inc. v. Freescale Semiconductor Inc., 10cv5445, U.S. District Court for the Northern District of California (San Francisco).

For more patent news, click here.

Trademark

ISYS Technologies Sues Google Over Trademark for Chromium

ISYS Technologies Inc., which manages intellectual property patents, said it sued Google Inc. claiming that the Web search company’s Chrome operating system violates the trademarks for ISYS’s Chromium Modular Computer.

ISYS said in a statement yesterday that it seeks to stop Google and its marketing partners Amazon.com Inc., Best Buy Co., Samsung Electronics Co. and Acer Inc. from selling Chrome products “on or about June 15.”

ISYS said it holds patents for the Xi3 Chromium computer and filed a trademark registration for ChromiumPC with the U.S. Patent and Trademark Office last June. Google, based in Mountain View, California, has opposed the granting of the trademark, according to Salt Lake City-based ISYS.

Google’s operating system is based on its Chrome Web browser. The company is marketing a laptop, the Cr-48, which is the first computer to run the Chrome operating system.

Aaron Zamost, a Google spokesman, didn’t immediately respond to an e-mail seeking comment.

New Mexico-Grown Chiles to Receive Limited Trademark Protection

Although both the state and the growers’ association lack the money to register a trademark with the U.S. Patent and Trademark Office, New Mexico’s chile peppers will receive a form of intellectual property protection, the Silver City Sun-News reported.

State legislators enacted the New Mexico Chile Advertising Act, which was signed into law in April, and goes into effect July 1, according to the newspaper.

The new law will give inspectors from the state’s agriculture department the power to audit the sales records of companies that sell chile peppers and the ability to seek court orders against companies that claim falsely they are selling genuine New Mexico chiles, according to the Sun-News.

Guidelines implementing the new law will be developed after a series of public hearings in which farmers, produce vendors and restaurateurs will be heard, the newspaper reported.

Best Buy Gets Alleged Infringer’s Telephones Disconnected

Best Buy Co., the Richfield, Minnesota-based electronics retailer, persuaded a federal judge to order the disconnection of three telephone numbers belonging to a Michigan computer- repair service.

U.S. District Judge Joan N. Ericksen told Andrew A. Clayton of Oak Park, Michigan, he had to disconnect three telephone numbers, and that he couldn’t use call forwarding or any recorded messages to direct callers to those numbers elsewhere.

Best Buy sued Clayton for trademark infringement in federal court in Minnesota in January 2010. The electronics company objected to Clayton’s use of “Geek Squad” as part of the name of his computer-repair service. The electronics company said it has used “Geek Squad” in connection with its computer-repair service since 1994, and owns several trademark registrations for the name.

According to court papers, Best Buy said that beginning in 2008, it received complaints from customers who thought the repairs performed by Clayton’s company were affiliated with Best Buy. The company sent Clayton a series of cease-and-desist letters beginning in 2009, it said in court papers.

In April 2010, Clayton agreed to quit using “Geek Squad” in connection with his company, and not to contest the validity of Best Buy’s Geek Squad marks, according to a court document. He also agreed then to take down any listings that affiliated his phone numbers with the term “Geek Squad” to change his telephone numbers, and to pay $50,000 in damages.

Best Buy went back to court in February, claiming Clayton hadn’t complied with his settlement agreement and was continuing to infringe the marks. Judge Ericksen’s order came in response to that request.

The case is BBY Solutions Inc., v. Andrew A. Clayton, 0:10- cv-00062-JNE-FLN, U.s. District Court, District of Minnesota (Minneaplolis).

NHL Falcons May Become ‘Whiteout” When Team Moves to Winnipeg

When the Atlanta Thrashers National Hockey League team relocates to Winnipeg, Manitoba, recent Canadian trademark applications indicate the team may be renamed the “Whiteout,” the Winnipeg Sun reported June 5.

The Canadian Intellectual Property Office received a request to register the term from the company that is being used by True North Sports and Entertainment to buy the team, according to the Sun.

The Sun also noted that one of the Internet domain-name registration sites has registered “winnipegwhitehout.ca.

During the 1972-1996 seasons when Winnipeg had the Jets hockey team, fans who dressed all in white for playoff games referred to themselves as the “Whiteout,” the Sun reported.

For more trademark news, click here.

Copyright

South African Musicians Seek Changes in Nation’s Copyright Law

Members of the Performers Organization of South Africa are seeking changes in that nation’s copyright law to make it easier for them to collect royalties, the Mail & Guardian reported.

The performers gave a petition to the Ministry of Trade and Industry yesterday they said would close loopholes in existing legislation, according to the Mail & Guardian.

They claim they are losing about 100 million South African rand ($14.8 million) they should receive when their songs are played in public places, performed on radio or television, or downloaded to electronic devices, the Mail & Guardian reported.

In 2010, South Africa’s Department of Trade and Industry set up a commission to investigate whether royalties due performing artists were being withheld, according to the news website.

For more copyright news, click here.

IP Moves

Maria Pallante Named to Top Post at U.S. Copyright Office

Maria Pallante was named register of copyrights and director of the U.S. Copyright Office effective June 1, according to a statement from the U.S. Library of Congress.

Pallante, the 12th to hold this post, has served as acting director since the December retirement of her predecessor Marybeth Peters.

She has served as executive director of the National Writers Union and as assistant director of the Authors Guild, and was an associated counsel at Lightman, Trister, Singer & Ross, a Washington-based law firm and literary agency now known as Trister, Ross, Schadler & Gold PC.

Pallante has also worked as IP counsel and director of the licensing group for the Guggenheim Museums, and has held posts within the Copyright Office since 1997. After she graduated from law school, she served as an administrative law clerk in the appellate division of the U.S. Labor Department.

She has an undergraduate degree in history from Misericordia University and a law degree from George Washington University.

--With assistance from Susan Decker and Greg Stohr in Washington, Don Jeffrey in New York, and Phil Milford in Wilmington, Delaware. Editors: Glenn Holdcraft, Mary Romano.

To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at vslindflor@bloomberg.net.

To contact the editor responsible for this story: Michael Hytha at mhytha@bloomberg.net.


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