Bloomberg News

Boston Scientific, Barnes, Bi-Mart: Intellectual Property

June 08, 2011

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

June 8 (Bloomberg) -- Boston Scientific Corp., the second- biggest maker of implanted heart devices, won an appeals court ruling in a patent-infringement case against Johnson & Johnson.

The U.S. Court of Appeals for the Federal Circuit in Washington yesterday upheld a lower court ruling that four patents on drug-coated stents owned by J&J’s Cordis unit are invalid because the company failed to accurately describe the invention. The case is one of multiple disputes between J&J and Boston Scientific over stents, mesh tubes that prop open arteries.

The decision may also benefit Abbott Laboratories, which is being sued by Cordis over the same technology and had won a district court ruling last year that the patents were invalid. Abbott Park, Illinois-based Abbott makes Xience stents and licenses the Promus stent to Natick, Massachusetts-based Boston Scientific.

Cordis’s Cypher stent uses rapamycin, also called sirolimus, to limit the growth of scar tissue that can cause the artery to narrow. Cordis’s patents were for compounds derived from rapamycin, and the appeals court ruling centered on whether scientists had actually done research on derivatives as Cordis claimed or the company merely added language to the patent that any potential analog is covered.

The case stemmed from Boston Scientific lawsuits that sought rulings that the Promus stent wasn’t infringing the patents. Promus uses the compound everolimus to prevent tissue growth.

Boston Scientific last year agreed to pay New Brunswick, New Jersey-based J&J $1.73 billion to end some of the other patent lawsuits between the companies over stent technology.

The case is Boston Scientific Corp. v. Johnson & Johnson, 2010-1230, 2010-1231; 2010-1233; and 2010-1234, U.S. Court of Appeals for the Federal Circuit (Washington). The lower court cases are Boston Scientific Corp. v. Johnson & Johnson, 07cv033, 07cv0348, 07cv409, 07cv765, all U.S. District Court for the District of Delaware (Wilmington).

U.K. IPO Asks Whether Existing Law Works for Generics Trials

The U.K.’s Intellectual Property Office is seeking comments on whether existing patent law provides enough protection for those seeking regulatory approval of generic drugs.

The office is consulting with a wide range of stakeholders and others, including pharmaceutical companies and their professional associations, biotech industry groups, intellectual property lawyers, companies that conduct clinical trials on behalf of others, individual law firms, technology-transfer organizations and research institutes.

The deadline for submitting comments to the office is July 31.

Barnes & Noble Sues to Block LSI Patent Royalty Claims on Nook

Barnes & Noble Inc., the largest U.S. bookstore chain, sued LSI Corp. to prevent the chipmaker from demanding patent royalties on sales of the Nook digital reader.

LSI notified Barnes & Noble on June 29, 2010, and at other times “its intention to pursue claims of infringement of the LSI patents,” the New York-based bookseller said in a complaint filed June 6 in federal court in San Francisco.

The preemptive move reflects the legal headaches Barnes & Noble is facing since it began manufacturing a technology gadget in 2009, branching out from its traditional business as a retailer of books and other products. The company was named in 14 patent-infringement lawsuits last year, up from three in 2008, according to Bloomberg Law data. Including LSI, the company is involved in nine complaints so far this year.

“If you’re a book company, you never get sued,” said Robert Yoches, a patent lawyer at Finnegan Henderson in Washington who specializes in electronics cases. “Then you move online and you get sued a little bit. Now you’ve got an electronic box. As you add features, it becomes more like a computer.”

Electronic devices are more frequently the target of patent suits and royalty demands because the products typically include thousands of features and circuits, many of which are covered by patents, he said.

Mary Ellen Keating, a spokeswoman for Barnes & Noble, declined to comment on the case. The company is seeking an order that it isn’t using technology covered by 10 LSI patents.

“Barnes & Noble does not infringe and has not infringed the LSI patents,” the company said in the filing.

LSI makes chips used in computer disk drives and reported $2.57 billion in revenue last year. The patents cited in the lawsuit include technology for wireless local-area networks, ways to enhance communications, and a DVD audio decoder.

Derrick Meyer, a spokesman for the Milpitas, California- based company, didn’t immediately return a telephone call seeking comment.

Barnes & Noble in July sued Xerox Corp. and Alcatel-Lucent SA seeking rulings that it doesn’t have to pay patent royalties to those companies.

The biggest patent dispute for Barnes & Noble is one brought by Microsoft Corp., which filed a complaint in March at the U.S. International Trade Commission in Washington seeking to block imports of the Nook. Microsoft claims any electronics that run on Google Inc.’s Android operating system, including the Nook, infringe its patents and is demanding licensing fees.

The case is Barnes & Noble Inc., 11cv02709, U.S. District Court for the Northern District of California (San Francisco).

For more patent news, click here.


Vienna Beef Sues Founder’s Grandson for Infringing Trademarks

Vienna Beef Ltd., a Chicago-based meatpacker that makes ‘Chicago-style” hotdogs, sued the grandson of one of its founders for trademark infringement.

The lawsuit, filed June 6 in federal court in Chicago, accuses Scott A. Ladany and his Red Hot Chicago Inc., of “hijacking” Vienna’s goodwill, name, history, trade secrets and products.

Ladany, who left Vienna Beef in 1983, has no affiliation with the company, and is accused of claiming that his company’s hot dogs are made with Vienna’s original 108-year-old recipes. Those recipes are trade secrets that Ladany isn’t authorized to use, according to court papers.

Vienna claims the public is confused by Ladany’s business practices, falsely believing that a connection exists between the two companies. The company accused Ladany and Red Hot Chicago of trying to convince vendors that their customers wouldn’t be able to tell the difference between the two companies’ hot dogs. It also objects to Ladany’s claim “to a legacy of 118 years of hot dog production.”

Vienna asked the court to bar Ladany’s alleged infringement of its trademarks and use of its trade secrets, and from claiming his business is a continuation of Vienna. It also seeks money damages, including profits Ladany derived from his alleged infringement, and extra damages to punish him and his company for their actions.

Additionally, Vienna asked for awards of attorney fees and litigation costs.

Ladany didn’t respond immediately to an e-mailed request for comment.

Vienna Beef is represented by Jonathan S. Goodman, Louis J. Phillips, Jordan Herzog and Phillip S. Reed of Chicago’s Patzik Frank & Samotny Ltd.

The case is Vienna Beef Ltd. v. Red Hot Chicago Inc., 11- cv-0825, U.S. District Court, Northern District of Illinois (Chicago)

Forever 21 Claims ‘’ Blog Infringes Trademark

Forever 21 Inc., a Los Angeles-based retail clothing chain, sent a cease-and-desist letter to a blogger who writes satiric reviews of items the chain sells.

Rachel D. Kane, who writes the blog, was told that her blog’s name “refers to an abbreviation for colloquial expression that the general public may find offensive.” The clothing chain objects to the use of the expression, WTF, “in conjunction with our company’s name, registered trademark and domain name.”

She was given until May 2 to respond and comply with the company requests, according to the letter signed by associate counsel Jerry Noh. Failure to comply could result in a suit alleging trademark and copyright infringement, he said.

One of Forever 21’s demands is that the blog be taken down. When accessed yesterday, the blog was still up and running.

Kane said on her blog that while she loves the store and her personal wardrobe mainly comprises items she buys there, “every now and then something goes terribly awry” and makes her “utter the immortal acronym, WTF.”

She offers the caveat in several places on her blog that “the term “Forever 21” is a trademark of Forever 21, Inc. This site is not affiliated with Forever 21, Inc.”

Bi-Mart Settles Dispute Over Country Music Festival Trademark

Bi-Mart Corp.’s trademark dispute over the name for an Oregon music festival has been settled, the Register-Guard newspaper reported.

The founder of the Willamette Country Music Festival sued Bi-Mart in federal court in Eugene, Oregon, Jan. 11. Williamson claimed he owned the festival and that Bi-Mart was misappropriating the trademarks by using the same name for an upcoming event.

He accused Bi-Mart and others involved with the new festival of trying to trade on the reputation and goodwill he established, according to court papers.

The case is Willamette Country Music Festival Inc., v. BI- Mart Corp., 6:11-cv-06007-HO, U.S. District Court, District of Oregon (Eugene).

For more trademark news, click here.


New Zealand’s New Copyright Law Enforcement May Burden ISPs

New Zealand’s new copyright law, which goes into effect in September, may lead to Internet service providers receiving about 3,000 notices a day of customers’ illegal downloading activity, the New Zealand Herald reported today.

Mark Callander, who heads Slingshot, an Internet service provider in that country, told the Herald he hasn’t heard any details about how the notification system will work.

Costs to process the notices may be as high as NZ$61 ($50) apiece, Callander told the Herald.

Guilty Plea Entered in $1 Million Counterfeit Software Case

A 31-year-old Cincinnati resident pleaded guilty to selling more than $1 million worth of counterfeit software, the U.S. Justice Department said in a statement.

Brandon C. Davis pleaded guilty to criminal copyright infringement and other charges in connection with his Internet sale of financial and tax-preparation software.

He sold the software on EBay Inc.’s auction website, and mailed the products to buyers with a false disclaimer that he was acting as a broker for another seller, the government said in the statement.

Davis faces a potential prison sentence of more than 20 years, and must pay restitution in an amount to be determined by the court. He also agreed to forfeit all computer items used to manufacture and distribute the fake software, a 2006 Hummer vehicle and the $192,000 the U.S. Postal Service seized from his bank accounts.

Davis was represented by Herbert Jaime Haas of The Citadel LLC of Cincinnati. The government was represented by Timothy S. Mangan of the U.S. Attorney’s Office for the Southern District of Ohio, and Tara M. Swaminatha of the Justice Department’s Criminal Division’s Computer Crime and Intellectual Property Section.

The case is U.S. v. Davis, 1:11-cr-00061-HJW, U.S. District Court, Southern District of Ohio (Cincinnati).

For more copyright news, click here.

--With assistance from Susan Decker in Washington and Matthew Townsend in New York. Editor: Stephen Farr

To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at

To contact the editor responsible for this story: Michael Hytha at

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