Bloomberg News

Microsoft, Gigaset, Apple, McDonald’s: Intellectual Property

October 25, 2011

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

Oct. 25 (Bloomberg) -- Microsoft Corp. signed a deal with Compal Electronics Inc. for tablets, mobile phones, e-readers and other consumer devices running the Android or Chrome platform.

Specific details and financial terms of the agreement weren’t disclosed other than a mention that the company will receive royalties from Taipei-based Compal, Microsoft said in a statement.

Microsoft’s patent licensing business began when Marshall Phelps joined the Redmond, Washington-based software company in 2003 after spending 28 years growing patent-licensing into a billion dollar business at International Business Machines Corp. Phelps was Microsoft’s Corporate Vice President and Deputy General Counsel for Intellectual Property and Licensing until his departure in 2010.

The company began using litigation as part of its patent- licensing strategy after Horacio Gutierrez took over management of the company’s patent portfolio in 2006.

In the Microsoft statement, Gutierrez said the licensing agreement with Compal meant that more than half the companies in involved in original design manufacturing for Chrome and Android have now taken a license to his company’s patent portfolio.

Gigaset Files Patent Infringement Suit Against AVM in Germany

Gigaset AG’s Gigaset Communications unit filed a lawsuit against FRITZ! Box manufacturer AVM Computer Vertriebs GmbH at a Dusseldorf district court on Oct. 21.

Gigaset, a maker of cordless telephones, said in a statement yesterday that several products in the AVM FRITZ! range infringe a “fundamental” Gigaset patent.

The company is seeking money damages and an injunction regarding the use of its technology. It also asked for a court order for destruction of the allegedly infringing products.

Phyton Sues Samyang in Germany Over Paclitaxel Production Patent

Phyton Ltd.’s Phyton Biotech unit filed a patent- infringement suit against Seoul’s Samyang Corp., according to a company statement.

The suit, filed in a German court, is related to a patent for plant cell fermentation using cell lines derived from the Taxus species to produce the paclitaxel compound. Taxus is the family to which yew trees belong, and paclitaxel is used to treat a variety of cancers.

Phyton claims Samyang’s method of producing paclitaxel infringed the patent. It asked the court to order Samyang to halt its alleged infringement, and requested a ban on the sale and use of Samyang’s paclitaxel in Germany.

Phyton, based in San Antonio, is a global supplier of paclitaxel and docetaxel, a related anti-cancer compound also produced from yew trees.

For more patent news, click here.

Trademark

Apple Tells German Cafe’s Logo Infringes Trademarks

Apple Inc., maker of the iPod and iPad, has sent a cease- and-desist letter to the owners of a Bonn, Germany, cafe, Geek.com technology news website reported.

Apfelkind cafe, which registered its mark in Munich in June, was told its logo was confusingly similar to Cupertino, California-based Apple, according to Geek.com.

The cafe, which offers a family-oriented coffeehouse setting with a playroom for kids, features apple-related foods and drinks on its menu, such as apple blossom tea, Geek.com reported.

The proprietor of the cafe said she doesn’t think the public is confused by her logo, according to the news website.

McDonald’s Says Wonderful’s ‘W’ Logo Infringes Arches Trademark

McDonald’s Corp., the world’s largest restaurant chain, has filed a second trademark infringement suit against Wonderful, a Beijing restaurant, the WantChinatimes.com news website reported.

Since 2003 Oak Brook, Illinois-based McDonald’s has been objecting to Wonderful’s logo, a red letter “W” on a yellow background it says too closely resemble its “golden arches” logo, according to the website.

Earlier, China’s trademark appeal board said that despite McDonald’s protests, the logo could be used for non-restaurant purposes, WantChinatimes.com reported.

McDonald’s argues in Beijing No. 1 People’s Court that the restaurant’s application to register the mark was made in a malicious fashion, the website reported.

Registration Sought for ‘Occupy Wall Street’ Trademark

Interest in the “Occupy” movement has led to several new applications filed with the U.S. Patent and Trademark Office, according to that office’s trademark database.

A resident of Los Angeles filed an application Oct. 6 to register “Occupy D.C. 2012,” with the mark to be used on T- shirts.

An “Occupy Wall Street” application was filed Oct. 18 by a resident of West Islip, New York. According to the application, the mark would be used for beach bags, back packs, overnight bags, umbrellas, bumper stickers and clothing.

On Oct. 19 a resident of Powell, Ohio, filed an application to register “Every Where I Go I Occupy.” That mark would be used on T-shirts.

As further evidence of the “Occupy” zeitgeist, CaféPress Inc.’s website lists 99 pages of print-on-demand items the San Mateo, California-based company says are related to the movement. And a search yesterday of EBay Inc.’s auction website for “Occupy Wall Street” items for sale yielded 3,335 listings.

Comcast Files Suit in Utah over ‘The Biggest Loser’ Trademark

Comcast Corp.’s Universal City Studios sued 14 Utah-based companies and residents and another 50 unnamed defendants for trademark infringement.

The suit, filed Oct. 21 in federal court in Salt Lake City, Utah, is related to “The Biggest Loser” trademark associated with Comcast’s NBC unit’s television program by the same name.

According to court papers, the defendants have made unauthorized use of the trademark on www.premierfitnesscamp.com, which is used to promote the weight-loss camp with which the defendants are involved in what Universal calls a “tangled web” of ownership and control.

Universal claims it has suffered “great detriment and injury” to its trademark, business, goodwill and profits. News Corp is a co-plaintiff with Universal because of an agreement sharing the rights to the mark, according to court papers.

The company asked the court to bar further infringement of its mark, and for awards of money damages, profits the defendants realized as the result of their alleged infringement, and attorney fees and litigation costs.

Premier Fitness Camp didn’t respond immediately to an e- mailed request for comment.

Universal is represented by Karthik Nadesan and Ivan LePendu of Nadesan Beck PC of Salt Lake City; Mark Kalmansohn of Kalmansohn & Anderson LLP and Bassil Hamideh of the Hamideh Firm PC, both of Los Angeles.

The case is Universal City Studios Products LLP v. Harbor Fitness LLP, 2:11-cv-00980-CW, U.S. District Court, District of Utah.

For more trademark news, click here.

Copyright

China Isn’t Cutting Piracy Enough, Software Alliance Says

China isn’t reducing software piracy quickly enough and the government should aim to cut illegal use by 10 percentage points in the next two years, according to a trade group that tracks counterfeiting.

The country will eventually surpass the U.S. to become the industry’s largest source of piracy losses, Robert Holleyman, chief executive officer of the Business Software Alliance, said at a press conference in Beijing yesterday. He declined to provide a more specific forecast.

In China, almost four out of five programs in use are pirated, the alliance said in its annual report in May. The $7.78 billion commercial value of software pirated in China last year was second only to the $9.52 billion lost in the U.S., the report said.

“We are seeing progress, but it’s not progress at the pace we would have liked to have seen or anticipated,” Holleyman told reporters. “Virtually everyone agrees, piracy in China is higher than it should be.”

China isn’t currently on pace to achieve a 10 percent age- point reduction over the next two years, Holleyman said.

Should that target be reached in four years, it would result in creation of 250,000 industry jobs and generate $4 billion in tax revenue in China, Holleyman said.

The percentage of software in China that is pirated dropped to 78 percent last year, from 79 percent in 2009 and 92 percent in 2003, according to the May report. While the proportion of stolen software has declined, its value has increased as the Chinese software market expands, the report said.

Holleyman called on the country to update its copyright law to provide for criminal offenses for piracy and said the country wouldn’t see a significant decline in the practice unless it takes that step. The group will “ramp up” lawsuits against users of unlicensed software, he said, without giving details.

China has said it increased enforcement of intellectual property rights. Last year, Chinese courts ruled on 48,051 cases of intellectual property rights violations, a gain of 33 percent from the previous year, Wang Shengjun, president of the Supreme People’s Court, said in a report to the National People’s Congress on March 11.

The value of pirated software worldwide rose 14 percent to $58.8 billion in 2010, almost double the total in 2003, according to the group.

Members of the Washington-based Business Software Alliance are some of the biggest software companies including Microsoft Corp., Apple Inc. and Adobe Systems Inc.

For more copyright news, click here.

Trade Secrets/Industrial Espionage

Leesburg Claims Details of Smart Grid Contract Are Trade Secrets

The city of Leesburg, Florida, has refused to release the cost of a contract with General Electric Co. to own and operate the city’s “smart grid” electrical grid system, Florida’s Orlando Sentinel reported.

The city is claiming the price and the details of the bidding process are trade secrets, according to the newspaper.

Leesburg Finance Director told the Sentinel that rate payers needn’t worry that the project will cause power-delivery problems because “as high-profile as GE is, they’re not going to let this puppy fail.”

City officials have said that once the contract with GE is signed, the total price will be revealed, minus the specifics of the bid, the Sentinel reported.

IP Moves

Article One Hires Head of Clorox IP Litigation Team

Article One Partners hired Monica Winghart as chief legal counsel, the New York-based company said in a statement yesterday.

Winghart joined Article One from Clorox Co., where she spent seven years leading the Oakland, California-based consumer-products company’s IP litigation.

She will focus on the recent release of Article One’s Litigation Avoidance research product. Litigation Avoidance identifies pre-litigation patents and distributes requests to more than 1 million scientists and technologists to research the validity of the patents and identify what is known as “prior art” that can be used to invalidate a patent.

Winghart has undergraduate degrees in chemical engineering and in pulp and paper technology from North Carolina State University and a law degree from Tulane University.

Sheppard Mullin Expands IP Group With Fish & Richardson’s Setty

Sheppard Mullin Richter & Hampton LLP hired Nagendra “Nick” Setty for its IP practice group, the Los Angeles-based firm said in a statement.

Setty, a litigator, joins from Boston’s Fish & Richardson PC. There he represented financial, high-technology and pharmaceutical companies in patent, trademark, trade secret and copyright disputes.

He has an undergraduate degree in biology and a law degree from Emory University and a diploma in international law from Cambridge University’s Emmanuel College.

Fenwick Hires Jake Handy for Life Sciences Practice Group

Fenwick & West LLP hired Jake Handy for its life sciences practice, the Mountain View, California-based firm said in a statement.

Handy, who does transactional work for life sciences companies, joins from Chicago’s DLA Piper LLP. He has handled development, collaboration, license and material transfer agreements; software, telecommunications and information technology agreements, and supply, distribution, sales representative and other supply-side agreements for biopharmaceuticals, diagnostic, medical device, telecommunications and software products.

He has an undergraduate degree in molecular biology and a master’s degree in biology from the University of California, San Diego, and a law degree from California Western School of Law.

--With assistance from Edmond Lococo in Beijing. Editors: Mary Romano, Glenn Holdcraft.

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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