Bloomberg News

Rambus, J&J, Geico, Pernod-Ricard: Intellectual Property

February 23, 2012

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

Feb. 22 (Bloomberg) -- Memory-chip designer Rambus Inc.’s conduct before an industry board won’t be reviewed by the U.S. Supreme Court, clearing an obstacle in the company’s decade-long pursuit of patent royalties from semiconductor makers.

The high court yesterday declined to take an appeal of a lower-court decision clearing Rambus of accusations it improperly used knowledge gleaned from a standard-setting board to obtain patents so it could extract royalties from the computer-chip industry. The case was brought by Hynix Semiconductor Inc. as part of an effort to overturn a $397 million judgment.

Rambus contends that the semiconductor industry conspired to steal its technology and has filed patent-infringement lawsuits against companies that refuse to pay licensing fees. The litigation has defined Sunnyvale, California-based Rambus since the late 1990s, and its activities at the semiconductor industry’s standard-setting board form the basis of those disputes.

The high court declined to hear two previous appeals of rulings that favored Rambus on the issue of the company’s participation in the industry board

The case is Hynix Semiconductor Inc. v. Rambus Inc., 11- 549, U.S. Supreme Court.

J&J Bid to Reinstate Abbott Verdict Rejected by U.S. High Court

The U.S. Supreme Court rejected Johnson & Johnson’s request to reinstate the largest patent-infringement verdict in American history, a $1.67 billion award it won against Abbott Laboratories over arthritis treatments.

The high court yesterday declined to review a lower court ruling that a patent on a method to make antibodies was invalid because it inadequately described what J&J’s Janssen Biotech said it invented. J&J and patent co-owner New York University want to collect on the verdict they received over the drug Humira.

A U.S. appeals court said inventors must describe their work clearly to show they conceived the invention and that failure to do so may lead to the patent’s being tossed out. J&J contends that requirement is too onerous when it comes to patents on basic research or discoveries that have broad applications.

The dispute centers on a method to create antibodies that block the action of tumor necrosis factor, or TNF. When the body produces too much TNF, it can cause the immune system to attack healthy tissue and leads to inflammation.

In ruling the patent invalid, the U.S. Court of Appeals for the Federal Circuit said the claims made in the invention, as written, “constitute a wish list of properties” that a human antibody should have.

A March 2010 Federal Circuit decision laying out the written description requirement got U.S. support, Abbott said, and J&J “seeks to disrupt the settled expectations of innovators like Abbott by upending decades of precedent.”

Novo Nordisk A/S, the world’s largest insulin maker, and vaccine maker Bavarian Nordic A/S urged the high court to take the case, saying they need broadly written patents to protect their research.

Abbott has filed its own lawsuit, claiming J&J’s arthritis drug Simponi, made with human antibodies, is infringing an Abbott patent. It also claims a J&J psoriasis medicine, Stelara, violates two other patents. Those cases are pending in federal court in Worcester, Massachusetts.

The case is Janssen Biotech Inc. v. Abbott Laboratories, 11-596, U.S. Supreme Court.

Berkshire Hathaway’s Geico Newest MacroSolve Patent Target

Berkshire Hathaway Inc.’s Geico unit is the most recent defendant sued for infringing a patent held by an Oklahoma-based mobile data company.

MacroSolve Inc. of Tulsa, Oklahoma, filed the suit against Geico Feb. 21 in federal court in Tulsa, Oklahoma. This suit is among 28 the company has filed in the same court since March 2011.

Among the defendants MacroSolve sued earlier are Facebook Inc., Marriott International Inc., Apple Inc., Dell Inc. and Priceline.com Inc., as well as a number of smaller companies that create apps for mobile devices. The various defendants are accused of infringing patent 7,822,816.

The patent, which was issued in October 2010, is related to mobile information-collection systems across a variety of platforms and wireless networks. In a MacroSolve statement issued yesterday, the patent is called “a significant intellectual property asset.”

MacroSolve asked the court to bar unauthorized use of its patented technology, and awards of attorney fees, litigation costs and money damages.

The company is represented by Larry Dean Thompson Jr., Zachariah Harrington, Kris Yue Teng, and Matthew J. Antonelli of Houston’s Antonelli, Harrington & Thompson LLP.

The case is MacroSolve Inc., v. Geico Insurance Agency Inc, 6:12-cv-00074-LED, U.S. District Court, Eastern District of Texas (Tyler).

For more patent news, click here.

Trademark

Microsoft’s Russian Trademark Dispute Goes to Court April 11.

Microsoft Corp.’s trademark-infringement suit related to its “Windows” trademark is to be heard April 11 in Moscow Commercial Court, the Russian Legal Information Agency reported.

The Redmond, Washington-based software company is seeking to bar Dmitry Shapovalov, identified by the news agency as a Russian businessman, from using the mark in his “Windows.ru” domain name.

Presently the website is blocked, the news agency reported.

An attorney representing Shapovalov told the news agency that Microsoft’s claim to the “Windows” mark is unclear.

‘Big Ginger’ Trademark Suit Against Pernod-Ricard Settled

A trademark infringement suit against Pernod-Ricard SA has been settled, according to a Feb. 21 court filing.

The suit, filed by a Minnesota company that promotes its proprietary brand of Irish whiskey, was related to a cocktail developed to expand the range of consumers for the product.

According to the complaint filed Feb. 15 in federal court in Minnesota, the Big Ginger cocktail, comprised of Irish whiskey, ginger ale, lemon and lime, was designed to extend the appeal of Irish whiskey beyond its usual drinkers -- middle-aged and older men who drank whiskey in the colder months.

Big Ginger made the product “accessible and inviting to all types of consumers and allows for a new perception of a spirit that is traditionally thought of as solely masculine, extreme/harsh,” Minneapolis-based A Kieran Collective LLC said in its complaint.

The cocktail, originally made with Pernod-Ricard’s Jameson Irish whiskey, proved to be so successful that the pub where it was invented became the single largest on-premise seller of Jameson’s in the world, from 2006 through 2011, according to court papers. After the “Big Ginger” trademark was issued, Pernod-Ricard made an offer to buy it for $200,000, which was rejected by the brand owner.

The brand owner then went on to develop and import its own proprietary Irish whiskey, for which it uses the “2 Gingers” mark. At the pub where the cocktail was developed, 2 Gingers is now used instead of Jameson’s, and the drink is poured in 2 Gingers-branded glasses, according to court papers.

The suit was filed after Pernod-Ricard’s Jameson unit began providing Minnesota restaurants promotional material for “Big Jameson Ginger.” Jameson was accused of trying to benefit from the fame created by “Big Ginger.” The brand owner claimed in the complaint that Paris-based Pernod-Ricard appeared to be promoting “Big Jameson Ginger” in order to drive sales of Jameson’s in the weeks leading to St. Patrick’s Day March 17, which is the busiest period in the year for sales of Irish whiskey.

The parties in the case reached an amicable settlement of the dispute, according to a letter from lawyers for the brand owner that was filed with the court Feb. 21. They asked that a hearing on their motion for a restraining order against Pernod- Ricard be canceled, and said they expect to dismiss the case next week. No terms of the settlement were disclosed.

The case is A Kieran Collection LLC v. Irish Distillers Ltd., 0:12-cv-00395-MJD-TNL, U.S. District Court, District of Minnesota (Minneapolis).

For more trademark news, click here.

Copyright

Paramount Pictures Sues Puzo Estate Over ‘Godfather’ Sequels

Paramount Pictures Corp. sued Anthony Puzo, the son and executor of the estate of author Mario Puzo, to prevent the publication of a new sequel novel to “The Godfather.”

Paramount, which says it bought the copyright to Puzo’s novel in 1969, is trying “protect the integrity and reputation of The Godfather trilogy,” according to a complaint filed Feb. 17 in federal court in Manhattan.

Paramount claimed that, after Puzo’s death in 1999, the company agreed to allow Bertelsmann AG’s Random House unit to publish a single Godfather sequel, “The Godfather Returns,” in 2004. The estate published another novel, “The Godfather’s Revenge,” in 2006 without Paramount’s approval, according to the complaint.

“Far from properly honoring the legacy of ‘The Godfather,’ the unauthorized ‘The Godfather’s Revenge’ tarnished, and in the process, also misled consumers into believing that ‘The Godfather’s Revenge’ was authorized by Paramount,” Paramount, a unit of New York-based Viacom Inc., said in the complaint.

Paramount is seeking damages and an order barring the Puzo estate from publishing the third sequel novel, “The Family Corleone,” this year.

Bertram Fields, a Los Angeles lawyer who represented the Puzo estate in an earlier lawsuit against Paramount, didn’t immediately return a message seeking comment.

Paramount claims that the Puzo estate infringed its copyright and trademarks, which the company has used in films, video games, software, clothing and prints. The trademark consists of the words The Godfather and a hand holding puppet strings. Paramount said the Puzo estate plans to use the trademarks without authorization to promote the new sequel.

The first Godfather film was released in 1972 and won Academy Awards for best picture, actor and adapted screenplay. Puzo shared credit for the screenplay. Francis Ford Coppola directed the three Godfather movies.

The case is Paramount Pictures Corp. v. Puzo, 12-CV-1268, U.S. District Court, Southern District of New York (Manhattan).

Two Canadian Schools Sign Far-Reaching Copyright Agreement

Two Canadian universities signed an agreement with Canada’s copyright licensing agency that defines e-mailing hyperlinks as equivalent to making a photocopy, the Bulletin of the Canadian Association of University Teachers reported.

The agreement with Access Copyright, signed by the University of Western Ontario and the University of Toronto, also permits surveillance of academic staff e-mail and requires an annual fee of C$27.50 ($27.58) for every full-time equivalent student, according to the Bulletin.

Many other Canadian universities have refused to sign the agreement, the Bulletin reported.

James Turk, CAUT’s executive director, said better alternatives to the agreement are available, and his group is working with library organizations, copyright officers and academic staff associations “to protect academic rights to the fair use of copyrighted material, according to the Bulletin.

For copyright news, click here.

--With assistance from Bob Van Voris and Don Jeffrey in New York, Susan Decker and Greg Stohr in Washington. Editors: Fred Strasser, 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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