Bloomberg News

ThyssenKrupp, Pimco, Dal-Tile: Intellectual Property

December 05, 2012

Inventio, a unit of Schindler Holding AG (SCHP), dropped a lawsuit against ThyssenKrupp Elevator Corp. (TKA) for allegedly infringing a patent for elevators at 1 World Trade Center in New York after the patent was found invalid.

The parties agreed to dismiss the action, according to a stipulation filed Dec. 3 in federal court in Manhattan. The agreement follows a ruling last week by an appeals court in Washington that invalidated the same patent in another case.

Inventio, based in Switzerland, said in a Nov. 6 complaint that the patent for elevator installation was issued by the U.S. Patent and Trademark Office in 1997 and reconfirmed in October.

A federal appeals court ruled Nov. 27 that the patent was invalid. The decision came in a suit by Inventio claiming infringement by United Technologies Corp. (UTX:US)’s Otis Elevator in elevators at 7 World Trade Center.

The decision was made by the U.S. Court of Appeals for the Federal Circuit in Washington, which specializes in patent cases.

Media representatives at Hergiswil, Switzerland-based Schindler didn’t immediately respond to messages seeking comment on the stipulation in the ThyssenKrupp case.

“We were always confident that we could successfully defend any claims arising under the subject patent, and therefore we expected this outcome,” Martina Behrend, a spokeswoman for ThyssenKrupp AG, based in Essen, Germany, said in an e-mail.

1 World Trade Center is a skyscraper under construction in Lower Manhattan at the site of the twin towers destroyed in the September 2001 terrorist attacks. A second location named in the ThyssenKrupp suit is 11 Times Square.

7 World Trade Center was completed in 2006 at the site of a building with the same address that was damaged when the twin towers fell.

The patent at issue is for data transmission technology that directs someone with a recognition device like an electronic badge to the right elevator.

The case is Inventio v. ThyssenKrupp, 12-08072, U.S. District Court, Southern District of New York (Manhattan). The appeals court case is Schindler Elevator Corp. v. Otis Elevator Co., 2011-1615 and 2012-1108, U.S. Court of Appeals for the Federal Circuit (Washington).

Pimco’s Gross Wins U.S. Patent for Global Bond Index Methodology

Bill Gross, who runs the world’s largest mutual fund at Pacific Investment Management Co., received a U.S. patent covering the methodology behind a global bond index that weighs countries by the size of their economy rather than their indebtedness.

According to the database of the U.S. Patent and Trademark Office, patent 8,306,892 was issued Nov 6. The other named inventor is Ramin Toloui, global co-head of emerging markets portfolio management at Pimco.

The construction of the Global Advantage Bond Index is covered by the patent, according to Mark Porterfield, a Pimco spokesman. By focusing on gross domestic product, the index avoids concentrating on countries saddled with debt and offers a greater weighting for developing markets.

Pimco, which is based in Newport Beach, California, and has $1.92 trillion in assets under management, has said it will pursue strategies with a global focus to navigate a changed economic environment after the 2007 to 2009 financial crisis. The firm, a unit of German insurer Allianz SE (ALV), has popularized the term “new normal” to describe an era of lower returns, heightened government regulation, diminishing U.S. clout in the world economy and a bigger role for developing nations.

The Global Advantage Bond Index is used as a benchmark by the $5.24 billion Pimco Global Advantage Strategy Bond Fund (PSAIX:US), which returned 7.2 percent this year, trailing 58 percent of peers, according to data compiled by Bloomberg.

The index was developed in 2009, according to Pimco’s website.

Application for the patent was filed in November 2008, with the assistance of Knobbe Martens Olson & Bear LLP of (496613L:US) Irvine, California.

Monsanto to Resume Collection of Soybean Royalties in Brazil

Monsanto Co. (MON:US), the world’s biggest seed company, will resume collecting royalties for its Roundup Ready soybeans in Brazil while it appeals a state court ruling there on intellectual property rights.

The Court of Justice in Mato Grosso ruled that collections in the state can resume, St. Louis-based Monsanto said in a statement on its website yesterday. Monsanto, which last month suspended collections nationwide after a court ordered them stopped in the state, said it will begin collecting across the country and hold Mato Grosso payments in escrow.

“This action reinforces our confidence in our ongoing legal position and highlights that the company’s first- generation Roundup Ready soybean products are protected by various intellectual property rights under Brazilian law,” Todd Rands, Monsanto legal director for Latin America, said in the statement.

Growers in Brazil say the patent on the original Roundup Ready soybeans expired in 2010, ending their obligation to pay Monsanto a technology fee on the seeds. Monsanto says that Brazilian law extends the patent to 2014, when it expires in the U.S. Monsanto is counting on growth in Latin America, particularly Brazil, to meet its earnings forecast.

The outcome of the case won’t affect sales of Intacta soybeans, a newly patented product engineered to produce insecticide and tolerate Roundup herbicide, Monsanto said. Farmers are currently testing Intacta beans before the start of full commercial sales in a year.

For more patent news, click here.

Trademarks

Fantesca Winery Sues Mohawk’s Dal-Tile for Infringement

Fantesca Estate & Winery LLC, a winery in St. Helena, California, owned by Best Buy Co. (BBY:US)’s former vice president of strategy and business development, sued a Texas-based tile manufacturer for trademark infringement.

The suit, filed in federal court in Minnesota Dec. 3, accused Mohawk Industries Inc. (MHK:US)’s Dallas-based Dal-Tile unit of infringing the winery’s “Fantesca” trademarks.

According to court papers, Duane Hoff’s winery started using “Fantesca” in connection with its vineyard, winery and wines in 2004 and has registered the mark with the U.S. Patent and Trademark Office. The winery uses the mark in connection with specific wine varietals, such as Fantesca Chardonnay. Hoff left Best Buy in 2005 in order to concentrate on the winery, according to the Fantesca website.

Dal-Tile began selling and promoting a line of wine-themed tile products in 2011, the winery said in its pleadings. The tiler manufacturer uses “Fantesca” to advertise these products, and, just as the winery does, it uses the word in connection with specific wine varieties.

The winery says Dal-Tile is using “Fantesca” without permission, and continues to do so despite having been sent a cease-and-desist notice. Customers are likely to assume falsely that an affiliation exists between the winery and the tile company, Fantesca said in court papers.

In addition to seeking a court order barring further unauthorized use of its trademarks by Dal-Tile, Fantesca asked the court for money damages and asked that they be tripled to punish the tile company for its conduct. Additionally, it asked for awards of attorney fees, litigation costs and profits Dal- Tile realized from its alleged acts of infringement.

Dal-Tile didn’t respond immediately to an e-mailed request for comment on the complaint.

The case is Fantesca Estate & Winery LLC v. Dal-Tile Corp., 12-cv-03026, U.S. District Court, District of Minnesota.

For more trademark news, click here.

Copyright

Olenicoff Sued by Sculptor Over Copies of Large-Scale Works

Billionaire real estate developer Igor Olenicoff was sued for copyright infringement by a California sculptor.

Donald Wakefield of Rancho Cucamonga, California, accused Olenicoff and his Olen Properties Corp. of installing a copy of his large-scale sculpture “Untitled” at an Olen Properties site in Newport Beach, California.

He said in his complaint that the sculpture was such an accurate copy of his work that he initially thought he was looking at the original and that it had somehow been relocated from Chicago to Newport Beach.

Wakefield said he later saw three more copies of his work or sculptures that were derived from his work at other Olen Properties sites in California, including Irvine, Brea and Newport Beach. Additionally, he said, photos of one of the infringing works appears on the Olen Properties website.

In June, Orange County Weekly reported that the sculptures Wakefield said were copies had been made in China.

He claims to have suffered “great and irreparable injury” and asked the court to bar additional use of the allegedly infringing work. If the defendants don’t take a license to Wakefield’s copyright, he called for the destruction of the allegedly infringing works.

He also asked for money damages, and for profits the defendants realized from their alleged infringement.

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

The case is Wakefield v. Olenicoff, 12-cv-2077, U.S. District Court, Central District of California (Santa Ana).

Disney Denies Stan Lee’s Copyright Claims Made in Denver Court

Walt Disney Co. responded to a copyright-infringement lawsuit by Stan Lee Media Inc. over the rights to Marvel Comics characters.

Lee sued Disney in federal court in Denver Oct. 9, claiming the company didn’t own the comic-book characters when it acquired Marvel Entertainment in 2009.

In its Nov. 30 response, Disney said Lee’s suit was “a wholly improperly attempt to revive a claim already rejected three times.” The company said that Lee unsuccessfully sued Marvel Entertainment and others asserting the rights to the characters six times in two federal courts, with all cases dismissed.

Disney, based in Burbank, California, said there is “no conceivable basis” on which Lee can state a viable copyright claim against Disney. Any ownership claims Lee had expired no later than 2004, Disney argued in urging the court to dismiss the complaint as time-barred.

The case is Stan Lee Media Inc. v. Walt Disney Co., 12- cv-2662, U.S. District Court, District of Colorado (Denver).

For more copyright news, click here.

IP Moves

Skadden Hires SanDisk’s Chief Legal Officer James Brelsford

Skadden, Arps, Slate, Meagher & Flom LLP is hiring James F. Brelsford for its intellectual-property practice group, the New York-based firm said in a statement.

Brelsford comes to Skadden from SanDisk Corp. (SNDK:US) of Milpitas, California, where he served as chief legal officer and senior vice president. There he was responsible for the company’s IP licensing program and all the other legal affairs, including litigation and intellectual property-related issues.

Before joining SanDisk in 2007, Brelsford was executive vice president of corporate and business development for San Francisco’s Hands-on Mobile Inc. Before that, he was in private practice at Washington-based Jones Day, Perkins Coie LLP of Seattle, San Francisco’s Steinhart & Falconer LLP and Morrison & Foerster LLP, also of San Francisco.

Brelsford has an undergraduate degree from the University of Alaska at Anchorage and a law degree from the University of California at Davis.

To contact the reporter on this story: Victoria Slind-Flor in San Francisco at vslindflor@bloomberg.net

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


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