Bloomberg News

BASF, Samsung, St.Andrews, Airvana: Intellectual Property

March 21, 2013

BASF SE (BAS), the world’s biggest chemical company, lost a U.S. appeals court bid to force Makhteshim-Agan Industries Ltd. to stop selling a version of its popular termite killer, a day after filing a new patent suit against that competitor.

Makhteshim-Agan, the world’s largest maker of generic agrochemicals, didn’t infringe two BASF patents, the U.S. Court of Appeals for the Federal Circuit in Washington said yesterday in an opinion posted on its website.

The dispute is over a way of applying insecticides that use the chemical fipronil in and around a building. The patents cover Ludwigshafen, Germany-based BASF’s Termidor, which has been sold for more than a decade and is the top-selling termite product in the U.S. BASF sued Makhteshim-Agan in 2010, after it began selling its own version of the insecticide under the name Taurus SC.

U.S. District Judge William Osteen in Greensboro, North Carolina, was correct in finding the BASF patents covered a specific way of applying fipronil, while Makhteshim-Agan used a different application method, the three-judge Federal Circuit panel ruled.

Anne Burt, a spokeswoman for BASF, said the company is reviewing yesterday’s decision.

BASF filed a new patent-infringement suit March 19 against Makhteshim-Agan in federal court in Georgia. It claims Taurus SC is made using a manufacturing process covered by another patent.

“Intellectual property is the cornerstone of our innovation-based marketplace,” Jan Buberl, director of specialty products for BASF North American Crop Protection, said in a statement. “Improper activity that undermines patent protection laws is unfair to those who act properly and lawfully.”

Fipronil is an insecticide also used in flea and tick control products for pets. Makhteshim-Agan, based in Tel Aviv, was bought in 2011 by China National Chemical Corp. and taken private.

The case is BASF Agro BV Arnhem v. Makhteshim Agan of North America, 12-01206, U.S. Court of Appeals for the Federal Circuit (Washington). The lower court case is BASF Agro B.V. Arnhem v. Makhteshim Agan of North America, 10-cv-00276, U.S. District Court, Middle District of North Carolina (Greensboro).

The new case is BASF Agro B.V. Arnhem v. Makhteshim Agan of North America, 13-cv-00867, U.S. District Court, Northern District of Georgia (Atlanta).

Samsung Countersues Ericsson After Failed Patent License Talks

Samsung Electronics Co. countersued Ericsson AB for patent infringement, claiming it unlawfully used the South Korean phone maker’s technology and breached an agreement.

Asia’s biggest technology company is asking that Ericsson’s lawsuit against it for alleged patent violations be thrown out as the claims are invalid, according to papers filed March 18 in U.S. federal court in Texas. At issue are 13 different patents related to various aspects of mobile-telephone technology.

Ericsson, the world’s largest maker of wireless networking equipment, sued Samsung in November after failing to extend a licensing deal after years of negotiations. The two companies have also filed complaints against each other with the International Trade Commission over alleged patent infringements.

“Over the course of two years of negotiations between the parties, Ericsson has engaged in a pervasive and pernicious pattern of refusing to grant licenses to Samsung on fair, reasonable and non-discriminatory terms,” Samsung said in its filing.

Stockholm-based Ericsson had said in its lawsuit that it offered to extend its previous licensing agreement with Samsung on such terms and the Suwon, South Korea-based company refused.

The case is Ericsson Inc. v Samsung Electronics Co. (005930), 6:12- cv-00895, U.S. District Court, Eastern District of Texas (Tyler).

Apple Sued for Security-Patent Infringement by Intertrust

Intertrust Technologies Corp., a developer of digital rights management software jointly owned by Sony Corp. (6758) and Royal Philips Electronics NV, sued Apple Inc. for allegedly infringing 15 patents related to mobile-device security.

The company’s iPhone, the iPod touch, iPad product lines, laptop computers, Apple TV and App Store are built on secure computing technologies developed and patented by Intertrust, Intertrust said in a complaint filed yesterday in Oakland, California, federal court. Intertrust has previously sued Microsoft Corp. (MSFT:US) over patents. The software maker settled and licensed the technology in 2004 for $440 million, according to the complaint.

“Apple’s decision to free-ride off Intertrust’s innovations has caused, and continues to cause, substantial harm to Intertrust,” according to the complaint.

Intertrust is seeking a court order barring further infringement and sales of products that infringe the patents, lost profit damages, a reasonable royalty and a finding that the infringement was willful, which would triple damages.

Steve Dowling, a spokesman for Cupertino, California-based Apple, didn’t immediately return an e-mail seeking comment on the lawsuit.

The case is Intertrust Technologies Corp. v. Apple Inc. (AAPL:US), 13-cv-01235, U.S. District Court, Northern District of California (Oakland).

For more patent news, click here.

Trademark

St. Andrews Trust Seeks Registration for ‘St. Andrews’ Mark

The St. Andrews Links Trust, which operates the famed St. Andrew’s golf course in Scotland, has applied to register “St. Andrews” as a European trademark, the U.K.’s Courier newspaper reported.

The application, filed to cover a broad range of golf- related goods and services, was made in efforts to halt outsiders’ attempts to profit through the use of the name, according to the Courier.

A spokesman for trust told the Courier that local businesses that identify themselves as being from St. Andrews won’t be under any threat of trademark enforcement.

The trust, which bills the St. Andrews golf course as the oldest and most renowned in the world, said it was its duty to seek registration as means of nurturing what the name symbolizes around the world, according to the Courier.

Python Software Foundation, Veber Reach Trademark Agreement

The Python Software Foundation, a non-profit group that holds the IP rights behind the Python programming language, reached an accord with PO Box Hosting Ltd., the foundation said in a statement.

The foundation had objected a European trademark application filed by U.K.-based PO Box Hosting, which does business as Veber in Europe. Veber will rebrand its Python cloud server and backup services under an as-yet undetermined name, according to the statement.

Veber has agreed to withdraw its European application and support the foundation’s use of the Phython name. According to the database of the U.S. Patent and Trademark Office, the foundation registered “Python” for use with computer programs and a computer programming language in March 2004.

Tim Poultney, managing director of PO Box Hosting and Veber, said in a statement the “use of the Python name for our cloud server and backup business has ceased with the services now available in Europe from Veber. This agreement will remove potential confusion between the Python software language and our cloud services business.”

Wowo Appeals Trademark Revocation, Say Mark Isn’t Like Thai Flag

The head of a 300-unit convenience-store chain based in Chengdu, China, filed suit in a Beijing court this month, seeking to overturn the ban on his trademark for its alleged too-strong resemblance to Thailand’s flag, China Daily reported.

After a Thai official who saw the signs on the Wowo Inc. convenience stores complained that they used the same design and arrangement of colors as his country’s flag, the Trademark Office of the State Administration for Industry and Commerce revoked the mark, according to the newspaper.

Tan Yaohua, chairman of the Wowo stores, said that he had no intention to infringe and that when he designed his stores’ logo, he didn’t even know what the Thai flag looked like, China Daily reported.

Xuan Zhiyu, secretary-general of the Shanghai Chamber of Commerce, told China Daily that he didn’t think of the Thai flag when he looked at the Wowo logo and had never heard anyone else remark on the alleged similarity either.

For more trademark news, click here.

For copyright news, click here.

Trade Secrets/Industrial Espionage

Airvana Granted Injunction in $330 Million Ericsson Suit

Airvana Network Solutions Inc. was granted a preliminary injunction in its intellectual-property lawsuit against Ericsson AB, the world’s largest maker of wireless networks.

Airvana, a Chelmsford, Massachusetts-based provider of network-infrastructure software, sued Ericsson in February 2012 for more than $330 million, accusing the Stockholm-based company of developing software based on Airvana trade secrets and using it to operate wireless network equipment to avoid paying license fees.

New York State Supreme Court Justice Barbara Kapnick, in an order dated March 19, granted Airvana’s request for an injunction blocking Ericsson from “using, operating, testing or deploying” certain hardware unless it’s using software licensed from Airvana.

“Airvana has met its burden of showing that it will suffer irreparable harm absent the requested injunctive relief,” Kapnick wrote.

Kathy Egan, a spokeswoman for Ericsson in the U.S., didn’t immediately respond to a voice-mail message seeking comment on the ruling.

The case is Airvana Network Solutions Inc. v. Ericsson Inc., 650360-2012, New York State Supreme Court, New York County (Manhattan).

Former Excel Transportation President to Be Sentenced in June

Michael Musacchio, a resident of Plano, Texas, who was convicted of computer hacking against a former employer, is set to be sentenced in federal court in Dallas on June 12, according to a March 18 court filing.

Musacchio was a former president of Excel Transportation Services Inc. of Memphis, Tennessee, an intermodal transportation company that he left in 2004 to form a new company. According to court documents, he hacked the Excel computers to provide confidential information to benefit Total Transportation Services LLC, his new company based in Dallas County, Texas.

Excel was acquired by Hub Group Inc. (HUBG:US) in 2011.

Musacchio was convicted in May of one count of conspiracy to make unauthorized access to a protected computer and two felony counts of computer hacking.

Earlier he was a defendant in a civil trade secrets case Excel brought in April 2006 against Total Transportation in the same court. He was dismissed as a defendant in that case in May 2007, which the case against Total settled, according to court papers.

Two of Musacchio’s co-defendants in the criminal case previously entered guilty pleas, according to a statement from the U.S. Attorney’s office.

The criminal case is U.S. v. Musacchio, 3:10-cr-00308, U.S. District Court, Northern District of Texas (Dallas). The civil case is Excel Transportation Services Inc. v. Total Transportation Services L LC, 3:06-cv-00593-G, U.S. District Court, Northern District of Texas (Dallas).

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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