Bloomberg News

Merck, Apple, Naert & Dubois: Intellectual Property (Correct)

December 26, 2013

Merck & Co. (MRK:US) sued Actavis Plc (ACT:US)’s Warner Chilcott unit seeking to block a generic version of NuvaRing, a contraceptive with annual sales in the hundreds of millions of dollars.

The lawsuit filed in federal court in Delaware accuses Warner Chilcott of attempting to market the generic before the expiration of Whitehouse Station, New Jersey-based Merck’s patent in 2018.

Actavis, which has global headquarters in Dublin, said in a statement that it may be the first company to file a new drug application with the U.S. Food and Drug Administration for generic versions of the contraceptive.

NuvaRing is a combined hormonal vaginal contraceptive ring that includes both estrogen and progestin to prevent pregnancy. The product, which was linked in a 2011 FDA report to a higher risk for blood clot complications, had sales of $492 million through the third quarter.

Actavis said Merck’s lawsuit would halt final FDA approval of its application for as long as 30 months or until a final resolution in court. If the application is approved, Actavis as a “first applicant” may be entitled to 180 days of generic market exclusivity, the company said in its statement.

The case is Merck Sharp & Dohme BV v. Warner Chilcott Co., U.S. District Court District of Delaware (Wilmington).

E-Cigarette Patent Holder Looks for Infringers on Website

The holder of a patent covering electronic cigarettes has set up a section of a website for people to report possible infringers of a U.S. patent issued to the company in September.

SS Choice LLC said in a statement that “substantial reports” indicate that China is the leading country for the making and promotion of electronic cigarettes that infringe the patent and violate trademarks. The company set up a website, copyright.my7s.com, to collect such reports.

SS Choice, based in Southlake, Texas, said it’s ready to have patent-licensing negotiations with companies and suppliers interested in using the technology.

The patent, 8,528,569, was issued Sept. 10, according to the database of the U.S. Patent and Trademark Office. It covers an electronic cigarette with a liquid reservoir. According to the patent, the invention provides an apparatus for increasing the amount of liquid stored in the device, cutting down the need for frequent refills.

SS Choice sells e-cigarettes under the “7’s” brand and plans to make private-label products, according to the statement.

The New York City Council approved adding electronic cigarettes to a ban on smoking in offices, restaurants, bars and parks, a move that may be followed by other U.S. cities.

The measure, backed by Mayor Michael Bloomberg, Council Speaker Christine Quinn and Health Commissioner Thomas Farley, passed 43-8 on Dec. 18. The mayor is the founder and majority owner of Bloomberg LP, the parent of Bloomberg News.

E-cigarettes, battery-operated tubes that simulate the effect of smoking by producing nicotine vapor, may be a gateway to smoking regular cigarettes and make quitting harder, Quinn said. The law would take effect in four months, said Jamie McShane, a spokesman for the speaker.

Proponents say e-cigarettes don’t produce the toxic and carcinogenic byproducts found in second-hand smoke. Users, who call the practice “vaping,” turn to e-cigarettes to wean themselves off regular ones and shouldn’t be stigmatized, according to a pro-industry website funded by NJOY Inc. a Scottsdale, Arizona-based e-cigarette maker.

Tobacco industry analysts are watching e-cigarette regulation in New York and potential bans in Chicago and Los Angeles because of the possibility that other cities will follow suit, said Ken Shea, a senior analyst with Bloomberg Industries in Skillman, New Jersey. Such bans may curb e-cigarette sales, estimated next year at $3 billion annually, he said.

Apple-Backed Rockstar Said to Hold Discussions to Sell Patents

A consortium created by Apple Inc. (AAPL:US), Microsoft Corp. (MSFT:US) and other technology companies to acquire $4.5 billion of patents from Nortel Networks Corp. in 2011 is holding discussions to sell a portion of those patents, according to people with knowledge of the plans.

The group, called Rockstar Consortium, has recently been in conversations with possible buyers about the patents, said the people, who asked not to be identified because the information isn’t public. Rockstar, which also includes BlackBerry Ltd. (BBRY:US), Ericsson AB (ERICB) and Sony Corp. (6758), has had little success in landing large licensing deals for the patents, three of the people said.

The talks signal a turnabout from 2011, when the patents were highly sought after.

Rockstar has already begun selling some of the patents. In July, intellectual-property company Spherix Inc. said it acquired a suite of patents from Rockstar. Spherix paid an undisclosed amount of cash and $1 million in stock, plus Rockstar will receive a percentage of future profits.

Rockstar executives didn’t return repeated requests for comment. Representatives for Apple, Microsoft, Ericsson, BlackBerry and Sony declined to comment or didn’t respond to requests for comment.

Ottawa-based Rockstar has operated as an intellectual property licensing company. Its chief executive officer, John Veschi, was previously chief intellectual property officer at Nortel.

Rockstar and its subsidiaries have pursued lawsuits over the patents. In October, Rockstar filed suit against Google, Huawei Investment & Holding Co. and affiliates, Asustek Computer Inc., ZTE Corp., HTC Corp., Samsung Electronics Co., LG Electronics Inc., and Pantech Co. for patent infringement. The patents up for sale don’t include the ones involved in the litigation, two people said.

A buyer, or several buyers, could acquire Rockstar’s patent portfolio excluding those involved in the lawsuits, two people said. Because Rockstar bought the Nortel patents at a high price and doesn’t want to sell them at a loss, the deals could be structured to take advantage of any future financial gain enjoyed by the buyer, the people said.

In response to Rockstar’s suit, Google on Dec. 23 filed a countersuit in California against Rockstar asking for a jury trial and a ruling that it doesn’t infringe seven patents in question.

“Rockstar’s litigation campaign has placed a cloud on Google’s Android platform,” threatening sales and relationships with customers, according to the complaint, filed in San Jose.

For more patent news, click here.

Trademark

BMW Mark’s Use in Irish Mechanic’s Website Barred by Court

Bayerische Motoren Werke AG, the maker of BMW automobiles, persuaded an Irish court to bar a County Roscommon mechanic’s use of its “BMW” mark on the Internet to promote his business, the Irish Times reported.

Judge Sean Ryan of Ireland’s High Court said the mechanic was attempting to trade on the fame of the Munich-based carmaker’s name, according to the newspaper.

Edward Ronayne, who was accused of infringement, had argued that his incorporation of “BMW” into his Internet domain name was permitted under a 1997 ruling from the European Court of Justice, the Times reported.

The court disagreed, saying Ronayne’s use of the name was part of his attempt to create an identity, something not authorized under the law, the newspaper reported.

Naert & Dubois Sued Over Alleged Use of Search Engine Terms

Naert & Dubois LLC, a law firm on South Carolina’s Hilton Head Island, was sued for trademark infringement by a South Carolina real-estate developer.

The complaint, filed in Beaufort, South Carolina, accuses Naert & Dubois and partners Joseph DuBois and Zach Naert of making unauthorized use of the “Coral Resorts,” “Coral Reef” “Coral Sands” “Island Links,” “Port O’Call” and “Hilton Head Island Development Co.” marks.

The firm allegedly uses these terms through various search engines’ advertising programs in order to promote their firm, which is focused on the timeshare industry, according to court papers.

Hilton Head Island Development Co. also said the law firm has purchased the names of the developer’s general counsel and founder through search-engine advertising programs. The developer said that when people search for any of these terms, a paid advertisement for Naert & Dubois appears, containing a link to the firm’s website, www.lowcountrylegal.com.

The law firm has paid for a certain number of “hits” per day through various search engines, and also has paid a premium for its advertisement to appear at the top of or on the first page of search results for anyone seeking to find the development company, according to court papers.

The public is confused by the law firm’s actions, the development company said, and is likely to assume falsely that an affiliation exists between the two entities. The aim of the law firm’s ad is to influence prospective real-estate customers not to do business with the development company, the developer claims.

The developer asked the court for awards of money damages, including extra damages to punish the law firm for its actions, and attorney fees and litigation costs. The developer also wants a court order terminating the law firm’s advertising contracts with the search engine companies, and a ban on further use of its marks.

Naert & DuBois didn’t respond immediately to an e-mailed request for comment.

The case is Hilton Head Development Co. v Joseph DuBois, 9:13-cv-03510, U.S. District Court, District of South Carolina (Beaufort).

For more trademark news, click here.

Copyright

Authors Guild to Appeal Dismissal of Google Suit

The Authors Guild, which represents writers, said in a Dec. 23 court filing that it plans to appeal the dismissal of an eight-year-old lawsuit against Google Inc.

A federal judge in New York dismissed the case in November, saying the Google Books project, which has scanned more than 20 million books so far, doesn’t harm authors or inventors of original works.

The judge’s ruling came more than two years after he rejected a proposed $125 million settlement in the case. The Guild sued in 2005, alleging that Google, owner of the world’s most popular search engine, infringed copyrights by scanning and indexing books without writers’ permission.

The case is Authors Guild v. Google, 1:05-cv-08136, U.S. District Court, Southern District of New York (Manhattan).

For more copyright news, click here.

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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Companies Mentioned

  • MRK
    (Merck & Co Inc)
    • $59.52 USD
    • -0.03
    • -0.05%
  • ACT
    (Actavis plc)
    • $234.84 USD
    • 0.46
    • 0.2%
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