Nvidia, Vlingo, Air Jamaica: Intellectual Property (Update1)

Nvidia Corp., the world’s second- largest maker of computer-graphics chips, plans to appeal a patent ruling lost to Rambus Inc. and said customers including Hewlett-Packard Co. won’t see any disruption to their supplies.

The U.S. International Trade Commission in Washington said July 26 that Nvidia chips infringed three Rambus patents, and issued an order that would ban imports of certain products containing the chips. Nvidia said it can continue sales by taking advantage of a licensing arrangement Rambus reached with European regulators as part of an unrelated antitrust case.

Rambus, which got about 96 percent of its $113 million in revenue last year from patent-licensing royalties, filed the complaint against Santa Clara, California-based Nvidia after the two were unable to reach a licensing agreement. Rambus, based in Los Altos, California, has spent more than a decade suing computer-memory chipmakers that refused licensing deals.

As part of an agreement reached with the European Commission last year, Rambus agreed to license its patents related to memory controllers at a rate that wouldn’t exceed 40 cents a unit.

“That’s revenue to us: It resolves the future; it doesn’t resolve the past,” Rambus General Counsel Tom Lavelle said in an interview. Rambus still expects Nvidia to pay “past damages for the eight years they were infringing our patents and not paying us,” he said.

Rambus has a civil lawsuit pending to seek that money. The ITC doesn’t have the authority to impose monetary damages, only to block imports of the offending products.

By paying the European-set rate, Nvidia avoids an ITC order that would ban imports of some products containing the chips and prohibit sales of imported goods already in the country.

The bans are subject to review by U.S. President Barack Obama. The underlying patent case will be appealed to a court in Washington that specializes in patent law. Nvidia also is challenging the patents in a review before the U.S. Patent and Trademark Office.

The European Commission license “will allow us and our partners to continue our business under the terms of that license and prevent the enforcement of any exclusion order,” Nvidia said in an e-mailed statement.

The ITC case is In The Matter of Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, 337-661, U.S. International Trade Commission (Washington).

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MTS to Pay $7.5 Million to Settle Hysitron Patent Dispute

MTS Systems Corp., a maker of systems for testing the mechanical behavior of materials and products, will pay $7.5 million to settle a patent-infringement dispute with Hysitron Inc.

Hysitron, based in Minneapolis, sued MTS in federal court in Minnesota in March 2007, alleging that two patents for hardness testing and surface imaging were infringed.

According to an MTS statement issued yesterday, Hysitron will receive a payment of $7.5 million and neither party will admit liability or wrongdoing. The dispute related to a product line Eden Prairie, Minnesota-based MTS divested in 2008, according to the company statement.

The case was Hysitron Inc., v. MTS Systems Corp., 0:07-Cv- 01533-ADM-AJB, U.S. District Court, District of Minnesota.

Vlingo Licenses Patent Portfolio from Intellectual Ventures

Vlingo Corp., the Massachusetts company that sued Nuance Communications Inc. for patent infringement on July 22, has taken a license to an undisclosed number of patents held by Intellectual Ventures, according to an IV statement. Vlingo is a provider of voice applications for telephones.

Intellectual Ventures of Bellevue, Washington, was started in 2000 by Nathan Myhrvold, the former chief technology officer at Microsoft Corp., and Peter N. Detkin, the former manager of litigation at Intel Corp.

According to the statement, Intellectual Ventures now has “more than 30,000 IP assets.”

In June, Finmeccanica SpA and Thales SA’s Alenia Space took a license to what IV described in a statement as a “significant patent portfolio describing hundreds of inventions related to satellites communication systems as well as additional patent rights.”

The Vlingo license agreement covers “a large portfolio” including patents acquired for defensive purposes, according to the statement. It doesn’t mention whether the patents cited in the suit against Nuance were among those licensed by IV.

The case against Nuance is Vlingo Corp. v. Nuance Communications Inc., 1:10-cv-00621-UNA, U.S. District Court, District of Delaware (Wilmington).

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Copyright

Manhattan Property Developer Sued for Copyright Infringement

Solly Assa, a Manhattan real-estate developer and the co- founder of New York’s Assa Properties, was sued for copyright infringement by a design company.

Graham Hanson Design LLC of New York designed the promotional materials including the website for Assa’s midtown Manhattan condominium project at 511 9th Ave., according to court papers. The design company billed Assa and 511 9th more than $95,000 from December 2008 to January 2009 and hasn’t been paid, the company said in the complaint filed July 20 in federal court in Manhattan.

Under contract terms, the copyright for the design work was to stay with the design company until “outstanding sums are paid,” according to court papers. The project has used the design firm’s work “continuously” since it was developed and has never paid, Graham Hanson Design claimed.

The company asked the court for money damages, including all it is owed by the developer, attorney fees and litigation costs. The design company requested that the damages due for the unpaid fees be tripled to punish the developer for his actions.

Graham Hanson Design also sued Assa in February. In that suit, the designer was seeking almost $48,000 in unpaid fees in connection with design work for the Waterscape condominium project in midtown Manhattan.

That case is still in litigation. Lawyers for Waterscape have moved to have it dismissed.

The design company is represented in both cases by Andrew C. Levitt of O’Hare Parnagian LLP and Daniel A. Nelson of Nelson & McCulloch LLP, both in New York.

The older case is Graham Hanson Design LLC v. Waterscape Resort LLC, 1:10-cv-00963-BSJ-RLE; the new case is Graham Hanson Design LLC v. 511 9th LLC, 1:10-cv-05493-UA. Both are in U.S. District Court, Southern District of New York (Manhattan).

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Trademark

Jamaica Keeps Some Air Jamaica Mark Rights, Government Says

Caribbean Airlines will be permitted to use government- owned Air Jamaica Ltd.’s trademarks for one year, and potentially can renew the license every year for a royalty of $5 annually, Audley Shaw, Jamaica’s minister of finance and the public service, said in a statement.

Caribbean Airlines, based in Trinidad, bought Air Jamaica in May.

The Jamaican government will retain rights to continue using the marks in any way it did before the May 1 agreement, and may also use them in any other way that doesn’t compete with Caribbean Airlines’ activities, Shaw said.

Caribbean Airlines may use the trademarks only in connection with its Jamaican operations, according to the statement.

The license agreement will be terminated if Caribbean Airlines becomes bankrupt or files to run Jamaican operations to an agreed-upon minimum service level. The government of Trinidad & Tobago must retain at least 50.1 percent ownership of Caribbean Airlines for the agreement to remain in force, Shaw said.

Governors America Sues Over Fake Products Sold on EBay Site

Governors America Corp., a maker of engine controls, filed a trademark-infringement lawsuit in connection with the importation and sale of counterfeit products from China.

Governors America, based in Agawam, Massachusetts, has been selling electromechanical and electronic engine controls for more than 20 years, according to a complaint filed July 26. It has used the company name as a mark since 1988, and registered the trademark with the U.S. Patent and Trademark Office in August 2009, the complaint said.

On July 15, the company discovered what it said were counterfeit items being sold on EBay Inc.’s auction website bearing the Governors America trademark without authorization.

The trade dress of the fake was “virtually identical” to that of legitimate products including use of the trademark, the company said, except that they were labeled “made in China,” according to the complaint filed in federal court in Springfield, Massachusetts.

The company said its products aren’t made in China, and it’s harmed by the importation and sale of fakes. Fakes also confuse the public, the company said.

The suit lists five unidentified people and an equal number of unnamed entities as defendants. EBay isn’t a defendant.

Governors America asked the court for money damages, attorney fees and litigation costs, and for an order barring further infringement of its marks.

The company is represented by James C. Duda and Michael Roundy of Bulkley, Richardson & Gelinas LLP in Springfield.

The case is Governors America Corp., v. John Does, U.S. District Court, District of Massachusetts (Springfield).

For more trademark news, click here.

IP Moves

Jones Day Hires MoFo’s Michael Vella for Shanghai IP Group

Jones Day hired Michael W. Vella to work in its Shanghai intellectual property practice, the firm said in a statement. Vella, a litigator, joins from San Francisco’s Morrison & Foerster LLP.

Vella has also practiced at Baker & McKenzie and served as a judicial clerk to Judge Roger B. Andewelt of the U.S. Court of Federal Claims. He has represented clients in the electronics and biotechnology industries. In addition to patent, trademark and copyright litigation, Vella has handled license negotiations.

Vella has undergraduate and law degrees from the University of California at Berkeley.

Norton Rose Expands Asian IP Practice with Two From DLA Piper

Norton Rose LLP hired Gigi Cheah and Justin Davidson for its Asian IP practice, the London-based firm said in a July 20 statement. Both joined from the Hong Kong office of Chicago’s DLA Piper LLP.

Before she worked at DLA Piper, Cheah served as Asia regional counsel for 3Com Corp. She has done transactional work for clients in the life sciences and telecommunications.

She holds an undergraduate and a master’s degree in law from the University of Sydney.

Davidson does both transactional and litigation work. He has handled patent, trademark, copyright, design rights and IP aspects of technology spinoffs and corporate acquisitions.

He previously practiced at the Hong Kong office of London’s Freshfields Bruckhaus Deringer.

Davidson received his law degree from the University of Nottingham and has a diploma in IP law from the University of Bristol.

To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at vslindflor@bloomberg.net.

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