Hologic, Microsoft, TiVo, Motorola: Intellectual Property

Hologic Inc. won an appeals court ruling that will let it pursue patent royalties against C.R. Bard Inc.’s SenoRx over a way to apply radiation to areas where cancer may occur after a tumor is removed.

The U.S. Court of Appeals for the Federal Circuit yesterday said a federal court was wrong to deem invalid Bedford, Massachusetts-based Hologic’s patent 6,482,142, and sent the case back to the lower court for further proceedings.

Hologic lost a 2009 trial in which it accused SenoRx of infringing patents related to balloon brachytherapy, in which a balloon is inserted into the cavity where a tumor has been removed to target remaining cancerous tissue. The suit targeted SenoRx’s Contura Multi-Lumen Balloon, a rival to Hologic’s MammoSite.

SenoRx conceded infringement of two elements of the patent, leaving open the question of whether the claims were invalid. A three-judge panel of the Federal Circuit said the invalidity finding was based on an erroneous interpretation of language in the patent.

C.R. Bard, based in Murray Hill, New Jersey, bought SenoRx last year.

Hologic’s case was argued by Matthew M. Wolf of Washington’s Howrey LLP. The argument for SenoRx was presented by Kannon K. Shanmugam of Washington’s Williams & Connolly LLP.

The case is Hologic Inc. v. SenoRx Inc., 2010-1235, U.S. Court of Appeals for the Federal Circuit (Washington). The lower court case is Hologic Inc. v. SenoRx, 08cv00133, U.S. District Court, Northern District of California (San Jose).

Saint-Gobain Loses Bid to Reverse Siemens Patent Verdict

Cie. de Saint-Gobain SA’s ceramics and plastics business lost its bid to overturn a patent-infringement verdict won by Siemens AG over a crystal used in medical-imaging devices.

The U.S. Court of Appeals for the Federal Circuit in Washington said a $44.9 million damage award may need to be increased to take into account additional products that infringed Siemens’s patent 4,958,080. It told a lower court to determine how much Courbevoie, France-based Saint-Gobain should pay Siemens.

The dispute was over the composition of crystals that convert gamma rays into light to produce a three-dimensional image of the body to test for cancer and other diseases. Munich- based Siemens makes crystals for its positron emission tomography, or PET, tests, and Saint-Gobain produces the crystals for products made by Royal Philips Electronics NV.

The $44.9 million awarded to Siemens was based on the sale of crystals for 61 scanners made by Philips Medical Systems. The Federal Circuit said the court should have included a royalty award on 18 additional scanners because they were made before the patent expired, even if they weren’t sold until after. Philips wasn’t named in the lawsuit.

The case is Siemens Medical Solutions USA Inc. v. Saint- Gobain Ceramics & Plastics Inc., 2010-1145 and 2010-1177, U.S. Court of Appeals for the Federal Circuit (Washington). The lower court case is Siemens Medical Solutions USA Inc. v. Saint-Gobain Ceramics & Plastics Inc., 07CV190, U.S. District Court for the District of Delaware (Wilmington).

Microsoft Judge Ends Attorney’s 13-Year Patent Case

A former International Business Machines Corp. patent attorney’s 13-year litigation against Microsoft Corp. was ended yesterday by an order from a federal appeals court.

Martin G. Reiffin of Danville, California, sued Microsoft in federal court in San Francisco in January 1998, accusing the world’s largest software company of infringing two patents that enable a computer operating system to complete two tasks simultaneously.

The case was initially dismissed that same year by a judge who said the patent for the technology didn’t match Reiffin’s initial application. In June 2000, the U.S. Court of Appeals for the Federal Circuit, which hears appeals of patent cases, reinstated the suit. The appeals court said the trial judge was in error and should have looked at later versions of the patent application.

In May, Judge Vaughn R. Walker issued an order noting that the U.S. Patent and Trademark Office issued a certificate canceling all claims of one of the disputed patents, and ruled that all claims of the second were invalid and unenforceable. He awarded litigation costs to Redmond, Washington-based Microsoft and dismissed all of Reiffin’s claims.

In its order yesterday, the appeals court affirmed Walker’s ruling without comment. The two disputed patents were 5,694,604 and 5,694,603.

Reiffin argued the case on his own behalf before the appeals court. Todd M. Siegel of Portland, Oregon-based Klarquist Sparkman LLP argued Microsoft’s case.

The appeals court case is Martin Gardner Reiffin v. Microsoft Corp., 2010-1334,-1391,-1392, U.S. Court of Appeals for the Federal Circuit. The lower court case is Martin Gardner Reiffin v. Microsoft Corp., 3:98-cv-0266-VRW, U.S. District Court, Northern District of California (San Francisco).

Microsoft Case Against TiVo to Be Reviewed by Trade Agency

Microsoft Corp.’s patent-infringement claims against TiVo Inc. will be investigated by a U.S. trade agency that has the power to block imports of TiVo’s television set-top boxes.

The U.S. International Trade Commission said yesterday it would investigate a complaint filed by Microsoft on Feb. 24. Microsoft, the world’s biggest software maker, claims that set- top boxes made by TiVo infringe four of its patents. TiVo, based in Alviso, California, makes the devices in Mexico, according to the Microsoft complaint.

The case before the trade agency expands a legal battle that began more than a year ago when Microsoft challenged TiVo patents after TiVo sued AT&T Inc., a customer of Microsoft, over the same patents. A separate lawsuit was filed by Redmond, Washington-based Microsoft claiming that TiVo infringed seven Microsoft patents. The two sides are in talks to settle the dispute, Microsoft said last month.

The four patents in the ITC case, which may be completed within 15 months, relate to program schedules and selection, controlling the interface, and a way to restrict use of the digital-video recorder based on a program’s rating. Microsoft said the technology is used in its Mediaroom software that runs on competing set-top boxes including AT&T’s U-Verse service.

The case is In the Matter of Set-Top Boxes, and Hardware and Software Components Thereof, 337-761, U.S. International Trade Commission (Washington).

For more patent news, click here.

Trademark

Xoom Sues Motorola Over New Tablet Computer With Same Name

Xoom Corp., operator of a money-transfer website, sued Motorola Mobility Holdings Inc. for trademark infringement over the new “Xoom” tablet computer that went on sale yesterday.

Xoom Corp., based in San Francisco, said it has been offering its online service since 2003 and registered the trademark for the name in 2004, according to a complaint filed Feb. 23 in federal court in San Francisco.

“To confuse and mislead consumers, Motorola without authorization deliberately and unlawfully appropriated Xoom’s trade name and trademark rights,” the company said in the complaint.

Motorola, based in Libertyville, Illinois, put its Xoom tablet computer on sale yesterday in the U.S. through Verizon Communications Inc.’s wireless unit to compete with Apple Inc.’s iPad. The Xoom runs on Google Inc.’s Android Honeycomb software. Xoom.com allows users to transmit money through the website to more than 30 countries.

Motorola declined to comment, saying in a statement that it hadn’t yet been served with a complaint.

Motorola Mobility’s trademark application was rejected by the U.S. Patent and Trademark Office in December, which said it was too similar to one owned by Zoom Telephonics Inc. in Boston, according to information on the trademark office’s website.

On Feb. 10, Motorola Mobility told the trademark office that it and Zoom had agreed there wouldn’t be any confusion “because of the material differences in the goods and services which they each offer,” according to the trademark website. Zoom Telephonics makes modems and other communications products.

Two days later, the agency agreed to make the application public to see if anyone else would oppose it, the website said.

Xoom Corp. filed additional applications Jan. 24 for use of the Xoom name for a website and software related to money transfers, according to the trademark website.

Xoom Corp. also charged that Motorola purchased the Xoom keyword for online search engines. Closely held Xoom is backed by venture firms Sequoia Capital, New Enterprise Associates and Fidelity Ventures, according to its website.

The Xoom tablet sells for about $600 with a two-year Verizon contract and about $800 without one. It will compete with an iPad model priced at $729, as well as with less- expensive tablets from HTC Corp. and Samsung Electronics Co.

The case is Xoom Corp. v. Motorola Trademark Holdings LLC, 11-0848, U.S. District Court, Northern District of California (San Francisco).

Heaven Hill Sues Premium Blend Over Three Kings Nog Label

Heaven Hill Distilleries Inc., the producer of Christian Brothers brandy, Old Fitzgerald Bourbon and Burnett’s gin, sued a Florida distiller for trademark infringement.

The lawsuit, filed Feb. 23 in federal court in Louisville, Kentucky, relates to the packaging design for Heaven Hill’s Christian Brothers Holiday Nog.

Premium Blend Inc., of Hialeah, Florida, is accused of packaging its Three Kings Holiday Nog with a label that is “very similar” to the packaging used since before 1999 on the Christian Brothers product.

The similarities were intended to “cause confusion and/or mistake and/or deception as to the affiliation, connection and/or association” regarding the source of the Three Kings product, Heaven Hill claimed.

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

Closely held Heaven Hill, which acquired Christian Brothers, Old Fitzgerald and several other brands from Diageo Plc in 1999, asked the court to bar Premium Blend from using packaging that is “confusingly similar” to labels used on its holiday nog product.

The Bardstown, Kentucky-based company also seeks an order for destruction of all promotional materials using the allegedly infringing label, and awards of money damages, attorney fees, litigation costs and profits Premium derived from its alleged infringement. Claiming the infringement is intentional, Heaven Hill asked that damages be tripled to punish the Florida distiller for its actions.

Heaven Hill is represented by Matthew A. Williams and Lisa C. DeJaco of Wyatt, Tarrant & Combs LLP of Louisville, Kentucky.

The case is Heaven Hill Distilleries Inc., v. Premium Blend Inc., 3:11-cv-00101-JGH, U.S. District Court, Western District of Kentucky (Louisville).

For more trademark news, click here.

Copyright

SAP Asks Court to Reduce Oracle Award or Set New Trial

SAP AG, the business-software maker ordered by a jury to pay $1.3 billion to rival Oracle Corp., asked a judge to hold a new trial or reduce the award to no more than $407.8 million.

Oracle didn’t provide sufficient evidence to justify the verdict, which was a “miscarriage of justice,” Walldorf, Germany-based SAP said in papers filed Feb. 23 in federal court in Oakland, California. SAP said Feb. 3 it would seek to overturn the jury award, the largest ever for copyright infringement.

A new trial isn’t needed and the verdict should stand, Oracle said in filings. Oracle, based in Redwood City, California, accused SAP’s U.S.-based TomorrowNow software- maintenance unit of making hundreds of thousands of illegal downloads and several thousand copies of Oracle’s software to avoid paying licensing fees and to steal customers.

The case is Oracle Corp. v SAP AG, 07-01658, U.S. District Court, Northern District of California (Oakland).

For more copyright news, click here.

IP Moves

Sony Ericsson Litigation Head Joins Andrew Kurth’s IP Group

Andrews Kurth LLP hired James V. Mahon for its intellectual-property practice group, the Houston-based firm said in a statement.

Mahon is a former deputy general counsel at Sony Ericsson Mobile Communications Inc., where he headed the mobile telephone manufacturer’s global litigation group. Before joining Sony Ericsson, Mahon practiced at London-based Clifford Chance LLP.

He handled patent, copyright, trade secret and unfair competition disputes, as well as patent acquisition and patent portfolio acquisition.

Mahon has an undergraduate degree in computer science from Hofstra University, a master’s degree in electrical engineering from Columbia University and a law degree from Rutgers University.

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: John Pickering at jpickering@bloomberg.net.

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