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J&J, Polycom, Facebook, Harry Potter: Intellectual Property

The U.S. government and Johnson & Johnson (JNJ) each filed patent-infringement lawsuits against Teva Pharmaceutical Industries Ltd. (TEVA) to block sales of a generic version of the HIV medicine Prezista.

Teva is seeking permission from the U.S. Food and Drug Administration to market a copy of Prezista, which is sold by J&J’s Tibotec unit. The government wants to block approval until a patent it owns and licenses to J&J expires in 2019, according to a complaint filed March 15 in federal court in Newark, New Jersey. Tibotec sued on March 16 in the same court, claiming infringement of two patents expiring in 2015 and 2026.

Prezista, known by the chemical name darunavir and first approved by regulators in 2006, is a protease inhibitor given with other HIV medicines. It’s designed to block infected cells from making new copies of the virus. U.S. sales of Prezista rose 32 percent to $401 million last year, making it New Brunswick, New Jersey-based J&J’s fastest-growing pharmaceutical product.

The government’s patent 7,470,506, issued to the National Institutes of Health and the University of Illinois, is licensed to Tibotec and covers a way to use Prezista so there is less likelihood that drug resistance will develop.

The proposed generic versions, “if utilized in treatment according to their proposed indications, will infringe” the patent, the U.S. and university said in their lawsuit.

Denise Bradley, a spokeswoman for Petah Tikva, Israel-based Teva, said the company had no comment. Such lawsuits are common to clarify patent rights while the FDA separately considers the generic-drug applications.

Tibotec sued Lupin Ltd. and Mylan Inc. in November, claiming infringement of the 2026 patent and seeking a court order to prevent them from selling copies of the medicine.

The government case is U.S. v. Teva Pharmaceuticals Inc., 11cv1461, and the Tibotec case is Tibotec Inc. v. Teva Pharmaceuticals USA Inc., 11-cv1509, both U.S. District Court, District of New Jersey (Newark).

Apple, PayPal, Victoria’s Secret Targeted by Cordance Patent

Apple Inc., EBay Inc. (EBAY)’s PayPay Unit, and Limited Brands Inc.’s Victoria’s Secret unit were sued for infringing a patent that is also subject of a case against Amazon.com Inc.

In a complaint filed March 14 in federal court in Wilmington, Delaware, Cordance Corp. of Sammamish, Washington accused the three companies of infringing patent 6,757,710. Cordance sued Amazon in the same court in August 2006, claiming the Seattle-based Internet retailer infringed three patents for online shopping. In August 2009 a jury found that Amazon didn’t infringe two of the patents and determined that the third -- which is subject of the new case -- was invalid.

Cordance appealed and U.S. District Judge May Pat Thygne found claims in the disputed patent to be valid. Her ruling is now under appeal to the Washington-based court that hears appeals of patent cases.

In the new case, Cordance and co-plaintiff Efficent Online Purchasing LLC of Newport Beach, California, claim that online purchasing methods each company uses infringed the patent. It asked the court for orders against further infringement, and for awards of money damages, attorney fees and litigation costs.

Cordance is represented by Karen E. Keller and John W. Shaw Young Conaway Stargatt & Taylor LLP of Wilmington.

The case is Efficient Online Purchasing LLC v. Apple Inc. (AAPL), 1:11-cv-00222-UNA, U.S. District Court, District of Delaware (Wilmington). The earlier patent case is Cordance Corp. v. Amazon.com Inc., 1:06-cv-00491-MPT, U.S. District Court, District of Delaware (Wilmington). The appeal is Cordance Corp. v. Amazon.com Inc, 10-01545, U.S. Court of Appeals for the Federal Circuit.

For more patent news, click here.

Trademark

Polycom Claims Repair Service, Parts Supplier Infringe Marks

Polycom Inc., the world’s largest stand-alone maker of videoconferencing equipment, sued two companies that repair and produce telecom replacement equipment for trademark infringement and is seeking $2 million in damages for each infringed mark.

According to the complaint filed March 17 in federal court in Houston, D&S communications Inc., of Elgin, Illinois, and Dynamic Voice Data Inc., of Stafford, Texas, are using the Polycom marks without authorization.

Polycom claims that D&S is holding itself out as an authorized Polycom repair vendor and is using counterfeit parts made by Dynamic Voice Data. Included in the complaint are color photos of Polycom products sent to D&S for repair, showing what the Pleasanton, California-based company said are fake parts, some bearing markings from Dynamic Voice Data.

The public is confused by these two companies’ actions, Polycom claims, and websites the two companies operate use its marks without authorization. Polycom says the two companies are deliberately infringing the marks and that its reputation and goodwill are damaged by their actions.

It asked the court to bar both companies from any unauthorized use of the Polycom marks, and for an order for the destruction of all infringing promotional materials. Additionally, it seeks an award of the profits the two companies derived from their alleged infringement and asked the court to triple those amounts.

Additionally, Polycom requests damages of up to $2 million per infringed mark, and awards of litigation costs and attorney fees.

Neither D&S nor Dynamic Voice Data responded immediately to e-mails requesting comment.

Polycom is represented by John C. Cain, and William D. Raman of Austin’s Wong Cabello Lutsch Rutherford & Bruccculeri LLP.

The case is Polycom Inc. (PLCM) v. D&S Communications Inc., 4:11- cv-01018, U.S. District Court, Southern District of Texas (Houston).

Web-Name Expansion May Cost Companies Millions to Defend Brands

Large companies may have to spend millions of dollars to protect their brands under a proposal that would generate hundreds more Internet domain names beyond dot-com and dot-org, an industry group said.

The Internet Corporation for Assigned Names and Numbers, an international nonprofit organization that manages the Internet’s global address system, is considering a plan to allow applications for new Web suffixes that may include dot-bank, dot-movie, dot-music, dot-eco and dot-love.

Such an expansion may prompt large companies to acquire more Web addresses to keep their brands from being hijacked by others, costing $746 million, or $500,000 per individual company, according to the Coalition Against Domain Name Abuse, an industry group in Washington whose members include Wells Fargo & Co. (WFC), Morgan Stanley (MS), and Hewlett-Packard Co. (HPQ)

“The proposal that is on the table could allow for a proliferation of websites that could confuse customers and make it difficult for them to determine which ones are legitimate and which are not,” Beverly Butler, a Wells Fargo spokeswoman, said in an interview. “Depending on how many dot-banks, dot-moneys, dot-whatever, we would have to protect our brands and our product names. It would be legal costs and time.”

Morgan Stanley and Hewlett-Packard declined to comment.

ICANN, based in Marina del Rey, California, is reviewing the domain-name proposal. The organization said the expansion could help spark new business models and competition on the Web.

The application guidebook for domain names under consideration by ICANN envisions trademark protections, including a database of trademarks, dispute resolution systems, and pre-emptive blocks for trademark holders, Pritz said.

ICANN oversees 21 generic, top-level domain names. If the expansion plan is approved, the organization has said it may initially produce hundreds of applications, which would represent an unprecedented expansion of the Internet domain-name system.

The debate is increasing over ICANN’s role in managing the global Internet. The nonprofit organization, which was tapped in 1998 by the U.S. Commerce Department to oversee the domain-name system, is facing calls from governments worldwide for a larger role in policy making.

ICANN’s contract with the U.S. government is due to expire in September. The Commerce Department has asked for public comment on the group’s performance, and U.S. Assistant Secretary of Commerce Lawrence Strickling called in a speech at the San Francisco meeting last week for ICANN to “do more to engage governments.”

ICANN has authorized small numbers of new domain names in the past, but none has approached the dominance of dot-com, which accounts for 71 percent of all Web registrations since 2001.

Last year, dot-com had 89.2 million address registrations, dot-net had 13.5 million, and dot-org had 8.3 million. All three are so-called “legacy domains” that were created in 1985 before the formation of ICANN. The next most popular domains were dot-info with 6 million registrations in 2010 and dot-biz with 2 million.

The remainder of existing domain names didn’t top a million registrations, and the least popular, dot-museum, had 553. Registrations for dot-gov, dot-mil and dot-edu are not disclosed.

Large brands are not asking for additional domain names, said Alan Drewsen, executive director of the International Trademark Association, whose board of directors includes Microsoft Corp. (MSFT) and PepsiCo Inc.

ICANN’s proposed domain-name expansion may increase the potential for “typosquatting,” the practice of registering Internet addresses that target people’s typing mistakes with misspellings of brand-name sites, according to a Bloomberg analysis. Such Web sites typically have little or no content, and derive revenue from visitors who inadvertently arrive at the sites and click on advertisements.

Jobs Action-Figure Maker Halts Sale of Mark Zuckerberg Toy

China’s MIC Gadget, which offered an action figure of Apple Inc. founder Steve Jobs until his Cupertino, California-based objected, has run into the same situation with a figure depicting another tech giant.

The store’s website shows a listing for a Mark Zuckerberg action figure selling for $69.90. The founder of the Facebook Inc. social media site is depicted wearing a brown hooded sweatshirts, jeans and sandals, and is shipped with two different acrylic signs he can hold. One says “like” and the other “poke,” both of which are commonly exercised Facebook functions.

The figure, which is described by MIC as “the most friendly toy” we’ve ever seen, is listed as discontinued. According to the Digital Spy website, MIC was sent a cease-and- desist letter by a Beijing law firm representing Facebook.

MIC may try to make an end run around the cease-and-desist notice or at least try to poke fun at the Palo Alto, California- based company’s infringement allegations. After it received a similar notice from Apple’s lawyers about the Steve Jobs figure, it posted what it called “The Phenomenal Pineapple CEO Action Figure (Ninja Edition).”

That listing is for the Jobs figure Apple found objectionable, altered by being hooded Ninja-style, holding Ninja stars in his hand instead of an iPhone. The ad copy notes that the Pineapple CEO is presently on medical leave “and his body will get stronger with his Ninja training.” That figure is sold out, according to the MIC website.

MIC, whose company name stands for “Made in China, according to its website, mainly sells accessories for Apple’s iPads and iPhones.

For more trademark news, click here.

Copyright

Harry Potter Author Loses Bid to End U.K. Willy the Wizard Case

J.K. Rowling, the world’s richest author, and her publishers lost a bid to dismiss a U.K. lawsuit alleging she copied part of a children’s book about a wizard when writing “Harry Potter and The Goblet of Fire.”

The case against Bloomsbury Publishing Plc (BMY) deserves further argument even though it has “poor” prospects of success, Justice David Kitchin ruled March 18 at the High Court in London. The judge ordered the claimant to post a security bond to pay the publisher’s costs if the lawsuit fails.

The estate of deceased English author Adrian Jacobs sued Bloomsbury in London in June 2009, alleging part of his 1987 book, “The Adventures of Willy the Wizard: No. 1 Livid Land,” was plagiarized by Rowling. In October Kitchin previously declined to dismiss the case.

The estate claims that Jacobs used concepts and themes such as wizard prisons, wizard hospitals and wizard colleges before Rowling did. The year of wizard contests in the book was similar to a central theme of “The Goblet of Fire,” the estate claimed.

The two authors also shared an agent, Christopher Little, who manages the Harry Potter brand worldwide, according to the estate.

Bloomsbury referred media calls to Rowling’s spokeswoman, Nazneen Nawaz, who didn’t immediately return a call for comment. Rowling has called the claims “unfounded” and “absurd.”

The case is Paul Gregory Allen v. Bloomsbury Publishing Plc, case no. 09-1979, High Court of Justice, Chancery Division (London).

For more copyright news, click here.

IP Moves

King & Spalding Expands IP, Technolgy-Licensing Practice

King & Spalding LLP hired Richard C. Hsu for its IP and technology-licensing practice, the Atlanta-based firm said in a statement.

Hsu, who joins from Atlanta’s Kilpatrick Townsend LLP, has also previously practiced at the Venture Law Group. He also served as general counsel of Cyrano Sciences Inc.

He has worked with life science, semiconductor, medical device, electronics/software and financial services companies. Hsu is resident in the firm’s Silicon Valley office.

Hsu has an undergraduate degree in engineering and applies science from the California Institute of Technology and a law degree from Columbia 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: David E. Rovella at drovella@bloomberg.net.

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