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Apple, Tivo, S.C. Johnson, Google: Intellectual Property

Apple Inc. (AAPL)’s preliminary victory in one of the company’s two patent-infringement cases against HTC Corp. (2498) will be reviewed, the U.S. International Trade Commission said.

The commission in Washington, which can block imports of products that violate U.S. patents, said in a notice yesterday there is a need to review a judge’s determination from July 15 that HTC’s Android-based smartphones infringed two Apple patents, while no violation occurred for two others.

HTC, Asia’s second-biggest maker of smartphones, has said there are “alternate solutions in place” to work around the two patents said to be infringed. Cupertino, California-based Apple, the world’s biggest smartphone maker, has accused HTC of “stealing” its iPhone and iPad technology and using it in devices including Droid phones and Flyer tablets that run Google Inc. (GOOG)’s Android operating system.

The two patents HTC was found to have infringed cover transmission of multiple types of data and a system that can identify phone numbers in an e-mail in a way that lets the user dial or store that number. The two patents that the judge said weren’t infringed relate to object-oriented programming, a way of writing and executing software.

Apple argued in an agency filing that if the commission opted to review the patents that were infringed, the agency also should consider the two that were found to not be infringed.

Apple has another commission complaint pending, filed in July, that also targets HTC’s phones and Flyer tablets. HTC has retaliated with three patent-infringement cases against Apple, one submitted last year, one last month and another last week.

HTC, in an Aug. 25 filing with the agency, said that even if it did infringe the patents, the commission shouldn’t ban U.S. imports of the Taoyuan, Taiwan-based company’s phones. An import ban wouldn’t be in the public interest partly because HTC phones have special features for the hearing impaired, comply with requirements for “enhanced 911” location services and provide Emergency Alert Services.

About 36 percent of Android smartphones in use in the U.S. were made by HTC, according to the filing.

“The exclusion of HTC accused devices from the U.S. market would not only eliminate the most popular brand of smartphones using Android, the fastest-growing mobile operating system, but would also impact the public health, safety, and welfare concerns of individual U.S. consumers,” HTC said.

Apple said in an Aug. 25 filing that there is no shortage of smartphones on the market and HTC could replace lost Android sales with phones the company makes using Microsoft Corp.’s Windows Phone operating system.

Nokia Oyj (NOK1V), which had been targeted in the same ITC complaint, reached a settlement with Apple. Mountain View, California-based Google wasn’t a party in the case.

The case is In the Matter Of Certain Personal Data and Mobile Communications Devices and Related Software, 337-710, U.S. International Trade Commission (Washington).

Imdex Says It’s Considering Next Step After Failed Appeal

Imdex Ltd. (IMD), an Australian provider of drilling fluids and instrumentation used in gas and oil exploration, said an Australian court rejected its appeal in a patent case.

The company said the appeal was of a lower court holding that Coretell Pty. Ltd and Mincrest Holdings Pty Ltd. hadn’t infringed Australian patent 2006100113, held by Imdex’s Australian Mud Co. unit.

The patent covered what is known as a core orientation device, a machine used to determine the orientation of core samples brought up during drilling operations.

In a Sept. 15 statement, Imdex said it is presently considering options with respect to the unsuccessful appeal. Its Australian Mud Co, unit has another application for covering the device pending in both the Australian and international patent offices, the company said in the statement.

Tivo Trial in Patent Case Against AT&T Put Off Until January

Tivo Inc.’s patent-infringement jury trial against AT&T Inc. (T) has been postponed until January, according to an order filed yesterday by a federal judge.

The Alviso, California-based pioneer in digital recording services filed the suit in federal court in Marshall, Texas, in August 2009, claiming three patents used in its recording system were infringed.

According to U.S. District Judge David Folsom’s order, he hasn’t yet made a determination of the scope of the patent, known as the patent’s “claim construction.” He said he was “mindful” that the parties were waiting for this ruling and said he would enter it as quickly as his schedule allows.

After that order is filed, he said he’ll order a scheduling conference.

The case is Tivo Inc. (TIVO) v. AT&T, 2:09-cv-00259-DF, U.S. District Court, Eastern District of Texas (Marshall).

For more patent news, click here.

Trademark

Borders’ IP Assets Bring Almost $16 Million At Auction.

Hilco Trading LLC’s Hilco Streambank Unit said intellectual property assets of Borders Group Inc. brought $15,765,000 at auction.

The Northbrook, Illinois-based company, which has handled sale of IP assets of a number of companies going through bankruptcy proceedings, said the sale included the Borders, Waldenbooks and Brentano’s trademarks, Internet domain names and the Borders.com e-commerce website.

The sale is subject to approval by a bankruptcy court in Manhattan.

Streambank said in its Sept. 15 statement that two bidders participated, with more than 50 rounds of bidding before the winners emerged.

Brentano’s, once the world’s largest bookstore chain, was founded in New York in 1853 by August Brentano, a Jewish immigrant from Austria. Waldenbooks was begun in Pittsburgh in 1962.

Waldenbooks acquired Brentano’s and was itself acquired by Troy Michigan’s Kmart Co. in 1984. Borders was begun in Ann Arbor, Michigan in 1971.

In 1992 Kmart acquired Borders and formed the Borders- Walden Group, according to the company history page on the Borders website.

In 1995, Kmart renamed the unit Borders Group Inc. and spun it off in an initial public offering. The new public company, with a market value of about $500 million, had more than 1,000 locations under the Borders, Waldenbooks and Planet Music brands and generated $1.5 billion in revenue.

At one time the number two U.S. bookstore chain, Borders filed for bankruptcy in New York in February after management changes, job cuts and debt restructuring failed to make up for sagging book sales in the face of competition from Amazon.com Inc. and Wal-Mart Stores Inc.

S.C. Johnson Sues Nutraceutical Over ‘Bug Off’ Trademark

S.C. Johnson & Co. sued a Utah maker of nutritional supplements for trademark infringement.

The maker of Windex, Glad and Drano accused Nutraceutical Corp. of Park City, Utah, of infringing trademarks related to its Bug-Off insect repellent.

The closely held Racine, Wisconsin-based company objects to Nutraceutical’s use of “Bug Off” with insect repellent products acquired in 2011 when the Utah company bought the assets of Sunfeather Natural Soap Co. At that time Sunfeather had unsuccessfully tried to register “Bug Off” with the U.S. Patent and Trademark Office.

“Bug Off!” insect repellent is still listed on the Sunfeather.com website, Johnson said in the complaint it filed Sept. 12 in federal court in Milwaukee.

The two companies compete, offering “goods that are closely related, if not identical,” according to court papers. Johnson said the use of this term with the Sunfeather product confuses consumers, causing them to believe falsely that an affiliation exists between the two companies.

The Wisconsin company also accused Nutraceutical of trying to ride on the reputation of the Johnson Bug Off insect repellent.

Johnson asked the court to bar further infringement of its marks, and the seizure and destruction of all unauthorized products and promotional materials in the Utah company’s possession.

The company also asked for awards of $2 million for each item the court will find has deliberately been infringed through a counterfeit product, and for all of Nutraceutical’s profits attributable to the alleged infringement.

Additionally, Johnson requested that all damages or profits be tripled to punish the Utah company for its actions, and for awards of attorney fees and litigation costs.

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

Johnson is represented by Katherine W. Schill, and Jonathan H. Margolies of Milwaukee’s Michael Best & Friedrich LLP, and Dianne M. Smith-Misemer and Cheryl L. Burbach of Overland Park, Kansas-based Hovey Williams LLP.

The case is S. C. Johnson & Sons Inc., v. Nutraceutical Corp., 3:11-cv-00861-RTR, U. S. District Court, Eastern District of Wisconsin (Milwaukee).

German Beverage Maker Gets OK to Register ‘F Word’ as Trademark

EFAG Trademark CO., a German maker of alcoholic beverages, has won approval from Germany’s Federal Patent Court to use the German form of the vulgar English word euphemized as “the F word” as a name for its schnapps, Spiegel Online International reported.

The German Patent and Trademark Office had refused to register the name on the grounds that it was socially offensive, according to Spiegel.

The court said that while the word is in poor taste, it is used “in the widest range of social classes and age groups,” Spiegel reported.

In addition to alcoholic beverages, EFAG has registered the mark for use with clothing, mineral water, and fruit drinks, according to Spiegel.

Vietnam Behind in Registration of Agricultural Origin Trademarks

Vietnam lags in the use of trademarks related to geographic origins of agricultural products, the head of that nation’s National Office of Intellectual Property said at an IP conference in Hanoi, Vietnam News reported.

Only 23 of 993 products with specific geographic origins have been registered, according to Vietnam News.

The registration of lychees from the Back Gian province has helped increase their value from $21 million in 2007 to $38 million in 2011, according to Vietnam News.

To date, a lack of enforcement has lead to many farmers’ indifference to the registration process, Vietnam News reported.

For more trademark news, click here.

Copyright

Google Reports Progress in Digital Books Settlement Talks

Google Inc. reported progress in possible settlement of a lawsuit over the search-engine company’s digital reproduction of books, lawyers told the judge in the case.

Daralyn Durie, a lawyer for Google, told federal judge Denny Chin that the company has made “substantial progress” in negotiations with publishers. Talks with representatives of authors are taking place among “principals” from both sides, she said.

“The parties are still talking,” Chin said in a hearing yesterday in Manhattan federal court. “I’m hopeful, still hopeful.”

Chin set a schedule for the litigation which would result in the case being resolved no sooner than July 2012, if the parties don’t settle.

Google was sued in 2005 by authors and publishers who claimed the company infringed their copyrights on a massive scale by digitizing books and allowing snippets to be seen online. Chin declined to approve an earlier $125 million settlement, saying it would be unfair to authors.

Chin, who was elevated to the New York federal appeals court in April 2010, is continuing as the trial judge in the case.

The case is Authors Guild v. Google Inc., 05-CV-8136, 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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