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Butamax, Pfizer, Burberry, BitTorrent: Intellectual Property

Butamax Advanced Biofuels LLC asked the U.S. Patent and Trademark Office to reexamine a disputed patent owned by Gevo Inc. (GEVO), the U.S. biotechnology company backed by the oil refiner Total SA and the specialty chemicals maker Lanxess AG. (LXS)

A joint venture of BP Plc (BP/) and DuPont Co., Butamax said Gevo’s patent may be invalid because it’s based on technology that “was well known at the time the patent was filed,” according to a statement yesterday.

The companies have been sparring since January 2011 over patent rights for systems that convert corn and non-food crops into isobutanol. The Patent Office granted an earlier Butamax request on March 23 to reexamine another Gevo patent, according to the statement. Patent reexaminations take about three years on average.

The Patent Office is also reviewing two Butamax patents at Gevo’s request.

Isobutanol is blended with gasoline or refined into specialty chemicals or jet fuel.

Pfizer Letting U.S. Test Failed Compounds on New Illnesses

More than 20 compounds that Pfizer Inc. (PFE), Eli Lilly & Co. (LLY) and AstraZeneca Plc (AZN) failed to turn into drugs will be tested by U.S.-sponsored scientists in a $20 million program to see if they’ll work against ailments they weren’t aimed at previously.

If they do, the time to market will be shorter and the drugmakers, who retain ownership of the compounds, will share profits with the researchers, who keep intellectual property rights. Traditionally, companies spend about $2 billion and take 14 years to develop therapies, a so-called “valley-of-death” commitment that’s stalled progress as drugmakers move cautiously in deciding which illness to target.

The joint program, a first for the National Institutes of Health, is designed to lessen their risk, funded by $575 million in President Barack Obama’s fiscal 2013 budget. The agency cited the HIV treatment AZT, created from failed attempts to treat cancer, in explaining the partnership.

“We need to generate more of these success stories in a more systematic manner,” NIH director Francis Collins said during a news conference announcing the agreements.

The compounds New York-based Pfizer, Lilly, based in Indianapolis, and London-based AstraZeneca will make available have already been shown to be safe in humans.

The drugmakers will give researchers access to the chemicals and related data, the NIH said in a statement.

“Americans are eagerly awaiting the next generation of cures and treatments to help them live longer and healthier lives,” Health and Human Services Secretary Kathleen Sebelius said in the statement. “To accelerate our nation’s therapeutic development process, it is essential that we forge strong, innovative and strategic partnerships across government, academia and industry.”

Should the drugs prove effective against a new disease, the companies will have the option to develop them into a marketed product, the agency said. Taxpayers would get a financial benefit only if an NIH scientist is a researcher on one of the compounds. Then there would be a flow of royalties back to the federal agency.

The bottom-line benefit for the public is societal, Collins said. Diseases that don’t have treatments now may get one, he said.

For more patent news, click here.

Trademark

Bogart Heirs Vie With Burberry Over Use of ‘Casablanca’ Coat

Burberry Group Plc (BRBY) and heirs of Humphrey Bogart have filed lawsuits against each other over an image of the late actor wearing a Burberry trench coat in the film “Casablanca.”

Burberry asked a federal court to declare that its use of Bogart’s name and image in social media doesn’t infringe Bogart LLC’s trademark rights or rights of publicity, it said in a complaint filed May 2 in New York.

Bogart LLC followed that action by filing a trademark- infringement complaint yesterday in California state court in Los Angeles.

The London-based fashion company said it licensed from photo agency Corbis an image of Bogart wearing the trench coat in the final scene of the 1942 film. The picture was used in a Burberry historical timeline to indicate the influence of the brand, according to the complaint. Burberry said the image wasn’t used to sell merchandise.

“Defendant is attempting to exert and assert against Burberry rights which it does not possess,” Burberry said in its complaint. The company said its reference to Bogart in the timeline is protected under the First Amendment to the U.S. Constitution.

Burberry said Bogart LLC contacted it in April and ordered it to cease using the image. Bogart LLC then contacted the company at least two other times and “made a significant monetary demand,” Burberry said.

Burberry’s “use of Bogart intellectual property rights in their marketing and promotion materials and in products were for the express purpose of commercially linking their Burberry brand and products to the persona and character of Humphrey Bogart in the minds of defendants’ potential and actual customers,” Bogart LLC said in its complaint.

Bogart LLC, according to a news release, is majority-owned by the children of Bogart and actress Lauren Bacall.

“This is such an incredibly disappointing and disrespectful action by Burberry,” Stephen Bogart, the son of the late actor, said in the release.

Bogart, who died in 1957 of cancer, was nominated for an Academy Award for his role as Rick Blaine, an expatriate nightclub owner, in “Casablanca.” The film won the Academy Award for Best Picture.

The federal case is Burberry Ltd. v. Bogart LLC, 12-3491, U.S. District Court, Southern District of New York (Manhattan). The state case is Bogart LLC v. Burberry Group, BC483967, Superior Court of California, County of Los Angeles.

For more trademark news, click here.

Copyright

Google’s Android Profit and Loss Figures Questioned by Judge

Google Inc. (GOOG)’s disclosure that its Android software made a small profit in recent years was questioned by the judge overseeing a trial of Oracle Corp. (ORCL)’s claims that the smartphone operating system infringes its copyrights.

U.S. District Judge William Alsup in San Francisco said a Google document turned over to the Redwood City, California- based database maker in the intellectual property dispute suggested the search engine provider was “losing money” at one point and made a “small profit” for the second half of 2011.

“It comes out to their losing money,” Alsup said, looking at the document, which is sealed from public view.

Oracle’s attorneys say Google executives have been unable to confirm the figures. After hearing arguments from lawyers for both companies at a hearing yesterday, Alsup ordered Google to produce documents that back up the figures.

“It’s unclear to me that anyone can vouch for these numbers,” he said.

A jury is deliberating whether Mountain View, California- based Google infringed Oracle’s copyrights for the Java programming language, which Google used to develop Android, introduced in 2007 and now running on 300 million devices. If Google is found to have infringed, damages would be partly based on Android’s profits.

Jim Prosser, a Google spokesman, didn’t immediately return a voice-mail message seeking comment on the figures.

Google doesn’t disclose revenue for Android.

The case is Oracle v. Google, 10-3561, U.S. District Court, Northern District of California (San Francisco).

Google Argues for Dismissal of Authors’ Book-Scan Lawsuit

Google Inc. asked a judge to dismiss a lawsuit by an organization representing authors over the search-engine company’s digital scanning of millions of books, saying the group can’t represent the owners of the books’ copyrights.

U.S. Circuit Judge Denny Chin in Manhattan heard arguments yesterday on motions by Google to deny the authors the right to proceed as a class and to dismiss the organization’s case. Chin last year rejected a $125 million settlement between the two sides and the parties have been unable to reach a new agreement.

“It would be a terrible burden on the court if each individual author was forced to litigate,” Joanne Zack, a lawyer for the Authors Guild, told the judge. “A class action is superior.”

Google announced in 2004 a plan to digitally scan books from public and university libraries to provide short snippets of text to people who use its Internet search engine. The Authors Guild, individual authors and publishing companies sued in 2005, claiming Mountain View, California-based Google hadn’t sought authorization from the owners of the works.

Google said in court papers that because the guild doesn’t claim to own the copyrights at issue, it can’t sue on behalf of authors. Google’s lawyer said yesterday that the company’s scanning project has been an “economic benefit” to many authors.

Zack, the authors’ lawyer, told the judge there was “no evidence of a conflict among class members on financial benefits.”

“We are fully prepared to litigate this case against the three individual plaintiffs,” Durie said in court.

The judge said he would rule later on the motions.

The authors have asked for a jury trial.

A related lawsuit was brought by several organizations representing visual artists. Chin also will consider a motion by Google to dismiss their case.

Google said it’s still in talks about a possible settlement with book publishers including McGraw Hill Cos., (MHP) Simon & Schuster Inc. and John Wiley & Sons Inc. (JW/A) Yesterday’s hearing didn’t involve the publishers.

“We’re hopeful we can reach agreement with the publishers,” Megan Lamb, a Google spokeswoman, said after the hearing.

The authors’ case is Authors Guild v. Google, 05-08136; the visual artists’ case is American Society of Media Photographers v. Google, 10-02977; U.S. District Court, Southern District of New York (Manhattan).

Adult Film Company Told It Reached Too Far in Copyright Suit

A federal magistrate judge in New York came down hard on a maker of adult films who sued a number of anonymous defendants for using the BitTorrent protocol to download and share the films without authorization.

In his May 1 order, U.S. Magistrate Judge Gary R. Brown said the plaintiffs “improperly avoided” more than $25,000 in filing fees by treating the defendants as a group rather than individuals.

He said that if reported estimates that hundreds of thousands of such defendants have been sued nationally, plaintiffs in similar cases “may be evading millions of dollars in filing fees annually. Nationwide these plaintiffs have availed themselves of the resources of the court system on a scale rarely seen. It seems improper that they should profit without paying statutorily required fees.”

He also questioned the inclusion of some defendants. One of them is “an octogenarian with neither the wherewithal nor the interest” in using BitTorrent. Another alleged defendant was away from his home computer and at work at the time the illegal downloading occurred, and a third defendant said that downloading the film was contrary to her “religious, moral, ethical and personal views.”

He denied the plaintiffs the broad early discovery they sought and barred them from obtaining the defendants’ e-mail addresses or phone numbers. The potential defendants must be provided a copy of the subpoena and given an opportunity to obtain counsel, he said.

Brown also recommended that the judges in his district tell plaintiffs that any future cases they file in this judicial district be a separate action against each defendant “so as to avoid unfair outcomes, improper joinder and waste of judicial resources and to ensure the proper payment of filing fees.”

The case is K-Beech v. John Does 1-37, 2:11-cv-03995, U.S. District Court, Eastern District of New York (Central Islip).

For more copyright news, click here.

IP Moves

Farella Hires Patent Litigator Nguyen from Irell & Manella

Farella Braun & Martel LLP hired Andrew Nguyen for its IP practice, the San Francisco-based firm said in a statement.

Nguyen, a litigator, joins from Irell & Manella LLP of Los Angeles. Before he was a lawyer, he was a software engineering intern at Symantec Corp. (SYMC)

He has represented clients whose technologies include video games, digital video recorders, online video and smartphones.

Nguyen has an undergraduate and a master’s degree in computer science from the University of California at Los Angeles, and a law degree from Northwestern 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: Michael Hytha at mhytha@bloomberg.net.

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