Apple, FMC, Google, Oscar, DriveCam: Intellectual Property

Apple Inc. (AAPL) and Eastman Kodak Co. (EKDKQ) clashed in federal bankruptcy court over the ownership of patents Kodak is planning to sell as part of its restructuring.

Kodak said Apple wants to disrupt the planned auction by claiming ownership of 10 patents and asked U.S. Bankruptcy Judge Allan Gropper in Manhattan to reject the personal computer maker’s claims.

Gropper didn’t immediately rule on the issue at a hearing yesterday, saying he would issue a decision “as quickly as I can.”

A ruling for Kodak would bolster the Rochester, New York- based company as it seeks to reinvent itself and raise money after filing for bankruptcy earlier this year. Kodak is planning an auction next month for about 1,100 patents.

Apple waited too long to assert ownership claims, which arise out of joint work by the companies in the 1990s, according to Kodak, which cited the statute of limitations.

Kodak obtained the patents and enforced them through licensing deals “in a very public way” while Apple and Flashpoint Technology Inc., which is also part of the dispute, did nothing to challenge Kodak, Steven Holley, a Kodak attorney, told Gropper.

“Apple and Flashpoint cannot claim that this issue was only recently brought to their attention,” he said.

Kodak sued Apple in U.S. bankruptcy court in June over the patents. The company was asking Gropper for a pre-trial ruling in its favor, known as summary judgment. Apple has filed counterclaims against Kodak, saying the bankrupt company is claiming Apple’s technology as its own.

Apple is claiming ownership as part of an effort to prevent Kodak from getting a fair price for the assets, or Apple wants to buy the patents cheaply and extinguish its “very substantial” risk of patent infringement claims, Kodak said.

Cupertino, California-based Apple contends it wasn’t required to monitor patents Kodak obtained over time, looking for potential claims, nor would that have been practical.

“Kodak’s decision to file patent applications based on technology disclosed by Apple would have required extensive efforts and difficulty in monitoring and analyzing many thousands of Kodak patents,” Apple said in court papers.

The hearing in bankruptcy court comes after Kodak lost a patent case against Apple and Research in Motion Ltd. (RIM) The U.S. International Trade Commission on July 20 upheld a judge’s findings that neither Apple nor RIM violated Kodak’s rights in the patent. Kodak said it would appeal.

The bankruptcy case is In re Eastman Kodak Co., 12-10202, U.S. Bankruptcy Court, Southern District New York (Manhattan). The Apple lawsuit is Eastman Kodak Co. v. Apple Inc., 12-01720, U.S. Bankruptcy Court, Southern District of New York (Manhattan).

Ecolab Sues FMC for Infringing Animal Carcass Treatment Patent

Ecolab USA, a Minnesota company that makes cleaning and sanitizing products, sued FMC Corp. (FMC) for patent infringement.

The suit, filed July 20 in federal court in Minnesota, accused Philadelphia-based FMC of infringing patent 8,030,351, which covers a technology for the treatment of animal carcasses. The patent was issued in October 2011.

According to court papers, FMC’s Blitz and Spectrum antimicrobial compositions for use on animal carcasses infringe the patent. Ecolab claims the infringement is deliberate, and says it received “substantial damage” as a result of FMC’s actions.

St. Paul, Minnesota-based Ecolab asked the court to bar further infringement of its patent and for awards of money damages “in no event less than a reasonable royalty” and requested they be tripled to punish FMC for its actions. Additionally, Ecolab seeks awards of attorney fees and litigation costs.

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

The case is Ecolab USA (ECL) Inc. v. FMC Corp., 0:12-cv-01767- MJD-JGG, U.S. District Court, District of Minnesota.

For more patent news, click here.


Google Moves Toward Possible Antitrust-Case Settlement, EU Says

Google Inc. (GOOG) has reached a “good” understanding with European Union regulators working toward a possible settlement of an antitrust probe, an EU spokesman said.

“The commission considers Google’s proposals as a good basis for further talks and has reached a good level of understanding with Google,” Antoine Colombani, a spokesman for the European Commission, said in an e-mail from Brussels yesterday. “There will soon be discussions at technical level. We hope this process will lead to remedies addressing our concerns.”

EU Competition Commissioner Joaquin Almunia asked Google in May to make an offer to settle concerns that it promotes its own specialist search services, copies rivals’ travel and restaurant reviews, and that its agreements with websites and software developers stifle competition in the advertising industry.

Almunia told MLex in an interview yesterday that regulators have been “exchanging views” during recent weeks of talks on a possible settlement of the EU’s investigation into allegations that the world’s largest search engine discriminates against rivals in search results.

“So far, so good,” Almunia said in the interview.

Google, based in Mountain View, California, is under growing pressure from global regulators probing whether the company is thwarting competition in the market for Web searches. The U.S. Federal Trade Commission and antitrust agencies in Argentina and South Korea are also scrutinizing the company.

Al Verney, a spokesman for Google in Brussels, said the company continued to cooperate with regulators.

Regulators asked Google to extend an initial offer to modify its search engine to cover mobile applications for smartphones and tablet computers, two people familiar with the negotiations said last week.

Oscar Statuette Trademark Partly Voided by German Court

The Academy of Motion Picture Arts and Sciences partly lost a German trademark suit over the use of the Oscar statuette, the iconic symbol of its annual awards ceremony.

While upholding the picture mark for film industry services, the Berlin Regional Court ruled the mark no longer protects motion pictures, a product for which it was originally also registered, the court said in an e-mailed statement yesterday.

The case is LG Berlin: 16 O 512/11.

For more trademark news, click here.


Malibu Media Is ‘Copyright Troll,’ Downloading Defendant Says

A Colorado resident who was targeted in a copyright infringement suit brought by a maker of adult films has filed a countersuit accusing the filmmaker of defamation and seeks $1 million in damages.

Malibu Media LLC sued Jeff Fantalis and two others in federal court in Denver in April, claiming they had used BitTorrent file-sharing protocol to download and share some of California-based Malibu Media’s adult films.

Fantalis responded on July 16, filing court papers saying he is a 46-year-old married man with two children who has never downloaded a pornographic film “or any other type of film” using BitTorrent. He said the only films he’s ever downloaded are from Netflix Inc., and that he pays a monthly fee to do so.

Fantalis said he’s never authorized anyone else to use his computer or router. He accused Malibu Media of being a “copyright troll” that collects Internet protocol addresses and then sends a letter demanding payment for alleged copyright infringement.

For copyright news, click here.

Trade Secrets/Industrial Espionage

DriveCam, SmartDrive Settle Trade Secret, Patent Disputes

DriveCam Inc. and SmartDrive Systems Inc., two competing fleet management companies, have agreed to settle their trade secret and patent litigation, the two San Diego-based companies said in a statement yesterday.

The companies have agreed to cross-license patents. No other details of the settlement were disclosed.

DriveCam filed the initial suit in May 2011, alleging SmartDrive was infringing patents 6,389,340, 7,804,426, and 7,659,827.

In March 2012 SmartDrive filed its suit, accusing DriveCam of infringing patent 8,139,820. The company has also claimed DriveCam had misappropriated SmartDrive trade secrets. Both suits were filed in federal court in San Diego.

In a separate July 24 statement, DriveCam said it intends to double the size of its patent portfolio, and that it will “continue to assert its patent rights, protecting our customers and shareholders from unlawful use of our hard-won intellectual property.”

The case against SmartDrive is DrivecCam Inc. v. Smartdrive Systems Inc., 3:11-cv-00997-H-RBB, U.S. District Court, Southern District of California (San Diego). The case against DriveCam is SmartDrive Systems Inc. v. DriveCam Inc., 3:12-cv-00683-H-RBB, U.S. District Court, Southern District of California (San Diego).

Azerbaijan President Approves Proposed Trade Secret Law Change

Ilham Aliyev, the president of Azerbaijan, has endorsed changes to that country’s law on commercial secrets, the Azerbaijan Business Center reported.

Under the amended legislation, people will have the right to receive information about a company’s founders and their share in its authorized capital, if certain conditions are met, according to the Azerbaijan Business Center.

Access to this information is permitted if it doesn’t contradict the country’s national interests in political, economic and military areas or the protection of interests in financial and monetary policy, Azerbaijan Business Center reported.

Disclosure is also barred if release of the information would affect the maintenance of public order, health and dignity of other people, the protection of commercial and economic interests or the provision of the objectivity and credibility of the country’s courts, according to Azerbaijan Business Center.

IP Moves

Cooley Open Santa Monica Office, Hires David Hernand as Head

Cooley LLP hired David Hernand as part of a team to open an office in Santa Monica, California, the San Francisco-based firm said in a statement.

Hernand, who was previously co-chairman of the Media, Entertainment and Technology Group at Gibson Dunn & Crutcher LLP of Los Angeles, will be the partner in charge of the firm’s new office. He has also previously practiced at Los Angeles-based Latham & Watkins LLP.

He is a transactional lawyer who has represented a wide range of clients including retail chains, financial services companies, makers of online games, investment banks, and Internet companies.

Hernand has an undergraduate degree from the University of California at Los Angeles and a law degree from Georgetown University.

To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at

To contact the editor responsible for this story: Michael Hytha at

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