Rambus, Shire, Hospira, Viacom: Intellectual Property

Rambus Inc. was ordered by a federal judge in San Jose, California, to pay a $250 million sanction for destroying documents in its litigation with SK Hynix Inc. (000660)

The fine was issued May 8 by U.S. District Judge Ronald Whyte in the memory-chip technology patent-infringement case that Rambus won in California seven years ago. The sanction will be applied against whatever sum Rambus ultimately keeps of the $349 million awarded it after a 2006 verdict finding that SK Hynix infringed Rambus patents, Whyte ruled.

The sanction “applied as a credit against Rambus’s judgment against SK Hynix recognizes that Rambus’s conduct was inexcusable but not so egregious as to justify dismissal of its infringement case,” Whyte wrote in his May 8 order. The judge denied Hynix’s request for a new trial in the case.

The sanction “takes into account the royalty rates negotiated and paid by SK Hynix’s primary competitors” during the period of the alleged infringement, Whyte wrote.

Rambus’s cases against SK Hynix, and another related case against Micron Technology Inc. (MU), are over the companies’ use of interfaces that are part of dynamic random access memory that acts as the main memory in computers. DRAM is built to industry standards and is interchangeable by product. SK Hynix and Micron have argued Rambus destroyed records that would have proved Rambus misled the board that sets that standard.

The U.S. Court of Appeals for the Federal Circuit in Washington previously upheld Whyte’s denial of SK Hynix’s bid to throw out the 2006 verdict finding that the company infringed Rambus patents.

“We are pleased that the court is recognizing the value in Rambus intellectual property,” Sunnyvale, California-based Rambus said in an e-mailed statement. “We are disappointed in the sanction that reduces the judgment awarded to Rambus, but hope the ruling will help provide impetus to resolve this matter.”

SK Hynix said in a statement that it plans to appeal the decision after the judge issues his final ruling, saying the fine was smaller than it expected.

The case is Hynix Semiconductor Inc. v. Rambus Inc. (RMBS), 00-cv-20905, U.S. District Court, Northern District of California (San Jose).

Shire Wins Ruling to Block Actavis’s Lialda Copy Until 2020

Shire Plc (SHP) won a court ruling that will help it prevent Actavis Inc. (ACT) from selling generic versions of the ulcerative colitis drug Lialda in the U.S. until 2020.

A patent on the medicine would be infringed by the Actavis version, U.S. District Judge Donald Middlebrooks in Ft. Lauderdale, Florida, said in an opinion yesterday. The judge rejected claims the patent was invalid.

Lialda, whose active ingredient is mesalamine, generated $400 million in sales last year for Shire, or 8.6 percent of the company’s revenue, according to Bloomberg data. Efforts to expand the use of the drug to patients with diverticulitis to boost sales failed, London-based Shire said in March.

The ruling “supports the innovative therapies that we develop in order to improve the lives of ulcerative colitis patients,” Roger Adsett, head of Shire’s gastrointestinal business unit, said in a statement.

The patent, issued in 2004, is for a controlled-release composition of mesalamine. Parsippany, New Jersey-based Actavis claimed the patent didn’t adequately describe what Shire claimed it covered. The judge, who ruled after a five-day non-jury trial last month, said Shire is entitled to an order that would block the generic version until the patent expires.

Shire said no generic-drug companies have received regulatory approval to sell versions of the medicine.

The case is Shire Development LLC v. Watson Pharmaceuticals Inc., 12-cv-60862, U.S. District Court, Southern District of Florida (Ft. Lauderdale).

Hospira Sues B. Braun Over Patents for Infusion-Pump Systems

Hospira Inc. (HSP), a maker of acute-care products, sued a U.S. unit of Germany’s B. Braun Melsungen AG alleging infringement of patents for drug-infusion pump technology.

B. Braun Medical Inc., based in Bethlehem, Pennsylvania, is using inventions that belong to Hospira, of Lake Forest, Illinois, by making and selling its drug-delivery systems without permission, Hospira contends in a complaint filed May 8 in federal court in Wilmington, Delaware.

“Hospira is the owner of the entire right, title and interest” in the patents, and Braun should pay damages for lost profits and legal fees and be prohibited from its wrongful actions after a jury trial, plaintiff’s lawyers said in court papers.

Hospira was sued in New York federal court in February over a canceled influenza-vaccine supply contract by GlaxoSmithKline Plc, which questioned the quality of the product.

Jason Ford, a B. Braun spokesman, didn’t immediately reply to voice and e-mail requests for comment on the patent action.

The case is Hospira Inc. v. B. Braun Medical Inc., 13-cv-00819, U.S. District Court, District of Delaware (Wilmington).

For more patent news, click here.

Trademark

Gareth Bale Files for Trademark for Heart-Shaped Hand Image

Gareth Bale, a member of the Tottenham Hotspur soccer team, filed an application with the U.K.’s Intellectual Property Office to register as a trademark the image of a gesture he performs each time he scores a goal in Fédération Internationale de Football Association games.

According to the application, filed March 26, the athlete seeks to register an image of two hands forming a heart shape. In the middle of the heart shape is the number 11, which is the number of Bale’s soccer jersey.

He said he plans to use the mark on a wide range of products, including clothing, jewelry, watches and goods made of leather and imitation leather.

Bale’s application was published May 3. It was filed on his behalf by Marks & Clerk, a London-based IP firm.

Upper Deck Seeks ‘Grandeur,’ ‘Property of,’ ‘Chirography’ Marks

Upper Deck Co., a producer of sports-star figurines and Major League Baseball trading cards, filed three new trademark applications that may hint at forthcoming products or product reissues.

According to the database of the U.S. Patent and Trademark Office, Carlsbad, California-based Upper Deck filed applications to register “Grandeur,” “Property of” and “Chirography” in the last week of April.

The only use specified for the marks is for trading cards. Upper Deck said it has used “Chirography” since June 1998. “Property of” was first used in July 2006, according to the application. No date of first use was listed on the application for the “Grandeur” mark.

The applications were filed on Upper Deck’s behalf by Pollie A. Gautsch of G&A Legal AFC of Solana Beach, California.

For more trademark news, click here.

Copyright

Writers Seek $23 Million in Suit Against Viacom Unit Over Film

Viacom Inc. (VIAB)’s Paramount Pictures unit was sued for copyright infringement by two writers who are seeking more than $23 million in damages related to the “G.I. Joe” films.

According to the complaint filed May 3 in federal court in Los Angeles, David Elliot Fallas and Paul Lovett claim they were two of three writers on the original “G.I. Joe: Rise of the Cobra” science-fiction action film and had a written agreement they would write the sequel.

They said they developed a “rich, vibrant sequel, articulating unique plotlines, themes, characters, relationships, settings, scenes, dialogue, mood, packing and fictional invention,” for the next film. Then, in December 2009, they were informed that the studio decided to hire a different writing team.

Fallas and Lovett said they registered the copyright for their work, and that when they saw the sequel --“G.I. Joe: Retaliation” -- they found the movie to be “substantially similar in every material way” to their script. The movie, which stars Bruce Willis and Dwayne Johnson, was released at the end of March.

Viacom, based in New York, didn’t respond immediately to an e-mailed request for comment on the complaint. Pawtucket, Rhode Island-based toymaker Hasbro Inc. (HAS) is a co-defendant with the Viacom unit. Hasbro makes G.I. Joe action figures, accessories and related toys.

The case is Fallas v. Paramount Pictures Corp., 2:13-cv-03184, U.S. District Court, Central District of California (Los Angeles).

Third-Party Copyright Complaint Against Lady Gaga Dismissed

Stefani Germanotta, the singer known as Lady Gaga, persuaded a federal court to dismiss a third-party complaint against her in a copyright case involving some of her hit songs.

The original lawsuit was filed in federal court in Newark, New Jersey, in July 2011 against Gaga’s former manager Rob Fusari by Calvin Gaines, a New Jersey-based composer and music producer.

Gaines sought a court declaration that he was a co-author of songs including “Paparazzi” and “Disco Heaven.” He also wanted to be named a co-producer of the master recordings for the disputed songs, and demanded damages in excess of $1 million.

Fusari then filed a third-party complaint seeking to have Gaga added as a defendant.

In his May 8 ruling, U.S. District Judge William J. Martini said that federal copyright law doesn’t allow for the addition of a defendant under the grounds sought by Fusari.

The case is Gaines v. Fusari, 2:11-cv-04433, U.s. District Court, District of New Jersey (Newark).

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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