Nintendo, Apple, Samsung, Metso: Intellectual Property

Nintendo Co. (7974), maker of the Wii video-gaming system, won a U.S. appeals court ruling that makes it harder for patent-licensing companies to seek an import ban on products as a way to demand royalties.

Motiva LLC, which claimed Nintendo infringed its patents for a system to track a game user’s position, didn’t meet the requirements to file a trade complaint, the Court of Appeals for the Federal Circuit said May 13 in a decision posted on its website. The ruling backs the U.S. International Trade Commission’s decision against the Dublin, Ohio-based company.

The ITC’s goal is to protect U.S. markets from unfair trade practices, and it requires patent owners to prove they have something worth protecting. The agency said Motiva’s three-year-old lawsuit against Kyoto, Japan-based Nintendo in a district court didn’t pass that test, and the appeals court agreed.

The ITC had found Nintendo didn’t infringe the patents. The Federal Circuit, rather than ruling on that issue, made its decision on the question of whether a case should have been allowed at the commission.

The ITC has the power to block products that infringe U.S. patents. Companies such as Google Inc. (GOOG) and Apple Inc. have said that potential threat is being used too often by patent-licensing firms to force legal settlements.

The ITC has only issued four import bans to companies that don’t make products, and in each of the cases, the patent owner developed the technology, according to an April report from the commission.

Motiva was founded in 2003 by two men who sought to integrate fitness and video games through motion detection, according to the complaint. They were unsuccessful in commercializing any product.

In November 2006, Nintendo began selling the Wii, which features a motion-sensor controller that allows users to replicate movements like swinging a tennis racquet on screen.

Motiva sued Nintendo in 2008 in federal court in Tyler, Texas, a district with a history of decisions favoring patent owners. Nintendo succeeded in having the case transferred to a federal court in Seattle, and then having it put on hold while the U.S. Patent and Trademark Office reviews the validity of the patents.

The ITC complaint was filed in September 2010, which both the agency and the Federal Circuit said was too late if Motiva wanted to show it was interested in preserving its ability to commercialize the inventions.

The case is Motiva LLC v. ITC, 12-1252, U.S. Court of Appeals for the Federal Circuit (Washington). The ITC case is In the Matter of Video Game Systems and Controllers, 337-743, U.S. International Trade Commission (Washington).

Apple Seeks to Add Samsung Galaxy S4 to Infringement List

Apple Inc. (AAPL) told a U.S. judge it will seek permission to add Samsung Electronics Co.’s Galaxy S4 smartphone to a list of 22 “accused products” Apple alleges infringes its patents.

The disclosure came in a footnote to a May 13 filing with U.S. District Judge Lucy H. Koh in San Jose, California, responding to her April 24 directive that each side submit a limited list of the other’s allegedly infringing products.

This is the second infringement lawsuit between the companies in the same court. Apple filed the case last year to address technology in newer smartphones made by the companies.

“Apple has identified (and separately counted) specific Samsung products -- not product lines,” the Cupertino, California-based company told Koh in its six-page submission. Included on its 22-item list are Samsung’s Galaxy SII and SIII phones, Galaxy Note, Galaxy Note 10.1 and Galaxy Note II hybrid phone-tablets and three Galaxy series tablet computers.

Should Apple win permission to add the Galaxy S4 smartphone that Samsung released last month, it will drop one of the other devices from the list, according to the filing.

Samsung, too, submitted a 22-product list to Koh, identifying as alleged infringers five models of Apple’s iPhone, five versions of the iPad tablet computer, three types of iPod digital-music players and the MacBook Pro and MacBook Air computers.

Each side also accused the other of failing to properly interpret and comply with the court’s April 24 directive.

This second patent suit follows a case in which a jury awarded Apple $1.05 billion after finding Samsung infringed six of the iPhone maker’s mobile-device patents.

Koh, correcting what she said was the jury’s error, reduced the damages total to $639.4 million and ordered a new trial in November for some products at issue in that case.

The earlier case is Apple Inc. v. Samsung Electronics Co. (005930) Ltd., 11-cv-01846, and the second case is Apple Inc. v. Samsung Electronics Co., 12-cv-00630, U.S. District Court, Northern District of California (San Jose).

Metso’s $31.6 Million Victory Over Terex Tossed on Appeal

Metso Oyj’s (MEO1V) $31.6 million patent-infringement victory over Terex Corp. (TEX) was thrown out by a U.S. appeals court that said its patent on a machine that sorts rocks and gravel was invalid.

Metso had won a $15.8 million verdict that was doubled by a trial judge based on the jury’s finding that the infringement was willful. The U.S. Court of Appeals for the Federal Circuit in Washington yesterday reversed the verdict, saying the disputed patent 5,577,618 covers an obvious variation of earlier know-how. The opinion was posted on the court’s website.

The dispute is over Terex’s Powerscreen machines with a method of screening a large amount of sand and gravel into different hoppers for distribution. Metso’s invention relates to conveyors that can be folded into the side so the machine can travel on roadways.

Terex, the Westport, Connecticut-based maker of cranes and lifts, argued that the invention was little different from the older Masterskreen Dominator developed by the same inventor. The Federal Circuit agreed. It was “ordinary skill and common sense rather than innovation” that led to the patented invention, the three-judge panel said.

Metso, based in Helsinki, makes paper machines in addition to rock crushers.

The case is Metso Minerals Inc. v. Powerscreen International, 11-cv-01572, U.S. Court of Appeals for the Federal Circuit (Washington). The lower court case is Metso Minerals Inc. v. Powerscreen International Distribution Ltd., 06-cv-01446, U.S. District Court, Eastern District of New York (Central Islip).

For more patent news, click here.

Trademark

Forever 21’s Trademark Case Against Discounters Set for May 28

Forever 21 Inc.’s trademark lawsuit against discount clothing stores is set to go to trial in federal court in Los Angeles on May 28.

The Los Angeles-based clothing company sued the off-price stores, claiming they were selling Forever 21 merchandise without authorization, even if they cut out the Forever 21 labels or substituted new labels.

Investigators for Forever 21 shopped at the off-price stores and purchased items that contained some of the chain’s trademarks, the company said. In a complaint filed in February 2012, Forever 21 said the sales violated its exclusive rights to sell goods under its marks, and that consumers would be confused by the similarity.

Defendants have responded in court filings, saying that when they buy clothing bearing brands, the practice is to remove all identifying marks before the items are placed on the selling floor. They also said that Forever 21 waited too long to place its claim and had misused its trademarks.

The case could have “resounding effects” on the off-price clothing market, according to California Apparel News.

The case is Forever 21 Inc. v. Seven Lions Inc., 12-cv-01152, U.S. District Court, Central District of California (Los Angeles).

GNC Sues Florida Pawnshop Chain Saying New Logo Infringes Mark

GNC Holdings Inc. (GNC)’s General Nutrition Investment and General Nutrition Centers units sued a Florida-based pawn shop chain for trademark infringement.

A new logo used by Gold N Connection LLC of Pompano Beach infringes marks used by the health and wellness stores and confuses the public, GNC alleged in a complaint filed in federal court in Fort Lauderdale, Florida.

GNC objects to the pawn shops’ signage that identifies the stores as “GNCPAWN.” The Pittsburgh-based company says it has many GNC stores in south Florida, including 13 within five miles (8 kilometers) of one of the pawn chain’s stores.

The pawn shop’s gift cards are now identified as “GNC,” and the company operates a website at the www.gncpawn.com Internet domain name. These also confuse the public, as does the pawn chain’s use of GNC as an identifier in Twitter Inc.’s short-message service, Pittsburgh-based GNC said.

GNC asked the court to bar the pawn chain’s use of “GNCPAWN” and to halt any other infringing activities. Additionally, the nutrition company seeks destruction of all infringing promotional materials and awards of attorney fees, litigation costs and money damages.

Joshua Davis, a co-founder of the pawn chain, said in a statement that “GNC is delusional if it believes the public will be confused into thinking that GNCPAWN.com sells vitamins or dietary supplements.” Gold N Connection will fight the “meritless” lawsuit, the company’s attorney, Douglas J. Jeffrey of Miami Lakes, Florida, said in the statement.

The case is General Nutrition Investment Co. v. Gold N Connection LLC, 13-cv-60978, U.S. District Court, Southern District of Florida (Fort Lauderdale).

For more trademark news, click here.

Copyright

European Parliament Member Calls for Free Film, Music Sharing

The youngest member of the European Parliament, 25-year-old Amelia Andersdotter, said Europe’s copyright laws need to be changed to permit non-commercial downloading of content for free, the U.K.’s Independent reported.

Andersdotter, a member of Sweden’s Pirate Party, told the Independent that the revenues in all cultural sectors are rising and people are spending a lot more money on content, even if they also copying pirated material.

Speaking at a debate held at the London School of Economics, Andersdotter said the music industry isn’t struggling financially and “funds itself fine, actually,” the Independent reported.

She said that file-sharing of films and music flows from people’s desire to expand cultural horizons and shouldn’t be criminalized, according to the newspaper.

For copyright news, click here.

IP Moves

Stanford Names Phillip Malone to Head Juelsgaard IP Clinic

Stanford Law School appointed Phillip Malone to head the school’s new Juelsgaard Intellectual Property and Innovation Clinic.

Malone, who will be a professor of law at Stanford, is presently director of the Cyberlaw Clinic at Harvard Law School’s Berkman Center for Internet & Society, the California school said in a statement.

Stanford’s new clinic was established with the support of Stephen Juelsgaard, who received his law degree there and was most recently chief compliance officer and executive vice president and secretary at Genentech Inc.

Students in the new clinic will represent primarily nongovernmental organizations in subject areas that include biotechnology, information technology, pharmaceuticals, clean technology and the creation and distribution of knowledge, according to Stanford’s statement.

Before he went to Harvard in 2001, Malone was a senior attorney with the antitrust division of the U.S. Justice Department. He was lead counsel in the government’s investigation of Microsoft Corp. and worked with outside counsel David Boies in the subsequent antitrust case. He was also one of the lead lawyers in the government’s antitrust case against Oracle Corp. (ORCL)

Malone has an undergraduate degree from Harvard College and a law degree from the University of Arizona.

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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