Microsoft, SmartMetric, USPTO, Amazon: Intellectual Property

Microsoft Corp. won’t be able to seek another import ban against some handsets made by Google Inc. (GOOG)’s Motorola Mobility, though it can get damages under a ruling issued by a U.S. appeals court yesterday.

A U.S. trade agency was wrong to say some of Motorola Mobility’s products didn’t infringe one Microsoft patent, while there was no violation of three others, the U.S. Court of Appeals for the Federal Circuit in Washington said in an opinion posted on its website yesterday. The remaining patent expires in December, so there won’t be enough time for a trade agency to block the devices from being imported into the U.S.

The ruling does give Microsoft ammunition to seek cash damages from Motorola Mobility in a U.S. district court. Both sides declared victory, with Redmond, Washington-based Microsoft saying it bolsters its efforts to get royalties from devices running on Google’s Android, the world’s most popular operating system. Motorola Mobility is one of the biggest holdouts of a program started three years ago, Microsoft has said.

“We’re pleased the court determined Google unfairly uses Microsoft technology and once again call on Google to join the rest of the Android ecosystem in licensing our patents,” Microsoft Deputy General Counsel David Howard said.

Motorola Mobility, which was bought by Mountain View, California-based Google after the case was filed in 2010, focused on the findings regarding the other three patents and the court finding that Motorola Mobility designed around the one that was infringed.

The favorable opinion “confirms our position that our products don’t infringe the Microsoft patents,” said Matt Kallman, a Motorola Mobility spokesman.

The court didn’t rule on Google’s appeal of a separate patent in the dispute before the U.S. International Trade Commission. In that case, the ITC issued an import ban against some Motorola Mobility phones. Microsoft has sued U.S. Customs and Border Protection, claiming it hasn’t enforced the order.

The case that was ruled on is Microsoft Corp. (MSFT) v. ITC, 12-1445, while the pending case is Motorola Mobility LLC v. ITC, 12-1535, both U.S. Court of Appeals for the Federal Circuit (Washington). The ITC case is In the Matter of Certain Mobile Devices, Associated Software and Components Thereof, 337-744, U.S. International Trade Commission (Washington).

SmartMetric Loses Patent Ruling in Visa, MasterCard Case

Visa Inc. (V) and MasterCard Inc. (MA) don’t infringe a patent owned by SmartMetric Inc., a company that had sought as much as $13.4 billion for alleged use of its technology in “smart” debit and credit cards.

U.S. District Judge Michael W. Fitzgerald in Los Angeles, affirmed his earlier tentative decision from a Sept. 25 hearing.

“The parties here are comparing apples and oranges,” the judge said in an Oct. 2 written ruling. “The piecemeal similarities that SmartMetric has identified in support of its claims do not change the fact that claims 1 and 14 of the ‘464 patent are simply not practiced by defendants, and no reasonable jury could conclude otherwise.’’

SmartMetric sued Visa and MasterCard two years ago, claiming they infringed its patent for a system for automatic connection to a network. The company claimed it was entitled to a royalty of 25 percent of the anticipated savings Visa and MasterCard would receive from a drop in credit and debit-card fraud by the introduction of so-called EMV cards in the U.S.

The EMV cards, which are already used in Europe, include a microchip instead of a magnetic strip to access a payment system. The SmartMetric patent pertains to the process by which the payment system selects a network for a card transaction, Patrick Bright, the company’s lawyer, said at the Sept. 25 hearing.

SmartMetric said in a statement yesterday it will appeal the non-infringement ruling.

The case is SmartMetric Inc. (SMME) v. MasterCard International Inc., 11-cv-07126, U.S. District Court, Central District of California (Los Angeles).

Government Shutdown Forces Cancellation of Inventors’ Meeting

The U.S. Patent and Trademark Office canceled its 18th annual Independent Inventors Conference set for Oct. 11-12 in Alexandria, Virginia.

According to a notice on the patent office website, the office will stay open notwithstanding the government shutdown that began Oct. 1.

The patent office said that it had to make ‘‘difficult decisions to ensure core patent and trademark operations are maintained for as long as possible.”

The office, which operates on user fees, said it is should be able to stay open for about four weeks using previous year’s fee reserves.

For more patent news, click here.

Trademark

Amazon Seeks ‘Firetube’ U.S. Trademarks for Variety of Uses

Amazon.com Inc. (AMZN), the world’s largest e-commerce company, applied to register the term “Firetube” as a trademark, according to the U.S. Patent and Trademark Office.

The application, filed Sept. 25, indicates that the Seattle-based company plans to use the mark for a wide range of services, including online social-networking, a mobile software application, and the dissemination of advertising via the Internet and other communications networks.

Other uses for the mark, Amazon says, are the provision of non-downloadable pre-recorded content via wireless networks, communication through portable electronic devices, electronic mail services and graphic design services.

Kentucky Restaurant Successful in Defense of ‘Derby Pie’ Mark

Kern’s Kitchen Inc., a Kentucky restaurant that’s been in business for more than 50 years, won a trademark battle against a restaurant that was started by the founder of the Kentucky Fried Chicken chain.

The dispute was over a pie that is associated with the Kentucky Derby horse race. According to the database of the U.S. Patent and Trademark Office, Louisville, Kentucky-based Kern’s Kitchen began using the name “Derby Pie” in 1964, and registered it as a U.S. trademark in October 1969.

The company said on its website that the pie, which has chocolate chips and walnuts among its ingredients, is a secret recipe and “no one has ever been able to duplicate our special filling and delicate crust.”

That hasn’t stopped many people from trying. A Google search for the terms “Derby Pie” and “Recipe” yields more than 48,000 hits. Kern’s Kitchen has successfully filed other trademark suits related to the pie’s name.

Kern’s Kitchen objected to the use of the term “derby pie” to describe a dessert served at Claudia Sanders Dinner Houses Inc., of Shelbyville, Kentucky, and filed an infringement suit in federal court in March.

According to the Dinner Houses website, the restaurant was founded in 1968 by Harland Sanders, and originally known as “The Colonel’s Lady.” Sanders sold his Kentucky Fried Chicken company to a group of investors in 1964, and the chain is now a unit of Yum! Brands Inc. (YUM) He and his wife Claudia, inspired by their “knowledge of Southern Recipes and their natural leaning toward the restaurant,” then opened The Colonel’s Lady.

Sanders died in 1980 at the age of 94, and his widow died in 1996, at the same age.

In its complaint, Kern’s Kitchen said that it renewed its trademark in 2009 and didn’t authorize the mark’s use by the defendant. It asked the court for an order barring further infringement and damages of $335,000 together with awards of attorney fees and litigation costs.

On Oct. 1 a federal court in Frankfort, Kentucky, issued an order permanently barring Dinner Houses’ use of “Derby Pie,” and dismissing all other claims. The court said each party must pay its own attorney fees and litigation costs.

Dinner Houses’ menu lists a dessert containing chocolate chips and pecans that is now named “Claudia’s Kentucky Pie.”

The case is Kern’s Kitchen Inc. v. Claudia Sanders Dinner Houses Inc., 3:13-cv-00013-GFVT, U.S. District Court, Eastern District of Kentucky (Frankfort).

For more trademark news, click here.

Copyright

Pennsylvania Theater Sued Again by Broadway Copyright Holders

Entertainment Theatre Group, which does business as American Music Theatre, was sued for the second time in two weeks for infringing copyrights of Broadway musicals.

The first suit was filed in Allentown, Pennsylvania, Sept. 25 by the Walt Disney Co. (DIS), which objected to the allegedly unlicensed use of content from its “Mary Poppins,” “The Lion King” and “Spider-Man” in American Music Theater’s “Broadway: Now and Forever.”

The second suit was filed by the Rodgers & Hammerstein Organization, Andrew Lloyd Weber’s Really Useful Group Ltd., and the Music Theatre International licensing agency.

The content that is allegedly used without permission is drawn from “The Producers,” “West Side Story,” “Jesus Christ Superstar,” “Annie,” “Cats,” “Joseph and the Amazing Technicolor Dreamcoat,” “Music of the Night,” “Evita,” “Phantom of the Opera,” and “Les Miserables,” according to the complaint.

The music organizations asked the court to bar the unauthorized use of their content and for awards of money damages, attorney fees and litigation costs.

American Music Theatre didn’t respond immediately to an e-mailed request for comment.

The new case is The Rogers and Hammerstein Organization v. Brubaker, U.S. District Court, Eastern District of Pennsylvania (Allentown).

The earlier case is Disney Enterprises Inc. v. Entertainment Theatre Group, 13-cv-05570, U.S. District Court, Eastern District of Pennsylvania (Allentown).

For more copyright news, click here.

Trade Secrets/Industrial Espionage

Canada Defense Department Move May Be Security Risk

Canada’s Department of National Defense is taking a second look at plans to move into facilities previously occupied by the now-defunct Nortel Networks Corp. after listening devices were discovered there, the Ottawa Citizen reported.

The Internet and communications provider was the target of industrial espionage beginning in 2000 and security analysts say bugs and other devices from the Nortel era may still be found at the site, according to the newspaper.

The Department of National Defense hasn’t revealed whether the bugs found were new or dated from Nortel’s occupancy, the newspaper reported.

Canada’s federal government, which has dedicated almost $1 billion Canadian ($968 million) to the purchase and the renovation of the site, has said it may consider having other departments move there rather than the defense department, according to the Citizen.

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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