Google, Smith & Nephew, L-3: Intellectual Property

Google Inc.’s YouTube video-sharing website didn’t infringe copyrights owned by movie and television producer Viacom Inc., a judge ruled.

U.S. District Judge Louis Stanton in New York said yesterday YouTube wasn’t liable for infringement.

YouTube had said it was protected by the safe-harbor provision of the federal Digital Millennium Copyright Act, which says a service provider isn’t liable for infringement if it removes material from its site when notified by the copyright owner.

“The provider must know of the particular case before he can control it,” Stanton said in the ruling. “The provider need not monitor or seek out facts indicating such activity.”

Infringing content, once detected, must be taken down, the judge said.

Both companies had asked Stanton in March for summary judgment rulings in their favor. Viacom said YouTube benefited financially by allowing users to post and share programs including “The Daily Show With Jon Stewart” and “South Park” on its website without authorization.

Viacom, based in New York, said in an e-mailed statement that it plans to appeal the ruling.

“We believe that this ruling by the lower court is fundamentally flawed and contrary to the language of the Digital Millennium Copyright Act, the intent of Congress, and the views of the Supreme Court as expressed in its most recent decisions,” Viacom said in the statement.

The ruling is an important victory, said Kent Walker, vice president and general counsel for Google, in a Web log posting.

“The decision follows established judicial consensus that online services like YouTube are protected when they work cooperatively with copyright holders to help them manage their rights online,” Walker said in the blog.

Google, based in Mountain View, California, acquired YouTube for $1.65 billion in 2006.

The case is Viacom International Inc. v. YouTube Inc., 07-cv-02103, U.S. District Court, Southern District of New York (Manhattan). For more copyright news, click here.


Smith & Nephew Infringed Kinetic Concepts Patents, Judge Says

Smith & Nephew Plc infringed patents for Kinetic Concepts Inc. technology that treats severe wounds using a vacuum-sealed film, a U.K. judge ruled.

Pumps and canisters in Smith & Nephew’s Renasys EZ and Renasys GO devices violate two Kinetic patents in the U.K., Judge Richard Arnold ruled yesterday at the High Court in London. Smith & Nephew said it would appeal the decision.

“We believe that we do not infringe any valid patent,” said Robin Carlstein, a vice president at London-based Smith & Nephew, in a statement yesterday. A hearing on whether to block sales of the products is scheduled for next month.

The ruling is the latest in a long-running dispute between Smith & Nephew and San Antonio-based Kinetic over devices that reduce infection and promote tissue growth in wounds. Kinetic in March 2009 won a related U.S. lawsuit against Smith & Nephew over the foam used in the devices. Cases are pending in France, Germany and Australia.

“These patents, and many others that are exclusively owned by KCI, prevent others from duplicating our industry-leading” technology, Kinetic Chief Executive Officer Catherine Burzik said in a statement.

Another U.K. court in May 2009 ruled that most of Kinetic’s patent claims over Smith & Nephew’s foam were invalid. In that case, seven of 10 U.K. patent claims were thrown out and three other claims were upheld. Kinetic appealed and the ruling was upheld.

The U.S. cased started in 2007, when Kinetic Concepts, along with Wake Forest University, which licensed the technology to the company, sued Bluesky Medical Corp., now owned by Smith & Nephew. A jury found Kinetic suffered more than $900,000 in lost profits and said its patents were valid.

Toyota Can’t Challenge Paice Patent on Hybrid Car Technology

Toyota Motor Corp. can’t challenge a patent owned by Paice LLC that may be central in an infringement lawsuit next month against the Japanese carmaker over its newest Prius and Camry hybrid vehicles.

The six-member panel of the U.S. International Trade Commission in Washington yesterday upheld a May 21 finding by one of its judges that Toyota is precluded from challenging the validity of the Paice patent. The panel cited Toyota’s loss in a similar dispute in 2005 over earlier versions of gas-electric hybrid cars.

A trial over newer hybrid models is scheduled to start July 19 before ITC Judge Theodore Essex. Toyota, the world’s biggest automaker, could face a ban on imports of vehicles found to infringe the patent owned by Bonita Springs, Florida-based Paice.

Closely held Paice won a trial in 2005, in which a jury determined Toyota infringed two patents related to drive trains on Prius, Highlander and Lexus RX400h hybrid vehicles.

The ITC case is In the Matter of Hybrid Electric Vehicles, 337-688, U.S. International Trade Commission (Washington). The civil cases are Paice LLC v. Toyota Motor Corp., 04-cv-211; 07cv180 and 08-cv-261, U.S. District Court, Eastern District of Texas (Marshall).

For more patent news, click here

Trade Secrets/Industrial Espionage

L-3 Claims Ex-Employees Took Trade Secrets to Form New Company

L-3 Communications Holdings Inc., a New York-based military contractor, is seeking $15 million from former employees and an Ohio competitor for alleged trade-secret misappropriation.

The company’s L-3 Services and Binary Ionization units claim closely held Advanced Disinfection Technologies LLC of Lebanon, Ohio, uses their trade secrets and infringes their patents.

L-3’s Services’ former director of research and development-binary ionization technology, and a former sales and marketing consultant are accused of taking trade secrets related to the use of binary ionization technology as a decontamination procedure.

The disputed technology is used in military applications against biochemical warfare, and to sanitize cruise ships, hospitals, nursing homes, prisons, and dental and veterinary offices to combat infection, according to the complaint filed June 18 in federal court in Norfolk, Virginia.

The ex-employees are accused of violating confidentiality agreements they had with L-3 and of infringing four patents on a fogger disinfectant system. L-3 claims Advanced Disinfection Technologies was founded on misappropriated technology and other trade secrets and that its operations infringe the disputed patents.

Additionally, the former scientist is accused of working on L-3’s time to develop technology used in the new company.

L-3 says that after it discovered that Advanced Disinfection Technology was making infringing products, it sent the former scientist a letter asking him to stop, and reminding him of his confidentiality agreement. Instead, according to court papers, he replied, saying he would “aggressively pursue all remedies against L-3” if further action was taken.

In addition to seeking $15 million in damages, L-3 asked that the damages be tripled, and that the defendants be ordered to pay attorney fees and court costs. It also seeks a court order barring Advanced Disinfection Technology from representing it’s the owner of the disputed technology.

L-3 is represented by Suzanne M. Parker of the Parker Intellectual Property Group PC of Annapolis, Maryland, and Benjamin G. Chew of Washington’s Patton Boggs LLP.

The case is L-3 Services v. Szekely, 2:10-cv-00290-TEM, U.S. District Court, Eastern District of Virginia (Norfolk).


Thirsty Dog Brewing Sues Georgia Tavern for Infringing Trademark

Thirsty Dog Brewing Co., an Akron, Ohio-based microbrewery, sued a Georgia tavern for trademark infringement.

Thirsty Dog Inc., operator of the Thirsty Dog Tavern in Atlanta, is accused of infringing two trademarks belonging to the brewery. In its complaint filed June 22 in federal court in Akron, Ohio, the brewer says it’s used the marks since at least


It objects to the tavern’s use of “Thirsty Dog” on its website, its Internet domain name, and on its page on Facebook Inc.’s social-networking site.

The brewer claims the public is confused by the tavern’s use of the name, and that it’s being caused “irreparable injury.”

It asked the court to bar the tavern from referring to itself by any name that is confusingly similar to the brewer’s marks, and asked to be transferred the offending domain name,

Additionally, it’s seeking attorney fees, litigation costs and money damages, and asked that the damages be tripled.

Thirsty Dog Brewing is represented by Derek J. Somogy, Ray L. Weber and Tama L. Drenski of Renner, Kenner, Grieve, Bobak, Taylor & Weber of Akron.

The case is Thirsty Dog Brewing Co. v. The Thirsty Dog Inc.,5:10-cv-01392-JRA, U.S. District Court, Northern District of Ohio (Akron).

Alamo’s Guardians Make Concession in Trademark Fight With State

The Daughters of the Republic of Texas, the non-profit group of female descendents of Texas pioneers that has operated the Alamo since 1905, is now in discussions with the state over their pending trademark application, the San Antonio Express-News reported.

The group’s trademark counsel has said they’re willing to assign the trademark to the state if the Daughters lose their position as the Alamo’s guardians, the newspaper reported.

The state, which owns the Alamo, has asked the Daughters to provide a broad range of documents with regard to the site as part of the trademark negotiations, according to the Express-News.

Some members of the Daughters have said they’re concerned that a fight with the state over the trademark could affect their guardianship of the Alamo, the newspaper reported.

Gujarati Companies Find Named Registered in U.S. by Others

Nostalgic former residents of India’s state of Gujarat have caused some of the region’s businesses trademark grief, the Times of India reported.

When an ice cream producer and two separate jewelers from the state tried to register their corporate names as trademarks in the U.S., they discovered earlier registrations made by non-resident Gujaratis, according to the Times.

The three companies had to enter into a lengthy process with the U.S. Patent and Trademark Office to get their own names back, the newspaper reported.

For more trademark news, click here.

IP Moves

Roetzel & Andress Snares IP Team from Holland & Knight

Roetzel & Andress hired a team of IP specialists for its Washington office, the Akron, Ohio-based firm said in a statement.

The new hires, all from New York’s Holland & Knight LLP, are partners Sunwoo Lee and Jon B. Crocker, associated Baldine B. Paul and Benjamin E. Maskell and patent agent Donald L. Monin Jr.

Lee, who does both litigation and transactional work, has represented clients whose technologies have included semiconductor circuitry and fabrication process, flat panel display devices, light emitting diodes; solar cell modules, computer hardware, software-based technologies computer networking, computer games and graphic user interfaces; medical devices and car batteries for hybrid and electric vehicles.

He has also practiced at the now-defunct Jenkins & Gilchrist P.C. of Dallas, and Chicago’s Seyfarth Shawl LLP, as did Paul and Monin.

Lee has a master’s degree in materials science and engineering from Stevens Institute of Technology, a doctorate in solid state science and technology from Syracuse University and a law degree from George Mason University.

Crocker, a litigator, has represented clients in disputes involving flat panel displays, smart mobile telephones, global positioning devices, wireless network devices and blue laser light-emitting diodes.

Before he entered private practice, Crocker was the chief of civil litigation for the U.S. Army.

He has an undergraduate degree in military science and military history from the U.S. Military Academy West Point, a law degree and a master’s degree in international law from the University of Miami, and a master’s degree in military law from the U.S. Army Judge Advocate General’s School.

Paul, who does both transactional and litigation work, has both an undergraduate and a master’s degree in electrical engineering from Florida A&M University, a doctorate in electrical engineering from Georgia Institute of Technology and a law degree from George Washington University.

Maskell, who does patent-application work, has an undergraduate degree in computer science from the University of Virginia, and a law degree from George Mason University.

Monin, who handles parent applications related to solid-state devices, is a former examiner at the U.S. Patent and Trademark Office. He has an undergraduate degree in electrical engineering from the University of Missouri at Columbia.

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