Apple, Zynga, Lindt, Wal-Mart: Intellectual Property

A U.S. trade agency will consider whether imports of Microsoft Corp.’s Xbox gaming system should be barred after Motorola Inc.’s Mobility unit said that it infringes patents.

The International Trade Commission in Washington said Dec. 17 it would investigate the complaint filed last month by Motorola Mobility. Notice of the investigation was posted on the agency’s website.

Microsoft, the world’s biggest software maker, filed a lawsuit on Nov. 9 accusing Motorola of breaching contractual obligations to fairly license patents on wireless networking and video coding to be used in the Xbox. A day later, Motorola filed patent-infringement complaints in Florida and Wisconsin. The ITC case contains allegations similar to those filed in Wisconsin.

Microsoft has said Motorola is demanding patent royalties that are “wholly disproportionate to the royalty rate that its patents should command under any reasonable calculus.” Motorola has said the demand was a “fair offer” that Microsoft refused to accept.

The ITC is a quasi-judicial agency that investigates allegations of unfair trade practices and has the power to ban imports of products found to infringe U.S. patents. It typically completes its investigations in about 15 months.

The new case is in the Matter of Certain Gaming and Entertainment Consoles, 337-752, U.S. International Trade Commission (Washington).

Apple Seeks Patent on Mobile Phone App-Sharing Method

Apple Inc., maker of the iPad and the iPhone, is seeking a patent on a technology that would permit users to share applications with each other.

The intent of the invention is the purchase -- through an Apple Apps Store -- of an application by the user with whom it is shared.

The seed of the application is transmitted from mobile device to mobile device, so that the recipient, who may like the application on the sender’s phone, doesn’t have to go to the trouble of looking it up at the App Store. The recipient can then use the mobile device to pay for and activate the application

According to Apple’s 2010031281 application, published in the database of the U.S. Patent and Trademark Office Dec. 9, some applications that contain sensitive data, such as a medical database, can be structured so that particular application can’t be shared.

The only named inventor listed on the application is Edward D. Steakley. According to the membership database of the State Bar of California, Steakley, a lawyer, is an in-house counsel at Apple.

Apple filed the application for the patent in June 2009.

Diagnostic Medical Tests Can Be Patented, U.S. Court Rules

Diagnostic medical tests can be patented, a U.S. appeals court ruled in its first decision on the issue since a landmark Supreme Court case six months ago on business-method patents.

Prometheus Laboratories Inc.’s method of determining the dosage of a drug to treat stomach diseases can be patented, the U.S. Court of Appeals for the Federal Circuit in Washington said Dec. 17. Closely held Prometheus had lost a lower court case in which it sued the Mayo Clinic for infringing two patents. The Federal Circuit reversed the ruling in 2009 and upheld its decision last week, saying a judge erred in ruling the patents invalid.

The ruling may aid companies including Myriad Genetics Inc. and Novartis AG, which have tried to capitalize on burgeoning demand for “personalized medicine,” where doctors determine if a patient is genetically susceptible to a particular disease or would be more responsive to certain medicines. Interest in such testing has grown partly as health-benefit companies including Medco Health Solutions Inc. see a way to trim costs.

The Prometheus case was being watched to see how the court would interpret a June ruling from the Supreme Court that considered what types of innovations would qualify for legal protection. The Federal Circuit specializes in U.S. patent law.

The two Prometheus patents are for a method to determine the proper dosage of medicines for ailments including Crohn’s disease or ulcerative colitis to maximize the effectiveness of the drugs while limiting toxic side effects.

The Mayo Clinic, a not-for-profit medical practice based in Rochester, Minnesota, had licensed the patents prior to 2004, when it created its own test using the same metabolites as Prometheus with different levels to determine toxicity. After it was sued, Mayo argued that the patents covered mental steps to look at a body’s natural process, and a judge agreed, saying the subject matter wasn’t eligible for a patent.

Courts had long held that patents can’t be granted for “laws of nature, physical phenomena and abstract ideas.” Prometheus argued that its tests involve an application of a law of nature, not the law itself. The Federal Circuit agreed.

The patents “are in effect claims to methods of treatment, which are always transformative when one of a defined group of drugs is administered to the body to ameliorate the effects of an undesired condition,” the three-judge panel ruled.

The Prometheus ruling may help Salt Lake City-based Myriad win its appeal of a judge’s findings that some elements of its patents for diagnosing a woman’s risk of getting breast cancer were simple mental steps. The bulk of the judge’s ruling on Myriad was that isolated DNA is directed to a law of nature and wasn’t an issue in the case ruled upon today.

The appeals court case is Prometheus Laboratories Inc. v. Mayo Collaborative Services, 2008-1403, U.S. Court of Appeals for the Federal Circuit (Washington). The lower court case is Prometheus Lab Inc. v. Mayo Collaborative Services, 04cv1200, U.S. District Court for the Southern District of California (San Diego).

For more patent news, click here.


Zynga’s ‘Mafia Wars’ to Incorporate Dr. Dre’s Music, Name

Zynga Game Network Inc., the social gaming company, will partner with rap performer Dr. Dre to stream his video “Kush” into Zynga’s “Mafia Wars” game, the San Francisco-based company said in a statement.

The Mafia Wars game, played by users on their iPhones and Facebook Inc.’s social network website, is played by 19 million people per month, according to the company statement.

In addition to licensing his music, Dr. Dre has permitted the use of his name for a number of “Mafia Wars” special items. There are Dr. Dre-inspired limited-edition virtual goods, including headphones, a vintage car and weapons. Players can also buy the new “Kush” single from within the game through a link to Apple Inc.’s iTunes music store.

Dr. Dre records his music on the Universal Music Group’s Interscope Geffen A&M Records label.

Judge Issues Permanent Order Against ‘Catcher in Rye’ Sequel

Fredrik Colting’s sequel to J.D. Salinger’s “Catcher in the Rye” can’t be published in the U.S., according to an order by a federal judge in Manhattan.

The late Salinger published “Catcher” in 1951, and the coming-of-age novel captured the imagination of several generations of readers. The book, about the disaffected adolescent Holden Caulfield, sold more than 10 million copies in its first 10 years of publication.

Colting, under the pen name John David California, published “60 Years Later,” with his own publisher, Windupbird Publishing, in 2009. The plot revolved around a meeting between a 76-year-old Caulfield and the 90-year-old author.

Salinger sued for copyright infringement in June 2009 and died in January 2010 at the age of 91. His survivors continued the case as plaintiffs.

In May 2010, a federal appeals court told a lower court judge to reconsider her July 2009 ruling that blocked publication of Colting’s book.

In her Dec. 14 order, U.S. District Judge Deborah A. Batts ordered a permanent ban on the publication of the book. She dismissed all claims in the case and ordered each side to pay its own attorney fees and litigation costs.

The case is Salinger v. John Doe, 1:09-cv-05095-DAB, U.S. District Court, Southern District of New York (Manhattan).

For more copyright news, click here.


Chocolate Reindeer, Bunnies Not Protected, EU Court Says

Reindeer, bunnies and mice aren’t protected species when they’re made of chocolate, a European Union court ruled.

Lindt & Spruengli AG, the world’s largest maker of premium chocolate, and August Storck KG lost separate court challenges to get EU trademark protection for their chocolate Easter bunnies, mice and reindeer.

“A rabbit, a reindeer and a small bell are typical shapes in which chocolate and chocolate goods are presented” particularly “at Easter and Christmas,” the European Union General Court, the region’s second-highest tribunal, ruled Dec. 17. The shapes “are devoid of any distinctive character.”

Lindt, based in Kilchberg, Switzerland, has since 2004 failed to get EU-wide trademark protection for the shapes of a plain chocolate bunny and chocolate bunnies and reindeer wrapped in gold foil with red ribbon around their necks. It also failed to get protection for the ribbon and attached bell. The EU trademark agency based in Alicante, Spain, said in 2008 that the shapes were too common. The agency also rejected Storck’s trademark bid for the shape of a chocolate mouse.

“This now means Lindt can’t use an EU trademark right to stop other companies” from making similar chocolate bunnies, Olaf Gillert, a partner specializing in trademark law at law firm Taylor Wessing LLP in Dusseldorf, said in a telephone interview. “Still, it doesn’t mean that in the future companies can go ahead and make one-to-one copies.”

Lindt has other means to defend its rights, he said. It could argue it has rights based on the fame of its product or use national competition rules to enforce product shape, Gillert said. A question then would be whether consumers really recognize the golden bunny as being a Lindt product.

Sylvia Kaelin, a spokeswoman for Lindt, declined to immediately comment, saying she hadn’t yet seen the ruling. Bernd Roessler, a spokesman for Berlin-based Storck, declined to immediately comment.

Lindt in 2001 gained a trademark valid across the 27-nation EU for a chocolate Easter bunny wrapped in gold foil emblazoned with the word “Lindt” and bearing a red ribbon. In today’s case Lindt was seeking protection for the same bunny, minus the name, which would have given it wider rights.

Lindt already used its existing EU trademark to block an Austrian chocolate maker from selling products similar to its own 58-year-old Easter rabbit. This led to a dispute that resulted in a ruling by the EU’s top court last year that the trademark can be challenged if the Austrian chocolate maker proves Lindt registered it in bad faith.

The cases are T-336/08, T-337/08, T-346/08, T-395/08 Chocoladefabriken Lindt & Spruengli v OHMI, and T-13/09, Storck v. OHMI.

Wal-Mart, UFCW Reach Accord in Canadian Trademark Battle

Wal-Mart Stores Inc. has settled a trademark dispute with a labor union involved in efforts to unionize the world’s biggest retailer’s Canadian workforce, the Montreal Gazette reported.

The Bentonville, Arkansas-based retailer had objected to the United Food and Commercial Workers Union’s use of the Wal-Mart logo from a union run website, according to the newspaper.

Terms of the settlement weren’t disclosed, the newspaper reported.

The union’s website -- -- contains a statement declaring the union won a victory against Wal-Mart in a free-speech battle, according to the Gazette.

Sheboygan’s Lakeshore Metro’s New Name Opposed by Bus Company

The city-run bus system in Sheboygan, Wisconsin, may have to change its name to avoid a trademark conflict with a transportation service for the elderly and disabled, the Sheboygan Press reported.

After the bus system changed its name from Sheboygan Transit to Lakeside Metro and spent more than $30,000 to put new logos on the buses, counsel for Lakeshore Transportation, based in nearby Cascade, Wisconsin, complained, the newspaper reported.

Lakeshore Transportation’s lawyer, Daniel Kattman of Milwaukee’s Reinhart, Boerner & Van Deuren SC, told the newspaper that customers are confused by the name similarity, and some have expressed anger that they can’t use their city bus tickets on the private transportation company’s buses.

If the city doesn’t remove all references to “Lakeshore” from its buses and promotional material, the transportation company will file an infringement case, according to the newspaper.

NBA Asks Chinese Court to Overturn Adverse Trademark Ruling

NBA Properties Inc., the manager of the National Basketball Association’s business interests, has asked a Chinese court to reverse a decision by that country’s trademark Appeal Board, the People’s Daily reported.

The sports group is appealing a ruling that permitted a Fujian-based sporting goods team to register “Lakes Team” and its Chinese translation as a trademark for beer and other beverages, according to People’s Daily.

The appeal group said the owners of the Los Angeles Lakers mark hadn’t proven it was well-enough known name prior to the Fujian company’s registration, the newspaper reported.

The NBA is disputing the board’s contention that the public isn’t confused by the beverage company’s trademark, according to People’s Daily.

For more trademark news, click here.

IP Moves

Perkins Coie Snares Patent Litigator Eric Wesenberg From Orrick

Perkins Coie LLP hired Eric L. Wesenberg for its patent-litigation group, the Seattle-based firm said in a statement.

Wesenberg, who will practice from the firm’s Silicon Valley office, was previously a partner in San Francisco’s Orrick, Herrington & Sutcliffe LLP.

He has represented clients in federal district courts, the U.S. International Trade Commission. and the U.S. Circuit Court of Appeals for the Federal Circuit, the Washington-based court that hears appeals of patent cases.

Wesenberg has an undergraduate degree from the University of California, Santa Barbara, a master’s degree from the American University in Cairo, and a law degree from George Washington University.

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