Samsung, BAT, Virgin, Summit, Google: Intellectual Property

Samsung Electronics Co., the world’s second-largest maker of mobile phones, is examining InterDigital Inc.’s patent portfolio after being approached to make a bid, according to two people familiar with the matter.

Samsung is looking at the patents along with Apple Inc., Google Inc. and other potential bidders, said the people, who asked not to be identified because the talks are private. InterDigital, which holds patents related to mobile technologies used to transfer information, said last month that it hired bankers as it considers a sale.

InterDigital’s engineers invented some of the technology for high-speed mobile phone networks now used by the world’s biggest handset makers. The King of Prussia, Pennsylvania-based company may fetch more than $5 billion, according to analysts at Algorithm Capital and Dougherty & Co. Eastman Kodak Co. and other companies also are selling their patent portfolios.

Should Suwon, South Korea-based Samsung pursue a bid, it would vie against Apple and Google to purchase all or part of a portfolio of about 8,800 patents on inventions used in devices ranging from the iPhone to Google’s Android-based handsets and Research In Motion Ltd.’s BlackBerry. Smartphone sales are forecast to almost double to 1.1 billion in 2015, according to Gartner Inc., based in Stamford, Connecticut.

Samsung is involved in patent lawsuits with Apple since the iPhone maker sued the South Korean company in April, saying the Galaxy devices “slavishly” copied its products.

InterDigital has gained 66 percent since July 18, the day before it disclosed plans to explore a sale.

Apple and Google are weighing possible bids, a person familiar with the matter said last month.

Jack Indekeu, a spokesman for InterDigital, declined to comment. Adam Yates, a U.S.-based spokesman for Samsung, didn’t return a call seeking comment.

During the second quarter, Apple and Samsung became the top two makers of smartphones. Their shipments trumped those of Nokia Oyj for the first time, research firm Strategy Analytics said last week. Apple’s iPhones accounted for 18.5 percent of global smartphone shipments, followed by Samsung’s 17.5 percent and Nokia’s 15.2 percent, according to the research firm.

Samsung ranks second behind Nokia in terms of overall mobile-phone shipments.

Evercore Partners Inc. and Barclays Capital will “explore and evaluate potential strategic alternatives” that may include a sale, InterDigital said last month.

Google, whose Android operating systems runs smartphones that compete against the iPhone, lost in a bid for Nortel’s $4.5 billion portfolio to a group that included Apple and Microsoft Corp. InterDigital’s patents in cellular technology are “deeper and stronger” than Nortel’s, InterDigital Chief Executive Officer William Merritt said in April.

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BAT Seeks Australia Documents for Fight Against Plain Packaging

British American Tobacco Plc urged an Australian appeal court panel to order the release of government documents to help it fight a proposed law to remove all manufacturers’ markings from cigarette packs.

The Dunhill maker needs to deploy the documents “in its efforts to persuade members of parliament that the legislation should not be passed,” Allan Myers, British American Tobacco’s lawyer, told the three-judge panel in Melbourne yesterday. A debate on the law is scheduled for next month, he said.

The Australian proposal is the first in the world aimed at banning logos and color variations on cigarette packages. New Zealand, Canada and the U.K. had considered the move but dropped it out of concern it would be illegal, British American Tobacco said. The proposal may infringe international trademark and intellectual property laws, said the producer of Pall Mall and Australia’s best-selling cigarette brand, Winfield.

Australia had considered plain packaging for cigarettes in the mid 1990s and on Dec. 14, 1995, the government received a 13-page report from a commission that studied the proposal, Myers said. The government released a summary and in 1997 it also issued a response to a separate Senate report, he said.

The background documents that led to the government’s decision not to go ahead with the earlier plan weren’t released and the government says they’re privileged and must remain confidential.

Health Minister Nicola Roxon said in April that she’s acting in the interest of public health and has the support of most people.

British American Tobacco “suspects that Minister Roxon hasn’t released the legal advice because it’s likely to demonstrate her plain packaging laws are flawed,” the company said in a May 31 statement.

At issue is whether with the publication of its response to the Senate report the government gave up its right to keep the documents confidential.

The company says “if this is provided, Parliament will be better informed,” Chief Justice Patrick Keane said today. “I’m not sure that’s the role of the judiciary.”

Justice Garry Downes, another panel member, said he was worried about the court taking over the role of the Freedom of Information panel that denied British American Tobacco’s request.

“A finding of fact is one thing, saying this document should be made available is another,” Downes said. “We would be making an administrative decision.”

The judges reserved a decision and both the company and the government agreed to provide additional written submissions before Aug. 10.

The case is British American Tobacco Australia Ltd. v. Secretary, Department of Health and Ageing. VID314/2011. Federal Court of Australia (Melbourne).

Virgin to Move Brand-Holding Unit to Switzerland for Tax Reasons

Virgin Group Ltd.’s IP-holding unit will move to Switzerland in efforts to reduce the tax burden on the company, the U.K.’s Daily Telegraph reported.

A spokesman for Virgin told the Telegraph that the move was part of an increased emphasis on brand development in emerging markets.

Other parts of the Virgin empire, including Virgin Atlantic and Virgin Media, will remain in the U.K. and pay taxes there, the Telegraph reported.

Virgin Enterprises is already advertising for staff for its Swiss operations, according to the Telegraph.

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Summit Sues Over ‘Breaking Dawn’ Photos, Video Infringement

Summit Entertainment LLC, the film company that produced the “Twilight” series of vampire films, filed a copyright-infringement suit related to the unauthorized release of photos and videos from its upcoming “Twilight Saga: Breaking Dawn.”

The suit was filed in federal court in Los Angeles Aug. 1. The named defendant is Daiana Santia of Posadas, Argentina. Summit is also pursuing a criminal copyright case in Argentina against Santia, according to a company statement.

E! Online, an entertainment-news website, reported that Summit had tried to settle the dispute with Santia “and she isn’t budging at all.”

The images, which were distributed without authorization via the Internet in March, “were not ready or in their proper context,” Summit said in the statement. The Santa Monica, California-based company asked that fans not view or pass along the images. The first part of the film is set for release in November.

After the unauthorized images were distributed, Summit said in a statement that “their early dissemination is deeply upsetting to the actors, the filmmakers and Summit who are working so hard to bring these movies to fruition to you in November 2011 and November 2012.”

When the “Twilight Saga: Eclipse” film was released at the end of June 2010, $162 million worth of tickets were sold in its first five days.

Summit is represented by Christopher Theodore Varas, David K. Caplan and Dennis L. Wilson of Keats McFarland & Wilson LLP of Beverly Hills, California.

The case is Summit Entertainment LLC v. Daiana Santia, 2:11-cv-06310-ODW-SS, U.S. District Court, Central District of California (Los Angeles).

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Trade Secrets/Industrial Espionage

Starfire Systems Sues Ex-Executives, Competitor for Infringement

Starfire Systems Inc., a seller of specialty materials and performance chemicals, sued a competitor for trade secret misappropriation and trademark infringement.

The suit, filed July 28 in federal court in Syracuse, New York, claims that Extreme Environment Materials Solutions LLC of Saratoga Springs, New York, is using proprietary secrets related to Starfire’s polymer-to-ceramic products. EEMS is also accused of using a domain name -- -- that infringes Starfire’s trademarks.

Two former Starfire officials -- former President and Chief Executive Officer Herbert Armstrong and former President and Chief Technology Officer Walter J. Sherwood -- are also defendants. Both are accused of violating confidentiality agreements with Starfire and bringing trade secrets belonging to the Schenectady, New York-based company to EEMS.

The two confidentiality agreements were assets contained in Starfire’s bankruptcy estate and were vested in Starfire at the end of bankruptcy proceedings, according to court papers.

Starfire claims EEMS’ CS-160 HT product is based on specifications, composition, and a confidential manufacturing process it developed for its own SMP-10. Other trade secrets allegedly disclosed include information about Starfire’s customers, according to court papers.

EEMS didn’t respond immediately to an e-mailed request for comment on the suit. Arnold told the Business Review that “it’s unfortunate Starfire feels they have to fight somebody else in the industry that is just trying to grow the business.”

The company asked the court for an award of money damages of “at least $10 million,” and also requested court orders to halt EEMS’ use of Starfire’s trade secrets and a domain name that infringes its trademarks. It also asked to be transferred the domain name.

Starfire is represented by Christopher Massaroni of McNamee Lochner Titus & Williams PC of Albany, New York.

The case is Starfire Systems Inc., v. Extreme Environment Materials Solutions LLC, 1:11-cv-00888-GLS-DRH, U.S. District Court, Northern District of New York (Syracuse).

IP Moves

Google Says It Hired FTC Intellectual Property Expert Michel

Google Inc., under investigation by the Federal Trade Commission for its dominance of Internet searches, said it hired Suzanne Michel, one of the commission’s top intellectual property officials.

Michel, 49, is leaving her post as deputy director of policy planning at the FTC, where she worked for more than 11 years on patent antitrust issues and patent policy. She will join the company’s legal team, Aaron Zamost, a Google spokesman, said, declining to elaborate on what her responsibilities will be.

Michel was the chief writer of a patent report the FTC issued in March, which analyzed the evolution of the patent system in the U.S. and made recommendations on how to improve patent law to promote innovation. The report also made suggestions to the courts on how to make patent remedies more effective.

Before she joined the FTC, Michel worked in the civil division of the U.S. Department of Justice, defending the U.S. in patent-infringement litigation. She also served as a judicial clerk to Judge Paul Michel on the U.S. Court of Appeals for the Federal Circuit.

Michel has an undergraduate degree from Northwestern University, a doctorate in chemistry from Yale University and a law degree from the University of California Berkeley Law School.

Brinks Hofer Hires Former ITC Administrative Law Judge Charneski

Brinks Hofer Gilson & Lione hired Carl C. Charneski for its International Trade Commission practice, the Chicago-based firm said in a statement.

Charneski is a former administrative law judge at the ITC, a federal agency that investigates and adjudicates cases involving imports that allegedly infringe intellectual property rights. That agency is becoming an increasingly important venue for patent disputes in the technology industries.

He has also served as an administrative law judge for the U.S. Environmental Protection Agency and the Social Security Administration. Before he was an administrative law judge, Charneski served as a trial and appellate attorney in the U.S. Labor Department and as counsel to the Federal Mine Safety & Health Review Commission.

Charneski has an undergraduate degree from St. Francis College and a law degree from St. John’s University.

Cooley Adds Wilson Sonsini’s Matthew Langer to IP Practice Group

Cooley LLP hired Matthew E. Langer for its IP practice group, the San Francisco-based firm said in a statement.

Langer, whose area of expertise is patent-acquisition and counseling in the life sciences, pharmaceutical, biotech and medical device industries, joins from Wilson Sonsini Goodrich & Rosati PC of Palo Alto, California.

Before he was a lawyer he was a research scientist at Unilever Plc’s Unilever Research unit and a staff chemist at General Electric Co.’s GE Corporate Research and Development. He is a named inventor on U.S. patents assigned to the two companies.

Langer has an undergraduate degree in chemistry from Tufts University, a doctorate in organic chemistry from Yale University and a law degree from Fordham University.

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