Microsoft, Facebook, Ericsson, Lenova: Intellectual Property

Microsoft Corp., the largest software maker, said it would be “fair and reasonable” in licensing its industry-standard technology, pledging to negotiate with competitors instead of trying to block sales of their products.

Microsoft also will make its industry-essential patents available without requiring companies to cross-license their own non-essential technology, according to a posting yesterday on the company’s website. The pledge comes as Google Inc. prepares a similar promise to appease regulators scrutinizing its acquisition of Motorola Mobility Holdings Inc.

Motorola Mobility has sued Microsoft and Apple Inc. for infringing patents that are covered partly by standards in which companies agree to share technology that is common across their industry. Google, which has drawn scrutiny over the acquisition, plans to send the letter to standards organizations reassuring them it will license Motorola Mobility patents on fair terms, according to two people with knowledge of the situation who asked not to be named because the decision isn’t yet public.

Microsoft’s statement didn’t name any companies, and a spokesman for the software maker, Kevin Kutz, declined to comment. Jennifer Erickson, a spokeswoman for Libertyville, Illinois-based Motorola Mobility, and Kristin Huguet of Apple also wouldn’t comment. Jim Prosser, a spokesman for Google in Mountain View, California, didn’t immediately respond to an e-mail.

Motorola Mobility has sought sales bans in Germany on Apple products using standard-essential patents, and is seeking to halt U.S. imports of Microsoft’s Xbox gaming system.

Microsoft’s policy announced today doesn’t bar the company from seeking bans on the use of patented technology that isn’t part of an industry standard or from suing to demand compensation for the use of the essential patents.

Apple, based in Cupertino, California, sent a letter in November to the European Telecommunications Standards Institute saying the “industry suffers from a lack of consistent adherence” to policies that require companies to license standard-essential patents on “fair, reasonable and non-discriminatory” terms.

In that letter, reported yesterday by the Wall Street Journal, Apple said companies that pledge to license their patents on fair terms can’t seek to prevent use of the inventions without being in violation of their commitment.

Facebook CEO Won’t Have to Answer Questions in Patent Case

Facebook Inc. Chief Executive Officer Mark Zuckerberg won’t have to give pretrial testimony in a patent-infringement lawsuit filed by a mobile networking company.

U.S. District Judge Kevin Castel in Manhattan yesterday denied a request by Wireless Ink Corp. to depose Facebook co-founder Zuckerberg.

“If the CEO of Facebook has relevant knowledge not readily available from other sources, Wireless Ink ought to be able to establish this from documents produced in discovery or the testimony of other employees of Facebook,” Castel said in his order.

Wireless Ink, which operates the Winksite social networking service, said in a complaint filed in 2010 that Facebook Mobile and Google Inc.’s Google Buzz infringed a patent related to ways of offering content on mobile devices.

Facebook’s lawyers said in a letter to the judge that Wireless Ink “has not identified any relevant knowledge that Mr. Zuckerberg uniquely possesses that cannot be obtained from other witnesses.”

Facebook, based in Menlo Park, California, is planning an initial public offering of stock.

The case is Wireless Ink Corp. v. Facebook Inc., 10-01841, U.S. District Court, Southern District of New York (Manhattan).

USPTO’s ‘Patents for Humanity’ Prize to Speed Up Office Process

The U.S. Patent and Trademark Office has set up a project that will move some patent owners to the head of the line for proceedings within the office if their patented technology has been used for neglected humanitarian issues.

The “Patent for Humanity” project, which will run for 12 months, is aimed at public health or quality-of-life issues affected the poor, the patent office said in a statement yesterday.

Judges, drawn from academia in medicine, law science, engineering, public policy or a related field, will consider applications in four categories: medical, food and nutrition, clean technology and information technology.

Winners will receive an “acceleration certificate” which can move several different kinds of patent-office procedures to the head of the line, including patent appeals and re-examinations. The certificate can be used for one item in the winner’s portfolio, regardless of whether it is related to the humanitarian program.

The submission period for applications runs from March 1 through Aug. 31.


Lenovo, Computer Makers Settle Case Over Green Dam Software

Lenovo Group Ltd. and other computer makers settled a lawsuit brought by a California software maker who had claimed the Green Dam software installed on personal computers in China infringes its copyright.

“The parties have reached a settlement resolving the entire case,” Cybersitter LLC, the software maker, said Feb. 7 in a filing in U.S. District Court in Santa Ana, California. Terms of the settlement weren’t disclosed in the filing.

Closely held Cybersitter sued China, seven computer makers and two Chinese software makers in 2010, seeking $2.2 billion in damages over allegations the Green Dam program illegally copies more than 3,000 lines of code from Cybersitter’s Internet content-filtering program. The Chinese government made Green Dam mandatory on personal computers sold there in 2009.

Researchers in China have reported that Green Dam contains more than 6,500 political keyword filters, including words related to China’s control of Tibet, the 1989 Tiananmen Square massacre and the government-banned Falun Gong religious group, Cybersitter said in its complaint.

Researchers at the University of Michigan said in a 2009 report that Green Dam could impair computer performance by making machines more prone to security breaches.

A report that same year from the OpenNet Initiative, which includes researchers at the University of Cambridge, University of Oxford and University of Toronto, called Green Dam, a “substandard product” developed by companies with little experience in such software.

Robert Schwartz, a lawyer for Lenovo in Los Angeles, and Elliot Gipson, a lawyer for Santa Barbara, California-based Cybersitter, didn’t immediately return calls seeking comment on the settlement.

Gipson said in a telephone interview last month that China hadn’t responded to the complaint and that U.S. District Judge Josephine Staton Tucker last year granted a motion for entry of default against the country.

The case is Cybersitter v. the People’s Republic of China, U.S. District Court, Central District of California (Santa Ana).

Pornography Not Copyrightable, Infringement Defendant Argues

A resident of California’s Solano County has presented a novel defense to allegations of copyright infringement made by lawyers for an adult film company.

Liuxia Wong, who filed a complaint seeking a court declaration she hasn’t infringed a copyright belonging to Hard Drive Productions Inc., says the work in question isn’t entitled to copyright protection.

In her complaint filed Jan. 30 in federal court in San Francisco, she argues that the U.S. Constitution’s Copyright Clause protects only works “which promote the progress of science and the useful arts.” The film she is accused of infringing -- “Amateur Allure Jen” -- fails to meet the constitutional requirements for protection, she said in her pleadings.

The film depicts “obscene material,” “does not promote the useful arts” and “does not promote the progress of science,” Wong claims.

She also argued that Hard Drive demanded $3,400 from her so she could avoid being named a defendant in an infringement action.

Included in her case filing is a demand letter from Steele Hansmeier LLC, a Chicago law firm. The letter tells her that she can “work out a settlement with us” and avoid “the costs of attorney fees and the uncertainty associated with jury verdicts” by mailing the firm a check for $3,400. The firm said if she settled she would remain anonymous.

Wong called the firm’s actions intimidation, claiming she didn’t download the movie or authorize anyone else using her computer to download it.

She asked the court to declare she wasn’t liable for infringement and that the film wasn’t copyrightable. Additionally, she sought an order barring Hard Drive from demanding settlements “not supported by facts and law” and for awards of litigation costs and attorney fees.

Wong is represented by Aaron K. McClellan and Steven W. Yuen of Murphy Pearson Bradley & Feeney of San Francisco.

The case is Liuxia Wong v. Hard Drive Productions Inc., 5:12-00469-HRL, U.S. District Court, Northern District of California (San Francisco).

For copyright news, click here.

Trade Secrets/Industrial Espionage

Ericsson Sued by Airvana in New York for $330 Million

Ericsson AB, the world’s largest maker of wireless networks, was sued for more than $330 million by Airvana Network Solutions Inc., which says Ericsson misappropriated intellectual property.

Ericsson secretly developed a product based on Airvana trade secrets to operate wireless network equipment in order to avoid paying software licensing fees, Airvana said in a complaint filed yesterday in New York state court.

“Ericsson has now undertaken a blatant ploy to evade its contractual obligations, by developing a secret ‘in-house’ project designed to misappropriate critical Airvana intellectual property,” the company said.

Ericsson, which depended on Airvana’s technology to service customers, “constantly badgered” Airvana to reduce the price of the software and began development of its own product in 2010, according to the complaint.

Airvana, based in Chelmsford, Massachusetts, said it has suffered damages of more than $330 million and will face “an immediate and precipitous decline” in revenue if Ericsson is able to displace the company with its own product.

A spokesman for Stockholm’s Ericsson couldn’t be reached for comment.

The case is Airvana Network Solutions Inc. v. Ericsson Inc., 650360-2012, New York state Supreme Court (Manhattan).

Ex-Motorola Worker Guilty of Trade Secret Theft, Judge Rules

Hanjuan Jin, a former Motorola Inc. software engineer charged with stealing trade secrets from the company, was found guilty and acquitted of economic espionage to benefit a foreign government.

Jin was tried in Chicago before U.S. District Judge Ruben Castillo in November after being indicted on three counts of stealing trade secrets and three more counts of economic espionage. She waived her right to a jury.

Yesterday Castillo found her guilty of stealing trade secrets and acquitted her on the three counts of economic espionage.

“I conclude that Ms. Jin criminally betrayed Motorola by stealing its trade secrets,” the judge said.

Castillo allowed Jin to remain in home confinement and scheduled sentencing for April 18.

Jin, 41, faces as long as 10 years in prison on the trade secrets conviction. She faced as long as 15 years in prison on each of the economic espionage counts.

She was indicted in 2008, a year after she returned to Schaumburg, Illinois-based Motorola following a yearlong medical leave of absence and immediately stepped down.

U.S. Customs agents stopped her as she was about to board a plane at Chicago’s O’Hare International Airport on Feb. 28, 2007. In her possession were more than 1,000 Motorola documents, $30,000 in cash and a one-way ticket to China.

She was accused of simultaneously working for Motorola and for a Beijing-based company, Kai Sun News (Beijing) Technology Co., also known as SunKaisens, which was affiliated with China’s military.

The case is U.S. v. Jin, 08-cr-192, U.S. District Court, Northern District of Illinois (Chicago).


EKA-AZS Challenges Trademark Infringement Award to Rosneft

EKA-AZS, the operator of a chain of gas stations in the Moscow region, is challenging the award the Moscow Commercial Court made to Rosneft Oil Co. in a trademark-infringement suit, the Russian Legal Information Agency said in a statement.

In 2005 the two companies entered into a franchise agreement for EKA-AZS to use the trademark on 40 gasoline filling stations for five years.

The suit involved the use of the Rosneft trademark for five months after a contract between the two companies for the use of the mark expired in 2010.

In December the court reduced the judgment against EKA-AZS from 5 million rubles ($168,000) to 3 million.

For more trademark news, click here.

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