Microsoft, Nokia, Black Rain: Intellectual Property

Microsoft Corp., the world’s biggest software maker, won a U.K. ruling invalidating Motorola Mobility Holdings Inc.’s patent protection for technology synchronizing message statuses across multiple devices.

The 2002 patent owned by Google Inc.’s Motorola Mobility unit shouldn’t have been issued because the technology was obvious to experts in the field at the time, Judge Richard Arnold said in a decision in London last week. A week-long trial ended earlier this month.

“The patent is invalid and should be revoked,” Arnold said during a 30-second hearing. Both companies had received the written judgment in advance.

The companies are locked in legal battles over patents for smartphone technology and Microsoft’s Xbox gaming software in the U.S. and Germany. Microsoft claims all devices that run on Google’s Android operating system use its technology and is seeking royalties from Motorola Mobility, which Mountain View, California-based Google acquired in May.

Microsoft, based in Redmond, Washington, filed the lawsuit against Motorola Mobility in London a year ago in a pre-emptive bid to invalidate the patent before it could be sued for infringement.

The case is running parallel to Motorola’s lawsuit against Microsoft over the same patent in Germany, where the companies are awaiting a decision. Google has said it bought Motorola Mobility in part because of its patents and history of innovation in mobile phones.

“We’re pleased the court granted our request to invalidate Motorola’s patent and welcome yet another step toward clarifying the cases between our companies,” David Howard, Microsoft’s deputy general counsel, said in an e-mailed statement.

Motorola’s lawyer, Zoe Butler of Powell Gilbert in London, didn’t respond to a call seeking comment on the ruling. Motorola’s press office didn’t immediately respond to an e-mailed request for comment.

While the patent in the U.K. trial related to pager technology from the 1990s, the arguments centered on its application to newer mobile devices and computers that also rely on synchronizing messages statuses such as whether an e-mail has been read by the user, or is unread.

If the patent were valid, Microsoft’s Live Messenger instant-messaging system and Exchange ActiveSync protocol, used by the company’s customers to synchronize e-mail statuses across devices, would have violated the intellectual property, according to the judgment.

The patent in the case had a so-called priority date of Aug. 31, 1995, when Motorola was creating technology for the first two-way pager system that would allow message recipients to respond to communications on the devices for the first time.

The case is Microsoft Corp. v. Motorola Mobility Inc., case no. HC11C04536, High Court of London, Chancery Division (London).

Nokia Signs Patent-Licensing Deal With RIM, Ending Disputes

Nokia Oyj, the Finnish mobile-phone maker struggling to reverse a slide in sales, agreed to a patent-licensing deal with BlackBerry maker Research In Motion Ltd., ending all legal disputes between the companies.

RIM will make a one-time and “ongoing” payments to Nokia, the Espoo, Finland-based company said. Financial terms weren’t disclosed.

Nokia is trying to add revenue from its patent portfolio as sales at its unprofitable smartphone unit drop. It may get a one-time payment of $150 million to $200 million, and about $50 million annually over the next 10 to 15 years, depending on when the patents expire, according to estimates by Hannu Rauhala, an analyst at Pohjola Bank Oyj in Helsinki.

Nokia has sold units and assets including its headquarters to boost its cash position. Its cash reserves have shrunk by about half in the past five years and will drop below 3 billion euros by year-end, Standard & Poor’s estimated in August. Its debt is at junk status at the three main rating companies.

In May, Nokia said it filed patent-infringement lawsuits against Waterloo, Ontario-based RIM, HTC Corp. and ViewSonic Corp. over inventions in mobile devices including phones and tablets. The RIM deal signals that the disputes with HTC and ViewSonic could be settled within six months, Sarkamies said.

The new agreement is less lucrative than the one Nokia signed with Apple Inc. last year because RIM’s device volumes are “so small and the BlackBerry maker is going through such difficult times,” he said.

Both Nokia and RIM are struggling to compete with Apple’s iPhone and smartphones using Google Inc.’s Android software, including those from market leader Samsung Electronics Co. Android and Apple accounted for 90 percent of global smartphone shipments last quarter, compared with 4.3 percent for the BlackBerry and less than that for Nokia, according to research firm IDC.

For more patent news, click here.


Gunmaker Black Rain Sues for Infringement

Black Rain Ordnance Inc., a maker of semi-automatic rifles, sued an online dealer of gun parts over trademark infringement. of Brainerd, Minnesota, is accused of infringing the “Let it Rain!” trademark used by Black Rain. In a complaint filed Dec. 19 in federal court in Joplin, Missouri, the Neosho, Missouri-based gun manufacturer says it used that phrase to surround a biohazard symbol, and that is using it without authorization on its website.

The goods that are sold under its mark are “confusingly similar” to authentic Black Rain products, according to court papers. The public is confused, Black Rain claims, and is likely to assume falsely that an affiliation exists between the two companies.

The Missouri gunmaker claims it is harmed by’s actions and its reputation has been tarnished.

It asked the court for an order barring further unauthorized use of its marks, and for seizure of all allegedly infringing promotional material. Additionally, it seeks an award of all of’s profits derived from the alleged infringement, together with money damages, attorney fees and litigation costs.

Black Rain also requested that the damages be tripled to punish for its actions. didn’t respond immediately to an e-mailed request for comment.

The case is Black Rain Ordnance Inc. v., 3:12-cv-05130-RED, U.S. District Court, Western District of Missouri (Joplin).

EU Tobacco Directive Permits Nations to Require Plain Packs

The European Commission is proposing revisions to its Tobacco Products Directive that permits member states to require plain packaging on tobacco products.

According to a statement from the commission, all cigarette and roll-your-own cigarette packaging must contain a combined picture and text warning that covers 75 percent of the front and back of the package.

Australia, which isn’t a member state of the European Union, was the first nation to adopt a law requiring plain packaging. The changeover began in October, and now cigarettes sold in that country may bear photos of a gangrenous limb or a cancer victim.

For more trademark news, click here.


Paramount, Puzo Agree to End Lawsuit Over ‘Godfather’ Rights

Paramount Pictures Corp. and Mario Puzo’s heirs agreed to drop legal action that began when the movie studio sued estate of the author of “The Godfather” to prevent the publication of a sequel to the novel about a fictional Mafia family.

The parties voluntarily dismissed the lawsuit, according to a stipulation filed Dec. 20 in federal court in Manhattan. No details of any settlement were given.

“The case is settled and we’re very happy about it,” Bertram Fields, a lawyer for the Puzo estate with Los Angeles-based Greenberg Glusker Fields Claman & Machtinger LLP, said in a telephone interview. “Because of the confidentiality provisions, I can’t disclose the terms of the settlement.”

Paramount, a unit of Viacom Inc., sued Anthony Puzo, Mario’s son and the executor of his estate, in February to stop the publication of a new sequel to “The Godfather,” claiming it wasn’t authorized. The heirs countersued in April to cancel the contract between the studio and Mario Puzo.

U.S. District Judge Alison Nathan in September denied the Puzos’ bid to terminate the agreement.

Paramount said in its complaint that after Puzo died in 1999, the company agreed to allow Bertelsmann AG’s Random House to publish one Godfather sequel, “The Godfather Returns,” which came out in 2004. The estate published another novel, “The Godfather’s Revenge,” in 2006, without Paramount’s approval, the studio said. Paramount sued after the estate announced a plan to publish a third sequel, “The Family Corleone.”

Richard Kendall, a lawyer for Paramount, didn’t immediately return a message seeking comment on the dismissal.

The sequel, written by Ed Falco, was published in May by Grand Central Publishing, a unit of Paris-based Hachette Livre SA. The terms of an interim settlement reached earlier this year between Paramount and Puzo stated that proceeds from the book would be put in escrow pending the outcome of the litigation, according to court papers.

A notice was mailed to the U.S. Register of Copyrights to report the termination of the lawsuit, according to a court filing.

The first “Godfather” film came out in 1972 and won the Academy Awards for best picture and adapted screenplay, for which Puzo shared the credit. Francis Ford Coppola directed the three “Godfather” movies.

The case is Paramount Pictures v. Puzo, 12-01268, U.S. District Court, Southern District of New York (Manhattan).

For more copyright news, click here.

IP Moves

EFF Hires Daniel Nazer From Stanford’s CIS Fair Use Project

The Electronic Frontier Foundation hired Daniel Nazer as a staff attorney, the San Francisco-based digital rights advocacy group said in a statement.

His hiring is funded as part of a $250,000 donation from Dallas Mavericks owner Mark Cuban aimed at improvement of the U.S. patent system.

Nazer joins EFF from Stanford Law School’s Center for Internet and Society where he was a non-resident fellow at the Fair Use Project. Before that, he practiced IP law at San Francisco’s Keker & Van Nest LLP.

He has served as a judicial clerk to Justice Susan Kenny of the Federal Court of Australia and to Chief Judge William K. Sessions III of U.S. District Court for the District of Vermont.

Nazer has an undergraduate degree in philosophy from the University of Western Australia, a master’s degree in philosophy from Rutgers University, and a law degree from Yale Law School.

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