Dec. 6 (Bloomberg) -- The U.S. House of Representatives passed legislation that technology companies say could reduce the time they spend fighting some patent lawsuits.
The vote yesterday was 325-91, with 27 Republicans and 64 Democrats opposing the measure. The Senate has its own version of the legislation, which it may take up early next year.
The vote “gives us a huge amount of momentum,” House Judiciary Committee Chairman Bob Goodlatte, a Virginia Republican who sponsored the bill, said in an interview.
The measure would place limits on entities that buy patents in order to demand nuisance royalties from as many companies as possible. Sometimes disparaged as “trolls,” such firms filed 19 percent of all patent lawsuits from 2007 to 2011, according to the Government Accountability Office.
The measure is “a great step in the right direction,” said Michael Beckerman, chief executive officer of the Internet Association, whose members include Google Inc., Facebook Inc. and Yahoo! Inc. “There are so many abuses in the system that it needs to be addressed. It’s become an extortion game based on, ‘We know your legal costs are going to be high, so you’re going to settle with us.’”
Senate Judiciary Chairman Patrick Leahy, a Vermont Democrat, has introduced a different patent bill that may come up for a vote in 2014. The House and Senate measures would have to be merged before President Barack Obama could sign something into law.
Leahy’s committee is set to hold a hearing Dec. 17.
Horacio Gutierrez, Microsoft Corp.’s head of intellectual property, said the House legislation had “common-sense reforms to curb abusive patent litigation.”
Critics including the Innovation Alliance, whose members include Qualcomm Inc. and Dolby Laboratories Inc., said the measure was pushed through the House too quickly.
The debate centered on ways to curb litigation abuses while ensuring patent owners can protect their inventions from knockoff competition or unauthorized use. Companies that are routinely sued backed the bill while companies that generate revenue by licensing their patents opposed it.
The legislation would require patent owners to provide more information on their inventions and describe the infringement, and limits the amount of pretrial information that can be sought from accused patent violators.
The House bill is H.R. 3309. The Senate bill is S. 1720.
Damages Expert’s Testimony Excluded in Facebook Patent Case
In an infringement case brought against Facebook Inc. by a patent owner, a federal judge in Virginia excluded testimony about monetary damages by James E. Malackowski, chairman and chief executive officer of Ocean Tomo LLC.
Ocean Tomo is the company that premiered live public patent auctions. The Chicago-based company’s transactional division was acquired by London’s ICAP Plc in 2009.
Malackowski was hired by Rembrandt Social Media LLP, which sued Facebook in February, claiming that its patents 6,415,316 and 6,289,362 were infringed.
In a Dec. 30 order, U.S. District Judge T.S. Ellis III said both Malackowski’s expert damages report and testimony were to be excluded under a rule of federal court procedure and in light of a 1993 U.S. Supreme Court case relating to the admissibility of expert testimony.
Ellis said Malackowski had based his royalty base and rate on non-infringing features of the Facebook website. The judge ruled that the technology at issue represented only a small improvement on Facebook’s existing technology, and Rembrandt was entitled to a royalty based only on “the incremental value provided by the improvement.”
The case is Rembrandt Social Media LP v. Facebook Inc., 13-cv-00158, U.S. District Court, Eastern District of Virginia (Alexandria).
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Bayer’s Elevit Found Easily Confused With Eleviv, Newspaper Says
Bayer AG’s Bayer Healthcare persuaded the High Court of New Zealand to overturn the registration of a trademark by DBC Health New Zealand, the Fairfax New Zealand News reported.
The court said DBC’s registered trademarks for Eleviv, a nutritional supplement, could potentially be confused with the Elevit prenatal vitamin product, according to the News.
The court found the name similarity posed a potential risk to pregnant women, as the DBC product featured a warning against using the product when pregnant or breastfeeding, according to the News.
Bayer’s Elevit was approved in New Zealand for sale exclusively in pharmacies beginning in 2002, while Eleviv can be sold anywhere in the country, according to the news website.
Orange Successfully Challenges South African ‘Orangeworks’ Mark
Orange SA, France’s largest telephone company, convinced a South African court that permitting Account Works Software Ltd. to use “Orangeworks” infringed its trademarks, ITWeb reported.
South Africa’s Supreme Court of Appeal ruled that consumers would be confused if the software company was allowed to use that name, according to ITWeb.
The court said that while “orange” is an ordinary English word, it has no natural association with software, so Orange’s registration of the term in South Africa to be used with software made that mark distinctive, ITWeb reported.
Counsel for AccountWorks told ITWeb that anyone who uses the word or color orange in the information and communications technology area may be vulnerable to trademark claims by Orange.
Washington Clergy Send NFL a Letter Over ‘Redskins’ Mark
A group of 60 Washington clergy members sent a letter to the National Football League and Washington Redskins owner Daniel Snyder requesting that the team change its name.
The clergy said in the letter that the term “redskin” offends American Indians and others in the U.S.
“This word, defined in the dictionary as a slur, should not be publicly marketed and celebrated in America, which is built on the ideals of respect and inclusion,” they said.
Among the signatories are Alton B. Pollard III, dean of the Howard University School of Divinity; Keith Silver, president of the Washington chapter of the Southern Christian Leadership Conference; and Rabbi Michael Lerner, editor of Tikkun magazine.
The debate has also spawned attempts to cancel the team’s U.S. trademark. Snyder, paid a record $800 million in 1999 for the football club, has said repeatedly he won’t change the name.
Nepali Carpet Trade Group to Seek Name Registrations Abroad
The government of Nepal agreed to work with the Nepal Carpet Exporters Association to develop and register trademarks for carpets in the countries where they are sold, Nepal Republic Media’s Republica website reported.
The success of the Chyangra Pashmina trademark for pashmina woolen fabric inspired the Nepali carpet group to see to register trademarks, according to Republica.
Anup Malla, president of the group, told Republica trademarks will help establish Nepali carpets’ identity as high-quality products to compete with “low quality products from Indian and China” that he said are flooding the market.
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Sanrio Sues Over ‘Hello Kitty’ Copyright in Los Angeles
Sanrio Co., the Japanese company known for its “Hello Kitty” line of products, sued 13 defendants in U.S. court for copyright infringement.
The defendants, 10 of whom are unnamed and three named, are making and selling jewelry and other personal accessories that are knockoffs of Hello Kitty designs, according to the complaint filed Dec. 4 in federal court in Los Angeles. They made “substantially identical likenesses” of the designs for the Sanrio products and allegedly infringed the Japanese company’s trademarks, Sanrio said.
The company is seeking court orders barring further infringement, as well as the seizure and destruction of all allegedly infringing products and promotional materials. Sanrio also asked for money damages, litigation costs and attorney fees, and requested that the damages award be tripled to punish the defendants for their actions.
The case is Sanrio Inc. v. Blink & Blink Inc., 13-cv-008938, U.S. District Court, Central District of California (Los Angeles).
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Trade Secrets/Industrial Espionage
WPP’s Dispute With TiVo Over Research Units Gets Dec. 20 Hearing
The remaining elements in the patent-infringement and trade secrets case between U.K.-based WPP Plc’s Kantar market research unit and TiVo Inc.’s TRA unit are the subjects of a Dec. 20 hearing in Manhattan federal court.
U.S. District Judge Shira Scheindlin last month dismissed the patent and trade secrets claims in the case, which was filed in June 2011. Kantar initially sought a declaration that it didn’t infringe TRA’s 2010 patent 7,729,940, which covers a tool for analyzing the return on investment of advertising campaigns by matching multiple data sources.
TRA in turn accused Kantar of infringing the patent and of trade-secrets misappropriation. Kantar’s RapidView Retail product allegedly infringed the patent. Alviso, California-based TiVo acquired TRA in July 2012
Scheindlin said on Nov. 25 that Kantar didn’t infringe and the claim that TRA’s patent was invalid was therefore moot. She also ruled that TRA failed to produce evidence of protectable trade secrets or that Kantar used them.
The remaining elements of the case involve allegations of breach of contract and breach of fiduciary duty. Scheindlin said that at the Dec. 20 hearing, the parties should be prepared to discuss whether the remaining claims in the case should be remanded to state court.
The case is TNS Media Research LLC v. TRA Global Inc., 11-cv-04039, U.S. District Court, Southern District of New York (Manhattan).
Teresa Stanek Rea Returns to Crowell & Moring From USPTO
Crowell & Moring LLP said Teresa Stanek Rea, the former acting and deputy director of the U.S. Patent and Trademark Office, is coming back to the firm.
Rea, who was also acting and deputy undersecretary of commerce for intellectual property, will work in the IP practice group, the Washington-based firm said in a statement
She will serve as a director at the affiliated C&M International Ltd., an international trade and investment consulting firm.
Rea aided the patent office in the implementation of the America Invents Act, writing regulations putting in place some of the procedures mandated by the law. She also negotiated IP issues with foreign officials.
Before she was a lawyer, Rea was a licensed pharmacist. She has an undergraduate degree from the University of Michigan and a law degree from Wayne State University.
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