IV, Philip Morris, BT Group, Evonik: Intellectual Property
Intellectual Ventures Management LLC, the patent-licensing firm that filed three patent- infringement suits against technology companies in December, has succeeded in getting counsel for one of the companies disqualified from the case.
According to a court order filed June 23, Palo Alto, California’s Wilson Sonsini Goodrich & Rosati PC was disqualified from representing Check Point Software Technologies Ltd. (CHKP) of Tel Aviv, Israel. Check Point was accused of infringing IV patents related to computer security.
In his June 23 order, U.S. District Judge Leonard P. Stark didn’t disclose the reasons for the disqualification. He did write a separate opinion released under seal. He said that after both parties have a chance to review that opinion, they are to submit a single jointly proposed version of the opinion for him to review.
After this, he said he will file a version of his opinion that may be viewed by the public.
Bellevue, Washington-based Intellectual Ventures’ argument on its motion to disqualify Wilson Sonsini is presently also under seal in the court file.
Stark also denied Check Point’s motion to have the case transferred to federal court in northern California. He said in a June 22 order that Check Point failed to present a compelling argument for relocating the case.
The case is Intellectual Ventures LLC v. Check Point Software Technologies Inc., 1:10-cv-01067-LPS, U.S. District Court, District of Delaware (Wilmington).
Europewide Patent Moves Closer After Getting EU States’ Backing
Cheaper patent protection for companies in the European Union moved one step closer with the approval of draft plans for a Europewide patent system in 25 of the EU’s 27 member nations.
Ministers from all the EU nations, except Italy and Spain, agreed on the “shape and form” and the translation system of Europe’s future unitary patent system during a meeting in Luxembourg yesterday. The plans still need the backing of EU lawmakers at the European Parliament. The European Commission, which put forward two draft proposals for the patent system earlier this year, said the patent is now “within reach.”
“If we maintain our present momentum and cooperative spirit, a unitary patent in Europe could be a reality within the next two years,” EU Internal Markets Commissioner Michel Barnier said in an e-mailed statement.
Spain and Italy earlier this year opted out of the plans because they objected to the planned language system. The two countries can choose to join at a later date.
U.K. Prime Minister David Cameron said China should respect intellectual property and patents as trade between both countries increases.
“It’s absolutely essential that intellectual property is respected and that patents are respected,” Cameron said at a joint press conference in London following talks with Chinese Premier Wen Jiabao.
Cameron said China and the U.K. will organize a symposium to explore the protection of intellectual property rights.
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Philip Morris Says Australia Plain-Pack Law Violates Treaty
Philip Morris International Inc. (PM), the world’s largest publicly traded tobacco company, said an Australian proposal requiring cigarettes to be sold in plain packages violates a treaty with Hong Kong and may cause billions of dollars in damages.
The maker of Marlboro and Peter Jackson cigarettes said it served the government with a notice of claim stating its intention to pursue its case in international arbitration. Hong Kong has a 1994 treaty with Australia prohibiting the forced removal of trademarks, Anne Edwards, a Philip Morris spokeswoman, said in a phone interview yesterday.
The Australian proposal is the first in the world to ban all logos and different colorings on cigarette packages. New Zealand, Canada and the U.K. had considered the move and didn’t put it in place because of concerns it would be illegal, British American Tobacco Plc (BATS) said in April. British American Tobacco said it’s also considering its legal options.
Under the Australian constitution, parliament can’t make laws under which the government would acquire property without providing adequate compensation.
“It is property,” said Wayne Condon, a partner at Griffith Hack who specializes in intellectual property law. He was referring to the tobacco companies’ logos and trademarks that are used on cigarette packages. “The law defines trademarks as property.”
Philip Morris’s Asian unit is based in Hong Kong and owns Philip Morris Ltd., the Australian unit.
Australia has already banned the public display of tobacco products in most retail outlets. The government plans to outlaw logos on cigarette packs and force them to be sold in plain dark olive packaging, carrying health warnings instead of company logos. Cigarette brand names will appear on the packages in the same size and style of printing. The legislation, if passed by parliament, will come into force on Jan. 1.
Imperial Tobacco Australia Ltd. is backing a television advertising campaign and titled “Stop This Nanny State,” urging Australians to oppose the plain-packaging law.
Australian Prime Minister Julia Gillard said she won’t be intimidated by the tobacco companies.
“We don’t believe that taking that action is in breach of any of our international obligations,” Health Minister Nicola Roxon told Sky News yesterday.
The notice served by Philip Morris begins a mandatory period of negotiations to resolve the dispute, the company said. If an agreement isn’t reached in three months, the tobacco company plans to take the dispute to arbitration under the Arbitration Rules of the United Nations Commission on International Trade Law.
British American Tobacco has won a preliminary ruling in a separate case in the Australian state of Victoria over the covering up of labels with health warnings.
British American Tobacco is seeking access to the legal advice the government received. The tobacco company failed in forcing the government to release the documents through a Freedom of Information request.
A federal appeals court has agreed to hear the case on Aug. 3 in Melbourne.
George Williams, a constitutional law professor at the University of New South Wales in Sydney said Australia’s top court has never addressed this particular question.
“The tobacco companies have a hard road ahead,” Williams said in a phone interview yesterday. “They’re quite likely to lose.”
Toys ‘R’ Us Prevails in Trademark Dispute With Tobacco Seller
Toys “R” Us Inc., the world’s biggest toy retailer, said it has won a trademark-infringement suit against a Pennsylvania- based tobacco retailer.
The Wayne, New Jersey-based toy seller sued Smokes R Us of PA Corp. for trademark infringement in federal court in Harrisburg, Pennsylvania, in April.
Toys “R” Us said it found most objectionable that Smokes R Us sells tobacco, given the fact that “children are particularly susceptible to marketing messages.” It noted that in 1998, as part of a settlement agreement entered into by U.S. tobacco companies, “they were obligated not to target youth.”
According to the complaint, Smokes R Us has also reportedly sold a product known as “herbal incense” or “synthetic marijuana.” The complaint quotes a story that appeared in the Republican Herald newspaper Aug. 7, identifying Smokes R Us as a store that “sells the herbal incense in the open, alongside tobacco products and pipes.”
One of the documents filed with the complaint was a Feb. 5 news story from the Wayne Independent identifying Smokes R Us as a source of products labeled as “bath salts” that are smoked or inhaled by those seeking a high comparable to that offered by cocaine.
Under the terms of the court order, filed June 20 and to which the tobacco company has consented, Smokes R Us will quit using that term and the smokesrus.com domain name. The company will also abandon a pending trademark application for the “Smokes R Us” trademark, and will transfer the smokesrus.com domain name to the toy company.
It will also destroy any promotional material containing that name, and will change the name of the company.
Financial details of the settlement were undisclosed.
The case is Toys R Us Inc. v. Smokes R Us of PA Corp., 1:11-cv-00820-JEJ, U.S. District Court, Middle District of Pennsylvania (Harrisburg).
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MPAA Asks U.K. Court to Order BT to Block Access to Newzbin2
The Motion Picture Association of America, the Hollywood film industry’s Washington-based trade group, is asking the U.K.’s high court to order BT Group Plc (BT/A)’s Internet service unit to block access to a website they say distributes pirated films, the U.K’s Guardian newspaper reported.
The film group wants access blocked to Newzbin2, which they say is providing links used to movies and music without authorization, according to the Guardian.
If the court accedes to the industry group’s demand, it will be the first time access to a website will be blocked under the authority of the U.K.’s Copyright Design and Patents Act, the newspaper reported.
Spyro Markensinis, the vice president of legal affairs for London-based Momentum Pictures, told the Guardian that Newzbin2 was offering 75 different -- and unauthorized -- versions of Momentum’s Academy Award-winning film “The King’s Speech.”
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Trade Secrets/Industrial Espionage
Evonik Embraces Low-Tech Barrier to Mobile Phone Espionage
Evonik Industries AG has come up with a low-tech solution to potential industrial espionage, Agence France-Presse reported.
The Essen, Germany-based chemical company requires its managers to keep their mobile phones in metal cookie tins during meetings, according to AFP.
Alexandra Boy, an Evonik spokeswoman, said the company’s been told that people are able to eavesdrop even on mobile phones than have been turned off, AFP reported.
The cookie tins block electromagnetic radiation, thus preventing unauthorized access to both phone calls and e-mails transmitted through the mobile devices, according to AFP.
University Technology Transfer
Qteros, UMass, Amherst Say Ethanol-Production Patent Issued
Qteros Inc., the exclusive licensee to technology developed at the University of Massachusetts, Amherst, said the school has received a new U.S. patent related to an ethanol-producing microorganism.
In a joint statement, Qteros and the university said the school received patent 7,943,363 B2, which covers the genetic constructs of the particular organism, Clostridium phytofermentans.
They said the Japanese Patent Office has also said it will issue a patent on a system and method of producing biofuel by the action of the organism on biomass.
The organism covered by the patents produces “virtually all” the enzymes required to produce ethanol from biomass, according to the statement.
First named inventor on the patent is Jeffrey Blanchard, an associate professor in the school’s Department of Microbiology.
Application for the patent was filed in July 2009 with the assistance of Milstein Zhang & Wu LLC of Newton, Massachusetts.
Wilson Sonsini Adds Douglas Carsten to Patent Litigation Group
Carsten, a litigator, joins from Milwaukee’s Foley & Lardner LLP. He has also previously practiced at the former Gray Cary Ware & Friedenrich (now DLA Piper LLP of Chicago), and at Los Angeles-based Irell & Manella LLP.
He has represented clients in the pharmaceutical and life sciences industries, including drug companies involved in Hatch- Waxman patent litigation.
Carsten has an undergraduate degree in chemistry and English from the State University of New York at Stony Brook, a master’s degree in chemistry from Harvard University and a law degree from Georgetown University.
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