Alcatel-Lucent, Sherwin-Williams: Intellectual Property

May 16 (Bloomberg) -- Alcatel-Lucent SA lost its appeals court bid to revive patent-infringement claims against Inc. and Newegg Inc. over online shopping in an effort to increase its royalties. and Newegg won a jury verdict in 2011 that they didn’t infringe three Alcatel-Lucent patents and that one of the patents was invalid. The U.S. Court of Appeals for the Federal Circuit in Washington, without issuing a formal opinion, upheld the decision in a notice posted on the court’s website.

The appeal focused on patent 5,649,131, which covers a way to exchange information with multiple users. That patent was found to be invalid.

The decision could be a boon to other retailers, including Barnes & Noble Inc., which is challenging this and other e-commerce patents owned by Paris-based Alcatel-Lucent. Companies including Inc. and Netflix Inc. settled before the 2011 trial.

In the 2009 case filed in federal court in Tyler, Texas, Alcatel-Lucent was seeking $6 million from Salt Lake City-based, a discount retailer, and $12.4 million from closely held Newegg, which sells consumer electronics and computers.

This is the second time Newegg, based in City of Industry, California, won a patent-infringement case that has helped other Internet retailers. In January, the Federal Circuit threw out a $2.5 million verdict Newegg lost and invalidated patents owned by Soverain Software.

The ruling benefited dozens of companies that had also been sued by Soverain, including Oracle Corp., International Business Machines Corp., EBay Inc. and Macy’s Inc. Reines, who represented Newegg in that case as well, said the victory become something of a marketing tool for the company with its tech-savvy customers.

“I don’t think Newegg took a principled stand for anything other than taking a principled stand, but it’s had a wonderful effect on their business,” he said.

The new case is Alcatel-Lucent USA Inc. v. Inc., 12-1629, U.S. Court of Appeals for the Federal Circuit (Washington). The lower court case is Alcatel-Lucent USA Inc. v. Inc., 09-cv-00422, U.S. District Court, Eastern District of Texas (Tyler).

U.S. Ethernet Innovations Seeks Sanctions Against HP, Counsel

A patent holder that sued more than 10 computer companies in a patent-infringement case is now asking for sanctions against Hewlett-Packard Corp. and its outside counsel.

The suit, which was filed in October 2009, accused HP and other companies of infringing 66 patents related to Ethernet technology. The plaintiff is U.S. Ethernet Innovations LLC of Tyler, Texas, which acquired the patents from now-defunct 3Com Corp.

USEI accuses HHP and its outside law firms of paying 3Com’s former director of intellectual property licensing in order to persuade him to “switch sides” in the dispute. At issue is the testimony of Richard A. Baker Jr., who, when he was with 3Com, testified on his company’s behalf in a suit against Realtec Corp. in which some of the same patents were asserted.

According to court papers, that suit resulted in a post-verdict settlement of $70 million.

USEI claims that outside counsel, Pittsburgh’s K&L Gates LLP and Boston’s Fish & Richardson PC entered into a consulting agreement with Baker. Under terms of the alleged agreement, Baker was barred from communicating with USEI and its counsel, and payment to the former 3Com employee was to be conditioned on his testimony for Palo Alto, California’s HP.

Additionally, according to HP’s sanctions motion, HP has entered into an agreement with Baker, indemnifying him for any claims brought against him.

The patent holder asked the court to find that communications between Baker and HP and its lawyers aren’t protected by privilege and to require the production of all correspondence related to their meetings.

The company also asked for an order requiring production of all documents Baker may have provided to HP, and for permission to re-depose Baker on issued relating to his communications with HP.

A bar on HP’s use of any testimony of Baker’s in support of any claim or defense is also sought.

E-mails seeking comment sent to David T. McDonald, leader of K&L Gates’ IP practice, and to David J. Healey from Boston’s Fish & Richardson PC didn’t receive an immediate response. Hewlett-Packard said the USEI motion is “without substance,” Sara Pompei, a company spokeswoman, said in an e-mail.

The case is U.S. Ethernet Innovations LLC v. Acer Inc., 4:10-cv-03724-CW, U.S. District Court, Northern District of California (Oakland). For more patent news, click here.


Sherwin-Williams Sued Over ‘TuffWall’ Trademark Application

Sherwin-Williams Co., the 147-year-old paint manufacturer and seller, was sued for trademark infringement by a Mississippi-based maker of ceramic coatings.

According to the complaint filed May 13 in federal court in Hattiesburg, Mississippi, Tuff-Wall Inc. had discussions with the paint maker in 2008 over possibly placing its products in the Sherwin-Williams stores or being purchased by the larger company.

Sherwin-Williams then filed an application with the U.S. Patent and Trademark Office to register “TuffWall” as a trademark. In January, the paint company said in a statement that it would be introducing a “TuffWall” line of paint, according to the complaint.

The Mississippi company said it began receiving inquiries from customers about whether Tuff-Wall was associated with Sherwin-Williams’s new paint product. Further, Tuff-Wall said, an Internet search for “TuffWall” brings up hits for both Tuff-Wall and Sherwin-Williams.

Tuff-Wall claims that its intellectual property is being used by Sherwin-Williams “to advertise the same category of products to the same class of consumers.” Sherwin-Williams is accused of infringing “in willful, wanton, or malicious disregard of Tuff-Wall’s intellectual property rights.”

The company asked the court to order Sherwin-Williams to halt the allegedly infringing activity, and for awards of money damages, litigation costs and attorney fees. Tuff-Wall asked that damages be tripled to punish the paint company for its actions.

Additionally, Tuff-Wall asked for cancellation of Sherwin-William’s “TuffWall” trademark application and an award of all of the paint company’s profits attributable to the alleged infringement.

Cleveland-based Sherwin-Williams has no comment on the suit, company spokesman Mike Conway said in an e-mail yesterday.

The case is Tuff-Wall Inc. v. Sherwin-Williams Co., 2:13-cv-00999-KS-MTP, U.S. District Court, Southern District of Mississippi (Hattiesburg).

Shaq Seeks to Register ‘Shaqfighter’ Mark for Electronic Games

Shaquille O’Neal, the former National Basketball Association star who received a doctorate in education last year, has applied to register “Shaqfighter” as a trademark, according to the database of the U.S. Patent and Trademark Office.

Four applications were filed May 8 to register the term for uses that include entertainment services, electronic and video games, trading cards, downloadable ring tones and software for electronic games.

His June 2011 retirement from professional basketball notwithstanding, O’Neal still has a number of endorsement deals, including a re-issue -- announced in February -- of the Shaq Attaq and Shaqnosis shoes made by Adidas AG’s Reebok unit.

His website offers a number of specialty items bearing his name or slogans associated with him during his playing career, including his “Dunkman” mark that he registered as a U.S. trademark in January 2005. According to the patent office, he registered “Shaq” as a trademark in March 1998.

Sony Applies to Register ‘Greatness Awaits’ for Computer Games

Sony Corp., the maker of the PlayStation game consoles, filed an application to register “Greatness Awaits” as a U.S. trademark.

According to the application filed with the U.S. Patent and Trademark Office May 9, Tokyo-based Sony plans to use the mark with computer games and the provision of online computer games.

The SiliconEra website, which follows the computer-game industry, reported it has seen a leaked script for a future Sony PlayStation 4 commercial in which the phrase is used. According to the website, the forthcoming commercial ends with “Who are you to deny greatness? If you would deny it to yourself, you deny it to the entire world.”

For more trademark news, click here.


Aereo Asks Judge to Dismiss TV Networks’ Copyright Lawsuit

Aereo Inc., the Barry Diller-backed online TV service, asked a federal judge to dismiss copyright infringement claims by the broadcast TV networks, which failed to persuade an appeals court to shut down its operation.

Aereo requested judgment without a trial from U.S. District Judge Alison Nathan in New York May 14. The company said that the federal appeals court ruled that the service didn’t violate the networks’ right to public performance of its programming, which requires a license.

Broadcasters including Walt Disney Co.’s ABC, Comcast Corp.’s NBC and CBS Corp. unsuccessfully petitioned the U.S. Court of Appeals in New York to overturn Nathan’s order denying a preliminary injunction that would have put New York-based Aereo out of business.

The networks sued Aereo in March 2012, claiming that it infringed copyrights by capturing their over-the-air signals and by retransmitting the programming to subscribers on computers and smartphones. Aereo’s transmissions are public performances and require licenses, they said. Its service would devalue their programming and cut viewership, jeopardizing revenue from advertisers and pay-TV providers, according to the networks.

Last week Aereo sued CBS to prevent the network from attempting to shut down the service in cities other than New York. Since the appeals court ruling on April 1, Aereo announced plans to expand its service to Boston and Atlanta.

The TV networks have petitioned the full U.S. Court of Appeals for the Second Circuit to review the decision last month by two of three judges who heard arguments in the case.

The cases are American Broadcasting Cos. v. Aereo, 1:12-cv-01540, and WNET v. Aereo, 1:12-cv-01543, U.S. District Court, Southern District of New York (Manhattan).

For more copyright news, click here.

Trade Secrets/Industrial Espionage

Ex-GM Engineer, Husband File Appeals in Hybrid Trade-Secret Case

A former General Motors Co. engineer and her husband have filed an appeal of their convictions in a trade-secret case related to hybrid technology.

Notices of appeal to the U.S. Court of Appeals in Cincinnati were filed May 10 by both Shanshan Du, and her husband Yu Qin.

Qin was sentenced May 1 to three years in prison for stealing hybrid technology trade secrets from the carmaker to help develop vehicles in China. His wife, who was accused of copying GM’s private information on the motor control of hybrids and providing documents to her husband, was given a year and a day in prison.

Qin was convicted in November of three counts of trade secrets theft, three of wire fraud and one of obstruction of justice. Du was convicted on three trade-secret counts.

The secrets at issue were worth more than $40 million to General Motors, prosecutors said in a presentencing memorandum. The U.S. asked Battani to sentence Qin and Du to as long as 10 years and a month in prison.

The defendants, who pleaded not guilty, said the information didn’t consist of trade secrets, wasn’t stolen and was useless for other companies. They sought probation.

The lower court case is U.S. v. Qin, 10-cr-20454, U.S. District Court, Eastern District of Michigan (Detroit). The appeal is USA v. Shanshan Du, 13-1606, U.S. Court of Appeals for the Sixth Circuit (Cincinnati).

To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at

To contact the editor responsible for this story: Michael Hytha at

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