Classified Patents, Nintendo, Amazon: Intellectual Property

A Maryland inventor has asked a court to clarify whether his patent applications are classified.

Frank Joseph Trunk III of Gaithersburg, Maryland, sued in federal court in Washington, saying he filed patent applications in the area of physics and material physics beginning in 1994. The applications were related to engineering design, “both civil and military,” he said in court papers.

Beginning in January 2000, he said, his applications were made subject to a secrecy order on aircraft and ship stealth technology, submarine stealth technology and nuclear-weapon design. Trunk said he had never been issued a security clearance nor had he ever been granted contractor status that would enable him to get a security clearance.

As a result, he claimed, he was placed under the threat of possible criminal violations for possession of classified information without a security clearance. In his complaint, Trunk said his various attempts over the years to get clarification of his patent applications’ status have brought him contradictory responses. As a result, Trunk said, he has had to forgo possible consulting arrangements with NASA and its contractors because he believes he cannot discuss or disclose the information in his applications.

He asked the court to rule on whether his applications are still classified or if they have been declassified, whether property declassification procedures have been followed and if he is authorized to have access to that information.

Trunk also is seeking a list of agencies that consider the information still classified and a statement of the conditions under which the information may be disclosed.

When he filed his complaint Dec. 8, he asked that the entire case be sealed. The court rejected that request, saying Trunk failed to provide support for his motion to seal “as it is unclear whether the government ever classified the patent applications to begin with.” The court ordered the Trunk’s complaint and the entire case be unsealed.

According to the database of the U.S. Patent and Trademark Office, there is one published patent application -- 20050032029 -- with a Frank J. Trunk listed as the inventor. The application covers a method of solving engineering design problems related to stress, strain and deformation of viscolastic materials, those having viscous and elastic properties. It was submitted in July 2001 and not published until February 2005. It lists an address in Houston for the inventor.

Gary Hnath of Chicago’s Mayer Brown LLP, counsel for Trunk, said in an e-mail this application was originally classified and his client is seeking clarification on whether it has been properly unclassified.

The case is Trunk v. Mabus, 1:14-cv-02139, U.S. District Court, District of Columbia (Washington).

Nintendo Wins Dismissal of Pointing-System Patent Dispute

Nintendo Co. Ltd., the Japanese games maker, persuaded a federal court in Seattle to dismiss an infringement suit brought by a Texas patent owner.

Ultimatepointer LLC of Houston sued in 2011, claiming that Kyoto-based Nintendo infringed patent 7,746,321, which covered a pointing system used in a computer application.

In a Dec. 22 ruling, U.S. District Judge Robert S. Lasnik said Nintendo’s Wii remote control device does not operate in the way described in the patent at issue. He said Ultimatepointer failed to present any evidence that the Wii remote is a “direct pointing device” as defined by the patent.

The case is Ultimatepointer LLC v. Nintendo Co Ltd., 2:14-cv-00865, U.S. District Court, Western District of Washington (Seattle).

For more patent news, click here.

Trademark

New Balance Seeks Declaration of Non-Infringement of Shoe Marks

New Balance Athletic Shoe Inc. sued asking a Massachusetts federal court to declare it isn’t infringing trademarks belonging to Nike Inc.’s Converse unit.

The suit comes in the wake of Nike’s suits in October against Wal-Mart Stores Inc. and Hennes & Mauritz AB, along with other retailers and shoe importers, accusing them of selling knockoffs of its Chuck Taylor All-Star sneakers.

The named retailers sell shoes that are “confusingly similar imitations” of the trademarked All-Star shoes that date back to 1917, Converse said in separate complaints filed in federal court in Brooklyn, New York.

The distinctive high-top sneakers were renamed in 1934 for Chuck Taylor, a Converse salesman and basketball player, according to court filings. Knockoffs weren’t prevalent in the past, but since 2008 the company has filed more than 180 cease-and-desist letters for alleged infringement of the shoes, according to a company statement.

New Balance, which was not named in the Nike suits, said in its complaint that its PF Flyers shoes compete directly with the Converse Chuck Taylor All Star shoes, “just as they had historically for many decades.”

No issue of confusion between the two has arisen in the past, New Balance said, also arguing that many of the features that Nike claimed in its suit are infringed are common in a wide range of athletic shoes.

In addition to seeking a declaration of non-infringement, New Balance asked that the trademark registration covering the disputed features of the shoes be canceled, and for awards of attorney fees and litigation costs.

The case is New Balance Athletic Shoe Inc. v. Converse Inc., 1:14-cv-014715, U.S. District Court, District of Massachusetts (Boston). The earlier cases are Converse Inc. v. Wal-Mart Stores Inc., 14-cv-5978, and Converse Inc. v. H&M Hennes & Mauritz LP, 14-cv-5985, U.S. District Court, Eastern District of New York (Brooklyn).

For more trademark news, click here.

Photographers Claim Amazon Sells Infringing IPod cases

Amazon.com Inc., the world’s largest online retailer, has been criticized by several news photographers for selling iPad and iPhone cases that use the photographers’ work without permission, the U.K.’s Daily Mail reported.

According to the newspaper, some of the images are taken from news photos of disasters and show such things as a child dead of Ebola and the bodies of Malaysia Airlines Flight 17’s passengers who perished in the July 17 crash in Ukraine.

Seattle-based Amazon responded to the photographers’ complaints by telling them that copyright enforcement issues should be taken up with the manufacturers and the third-party vendors who listed the cases on the retailer’s website, the Daily Mail reported.

For copyright news, click here.

Trade Secrets/Industrial Espionage

Patent Office to Present Symposium on Trade Secret Issues

The U.S. Patent and Trademark Office is presenting its first Trade Secret Symposium at its offices in Alexandria, Virginia, according to a patent office statement.

The event, to be held Jan. 8, will feature presentations from representatives of academic, government, legal practice and industry on trade secret issues.

Among topics to be discussed are legislative proposals aimed at trade-secret protection, the intersection between trade secrets and patents, the challenges of estimating losses due to trade-secret theft, trade-secret issues in civil litigation, and international issues relating to trade secrets.

The symposium will begin at 9 a.m., with the agenda to be available one week before the event on the patent office website. Attendance is free.

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