Every month I stumble across a number of items that catch my attention. That is why I started again publishing News & Notes. In order to try and segregate items of interest based on audience, News & Notes will be something of a catch-all column. I am resurrecting Patent Business, which will focus on those litigation, deals and licensing stories of interest. Obviously, this is not intended to be an exhaustive summary, but rather interesting items that might be worth knowing in order to keep your finger on the pulse of the industry.
Without further ado, here is Patent Business: Litigation, Deals & Licenses for September 2013. Please also see News & Notes for September 2013 and Pharma & Biotech News for September 2013.
Universal Electronics sues Peel Technologies over remote control patents
On September 23, 2013, Universal Electronics Inc. (UEI) (NASDAQ: UEIC) announced it has filed a lawsuit in the United States District Court in the state of California against Peel Technologies, Inc. (Peel), based in Mountain View, California, for patent infringement. UEI seeks a permanent injunction in addition to monetary damages against Peel.
UEI’s innovations relate to developing innovative control solutions for traditional remote controls, introducing such industry standard features as user-programmable macro keys, digit entry code setup, and code upgradability. UEI has also been an innovator in the smart device space. In early 2002, UEI, in partnership with HP, launched the first universal remote control app for hand-held smart devices.
UEI asserts in the lawsuit that Peel is infringing claims of the following five U.S. Patents:
- U.S. Patent No. 7,218,243, titled System and Method For Automatically Setting Up A Universal Remote Control;
- U.S. Patent No. 7,831,930, titled System and Method For Displaying A User Interface For A Remote Control Application;
- U.S. Patent No. 7,889,112, titled Dynamic Linking Of Codesets In Universal Remote Control Devices;
- U.S. Patent No. 7,589,642, titled Relaying Key Code Signals Through A Remote Control Device; and
- U.S. Patent No. 6,938,101, titled Hand Held Device Having A Browser Application.
Walker Digital Holdings completes merger with GlobalOptions Group
GlobalOptions Group, Inc. and Walker Digital Holdings, LLC, a wholly-owned subsidiary of Walker Digital, LLC (“Walker Digital”), have completed the previously announced merger of the two companies. The company will do business as Patent Properties, Inc., moving to change the corporate name as soon as possible.
The company’s patent portfolio includes 379 granted patents, 93 pending patent applications, intellectual property in development, a de-novo patent licensing business and 19 litigation matters. Patent Properties will pursue the previously filed litigations and expects to file additional patent infringement cases before the end of 2013.
For more on this story see: Walker Digital Merger Complete, More Patent Lawsuits Coming.
GigOptix and MACOM settle patent infringement and trade secret/employment disputes
On September 19, 2013, M/A-COM Technology Solutions Holdings, Inc. (NASDAQ: MTSI) (“MACOM”), a supplier of high performance RF, microwave, and millimeter wave products, and GigOptix, Inc. (NYSE MKT: GIG) (“GigOptix”), a supplier of advanced semiconductor and optical communications components, announced that they have agreed to a global settlement of all pending lawsuits between them.
These include: (1) the state court case filed by GigOptix against MACOM subsidiary Optomai, Inc., three former employees of GigOptix who founded Optomai, Vivek Rajgarhia, Vikas Manan and Stefano D’Agostino, and MACOM, in Santa Clara County, for alleged misappropriation of trade secrets and breach of contract, and (2) the federal court case filed by MACOM against GigOptix in the Northern District of California, for alleged patent infringement. The parties have agreed to file joint requests with the relevant courts to fully and finally dismiss both cases, with prejudice. MACOM has agreed to make a one-time settlement payment of $7.25 million to GigOptix concurrently with the filing of the dismissals. Neither party admits liability to the other, and each side is satisfied with the confidential settlement reached between the parties.
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E-commerce video technology at center of patent infringement lawsuit
Cinsay Inc., a Texas-based e-commerce video technology, recently filed a patent infringement lawsuit against Joyus Inc. and Brightcove Inc. in the United States District Court for the Northern District of Texas. The suit, Cinsay Inc. v. Joyus Inc. and Brightcove Inc., Case No. 3:13-CV-03628-L, was filed on September 10, 2013 and alleges infringement of U.S. Patent Nos. 8,312,486 and 8,533,753 for interactive Internet-based video applications.
In the lawsuit filed by Dallas-based law firm Munck Wilson Mandala, Cinsay accuses Joyus and Brightcove of infringing on Cinsay’s patented innovations surrounding e-commerce videos – sometimes referred to as “shoppable videos.” Cinsay’s technology enables anyone to sell products, display printable coupons, capture donations, and generate leads all inside its patented Smart Store™ technology.
Forbes named Cinsay one of “America’s Most Promising Companies” while eTail Conferences named Cinsay a “Rising Star” in innovation for 2012.
Nintendo prevails at ITC on Wii patent infringement complaint
On Sept. 12, 2013, Nintendo won a patent infringement case brought at the International Trade Commission by Creative Kingdoms. The commission found that Nintendo’s Wii and Wii U systems do not infringe Creative Kingdoms’ patents. The commission also found that Creative Kingdoms’ patents are invalid.
The latest decision by the Commission related to the May 7, 2013 remand ID finding of no violation of section 337 by the ALJ. On July 8, 2013, the Commission decided to review a variety of issues from the remand ID, including: (1) whether the accused products directly infringe the asserted claim of the ‘917 patent; (2) whether the independently sold Wii MotionPlus and Nunchuck accessories contributorily infringe the asserted claim of the ‘742 patent; (3) non-obviousness of the asserted claim of the ‘742 patent; and (4) whether the technical prong of the domestic industry requirement is met with respect to the ‘917 and ‘742 patents.
After examining the complete record, including the ALJ’s final ID, remand ID, and the submissions of the parties, the Commission affirmed, with some modifications, the ALJ’s finding of no violation of Section 337.
For more information see Nintendo prevails at ITC in Wii Case.
MGT Capital asserts newly granted patent in infringement lawsuit
MGT Capital Investments, Inc. (NYSE MKT: MGT) announced today that its majority owned subsidiary MGT Gaming, Inc. was recently granted U.S. Patent No. 8,500,554 (the “554 Patent”), directed to a gaming system in which a bonus game is played on an interactive display.
The Company also announced that it has filed an Amended Complaint with the U.S. District Court for the Southern District of Mississippi seeking to add allegations that defendants in that currently-pending patent infringement lawsuit, (Case 3:12-cv-00741-CWR-FKB), infringe the new granted ‘554 patent.
The accused products in this lawsuit include those identified under the trade names: PARADISE FISHING and AMAZON FISHING (manufactured and distributed by Aruze Gaming, and in use at casinos owned and operated by Caesars Entertainment, MGM Resorts and Penn National Gaming); PIRATE BATTLE and CLUE (manufactured and distributed by WMS Gaming, and in use at casinos owned and operated by MGM Resorts and Caesars Entertainment); and BATTLESHIP, STAR TREK BATTLE STATIONS, MONOPOLY BIGGER EVENT, and CASTLE KING (all manufactured and distributed by WMS Gaming).
Blonder Tongue prevails over K Tech on Summary Judgment
On September 5, 2013, Blonder Tongue Laboratories, Inc. (NYSE MKT:BDR) and its affiliate, R. L. Drake Holdings, LLC, announced that they had received a favorable ruling in the patent infringement lawsuit that had been brought against them this past year by K Tech Telecommunications, Inc. A California federal district court judge ruled in the Company’s favor on its motion for summary judgment, that three of K Tech’s patents relating to systems and methods for updating the channel information contained in digital television signals, U.S. Patent Nos. 6,785,903, 7,481,533 and 7,761,893 were invalid because they were rendered obvious by prior art.
U.S. District Judge R. Gary Klausner agreed with Blonder’s rgument that all of the patent claims K Tech had asserted were invalid by reason of the prior art of, among others, Zenith Electronics Corporation and DiviCom, Inc., both of which companies had offered for sale products capable of modifying PSIP data prior to the date of K Tech’s earliest patent priority date of April 5, 2000.
Blonder says they will be seeking payment from K Tech of its attorney fees and expenses incurred in defending the action. Of course, as with virtually all patent infringement decisions at the district court level we can almost certainly expect an appeal to the Federal Circuit.
OurPet’s files patent infringement lawsuit against Go Fetch
The OurPet’s Company (OTC BB: OPCO), a pet supply company, recently filed a patent infringement lawsuit in the U.S. District Court for the Northern District of Ohio against Go Fetch LLC (based in the U.S.) and Wazir Chand Handicrafts (based in India). In the lawsuit, OurPet’s alleges that Go Fetch LLC and Wazir Chand Handicrafts engaged in conduct that infringed on U.S. Patent No. 8,286,589, which covers pet feeder and water bowls. OurPet’s sells products covered by the ‘589 patent under the Durapet® label.
For more information see OurPet’s Company v. Wazir Chand Handicrafts et al, Case No. 1:13-cv-01701.
Freescale settles with Tessera
On August 27, 2013, Tessera Technologies, Inc. (NASDAQ:TSRA) announced its Tessera, Inc. subsidiary had reached a settlement with Freescale Semiconductor, Inc. In exchange for being released from the litigation, Freescale will make a payment to Tessera, Inc.
“We are pleased to have settled this matter with Freescale,” said Jim MacDonald, executive vice president, intellectual property and business development, Tessera Intellectual Property Corp. “We believe this settlement reflects well on the strength of our intellectual property, as well as our commitment to protecting our innovations and intellectual property.”
The companies did not disclosed the full terms and conditions of the settlement agreement. Tessera, Inc. agreed to dismiss its claims against Freescale relating to Tessera, Inc.’s patent infringement action pending in the United States District Court, Northern District of California. Tessera will not make an adjustment to its third quarter of 2013 financial guidance given on July 31, 2013.
Pharma & Biotech Litigation
There were several pharma/biotech specific litigation/deal stories of interest in September 2013. Please see Pharma & Biotech News for September 2013, which discusses:
- Mark Lemley’s firm files DJ Action against Myriad
- Promise not to infringe insufficient in ANDA Litigation
- Forest Laboratories sues over SAVELLA® generics
- Teva Pharmaceutical scores patent victory over Mylan on AZILECT®
- Avanir settles ANDA litigation with Actavis over NUEDEXTA
- Mylan settles with FTC over Agila Acquisition from Strides