IV and Google mistrial, Cisco/IBM patent licensing deal, Red Bull locks horns over trade mark - the week in IP

After a day of jury deliberations, a Delaware federal judge declared a mistrial in a patent infringement suit brought by Intellectual Ventures against Google-owned Motorola Mobility because the jurors could not come to a unanimous verdict. The dispute involved patents covering smartphone technologies including Google Play.

US District Judge Sue Robinson declared the mistrial nearly two weeks after the trial began.

"Mistrials are an occasional fact of life, and it is disappointing (for us, and probably also for Motorola) that the jury could not reach a unanimous verdict. But we are looking ahead to the retrial on these patents and also to our two other upcoming trials with Motorola Mobility Inc later this year," said Melissa Finocchio, chief litigation counsel for Intellectual Ventures, in a statement.

Two additional patents in Intellectual Ventures’ case against Motorola are scheduled to go on trial on or after April 7. A separate patent infringement complaint against Motorola is scheduled to go on trial in a Florida district court on or after November 17.

The Court of Justice of the EU issued a typically Delphic judgment this week in a dispute between energy drink Red Bull and a Dutch company using the sign The Bulldog, including for energy drinks. The Court was answering a question from the Netherlands regarding the interpretation of the EU Trade Marks Directive.

In response, it said that Article 5(2) of the Directive means that trade mark owners must tolerate third-party use of similar signs on identical products if the use pre-dates the mark and is in good faith. This means taking account of: the acceptance and reputation of the sign among the relevant public; the “degree of proximity” between the goods/services on which it is used and those of the trade mark; and “the economic and commercial significance” of the use.

The Dutch Hoge Raad will now have to try to make sense of those directions in deciding whether the famously forceful Red Bull can stop a competitor from using a sign incorporating the word Bull.

In what some observers believe could be part of an increasing trend, Samsung this week announced a patent cross-licensing agreement with Cisco. The deal gives both companies access to each other’s patent portfolios, covering existing patents and those filed over the next 10 years.

The firms said the agreement is part of a push to reverse the trend of innovation being stifled by an overly-litigious environment. Samsung announced a similar deal with Google in January. Also this week Twitter entered into a cross-licensing deal with IBM as part of a deal to to buy 900 patents from the firm. Managing IP’s cover story in its February issue noted that technology companies are increasingly turning to patent licensing as a strategy.

Cisco’s busy week did not end with the Samsung deal, however. It announced a $2.7 million settlement with patent troll Innovatio IP Ventures. The deal works out at 3.2 cents for each of the 85 million devices that Innovatio is licensing. Cisco triumphantly declared this a victory in the war against trolls and said it highlighted the need for patent reform.

“We spent $13 million on this litigation, not including the $2.7 million settlement,” said Mark Chandler (right), general counsel at Cisco, in a blog. “But that expenditure would not have been necessary if Innovatio had met its obligations to license on reasonable and non-discriminatory terms, and had come to Cisco seeking a reasonable licence first rather than targeting our customers and those of other manufacturers.”

Further to this week’s post on the trade mark litigation craze sweeping the UK comes another decision on dilution and passing off, this time concerning the Glee TV programme.

20^th Century Fox, maker of Glee, was sued by Comic Enterprises, which had registered The Glee Club in 1999. The case was transferred to the High Court after Fox successfully argued that it was too big an undertaking for the PCC (now IPEC).

According to a summary by Wragge & Co (which acted for Comic Enterprises), Deputy Judge Roger Wyand QC found the mark was valid, and that there was trade mark infringement by dilution and tarnishment. In particular, he found what he called “wrong-way-round confusion” as the public believed The Glee Club was associated with the Glee programme.

This, it should be said, was based on evidence from members of the public that they had confused The Glee Club with Glee. It’s not yet clear whether Wyand himself had visited The Glee Club, or indeed if he is a fan of the TV programme.

Oregon may turn up the heat on patent trolls by passing a bill to clamp down on patent trolls targeting the state’s individuals and businesses. The Unlawful Trade Practices Act is up for a vote in the state’s Senate Judiciary Committee on February 12. If passed, Oregon would join Vermont in having legislation on the books to take on patent trolls. New York’s attorney general also in January announced a settlement with MPHJ. Many other states are speaking out against trolls and considering action.

The Washington Post reported that, according to a new study, patent trolls filed 18% more lawsuits in 2013 than in 2012, and sued 11% more companies.

In addition, this week Managing IP’s Twitter account passed 10,000 followers.

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