Motorola

Subscribe to Motorola via RSS

Memorylink Corp. v. Motorola, Inc., No. 08 C 3301, Slip Op. (N.D. Ill. Oct. 15, 2009) (Hibbler, J.)
Judge Hibbler granted in part plaintiff Memorylink’s motion for reconsideration of the Court’s earlier opinion dismissing seventeen of Memorylink’s nineteen claims.
Correction of Inventorship
The Court previously held that Memorylink pled itself out of court because its complaint indicated that Memorylink was silent when Motorola gave Memorylink the opportunity to object to inventorship of the patents. But upon reconsideration, the Court reversed its decision for two reasons. First, the pleadings did not show whether Memorylink reviewed or approved the patent application. Second, the patent statute allowed for correction based upon mistake. It was possible Memorylink reviewed the application; but made a mistake regarding inventorship.
Statutes of Limitation
The Court held that it was correct in dismissing Memorylink’s claim based upon Motorola’s legal representation of Memorylink because Memorylink knew of its claims prior to the legal representation. One dismissed claim, however, was not based upon the legal representation. The Court treated Memorylink’s claim that the assignment at issue was void as a fraud claim. But the Court held that the claim sounded in contract, not fraud. Because the contract statute of limitation had not run, that claim was reinstated.
Patent Infringement
Because Memorylink’s contract claim could void the patent assignment, the Court reinstituted the related patent infringement claims which had been dismissed upon the basis that as a joint owner of the patents Motorola could not be liable for infringement. In the event that the assignment is held void, Motorola could be liable for infringement.
Unjust Enrichment
Motorola’s agreement that the memoranda of understanding at issue in this claim did not create any legal obligations did not change the Court’s determination that they created relevant legal obligations.
…
Continue Reading Possible Mistake Allows Correction of Inventorship Claim to Survive

Global Patent Holdings, LLC v. Green Bay Packers, Inc., No. 00 C 4623, Slip Op. (N.D. Ill. Apr. 23, 2008) (Kocoras, J.).
Judge Kocoras reassigned a related case consolidating it with this case and stayed the patent infringement cases pending a second reexamination proceeding. New defendant CDW argued that reassignment of the second case pursuant to Local Rule 40.4 was not appropriate because the first case, which was dismissed without prejudice in light of the first reexam, was filed by TechSearch LLC, instead of the current plaintiff Global Patent Holdings (“GPH”). But original plaintiff TechSearch reopened the case before moving to substitute GPH, the current assignee of the patent in suit and TechSearch’s parent, as plaintiff. Because TechSearch reopened the case, the first case retained its first-filed status. The fact that TechSearch and GPH were no longer related entities when the case was reopened was not relevant.
The Court also held that the two cases were related because both accused defendants’ websites of infringing the patent because they downloaded or induced others to download JPEG and other files.
Finally, reassignment benefited the judicial economy. Neither case had begun significant discovery, so neither would be delayed. Additionally, consolidation would allow one judge to hear the summary judgment motions, which were expected to be numerous, that would apply equally to all parties. The Court, therefore, reassigned the related case to itself.
The Court also stayed the cases pending the reexam. The first reexam resulted in cancellation of each of the original sixteen claims and the issuance of a single, new claim. GPH argued that a second reexam was unlikely to yield new rejections because the patent had been vetted twice. But the Court noted that the original ex parte reexam acted as a first examination of the single, new claim that issued from the reexam. Additionally, the original ex parte reexam did not allow for third party participation. The current inter partes reexam does, generating a more rigorous review of the claim. Finally, the case was delayed four years for the first reexam. Significant judicial resources would have been wasted had the case proceeded on the original sixteen claims, which the PTO ultimately rejected. The Court did not want to risk wasting judicial resources during the second reexam. And with only a single claim, the Court did not expect the second reexam to take four years. The case, therefore, was stayed pending the reexam.
…
Continue Reading Patent Case Stayed for Second Reexam

This morning the Chicago Tribune ran an article (click here for the Tribune’s piece) based upon IFI Patent Intelligence’s ranking of 2007’s top U.S. patent assignees — click here for IFI’s press release. The article focused on Motorola’s movement from number 34 in 2006 to 44 in 2007. Motorola explained that it has shifted focus from a goal of being one of the largest patent assignees to a more limited portfolio focused around Motorola’s core technologies. I was quoted in the story about the value of what I refer to as “strategic patenting”:
Motorola’s approach is a more common one across industries, said David Donoghue, special counsel at DLA Piper in Chicago who specializes in intellectual property. In general, most companies are “focusing their patenting efforts on their most important technologies and their biggest innovations — the things that differentiate them from their competitors,” Donoghue said.
There is also value in having a large patent portfolio, particularly if you need to use your portfolio for cross-licensing or defensively against a patent-aggressive competitor, or if you are not sure which of your technologies will drive your industry and profits in five or ten years.
Shortly after reading the Tribune article this morning, an IPLaw 360 article caught my attention (click here for the story, subscription required). The article discussed a study by Morgan Lewis attorneys Craig Opperman and Carina Tan (to read the Intellectual Asset Management article about Opperman’s and Tan’s research, click here on Opperman’s biography and click the link to the article in the upper right hand corner of the page).* Opperman and Tan argue that a high volume, low cost (per application) patenting strategy has a greater final cost than a strategic patenting strategy in which a company pays more for each individual application, but files fewer applications clustered around their core technologies. They also offer to provide a spreadsheet proving their analysis to anyone who contacts them and asks for it. It is an interesting premise. Of course, it does not appear to take in to account those companies that have a high volume strategy without unnaturally driving down their patent costs. I think few would argue that, if a company has the resources either in terms of in-house prosecutors or prosecution budget, more high value patents are better than fewer high value patents.
* I would provide you a pdf of the article, but I want to stay on the right side of the copyright laws.
…
Continue Reading The Chicago Tribune & David Donoghue on Strategic Patenting

The Chicago papers had a few IP-related articles this week. First, the Chicago Tribune reported – click here for the story — that Chicago software company SPSS is in a trademark dispute with its co-founder and former chairman, Norman Nie. Nie has informed SPSS that he believes he owns SPSS’s trademark, which he licensed to SPSS beginning in 1976. Nie is reportedly offering to sell SPSS the mark for $20M.
Second, the Tribune reported – click here for the story – that Motorola and Metrologic Instruments settled their patent disputes regard bar code scanning and mobile computing technology for an undisclosed amount and a limited-term cross-licensing agreement. The Chicago Sun-Times ran a similar story – click here to read it — and reported that Motorola entered the dispute with Metrologic based upon its 2006 acquisition of Symbol Technologies.
…
Continue Reading IP in the Sun-Times and Tribune

According to Interbrand Ronald is worth more than Mickey. Interbrand has just published its 2007 Best Global Brands, ranking the top 100 brands that: 1) derive at least a third of earnings outside of the brand’s home country; 2) are recognized beyond the brand’s customer base; and 3) have public marketing and financial data. Interbrand also excludes brands that are hard to identify as having brand value separate from their products or services. For example, pharma brands are excluded because Interbrand has determined that consumers focus on products rather than the overarching company branding. That leaves Northern District companies like Abbott Labs out of the running. But the Northern District is still very well represented. For example, McDonald’s jumped one spot this year, surpassing Disney in brand value. Here are the Northern District companies (or at least those very near the Northern District) on the list:
Northern District Top Global Brands 07 Rank 06 Rank Company 07 Brand Value (in USD Millions)
8 9 McDonald’s 29.398
59 59 Wrigley’s 5.777
77 69 Motorola 4.149
86 79 Kraft 3.732
Thanks to the Seattle Trademark Lawyer for identifying the ranking.
…
Continue Reading Ronald Beats Mickey: Northern District Home to Several Top Global Brands