Vintage Filings Legal Blog

Performance Designed Products, a video gaming accessory manufacturer, announced today that it has amicably settled its recent patent infringement lawsuit against dreamGEAR.

The lawsuit, filed in April of this year, alleged patent and trade dress infringement by dreamGEAR’s tennis rackets contained in its Soft Sports Kit Tennis Doubles Pack for use with the Wii video game system. Under the settlement, dreamGEAR agreed to cease further production of the accused tennis racket designs, and pay PDP an undisclosed monetary payment. In return, PDP granted dreamGEAR a license to sell the remaining inventory of its Soft Sports Kit Tennis Doubles Pack containing the accused tennis rackets.

“The settlement demonstrates the value of PDP’s intellectual property, which is the result of years of effort in the development of new and innovative products,” said John Moore, PDP’s senior vice president of marketing. “PDP’s NERF Sports Pack received three U.S. design patents alone, one of which was the subject of the lawsuit with dreamGEAR, and PDP has many other patents and patent applications in its portfolio as well.”

PDP recently announced that it sold more than one million units of its NERF Sports Pack in North America in 2008.

Louis Vuitton has recently entered into a settlement agreement with Monastery Hill, regarding Monastery Hill’s sales of faux leather good products for the hospitality industry, including hotel guest room binders and note pad covers, that Louis Vuitton alleged copied and used Louis Vuitton’s Epi registered trademarks.

Under the terms of the Consent Injunction entered in the United States District Court of the Northern District of Illinois, Eastern Division, Louis Vuitton is recognized as the owner of the valid and incontestable registered Epi trademarks, and Monastery Hill has agreed, without admitting any wrongdoing, to cease the sale of the products, destroy all remaining product stock, and to avoid any unauthorized, counterfeit or infringing use of the Epi trademarks in the future. The settlement and Consent Injunction resolve all disputes between the two parties over Monastery Hill’s faux leather products.

Nathalie Moulle-Berteaux, Intellectual Property Director of Louis Vuitton, said, “We are very pleased to have reached this amicable resolution with Monastery Hill, which has recognized our Epi trademarks and has agreed to cease the sale of their so-called ‘epi’ products we asserted infringed our Epi trademarks. We further appreciate Monastery Hill’s commitment to respecting our Epi trademarks, which are the essence of our Epi collection. This agreement allows us to protect our customers from confusion.”

Louis Vuitton first introduced the Epi Leather collection in 1985 as its first permanent leather goods collection. Epi Leather is used on handbags as shown below and other leather accessories and is distinguished by a unique texture of elevated, two-tone wavy lines, with a darker shade displayed on the elevated portions of the wavy lines and a lighter shade serving as the background, lower surface.

LeadPoint and Autobytel have entered into a settlement agreement resolving Autobytel’s lawsuit filed against LeadPoint, Internet Brands and Insweb in the U.S. District Court in the Eastern District of Texas, Marshall Division, relating to Autobytel’s U.S. Patent Number 6,282,517 for lead technology.

The settlement agreement also resolves a patent claim filed by Insweb, Internet Brands and LeadPoint against Autobytel and others in the U.S. District Court in the Southern District of California related to Insweb’s U.S. Patent No. 6,898,597 for lead management technology.

“We are very pleased to have reached this settlement with LeadPoint, which enables us all to continue the very important task of leveraging the unique power of Internet technology to help our customers weather this challenging climate and to begin exploring ways in which our firms can work together,” said Jeffrey Coats, President and CEO of Autobytel Inc.

Take-Two Interactive Software has announced that it entered into two separate settlement agreements with the SEC and the District Attorney, New York County, both of which relate to previously disclosed investigations of the Company’s historical stock option granting practices.

Without admitting or denying the SEC’s allegations, the Company has agreed to pay a civil penalty of $3.0 million, and has stipulated to an injunction against future violations of certain provisions of the federal securities laws. The settlement is subject to approval by the United States District Court for the Southern District of New York. If court approval is obtained, the settlement will conclude the SEC’s investigation of this matter with respect to the Company.

As part of the settlement agreement with the District Attorney, the Company acknowledged that certain of its former directors and officers engaged in certain illegal behaviors related to the historical granting of stock options, and the District Attorney agreed not to prosecute the Company or its corporate subsidiaries for conduct related thereto. In addition, the Company agreed to pay $300,000 to the District Attorney for reimbursement of costs related to the District Attorney’s investigation, to undergo a review of its corporate governance structure by external legal counsel, and to hire an administrator for its stock plan.

Take-Two previously accrued the estimated expense for these settlements in its fourth quarter of fiscal 2008. The other civil litigation related to the Company’s historical stock option granting practices remains outstanding.

“We are pleased to have reached a settlement with both the SEC and District Attorney with respect to the Company’s historical stock option granting practices,” said Strauss Zelnick, Chairman of Take-Two. “Resolving this issue has been a key objective for Take-Two since the current management team took office in early 2007, and we are gratified to have put this matter behind us.”

Canwest Global Communications announced today that it has received $34 million in full settlement of amounts owing to its subsidiary, Canwest Media and Canwest Publications, pursuant to an arbitration award in connection with its dispute with Hollinger International which is now the Sun-Times Media Group.

In January 2009, the arbitrator awarded Canwest approximately $51 million, relating to unresolved adjustments and claims associated with the 2000 acquisition by Canwest of certain newspaper assets from Hollinger.

CMI has received $30.5 million of the settlement that will now be deposited as cash collateral under its senior credit facility. This will increase the balance of the collateral deposit to approximately $50 million. The remaining $3.5 million in settlement proceeds will benefit Canwest Publications Inc., a subsidiary of Canwest Limited Partnership.

Bose announced that it has settled its litigation against Phitek Corporation at the U.S. International Trade Commission (ITC) and U.S. District Court of Massachusetts.  Bose’s complaint charged that Phitek manufactured headphones for Audio-Technica and Creative Labs that infringe Bose U.S. patents protecting the active noise-reducing headphone technology found in Bose QuietComfort headphones.

As part of the settlement, Phitek has agreed to make certain changes to its headphones to be clear of the Bose patents at issue.

Bose has made significant investments in the research, development, engineering and design of the proprietary technologies found in its headphones. These patented Bose technologies enable the unique performance found in the QuietComfort 2 and QuietComfort 3 Acoustic Noise Cancelling headphones. Today, Bose headphone products are sold in the United States and throughout the world.

Crossroads Systems, a provider of solutions to connect, protect, secure and restore data-at-rest, today announced the settlement of its outstanding patent litigation with more than seven providers of network storage solutions. Under the terms of these settlement agreements, each of these companies received a non-exclusive license to Crossroads’ noteworthy patented access controls technology. The patents Nos. 6,425,035 and 7,051,147 are critical to high-technology companies offering robust storage security solutions as the patents cover the ability to control access between hosts and storage devices in a networked storage environment. Filed on May 22, 2008, the lawsuit claimed that these companies sold solutions that used one or both of U.S. patents.

“Our settlement of this litigation demonstrates Crossroads’ continued desire to deploy robust security solutions worldwide using Crossroads’ leading-edge inventions and reiterates our commitment to protect our extensive portfolio of intellectual property,” said Rob Sims, President and CEO of Crossroads Systems. “While our focus continues to be on the delivery of highly-reliable industry leading-edge storage products to customers and partners worldwide, including our recently released awards-winning product Crossroads ReadVerify Appliance™ 3.0, we also want to promote the deployment and defend usage of our leading-edge intellectual property as necessary.”

Today McKesson Corporation, one of the nation’s largest drug wholesalers, announced it would pay $350 million to consumers and health insurers, who were overcharged for several hundred prescription drugs since 2001. Spector Roseman Kodroff & Willis, PC was co-lead counsel in the class action, representing plaintiffs including the Teamsters Health & Welfare Fund of Philadelphia Vicinity, which provides benefits to more than 24,000 area workers.

Spector Roseman Kodroff & Willis partner, Jeffrey L. Kodroff said, “We have spent our legal careers trying to ensure that consumers get a fair shake by affording them access to the courts to right wrong doings. When people are overcharged for products/services, like they were in this prescription drug scam, they have a right to recoup their losses. We are proud to help and are optimistic that this settlement will have a lasting impact, as we anticipate that there will be a reduction in the future cost of hundreds of drugs.”

The $350 million McKesson settlement will pay back overcharges to class members, including among others the Philadelphia Federation of Teachers Health & Welfare Fund represented by co-counsel Marc Edelson of Edelson & Associates in Doylestown, PA. It provides money to both health insurers and consumers who paid for their medicines at prices based on the average wholesale price, a standard that is used by pharmacies and insurance companies as the basis of prescription payments. The case alleged that, starting in 2001, McKesson conspired with First Data Bank to arbitrarily increase the AWP price on hundreds of drugs by five percent at the expense of consumers and health insurers, who overpaid billions of dollars for prescription drugs.

The McKesson settlement is the second half of the resolution of this litigation. The plaintiffs had previously settled with co-defendant First Data Bank, for valuable injunctive relief. First Data Bank and Medi-Span, another publisher of drug information who was sued separately, have both agreed to pay more than $1,000,000.00 to class members, and, most importantly, to reduce the AWP price on hundreds of drugs within 90 days of the court’s approval, according to Kodroff. The settlements are awaiting final approval by US District Court Judge Patti Saris in Boston.

What typically happens after a patent lawsuit?  I’ve seen literally thousands of patent infringement lawsuits comes across my desk, and it never ceases to amaze me how they ALL seem to have the same result: a licensing agreement. It seems to me that the lawsuits would be able to be avoided entirely if, prior to launching a service, these companies would have hired a solid patent attorney to research if any infringement was taking place.  A recent case study for this process happened this week:

Public Service Enterprise Group (PSEG), an energy company with 2.1 million electric and 1.7 million natural gas customers located throughout New Jersey, headquartered in Newark, N.J., and Ronald A. Katz Technology Licensing, L.P., headquartered in Los Angeles, announced this week the settlement of patent litigation between the parties. As part of the settlement, PSEG has agreed to pay an undisclosed sum for a nonexclusive license under a comprehensive portfolio of patents that Katz owns relating to interactive voice applications.

The nonexclusive license covers services offered by Public Service Enterprise Group in the “Energy and Utility Services” Field of Use, including customer service provided via automated systems and live agents. Other terms of the license were not disclosed.

The patents held by Ronald A. Katz Technology Licensing, L.P. cover a wide range of interactive technology including automated forms of: customer service, prescription refill services, securities trading, merchandising, prepaid services, telephone conferences, registration, home shopping, as well as functions involved in securing information from databases by telephone, interactive cable transactions, and various other uses of toll free and local numbers.

Ronald A. Katz stated, “We welcome Public Service Enterprise Group to the large group of energy and utility companies who have purchased license rights under this portfolio.”

Mr. Katz is the named inventor on a large number of patents primarily in the fields of telecommunications and computing. He also formed Telecredit, Inc., the nation’s first on-line real time credit and check cashing authorization system, and was awarded a patent as co-inventor of that technology.

3M and Illinois Tool Works Inc. (ITW) have finally come to a mutual settlement concerning issues in patent infringement litigation brought by 3M in June 2006 in the U.S. District Court for the District of Minnesota relating to 3M’s patent covering its paint preparation system products.

So what does 3M do?  They are a recognized leader in research and development, 3M produces thousands of products for dozens of diverse markets. 3M’s core strength is applying its more than 40 distinct technology platforms – often in combination – to a wide array of customer needs. With $24 billion in sales, 3M employs 79,000 people worldwide and has operations in more than 60 countries. For more information, visit www.3M.com.

Under the terms of the agreement, the specifics of which are confidential, ITW has acknowledged the validity and enforceability of 3M’s patent rights and has taken a license under 3M patents. In addition, the parties have entered into a supply agreement under which 3M will supply a portion of ITW’s DeKups system in the future.