BlackBerry, DuPont, Random House: Intellectual Property
By Victoria Slind-Flor – Oct 22, 2013 12:01 AM ET
The struggling smartphone maker received 986 patents last year, a 49 percent increase from 2011, according to figures compiled by the Intellectual Property Owners Association. BlackBerry’s patents are valued at anywhere from $1 billion to $3 billion, depending on how many of them have already been licensed out, analysts and patent experts estimate.
Working in BlackBerry’s favor: The patents cover similar technology as Apple Inc.’s intellectual property, and much of the portfolio is only a few years old. The downside is that the market for such assets has cooled. Previous patent buyers such as Apple (AAPL) and Google Inc. amassed broad portfolios in patent deals two years ago.
“This is an incredibly volatile market,” said Ron Laurie, managing director of Palo Alto, California-based Inflexion Point Strategy, which advises companies on patents. “It all depends on perceived demand and strategic value.”
Apple, whose iPhone is now the best-selling smartphone, cites BlackBerry’s technology 1,295 times in its own patent applications, according to MDB Capital Group LLC, a Santa Monica, California-based patent-investment bank. The rivals credit each other more than any other two North American device makers. Companies are required to identify competing technology to ensure they aren’t claiming something already patented.
Lisette Kwong, a Waterloo, Ontario-based spokeswoman for BlackBerry, and Kristin Huguet, a spokeswoman for Apple, declined to comment.
Given its connections to Apple and an average patent age of just 3.4 years, the portfolio may fetch $2 billion to $3 billion, according to MDB. That value may be lower if BlackBerry has already licensed much of its technology, said Erin-Michael Gill, managing director of MDB Capital. Widely licensed patents have less use for new deals or court challenges.
“If that’s the case, the financial buyers no longer have much interest — and the strategics don’t need them,” Gill said. “Then it would go from multibillion dollars to a trivial amount, probably just a few hundred.”
MDB’s estimate reflects what the patents would fetch as stand-alone assets without liabilities a buyer of the whole company would face. The cost of shutting the hardware unit could be $800 million, according to BMO Capital Markets.
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Bentley Wins Order Barring Knockoff Kits, Car Transformations
Bentley Motors Ltd., a maker of luxury cars, won a court order barring two Florida car customization companies from making and installing kits that could transform the appearance of inexpensive American cars into knockoffs of the Bentley GTC.
The U.K.-based automaker filed suit in federal court in Tampa, Florida, in June 2012, claiming the kits and auto transformations infringed the trademark and trade dress of a luxury car that can sell for upwards of $238,000.
Fugazzi Cars Inc. of St. Petersburg, Florida, and Real Auto Customizing Inc. of Clearwater, Florida, are barred from using any of the Bentley marks, logos and design features. Additionally, they are required to post the text of the court order on their websites, on their pages in Facebook Inc. (FB)’s social media sites and anywhere else they’ve advertised their replica kits.
The court didn’t award damages, saying this must wait until the issue of willfulness is determined with respect to infringement. That part of the case is set for trial in December.
The case is Bentley Motors Ltd. v. McEntegart, 8:12-cv-01582-VCM-TBM, U.S. District Court, Middle District of Florida (Tampa).
DuPont, Easton-Bell License Pact Ends Kevlar Trademark Fight
DuPont Co. (DD), the maker of Corian countertops and Tyvek packaging materials, has licensed its Kevlar trademark to Easton-Bell Sports Inc. of Scotts Valley, California, a maker of bicycle-related products.
The license follows the dismissal of a trademark suit DuPont filed against Easton-Bell in January, accusing the company of infringing the Kevlar mark.
DuPont, based in Wilmington, Delaware, had said the size of the Kevlar trademark on Easton-Bell’s packaging was even larger than the California company’s own mark, according to the complaint
Easton-Bell has sold and marketed bicycle tires and locks in packaging displaying the Kevlar trademark since July 2012, according to court papers. Such products are sold through retailers including Wal-Mart Stores Inc., Target Corp. (TGT) and Amazon.com Inc., DuPont said.
Easton-Bell sued in federal court in San Francisco on Jan. 18, seeking a court declaration that it didn’t infringe the DuPont trademark.
In its pleadings, Easton-Bell said it has bought Kevlar from authorized distributors and resellers for at least six years and used it in bike tires and locks. Indicating on its packaging that the products contain Kevlar “has no likelihood of causing confusion,” the company claimed.
On March 26, a magistrate judge refused to dismiss Easton-Bell’s case and rejected DuPont’s request that the dispute be transferred to Delaware. He said that DuPont’s request for a transfer was inappropriate.
DuPont didn’t give any reason for dropping its suit against Easton-Bell. According to the March 28 filing, Easton-Bell hadn’t answered the complaint or asked that the case be dismissed.
The two companies issued a joint statement Oct. 17 saying that the license covers the use of the Kevlar brand for various Easton-Bell products, including bicycle tires and locks. Terms of the license weren’t disclosed.
The DuPont case is E.I. du Pont de Nemours & Co. v. Easton-Bell Sports Inc., 1:13-cv-00150, U.S. District Court, District of Delaware (Wilmington). The earlier case is Easton-Bell Sports v. E.I. du Pont de Nemours & Co, 3:13-cv-00283, U.S. District Court, Northern District of California (San Francisco).
Steelite to Expand Collectibles With Woodmere Mark Acquisition
According to the Castle China website, the company is ceasing operations. The company was known for its reproductions of the official White House china patterns, and of a line of china depicting various first ladies’ favorite flowers. Castle China merchandise was sold in museum shops and presidential libraries and used as protocol gifts by the U.S. State Department.
Steelite said it will produce historical collectibles in Castle’s Woodmere China tradition. In December 2012 Steelite acquired the Royal Crown Derby brand, which has been associated with figurines and collectibles, including some commemorating the wedding of Prince William and the former Kate Middleton and the birth and christening of their son Prince George.
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Random House Unit Claims Copyright on Author’s Interview
The book is a reprint of a 1994 interview Mike Gerrard, the publisher of Passport magazine, conducted with travel writer Bill Bryson, according to World Travel Market.
Bryson’s books are published by Transworld, which is claiming the copyright to the content of the words the author spoke in the interview is infringed, the website reported.
Amazon has suspended sales of the book, and Garrard is presently consulting with lawyers as well as the U.K.’s Society of Authors, World Travel Market reported.
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To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at firstname.lastname@example.org
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