Recent patent infringement cases filed in U.S. District Courts

Marilyn Tennissen May 22, 2008, 5:00am

Marshall Division, Eastern District of Texas

May 16

  • MackRay Inc. vs. The J.M. Smucker Company

    Plaintiff MackRay claims it owns the rights to U.S. Patent No. 7,314,328 issued Jan. 1, 2008, and U.S. Patent No. 7,325,994 issued Feb. 5, 2008. The patents-in-suit cover an invention called a Spreader.

    According to the original complaint, on Sept. 15, 2003, Smucker's and MackRay executed a Non-Disclosure Agreement (the "NDA"). In that agreement, Smucker's recognized that MackRay would be disclosing its "Confidential and Proprietary Information," and Smucker's acknowledged that MackRay owned "patents and technology" relating to squeezable food dispensers.

    "Smucker's agreed that it would not utilize MackRay's Confidential and Proprietary Information without MackRay's consent," the complaint states.

    Plaintiff claims Smucker's was also advised of a pending patent application for the Spreader.

    On Oct. 14, 2003, MackRay met with Smucker's.

    "At that meeting, MackRay disclosed and demonstrated a full range of dispensing techniques, ideas, and prototypes" the plaintiff claims. "Smucker's told MackRay that it was not interested at that time."

    Over the next nine months, three additional patent applications were filed, two of which eventually matured into the two patents-in-suit, the suit continues.

    "Sometime in 2004, Smucker's began to market and sell its 'Squeeze' product, which infringes the patents-in-suit and which incorporates many of the concepts shared with them on Oct. 14, 2003. Smucker's did so without MackRay's consent and without entering into a "separate agreement," as required by the NDA. Since that time, Smucker's has continued to market and sell its infringing 'Squeeze' product."

    The plaintiff claims it has been damaged as a result of defendant's infringing conduct and is thus entitled to be adequately compensated in an amount no less than a reasonable royalty.

    MackRay is seeking injunctive relief, actual and treble damages, attorneys' fees, costs, interest and other just and proper relief.

    Eric Albritton of the Albritton Law Firm in Longview is representing the plaintiff along with attorneys from Friedman, Suder & Cooke in Fort Worth.

    The case was assigned to U.S. District Judge David Folsom and referred to Magistrate Judge Charles Everingham.

    Case No. 2:08-cv-00213-DF-CE

    May 19

  • TechRadium Inc vs. Blackboard Connecting Inc. and Blackboard Inc.

    Plaintiff TechRadium, based in Sugar Land, claims it developed, sells, and services mass notification systems that allow a group administrator to send a single message that will be delivered to the members of the group via numerous communication devices such as cell phones, pagers, standard landline phones and e-mail. This technology is marketed under the trade name "IRIS" (Immediate Response Information System).

    TechRadium claims it owns the rights to U.S. Patent No. 7,130,389 issued Oct. 31, 2006; U.S. Patent No. 7,174,005 issued Feb. 6, 2007; and U.S. No. 7,362,852 issued April 22, 2008.

    The '389 Patent describes technology for a digital notification and response system that utilizes an administrator interface to transmit a message from an administrator to a user contact device.

    The '005 Patent describes technology for a school-wide notification and response system that utilizes an administrator to a contact device for employees and parents associated with the school.

    The '852 Patent is a continuation-in-part of the '005 Patent and relates to the creation and delivery of messages as well as the routing, verification and collection of responses to the messages to parents and employees associated with a school or a school system.

    According to the original complaint, on or before Jan. 31, 2008, Blackboard Inc. acquired NTI, a California corporation. Prior to this acquisition, NTI committed acts of infringement by selling or offering to sell technology covered by the patents. After the acquisition, the name of NTI was changed to Blackboard Connect, and Blackboard Connect continues to commit acts of infringement.

    Products sold by the defendants that infringe the TechRadium patents include the Connect-ED, Connect-CTY, Connect-GOV and Connect-MIL.

    The plaintiff alleges that the infringement is willful.

    "Blackboard Connect and Blackboard were clearly aware that TechRadium had valid and enforceable patents," the complaint states. "TechRadium notified Blackboard Connect of their infringement of TechRadium's patents and Blackboard Connect continued to utilize TechRadium's patented technology for their own benefit."

    TechRadium claims it has suffered substantial lost profits. The complaint also states that TechRadium is willing to grant licenses to qualified parties for the use of its patented technology at a reasonable royalty rate.

    Plaintiff seeks recovery of damages for lost profits, reasonable royalties, unjust enrichment and benefits received by the defendants as a result of the use of the misappropriated technology and other damages to which it may be entitled.

    TechRadium also seeks exemplary damages, attorneys' fees, costs, interest, treble damages and a permanent injunction.

    W. Shawn Staples of the O'Quinn Law Firm in Houston is representing the plaintiff.

    The case has been assigned to U.S. District Judge T. John Ward.

    Case No. 2:08-cv-00214-TJW

  • Red River Fiber Optic Corp. vs. Verizon Communications et al

    Plaintiff Red River is a Texas corporation with its principal place of business in Dallas. According to the original complaint, Red River is the owner of U.S. Patent No. 5,555,478 for a Fiber Optic Information Transmission System issued Sept. 10, 1996. An ex parte reexamination certificate was issued on June 19, 2007.

    The '478 patent relates to, among other things, a fiber optic transmission system and a method for routing calls on a fiber optic network.

    The complaint alleges that defendants Verizon Communications, AT&T and Qwest have infringed the '478 Patent.

    The plaintiff is seeking a judgment and order requiring each defendant to pay Red River damages including supplemental damages for any continuing post-verdict infringement up until entry of the final judgment, with an accounting, as needed, and treble damages for willful infringement. Red River is also seeking interest, costs, attorneys' fees and other just and equitable relief.

    Douglas Cawley and Samuel F. Baxter of McKool Smith in Marshall are representing the plaintiff. D. Scott Hemingway of Hemingway & Hansen LLP in Dallas is of counsel.

    The case has been assigned to U.S. District Judge T. John Ward and referred to Magistrate Judge Charles Everingham.

    Case No. 2:08-cv-00215-TJW-CE

    Tyler Division, Eastern District of Texas

    May 19

    Third Dimension Semiconductor Inc. vs. Fairchild Semiconductor International Inc. and Fairchild Semiconductor Corp.

    According to the plaintiff's original complaint, on Jan. 31, 2001, Fairchild entered into the License Agreement with PMT (Power Mosfet Technologies LLC). Subsequently PMT assigned all of its rights, title and interest in the License Agreement to plaintiff 3D on or about Jan. 31, 2002.

    The agreement grants Fairchild a non-exclusive patent license to several patents. U.S. Patent No. 5,216,275 for an invention called a Semiconductor Power Devices with Alternating conductivity Type High-voltage Breakdown Regions.

    "Under the agreement, Fairchild agreed to pay an annual royalty of 4.75 percent of Fairchild's Net Billed Sales of Licensed Products," the complaint states.

    The suit states that infringing products include power semiconductor devices under the name SuperFET which embody claims of '275 Patent.

    The Agreement also states that royalties due or payable to PMT would be calculated within 60 days following the end of each calendar year, but the 3D claims Fairchild failed to provide the written reports.

    According to the complaint, on April 17, 2008, representatives of Fairchild and 3D met in accordance with (the agreement) to attempt to resolve Fairchild's breach of the license agreement.

    "But Fairchild maintained its refusal to pay any royalties owed to 3D," the complaint states.

    3D states that on April 25 it gave Fairchild 60 day notice that it was terminating the license agreement.

    The plaintiff seeks injunctive relief, actual damages no less than reasonable royalty and/or lost profits, treble damages, interest, costs attorneys' fees and other just and proper relief.

    Jeffrey Bragalone of Shore Chan Bragalone LLP in Dallas is attorney in charge for the plaintiff with Cal Roth of the Roth Law Firm in Marshall.

    The case has been assigned to U.S. District Judge Leonard E. Davis.

    Case No. 6:08-cv-00200-LED

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