Patent Law Updates | New Settlements and Verdicts

October 6, 2008

Motorola, Zoltar Settle "E-911" Patent Dispute in CA District Court

Zoltar Satellite Alarm Systems, Inc. v. Motorola, Inc., et al.
No. C 06-00044 JW, U.S. District Court for the Northern District of California, 9/22/2008

Motorola, Zoltar Settle "E-911" Patent Dispute in CA District Court

Holding:

Zoltar Satellite Alarm Systems, Inc. ("Zoltar") and Motorola, Inc. settled their dispute over patents relating to a “911” emergency locating feature for cellular phones, otherwise known as "Self-Locating Remote Monitoring Systems." Specifically, on September 22, 2008, both parties filed a stipulation of dismissal stating that all claims, counterclaims and defenses by Zoltar against Motorola and by Motorola against Zoltar are to be dismissed. The parties agreed to bear their own costs of suit and attorney's fees. On the same day, the U.S. District Court for the Northern District of California approved the stipulation. The parties further agreed that no claims or counterclaims by or between Zoltar and any defendant other than Motorola are dismissed.

Detailed Summary:

In its amended complaint, Zoltar accused defendants LG Electronics Mobile Communications Company a.k.a. LG Electronics MobileComm, LG Electronics Inc., Audiovox Communications Corp., UTStarcom Inc., UTStarcom Personal Communications f.k.a. Audiovox Communications Corp.,  Sanyo North America Corp., Sanyo Electric Co., Ltd., PalmOne, Inc., Sprint Corp., Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America LLC., Nokia Corp.,  and Nokia Inc. of infringing its U.S. patents ‘770, ‘130, ‘390, and ‘889,  Entitled “Self-Locating Remote Monitoring Systems.”

According to Zoltar, the infringing acts included at least inducing and contributing to the manufacture, use, sale, and/or offer for sale of cellular telephones equipped with E-911 technology.

Zoltar prayed for the issuance of preliminary and permanent injunction to enjoin the acts of infringement, payment of actual damages with prejudgment interest, enhanced damages, and an award of attorney’s fees, plus costs of suit.

On the other hand, Motorola in its Answer denied the accusations alleged in the amended complaint.  Specifically, it denied that it has infringed any valid claim of the patents-at-issue whether directly or by inducing infringement or contributing to infringement.  It also denied that it was liable for infringement of any claim of the patents, and further denied Zoltar’s allegations that the manufacture, use, sale, and/or offer for sale of cellular telephones equipped with E-911 technology constituted direct or indirect infringement.

Motorola likewise raised the defense of invalidity, res judicata and/or collateral estoppel, prosecution estoppel , and unenforceability in its answer.

The case against the other defendants is still pending.

View a PDF of the settlement

Companies Mentioned

Audiovox Communications Corp.

LG Electronics Inc.

LG Electronics Mobile Communications Company a.k.a. LG Electronics MobileComm

Motorola, Inc.

Nokia Corp.

Nokia Inc.

PalmOne, Inc.

Samsung Electronics America, Inc.

Samsung Electronics Co. Ltd.

Samsung Telecommunications America LLC.

Sanyo Electric Co., Ltd.

Sanyo North America Corp.

Sprint Corp.

UTStarcom Inc.

UTStarcom Personal Communications f.k.a. Audiovox Communications Corp.

Zoltar Satellite Alarm Systems, Inc.

Also See:

USPTO to Implement Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act

U.S. Patent and Trademark Office Seeks Public Input on Proposed Fees

USPTO to Test New Post Final Rejection Option

USPTO Expands Patent Law School Clinic Certification Pilot Program

USPTO Launches Small Business Innovation Research Pilot Program

Companies Mentioned

Patent Law

The following companies are mentioned in Patent Law Updates:

Boston Scientific Corp.

Microsoft Corp.

Stryker Corp.

Samsung Electronics America, Inc.

Cordis Corp.

Boston Scientific Scimed, Inc.

U.S. Patent and Trademark Office

Stryker Sales Corp.

Stryker Orthopaedics

Howmedica Osteonics Corp.

Acumed, LLC

Quanta Computer, Inc.

Sanyo North America Corp.

LG Electronics, Inc.

Smith & Nephew, Inc.

Cohesive Technologies, Inc.

Waters Corp.

Swisa, Inc.

Egyptian Goddess, Inc.

Motorola, Inc.

Dror Swisa

Johnson & Johnson, Inc.

Target Corp.

Sears Holding Corp.

Prometheus Laboratories, Inc.

Mayo Collaborative Services d.b.a. Mayo Medical Laboratories

Kohl’s Department Stores, Inc.

K-Mart Corp.

J.C. Penney Company, Inc.

Audiovox Communications Corp.

Glamourmom LLC

McKesson Information Solutions, Inc.

Federated Department Stores

Bridge Medical, Inc.

Elizabeth Lange LLC d.b.a. Liz Lange Maternity

United States Patent and Trademark Office

Smithkline Beecham Corp. (d.b.a. GlaxoSmithKline, plc.)

SmithKline Beecham PLC

HT Window Fashion Corp.

SmithKline Beecham Corp. d.b.a GlaxoSmithKline

Scimed Life Systems Inc.

Ortho-McNeil Pharmaceutical, Inc.

Glaxo Group Limited d.b.a. GlaxoSmithKline

Mylan Pharmaceutical, Inc.

Ranbaxy, Inc.

Mylan Laboratories, Inc.

Nokia, Inc.

Teva Pharmaceuticals USA, Inc.

SEB S.A.

Lucent Technologies, Inc.

Additional Resources

Patent Law

Further Reading in Patent Law

Other Recent Summaries

Recent Expert Legal Commentaries