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Toshiba Sues 17 OEMs for DVD Patent Infringement

Questions abounded Mon. on patent infringement suits by Toshiba against 17 companies, alleging they made or imported unlicensed DVD players for the U.S. At issue was the timing -- filed Fri., announced Mon. -- given that the brands and products in question long have been handled by major U.S. retailers and supplied by middlemen dealing with Chinese and other OEMs well-known to lack DVD licenses.

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Toshiba said Mon. it complained April 6 to the U.S. International Trade Commission, filing against 17 makers and importers of DVD-capable hardware, requesting the ITC ban imports of the unlicensed products. The same day, Toshiba brought similar charges in U.S. Dist. Court, N. Cal., seeking an import ban as well as undisclosed damages for patent infringement against the 17 defendants.

Those defendants comprise Chinese and Taiwanese OEMs, and some U.S. importers and distributors of the hardware at issue. “The 17 companies named… do not have license agreements with Toshiba or the DVD6C Licensing Group, and have engaged in the importation and sale of DVD products without permission,” Toshiba said. “The infringement of Toshiba’s patents by these companies has damaged Toshiba’s DVD-related business, and also caused damage to the legitimate and licensed DVD product manufacturing and distribution business as a whole.” Subsequent checks by Consumer Electronics Daily confirmed the named firms lack DVD6CLA licenses, although some have limited licenses under the 3C Patent Group (Pioneer, Philips, Sony et alia) and some have licenses for the DVD Forum’s DVD Format and Logo from licensor DVD FLLC.

Among those named in the complaints are the usual noodle bowl of Asian OEMs, including several from China’s Dongguan Province, such as GVG Digital Technology, Tonic Electronics and Xin Lian. Also named were Hong Kong affiliates of those companies -- plus prominent Hong Kong OEM Starlight.

Starlight and its cohort make DVD hardware sold in the U.S. and elsewhere under jWin, Memorex, Polaroid, TruTech -- Target Stores’ house brand -- and other well-known brands. Over the years, Starlight-made brands and others have been sold widely by a Who’s Who of U.S. retailers, including Amazon.com, Best Buy, Circuit City, J&R and others. Comment on Toshiba’s suits wasn’t forthcoming Mon. from Target. The Petters Group, which owns marketing rights to the Polaroid electronics brand in the U.S., declined comment on our queries. Tonic -- a relatively new Chinese OEM -- makes DVD players for a variety of CE brands, including Pioneer and other majors, according to Toshiba’s detailed suit.

That suit is novel in naming importing brands for the allegedly unlicensed hardware. It cites importers Daewoo Electronics USA, jWIN Electronics U.S. and Memcorp U.S. -- none of which makes DVD hardware.

Toshiba’s complaints don’t name -- let alone sue -- the retailers carrying the allegedly infringing goods. Although in such suits retailers and distributors of unlicensed goods can be named as “contributory infringers,” that almost never happens except with gray-market dealers and other “renegade” retailers. Vendors seldom sue their large retailer-partners, and that seems to be the case here.

Our queries to Toshiba and its law firm on that point and others went unanswered Mon., with Toshiba’s legal counsel referring all questions to the client.