March 18, 2013, 2:30 PM

A split decision for Barnes & Noble in a patent lawsuit

Alcatel can move ahead with patent claims related to a shopping cart and site search.

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A New York judge handed down a mixed decision last week in a patent infringement dispute between book seller Barnes & Noble Inc. and Alcatel Lucent USA Inc.

U.S. District Court Judge for the Southern District of New York George Danielson Wednesday dismissed one patent infringement claim filed by Alcatel Lucent against Barnes & Noble’s use of technology for electronic book reader connectivity, but left in place two other infringement claims for shopping cart and site search technology.

In July 2010, Alcatel, a Paris-based telecommunications firm with offices in the U.S., sent Barnes & Noble, No. 32 in the 2012 Internet Retailer Top 500 a letter informing the book seller it was in violation of several patents Alcatel owned for shopping cart, site search, and e-book reader technology. The letter demanded that Barnes & Noble license Alcatel’s technology and pay other undisclosed compensation.

Alcatel also filed suit in 2010 in the U.S. District Court of Eastern Texas against a number of online retailers, including Barnes & Noble, Overstock.com Inc., Newegg Inc. and others. Alcatel argued the defendants were infringing against e-commerce patents Alcatel claimed it owned for functions such as web site drop-down boxes, text boxes, site search and tools that correct consumer misspellings and other errors, among others. At the time Alcatel claimed it took possession of the patents through its acquisitions of companies such as Bell Laboratories, now an Alcatel subsidiary.

But a Texas jury rejected those claims in October 2011, ruling that neither Newegg, Overstock.com Inc., Barnes & Noble and others violated certain Alcatel patents. In 2011 Alcatel said it would appeal the Texas decision, but a search of federal court documents failed to yield any record of an appeal.  Alcatel did not respond to a request for comment.

At least one prominent patent infringement lawyer says he no longer tracks the case. “Once they lost in 2011 Alcatel kind of dropped off the radar scope,” the attorney says. “We kind of assumed they just went back to running the French phone system.” He asked not to be identified.

In the meantime, while Alcatel sued Barnes & Noble and online retailers in Texas, Barnes & Noble filed its own complaint in federal court in Manhattan asking a judge for a jury trial to dismiss Alcatel’s patent infringement claims. Daniels ruled in that case last week against one Alcatel infringement claim against Barnes & Noble for using technology from Microsoft Corp. for various video technology, speech technology, internet technology, and other technologies related to electronic book readers.

But the judge also ruled that two other patent issues Alcatel has against Barnes & Noble for shopping cart and site search technology can remain in litigation. Barnes & Noble isn’t talking about the case and hasn’t disclosed if it will appeal the decision.

“As a matter of policy, we don't comment on litigation,” says a Barnes & Noble spokeswoman. It’s also unclear how Alcatel would proceed against Barnes & Noble with its remaining patent issues.

Regardless of the outcome, the dispute between Barnes & Nobel and Alcatel bears watching by online retailers, says Jeffrey Drake, a patent infringement attorney with the Chicago law firm of Miller, Canfield, Paddock and Stone P.L.C. “These kinds of cases are still a very big deal with the industry,” Drake says. “The judge is saying that there are still facts in the case that need to be decided.”

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