April 23, 2014

Indiana Copyright Litigation: Transcultural C.A.R.E. Sues Evansville Vanderburgh School Corporation

Evansville, Indiana - A copyright attorney for Dr. Josepha A. Campinha-Bacote d/b/a EVSCPicture.jpgTranscultural C.A.R.E. Associates of Cincinnati, Ohio filed a copyright infringement lawsuit in the Southern District of Indiana alleging that Evansville Vanderburgh School Corporation of Evansville, Indiana ("EVSC") and Dionne Blue and Deborah Hartz, both of Indiana, infringed the copyrighted work "Cultural Competency in Healthcare Delivery: Have I 'ASKED' Myself the Right Questions?" (the "ASKED" model). This work was registered by the U.S. Copyright Office.

Plaintiff Campinha-Bacote is the President and sole proprietrix of Transcultural C.A.R.E. Associates, which provides education regarding transcultural issues in health care to improve awareness and sensitivity to cultural concerns among healthcare professionals and others. In 2002, Dr. Campinha-Bacote developed the ASKED mnemonic model of cultural competence. The work was registered by the U.S. Copyright Office in 2003.

Defendants are accused of unlawfully reproducing, copying, publishing and displaying the ASKED model in a PowerPoint presentation titled "Culturally Competent Classroom Management." Defendant EVSC is being sued directly as well as vicariously for the actions of Defendants Blue and Hartz.

In her complaint, filed by an Ohio trial lawyer, Plaintiff asserts willful copyright infringement. She asks for injunctive relief, statutory damages, a declaration that Defendants' actions be declared willful, attorney's fees, costs and pre- and post-judgment interest.

Practice Tip:

Lawsuits against government entities often differ from those against private defendants. For example, when seeking to sue in federal court, litigators must evaluate whether the 11th Amendment, which generally prevents federal-court actions seeking damages from a state, will hamper their efforts.

Congress may waive states' sovereign immunity in some cases, provided that it does so with explicit language. In 1990, Congress amended the Copyright Act in an attempt to limit sovereign immunity for lawsuits under the Copyright Act. Section 501(a), which defines copyright infringers, was modified to include as a potential defendant "any State, any instrumentality of a State, and any officer or employee of a State acting in his or her official capacity." A new section, §511, was also added. It provides that states, state instrumentalities and their employees "shall not be immune, under the Eleventh Amendment of the Constitution of the United States or any other doctrine of sovereign immunity" from suit in a federal court for copyright infringement.

The United States Supreme Court has evaluated similar attempts to waive sovereign immunity under the Commerce Clause, the Patent Clause and the Fourteenth Amendment of the Constitution. The Court held that in federal-court lawsuits for damages for patent or trademark infringement, Congress lacked the constitutional authority to abrogate the sovereign immunity of the states. Subsequent decisions by federal district courts and federal appellate courts have extended this decision to actions for copyright infringement.

Continue reading "Indiana Copyright Litigation: Transcultural C.A.R.E. Sues Evansville Vanderburgh School Corporation " »

April 21, 2014

Indiana Patent Litigation: Four Mile Bay Asserts Infringement of Patented Dental Implant

Hammond, Indiana - Patent attorneys for Four Mile Bay LLC of Wadsworth, Ohio sued indentalpicture.png the Northern District of Indiana alleging that Zimmer Holdings, Inc. of Warsaw, Indiana and Zimmer Dental Inc. of Carlsbad, California infringed DENTAL IMPLANT WITH POROUS BODY, Patent No. 8,684,734, which has been issued by the U.S. Patent Office.

Defendant Zimmer Holdings designs, develops, manufactures, and markets reconstructive orthopedic implants, including dental implants. Defendant Zimmer Dental, a division of Zimmer Holdings, is engaged in a similar business. The two Zimmer entities have been sued by Four Mile Bay for patent infringement.

The subject of the dispute is Patent No. 8,684,734 (the "'734 patent"), which relates to the "osseointegration" of dental implants into a patient. A dental implant designed for osseointegration provides porous structures to which a patient's bone may grow an attachment. Four Mile Bay indicates that prior art in the area was limited to providing a surface-level solution, wherein bone surrounding the implant could grow into the coating only on the outside of the implant.

Four Mile Bay contends that the '734 patent addresses this shortcoming of the prior technology by including porous structures to which bone can adhere that extend through a "significant part" of the implant. This, it states, allows the patient's bone to grow completely through the implant and provides improved anchoring within the mouth. The invention also includes an internal cavity that may house a substance that stimulates bone growth.

Four Mile Bay contends in this current patent infringement litigation that Zimmer Holdings and Zimmer Dental are infringing the '734 patent. In the complaint, filed by Illinois patent attorneys for Four Mile Bay, the following are claims are asserted:

• Count I: Patent Infringement Against Zimmer Holdings
• Count II: Patent Infringement Against Zimmer Dental

Four Mile Bay asks the court for a judgment that defendants have directly infringed claims of the '734 patent, for a reasonable royalty and for pre- and post-judgment interest.

Practice Tip:

The concept of "prior art" appears simple upon first glance. It might be briefly defined as "all information that was publically available before a relevant date [often 12 months prior to a U.S. patent application being filed] that could be pertinent to a patent's claim of originality."

However, the legal nuances of what is "new" and what constitutes "prior art," along with the difficulties in performing an adequate worldwide search of printed materials for references to claims in a pending application, makes performing a complete patentability assessment a daunting prospect for even the most experienced inventor. Thus, while an inventor is wise to conduct his or her own patent search initially, it is important to hire an experienced patent attorney to perform a thorough patent search and assessment of patentability.

Continue reading "Indiana Patent Litigation: Four Mile Bay Asserts Infringement of Patented Dental Implant" »

April 18, 2014

Indiana Copyright Litigation: BMI Sues The Irish Exit for Copyright Infringement

New Albany, Indiana - An Indiana copyright attorney for Broadcast Music, Inc. of New York,IEPicture.bmp New York ("BMI"), Sony/ATV Songs LLC, Fall Out Boy, Inc. d/b/a Chicago X Softcore Songs, Beechwood Music Corporation, and Universal Music-Z Tunes LLC d/b/a Universal Music Z Songs sued in the Southern District of Indiana alleging that The Irish Exit, LLC d/b/a The Irish Exit and Matthew McMahan, both of New Albany, Indiana, committed willful copyright infringement. All copyrights-in-suit have been registered by the U.S. Copyright Office.

In its complaint, BMI states that it has been granted the right to license the public performance rights of more than eight million copyrighted musical compositions, including the compositions at issue. The other plaintiffs are the publishers of the copyrighted music that was allegedly infringed.

The lawsuit, brought under The Copyright Act, alleges that the defendants infringed multiple songs in BMI's repertoire by performing those copyrighted songs without authorization and/or causing the copyrighted songs to be performed publically in The Irish Exit without authorization. BMI alleges that there were three instances of infringement, with each publisher-plaintiff having at least one copyrighted song infringed by the defendants.

BMI contends that The Irish Exit, LLC (the legal entity) has a direct financial interest in The Irish Exit (the business establishment), as does Matthew McMahan. Further, it is alleged that Matthew McMahan is a member of The Irish Exit, LLC, with responsibility for the operation, management and supervision of the activities of LLC and the business establishment.

The plaintiffs claim that they have suffered great and incalculable damage as a result of the defendants' actions and that further acts of infringement will injure them irreparably. They ask that the court enjoin the defendant from committing further acts of infringement. The plaintiffs also seek statutory damages pursuant to 17 U.S.C. §504(c) and costs, including reasonable attorneys' fees.

Practice Tip:

The Copyright Act empowers a plaintiff to elect to receive an award of statutory damages between $750 and $30,000 per infringement in lieu of an award representing the plaintiffs' actual damages and/or the defendants' profits. In a case where the copyright owner proves that infringement was committed willfully, the court may increase the award of statutory damages to as much as $150,000 per infringed work. A finding of willful infringement will also support an award of attorney's fees.

Furthermore, not only is the performer liable for infringement, but so is anyone who sponsors an infringing performance. A corporate officer will be found jointly and severally liable with his corporation for copyright infringement if he (1) had the right and ability to supervise the infringing activity, and (2) has a direct financial interest in such activities.

Continue reading "Indiana Copyright Litigation: BMI Sues The Irish Exit for Copyright Infringement" »

April 16, 2014

Indiana Trademark Litigation: Roche Diagnostics Sues Polymer Technology Systems for Trademark Infringement

Indianapolis, Indiana - An Indiana trademark attorney for Roche Diagnostics GmbH of Roche Picture.jpgGermany and Roche Diagnostics Operations, Inc. of Indianapolis, Indiana (collectively "Roche Diagnostics") filed a trademark infringement lawsuit in the Southern District of Indiana alleging that Polymer Technology Systems, Inc. d/b/a CHEK Diagnostics of Indianapolis, Indiana ("PTS") infringed the trademarked "ACCU-CHEK", Registration Nos. 1,277,867; 2,403,536; 2,628,696; 2,651,417; 2,681,644; 2,703,048; 2,732,629; 3,071,846; 3,076,905; 3,127,170; 3,194,287; 3,199,675; 3,202,402; 3,256,740; 3,411,797; 3,481,185; 3,595,149; 3,602,8253,609,052; 3,676,782; 3,703,434; 3,991,903; 3,749,950; 4,214,217; 4,230,563; and 4,226,844, which have been issued by the U.S. Trademark Office.

The Roche Diagnostics entities are global providers of medical products that help healthcare providers and consumers to prevent, diagnose, treat and manage diseases and other medical conditions. Included in the Roche Diagnostics offerings are products and services relating to diabetes care, including blood-glucose testing, monitoring and analysis. In connection with these products and services, Roche Diagnostics owns and uses numerous registrations for the federally registered trademark Accu-Chek and related marks.

Defendant PTS is a manufacturer of point-of-care diagnostic products headquartered in Indianapolis, Indiana. PTS designs, manufactures, and markets products for distribution in over 120 countries around the world and has sales offices in Europe, Latin America, and the Pacific Rim, and manufacturing facilities in Indianapolis, Indiana and Sunnyvale, California.

For several years prior to this trademark infringement complaint by Roche Diagnostics, PTS had sold a product under the name CardioChek, a medical device that measures blood cholesterol. Roche Diagnostics states that it did not assert its trademark rights to oppose the sale of CardioChek when it was marketed under the business name "Polymer Technology Systems."

In March 2014, PTS announced that it was making two changes. According to a press release, it would be changing its business name to "CHEK Diagnostics" and would begin offering a line of diabetes-care products, the AICNow® family of products, which PTS had purchased from Bayer Diabetes Care. This new line of products would be offered under the CHEK Diagnostics business name. Roche Diagnostics contends the expansion into this new market, in conjunction with Defendants' changed business name, violates its trademark rights and is likely to cause confusion, mistake and/or deception as to the source of PTS's diabetes-care goods.

In its complaint, filed by an Indiana trademark lawyer, Roche Diagnostics asserts trademark infringement of its Accu-Chek trademarks under 15 U.S.C. § 1114(1) and § 1125 (a) of the Lanham Act, as well as trademark infringement and unfair competition in violation of the common law of the State of Indiana.

Roche Diagnostics requests that the court enjoin PTS from using "CHEK Diagnostics" as a company name or in a manner in any way related to the promotion or sale of diabetes-care products. It asks that the court direct PTS to immediately recall any materials bearing the "CHEK" business name and to order PTS to cancel or modify any pending trademark registrations that include the CHEK name.

Roche Diagnostics also seeks monetary damages as well as a declaration by the court that the use of "CHEK Diagnostics" as a company name, or in a manner in any way related to the sale or promotion of diabetes-care products, would constitute trademark infringement and unfair competition under both federal and Indiana-state law.

Practice Tip: The protection afforded to a registered trademark is not exhaustive in scope. Among the limits to its applicability are restrictions based on the type of business and product to which the trademark pertains. In this case, while Roche may have declined to object to PTS's use of "CHEK" in conjunction with the sale of a non-diabetes-related product (here, a cholesterol-measuring product), that failure to object is unlikely to waive its right to assert infringement later if the word "CHEK" is used to market a product that is allegedly related to the product for which Roche Diagnostics owns a trademark (here, the purportedly similar line of diabetes products to be offered by PTS).

Continue reading "Indiana Trademark Litigation: Roche Diagnostics Sues Polymer Technology Systems for Trademark Infringement" »

April 14, 2014

Indiana Patent Litigation: CleanTech Sues Pacific Ethanol for Patent Infringement

Indianapolis, Indiana - Patent attorneys for GS CleanTech Corporation of New York, NewCornPumpPicture.jpg York ("CleanTech"), filed a patent infringement lawsuit in the Eastern District of California - Sacramento Division alleging that Pacific Ethanol Stockton LLC of Stockton, California infringed "METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS," Patent No. 7,601,858 (the "'858 patent"), which was issued by the U.S. Patent Office. The case was transferred to the Southern District of Indiana as part of Multidistrict Litigation No. 2181.

This litigation began with an assertion of patent infringement by CleanTech of the '858 patent, which was issued on October 13, 2009. CleanTech sued numerous Defendants alleging infringement of that patent shortly after its issuance. The Defendants accused of patent infringement in prior patent infringement litigation include: Big River Resources Galva, LLC; Big River Resources West Burlington, LLC; Cardinal Ethanol, LLC; ICM, Inc.; LincolnLand Agri-Energy, LLC; David J. Vander Griend; Iroquois Bio-Energy Co., LLC; Al-Corn Clean Fuel; Blue Flint Ethanol, LLC; ACE Ethanol, LLC; Lincolnway Energy, LLC; United Wisconsin Grain Producers, LLC; Bushmills Ethanol, Inc.; Chippewa Valley Ethanol Co.; Heartland Corn Products, Adkins Energy, LLC, Little Sioux Corn Processors, LLLP; Southwest Iowa Renewable Energy, LLC; Western New York Energy, LLC; Homeland Energy Solutions, LLC; Pacific Ethanol, Inc. [this entity is different from Pacific Ethanol Stockton LLC] and Guardian Energy, LLC. This Indiana patent litigation is being overseen in the Southern District of Indiana pursuant to the provisions for Multidistrict Litigation ("MDL").

Since September 29, 2011, when the court overseeing the MDL issued its order on claim construction with respect to the disputed claims of the '858 patent, patentees CleanTech and its parent GreenShift Corp. have asserted patent infringement of three additional patents in the '858 family - U.S. Patent Nos. 8,008,516; 8,008,517 and 8,283,484 - against some of the allegedly infringing Defendants.

In this current patent infringement lawsuit, initiated by California patent lawyers in the Eastern District of California, subsidiary CleanTech is the sole Plaintiff. Patent attorneys for CleanTech assert only one count in the complaint: infringement of the '858 patent. CleanTech asks the court for preliminary and permanent injunctions prohibiting further infringement of the '858 patent; an award of damages adequate to compensate CleanTech for the infringement that has occurred, but in no event less than a reasonable royalty for the use made of the inventions of the '858 patent as provided in 35 U.S.C. § 284, together with prejudgment interest from the date the infringement began; and an award to CleanTech of all remedies available under 35 U.S.C. §§ 284 and 285.

Practice Tip: Previous articles about this litigation have posted many times by Indiana Intellectual Property Law News including:

CleanTech Adds Three Additional Defendants to Multidistrict Litigation

CleanTech Adds Western New York Energy as a Defendant in Patent Infringement Litigation

CleanTech's Multidistrict Litigation Adds Southwest Iowa Renewable Energy as a Defendant

CleanTech Sues Aemetis for Infringing Patented Corn Oil Extraction Method

Southern District of Indiana Denies All Summary Judgment Motions Regarding Family of Corn Oil Extraction Patents

Southern District Allows CleanTech to Amend Complaint to Add Patent to Ethanol Patent Litigation

GS Cleantech Files Patent Infringement Lawsuit Against Flottweg in Indiana

Multiple Patent Infringement Suits Brought by Greenshift Consolidated in Indiana

GS CleanTech Sues Iroquois Bio-Energy for Patent Infringement

Cardinal Ethanol Sued by GS Cleantech for Patent Infringement

Little Sioux Added as a Defendant in CleanTech's Multidistrict Litigation 

Continue reading "Indiana Patent Litigation: CleanTech Sues Pacific Ethanol for Patent Infringement" »

April 11, 2014

Indiana Patent Litigation: Cor-A-Vent Sues Alleging Patent Infringement by DCI Products

South Bend, Indiana - Indiana patent attorneys for Cor-A-Vent Inc. of Mishawaka, Indiana CoraventPicture.bmpfiled a lawsuit in the Northern District of Indiana alleging that Designer Cabinets Inc. d/b/a DCI Products of Clifton Heights, Pennsylvania ("DCI") infringed the patented "Moisture Resistant Roof Vent," Patent No. 5,704,834, which has been issued by the U.S. Patent Office.

Cor-A-Vent is a designer and manufacturer of roof vent and other venting products. In 1998, United States Patent No. 5,704,834 (the "'834 Patent") was issued for a moisture-resistant roof vent. Cor-A-Vent asserts that it owns this patent.

DCI is accused of infringing the '834 Patent - either directly, by inducement, and/or contributorily - by making, using, selling, offering for sale, importing or supplying infringing roof vent products, including DCI's SmartRidge® II product, in violation of 35 U.S.C. § 271 et seq. Cor-A-Vent contends that DCI has profited, and Cor-A-Vent has suffered damages, as a result of this alleged patent infringement.

Cor-A-Vent also asserts that DCI has been aware of the '834 Patent since 2010 or earlier. As a result, Cor-A-Vent contends that the patent infringement committed by DCI has been willful. Further, Cor-A-Vent contends that this is an exceptional case, which would support an award of reasonable attorneys' fees pursuant to 35 U.S.C. § 285.

In its complaint, filed by Indiana patent attorneys in Indiana federal court, Cor-A-Vent lists a single count: Infringement of United States Patent No. 5,704,834. It requests the following:

• A judgment that DCI has infringed the '834 Patent in violation of 35 U.S.C. § 271;
• Preliminary and permanent injunctive relief prohibiting DCI and its agents from infringing the '834 Patent pursuant to 35 U.S.C. § 283;
• An award to Cor-A-Vent of its damages for patent infringement,
• An award of pre-judgment and post-judgment interest and costs against DCI pursuant to 35 U.S.C. § 284;
• A judgment that DCI's infringement of the '834 Patent has been deliberate and willful;
• A judgment that DCI's infringement of the '834 Patent has been exceptional under 35 U.S.C. § 285;
• Treble damage under 35 U.S.C. § 284; and
• An award to Cor-A-Vent of its reasonable attorneys' fees under 35 U.S.C. § 285.

Practice Tip:

A court may award increased damages for willful infringement. These punitive damages, up to and including a trebling of damages, are appropriate when an infringer has acted in wanton disregard of the patentee's intellectual property rights. In determining whether the infringing behavior supports increased damages, the court will consider the "totality of the circumstances."

Potential exposure for increased damages may be reduced by seeking - and acting on - timely advice from a competent patent lawyer. In contrast, the failure to seek and heed such advice may increase the chance of a finding of willfulness.

Continue reading "Indiana Patent Litigation: Cor-A-Vent Sues Alleging Patent Infringement by DCI Products" »

April 9, 2014

Indiana Copyright Litigation: Richard Bell Files Another Copyright Infringement Lawsuit

Indianapolis, Indiana - Richard Bell, an Indiana copyright attorney, filed a lawsuit in the Southern District of Indiana alleging copyright infringement by numerous Defendants. The BellPicture.bmpDefendants are: Diversified Vehicle Services of Marion County, Indiana; Cameron Taylor and Taylor Computer Solutions of Indianapolis, Indiana; Rhonda Williams of Indianapolis, Indiana; Forensic Solutions, Inc. of Waterford, New York; Heath Garrett of Nashville, Tennessee; CREstacom, Inc. of Fishers, Indiana; American Traveler Service Corp LLC, location unknown;
Mike Cowper of Martinsville, Indiana; Kimberly Hinds of Indianapolis, Indiana; Rensselaer Polytechnic Institute of Troy, New York; EasyStreet Realty of Indianapolis, Indiana; Drohan Management of Reston, Virginia; Metal Markets of Indianapolis, Indiana; Mattison Corporation of Indianapolis, Indiana; Industrial Heating Equipment Association of Taylor Mill, Kentucky; Junk Dawgs of Indianapolis, Indiana and WRTV of Indianapolis, Indiana. Mr. Bell is both the copyright lawyer and Plaintiff in this lawsuit.

Bell is a copyright attorney and a professional photographer. He contends that he is the owner of two copyrighted photographs of Indianapolis taken in March 2000. The photos have been registered with the U.S. Copyright Office.

Bell alleges that each Defendant, independent of each other Defendant, "created their individual website to promote and market their business" and placed the Plaintiff's copyrighted photo on each of the Defendants' respective websites. It is alleged that no Defendant had obtained the right to publish either photo but that each falsely represented otherwise to the world. Bell asserts that, as a result, Defendants have "realized and continue to realize profits and other benefits rightfully belonging to Plaintiff." Each Defendant is accused of "willfully and deliberately" engaging in copyright infringement "with oppression, fraud, and malice."

In his complaint, Bell lists the following claims:

• Count I: Copyright Infringement and Unfair Competition
• Count II: Theft

Bell asserts that he has already suffered, and is continuing to suffer, irreparable injury as a result of the alleged infringement of his copyrighted photos. Bell asks the court to declare that the Defendants' conduct in using his photos violates his rights under Indiana law and the Copyright Act and asks the court to enjoin further infringing uses of his photos. Among other remedies, he seeks treble damages under Indiana statutory authority. He also asks for an accounting of all gains, profits and advantages derived by Defendants as a result of the alleged infringement and for the maximum allowable statutory and/or actual damages for each violation. Plaintiff also seeks reimbursement of costs and reasonable attorneys' fees.

Practice Tip #1: The claims of this case appear calculated to trigger the "advertising injury" clause of many general business liability insurance policies. If a defendant has applicable business insurance, this may allow Mr. Bell to negotiate quicker settlements. Overhauser Law Offices, publisher of this Site, counsels clients on insurance coverage for insurance claims.

Practice Tip #2: This newest complaint initiates the latest of three ongoing cases filed by Mr. Bell asserting infringement of his photos. We have blogged about his copyright infringement litigation before. See here. The Indiana Lawyer also wrote today about Mr. Bell's copyright infringement lawsuits.  See here.  The Indiana Business Journal ran a similar piece.  Those articles include an interview with Paul Overhauser, Managing Partner of Overhauser law Offices.


Continue reading "Indiana Copyright Litigation: Richard Bell Files Another Copyright Infringement Lawsuit" »

April 8, 2014

Center for Intellectual Property Law and Innovation Holds Third Annual Symposium

Indianapolis, Indiana - On April 10, 2014, the Robert H. McKinney School of Law will hostMcKinney Photo.jpg "IP Jurisprudence in the New Technological Epoch: The Judiciary's Role in the Age of Biotechnology and Digital Media." The program will run from 9 a.m. to 5 p.m. and will provide 6.5 hours of continuing legal education.

Speaker: Robert A. Armitage, Consultant, IP Strategy & Policy

Location: Wynne Courtroom and Atrium, Inlow Hall, 530 W. New York Street, Indianapolis, Indiana

Attorney Registration: $100 (includes CLE credits)

General Admission: $25

Contact: Kyle Galster, kgalster@iupui.edu, 317-274-0042


9:00 to 9:10 a.m.
Introductory Remarks: Prof. John Schaibley, III, IP Center Executive Director

9:10 to 10:00 a.m.
Keynote Address: "Completing the Codification of U.S. Patent Law: Rising to the Challenge," Robert A. Armitage

10:00 to 11:00 a.m.
Trolls Under Attack: The Multiple Front Assault on NPE's/PAE's
Panel: Sharon Barner, Vice President-General Counsel, Cummins, Inc; Richard Rainey, Executive Counsel, IP Litigation, General Electric Co.; Hamid Piroozi, Director-Legal Purdue OTC; Brion St Amour, Head of IP, IURTC; Prof. John Schaibley (Panel Moderator)

Patent Assertion Entities have been a target for patent litigation reform efforts for many years. While the AIA contained certain provisions to deal with so-called patent trolls, attacks on these entities have multiplied and intensified in the last year. The House passed H.R. 3309, a bill would make dramatic changes to the patent litigation process (including enhanced pleading requirements and fee shifting), the President issued Executive Orders, the Supreme Court granted certiorari in Highmark Inc. v. Allcare and Octane Fitness v. ICON Health (standard of review for exceptional case finding under 35 U.S.C. §285), and numerous states have taken action against NPE's as well. The panel will explain and analyze these developments, focusing on the perceived need for reform, and the better mechanisms for reducing actual abuses of the system, while maintaining effective enforcement of patent rights.

11:00 to 11:10 a.m.

11:10 a.m. to Noon
Software Patents Under Attack: Patents Allegedly Inhibiting More Innovation Than They Incentivize

Panel: David Jones, Assistant General Counsel for IP Policy, Microsoft Corp.; Bruce Schelkopf, Vice President, Dep. General Counsel & Chief IP Officer, Ingersoll Rand; Kevin Erdman (Partner, Reichel IP), Prof. Gerard Magliocca (Panel Moderator)

With the Supreme Court's grant of certiorari in Alice Corp. v. CLS Bank Int'l, a software patent for reducing risk has put software patents in general at risk. Are there categories of technology that are a poor fit for patent protection, especially in light of freedom to operate concerns? Should Congress or the Courts make such judgments? Would hybrid IP rights better suit some current categories of patentable subject matter? Do some industries even need the incentive of patent exclusivity to innovate? Was Bilski the bellwether of a trend toward substantially contracting patent eligible subject matter? The panel will address these questions, explain and analyze applicable case law, compare U.S. and international treatment of such subject matter, evaluate the conflicting interests at work, and address the appropriate respective roles of Congress and the courts in this area.

Noon to 1:00 p.m.
Luncheon in Atrium

1:00 to 2:00 p.m.
Biotechnology Patents Under Attack: From Prometheus to Myriad, the Supreme Court's Narrowing View of Patent Eligible Subject Matter

Panel: Jim Kelley, Senior Director-Assistant General Patent Counsel, Eli Lilly and Co; Paul Berghoff (Partner, McDonnell Boehnen Hulbert & Berghoff), Prof. Emily Morris (Panel Moderator)

Rejecting the course-filter view of §101, the Supreme Court has employed judicially created categories of patent ineligible subject matter to invalidate key categories of biotechnology patents (e.g., Mayo v. Prometheus Laboratories, Inc., Ass'n for Molecular Pathology v. Myriad Genetics), while giving no weight to decades of USPTO practice, and no deference to the Federal Circuit, the specialized appellate court Congress created to develop and refine patent law. Has the Court failed in developing a coherent doctrine in light of the special issues posed by biotechnology, and is the Court institutionally competent to exclude broad categories of subject matter from patent eligibility? Should Congress provide a detailed code of patent ineligibility law? In the absence of Congressional action, what are Myriad's implications for pharma patents based on isolated, but naturally occurring substances? How will new USPTO rules address such questions? Has Prometheus stolen the fire of biotechnology, particularly personalized medicine? The panel will address these questions, analyze applicable case law, and evaluate whether judge-made patent law provides more doctrinal confusion or enlightenment, and whether Congress should exercise its plenary authority to codify with more specificity categories of patent eligible and ineligible subject matter. The panel will also discuss the March 4, 2014 USPTO Guidance memorandum implementing a new procedure to address changes in subject matter eligibility doctrine under Myriad and Prometheus.

2:00 to 3:00 p.m.
The Federal Circuit Under Attack: The Supreme Court's Recent Focus on IP - Diagnosing the Causes and Assessing the Results

Panel: Doug Norman, Vice President-Chief Patent Counsel, Eli Lilly and Co.; Kenneth Southall, Chief Patent Counsel, Cummins Inc.; Paul Berghoff (Partner, McDonnell Boehnen Hulbert & Berghoff), Prof. John Schaibley (Panel Moderator)

The Supreme Court issues less than half as many decisions as it did a generation ago, but increasingly grants certiorari in major IP issues, often unanimously reversing the Federal Circuit, the specialized court Congress created to develop and coherent and consistent body of patent law. The panel will analyze recent (e.g., Bilski, Myriad, Prometheus, Bowman v. Monsanto Co.) and pending (Limelight Networks v. Akamai Techs. (standard for inducing patent infringement), Nautilus v. Biosig Instruments (standard for indefiniteness)) cases before the Court, assessing that factors that influence the Court to grant review, and evaluating the Court's institutional competency in various areas of IP. If judge-made patent law is going to continue to be the primary mechanism for refining patent doctrine, in what areas should the Court defer to the Federal Circuit, and when should it intervene? Have the Justices generally concluded that the USPTO issues too many patents that fail to advance the useful arts, and that the Federal Circuit has failed to police adequately the judicially created exceptions to patent eligible subject matter? Prognostications will include possible Supreme Court review of the Federal Circuit's 6-4 en banc decision in Lighting Ballast Control LLC v. Philips Electronics North America Corp., reaffirming Cybor.

3:00 to 3:10 p.m.

3:10 to 4:00 p.m.
Copyright, Patents, and Human Rights: A Global Perspective, Prof. Lea Shaver

4:00-5:00 p.m.
Copyright Under Attack by Digital Media: The Need for a Copyright Act for the Digital Age

Panel: Kevin Erdman Partner, Reichel IP; Robert S. Meitus, Partner, Meitus Gelbert Rose LLP; Prof. Lea Shaver (Panel Moderator), Prof. John Schaibley

The last comprehensive copyright law revision occurred in 1976, before personal computers, the internet, cell phones, DVR's (or even VCR's) - in short, before the dawn of the digital age. Since 1976, a series of copyright law amendments have occurred, often representing deals by organized interest groups. The term of copyright protection has been expanded, and public domain works have had non-existent copyrights "restored." The economic and societal consequences of this ad hoc, piecemeal approach to copyright reform have been profound. Meanwhile, the courts have been developing the law in the light of these new technologies, beginning with the landmark Sony decision, "viewed as the 'Magna Carta' of both 'product innovation' and the 'technology age.'" In ABC, Inc. v. Aereo, anticipated to be one of the most important copyright cases since Sony, the Supreme Court confronts the question whether the "public performance" right is violated when a company retransmits an over-the-air broadcast to paid Internet subscribers. In the absence of clear congressional intent, how should the Court resolve the conflicting economic interests at stake? Is judicial decision making on such copyright scope questions a sensible way of dealing with the numerous copyright issues that new technologies inevitably spawn? Is Aereo an example of the need for a new Copyright Act for the Digital Age? Moreover, can the copyright reform movement learn from the patent reform movement that resulted in the America Invents Act? What can the continuing patent reform movement learn from the copyright law code based model? Does the detailed copyright code suggest caution for over codifying patent doctrine? What areas of doctrine should remain the domain of common law development?

5:00 to 6:00 p.m.                                                                                                         Complimentary cocktail reception in the Atrium following the Symposium. Reception co-hosted by the Indianapolis Bar Association Intellectual Property Section and the IP Center.

Practice Tip #1:

Registration with the conference center is now closed. However, anyone interested in attending the Symposium may contact Kyle Galster at kgalster@iupui.edu or (317) 274-0042.

Practice Tip #2:

Parking is available for a nominal fee at the campus Gateway Garage, located on the corner of Michigan and California Streets (Address is 525 Blackford Street).

Parking is also available for a nominal fee at the Natatorium Garage two blocks west of the law school.

Practice Tip #3:

More information may be found here.

April 7, 2014

Indiana Trademark Litigation: Order Inn Asserts Trademark Infringement by "Order In"

Indianapolis, Indiana - A trademark attorney for Order Inn, Inc. of Las Vegas, Nevada filed a lawsuit in the Southern District of Indiana alleging that TJ Enterprises of Indiana, LLC d/b/a Order In ("Order In") and Tom Ganser, both of Carmel, Indiana and other unknown "Doe" OrderInnPhoto.pngindividuals infringed trademarks for "ORDER INN", Registration Nos. 3,194,903 and 2,801,951, which have been issued by the U.S. Trademark Office.

Order Inn Hospitality Services, also known as Order Inn, was founded in 2001. The company's initial core product, Order Inn Room Service, was created to provide room service to guests of limited-service hotels and timeshares. Order Inn states that it has developed partnerships with over 10,000 hotels and 700 restaurants nationwide and that it does business in Indiana.

Order Inn asserts ownership over several registered trademarks for "Order Inn," among them a registration for "On-line ordering services in the field of restaurant take-out and delivery; on-line order fulfillment services for goods and services which hotel guests, residents or businesses may wish to purchase; promoting the goods and services of others by preparing and placing advertisements in menus placed in hotels, residences or businesses; providing information in the field of on-line restaurant ordering services."

Order Inn claims that, as a result of its extensive, continuous and exclusive use of the "Order Inn" trademark in connection with its services, that trademark has come to be recognized by consumers as identifying Order Inn's services as well as distinguishing them from services offered by others. It further claims that its trademark has developed substantial goodwill throughout the United States.

Order In, which also does business in Indiana, facilitates restaurant takeout and delivery through its website and via telephone. Order In is accused of trademark infringement of a registered trademark and false designation of origin. Ganser is alleged to be an owner and/or manager of Order In and to have personally participated in any trademark infringement. Both Order In and Ganser are accused of infringing upon the Order Inn trademark willfully, intentionally and deliberately and with full knowledge and willful disregard of Order Inn's intellectual property rights.

In its complaint, filed by a trademark lawyer for Order Inn, the following counts are alleged:

• Federal Trademark Infringement Under 15 U.S.C. §1114
• False Designation of Origin and Unfair Competition under 15 U.S.C. §1125(a)

Order Inn asks for an injunction; damages, including treble damages; interest; costs and attorney's fees

Practice Tip:

The protection afforded to a registered trademark is not exhaustive in scope. Among the limits to its applicability are restrictions based on the type of business to which the trademark pertains. From its website, it appears that Order Inn directs its efforts primarily towards guests at hotels, inns and similar temporary-lodging facilities. In contrast, Order In's offerings are not similarly limited.

Trademarks protection is also unavailable for generic words that merely describe the goods or services for sale. For example, while "Apple" could be trademarked for use in conjunction with the sale of computers, a company would not be allowed to trademark the term to refer to the sale of apples. Similarly here, Order Inn may have difficulty in showing that it should be allowed to prohibit nationwide the use by anyone else of the generic term "order in."

Continue reading "Indiana Trademark Litigation: Order Inn Asserts Trademark Infringement by "Order In" " »

April 3, 2014

Indiana Trademark Litigation: Noble Roman's Sues for Trademark Infringement

Indianapolis, Indiana - An Indiana trademark attorney for Noble Roman's, Inc. of NRPPicture.gifIndianapolis, Indiana filed a lawsuit in the Southern District of Indiana alleging that Sahara Sam's Indoor Water Park, LLC of Pennsauken, New Jersey ("Sahara") infringed its trademarks. These trademarks are: Noble Roman's®, Trademark Registration No. 987,069; THE BETTER PIZZA PEOPLE, Trademark Registration No. 1,920,428; and a design mark, Trademark Registration No. 1,682,308. Noble Roman's also states that it has registered the Tuscano's® mark. In addition to trademark infringement, Noble Roman's asserts that Sahara engaged in false designation of origin and unlawful competition. Noble Roman's has registered its marks with the U.S. Patent and Trademark Office.

Noble Roman's is in the business of franchising the operation of Noble Roman's pizza franchises that feature pizza, breadsticks, and other related food items to various franchisees throughout the world. Noble Roman's has used its trademarks, among them "Noble Roman's" and "The Better Pizza People," registered in 1974 and 1995, respectively, in commerce in connection with marketing, identifying, and promoting its pizza franchises.

On or about June 27, 2005, Noble Roman's and entered into two franchise agreements. Under the terms of the agreements, Sahara became a franchisee of Noble Roman's, licensed and authorized to sell "Noble Roman's" and "Tuscano's" branded food products using Noble Roman's intellectual property assets. Noble Roman's asserts that these agreements included terms relating to the accurate reporting of sales and timely payment of franchise fees and other fees.

Sahara is accused of failing to pay royalties as required under the agreement and of misreporting sales, among other things. Noble Roman's contends that Sahara purposely, intentionally and knowingly misreported its sales to Noble Roman's for the purpose of avoiding payment of franchise fees and/or royalties which were due.

Noble Roman's also contends that, after electing not to renew the franchise agreements, Sahara violated certain post-termination provisions of the Agreements, including those which require Sahara to: (1) cease to use any Noble Roman's proprietary products; and (2) remove from public view and display any signage or other articles containing or depicting the trademarks.

Sahara is further accused of having violated the non-competition covenants by selling, after termination of the franchise agreements, various food items "which can be utilized without knowledge gained from Noble Roman's."

Noble Roman's states that Sahara's actions were without the authorization or consent of Noble Roman's and that they constitute trademark infringement, in violation of 15 U.S.C. § 1114(1), as well as false designation of origin in violation of 15 U.S.C. § 1125.

The complaint, filed by an Indiana trademark lawyer, lists the following:

• Count One (Trademark Infringement)
• Count One [sic] (Breach of Contract)
• Count Two (Fraud)
• Count Three (Injunctive Relief)

Noble Roman's asks for injunctive relief, as well as judgment in its favor in amount to be proven at trial, together with interest, punitive damages, costs of collection and reasonable attorney's fees.

Practice Tip: Noble Roman's has been particularly aggressive in enforcing franchise agreements. Since 2007, it has also filed the following suits in the Southern District of Indiana:

February 12, 2014 - NOBLE ROMAN'S, INC. v. B & MP and LESLIE PERDRIAU

September 5, 2012 - NOBLE ROMAN'S, INC. v. VILLAGE PANTRY





July 17, 2009 - NOBLE ROMAN'S, INC. v. MARDAN, INC.




February 17, 2009 - NOBLE ROMAN'S, INC. v. EXPRESS LANE, INC.

February 10, 2009 - NOBLE ROMAN'S, INC. v. JJP&L, LLC



October 6, 2008 - NOBLE ROMAN'S INC. v. JAY'S GAS LLC




September 17, 2007 - NOBLE ROMAN'S, INC. v. THE FRENCH BAGUETTE, LLC et al.

July 26, 2007 - NOBLE ROMAN'S, INC. v. MR. RON'S, L.C.

July 19, 2007 - NOBLE ROMAN'S INC. v. BAUER BUILT, INC. et al.

Continue reading "Indiana Trademark Litigation: Noble Roman's Sues for Trademark Infringement" »

April 2, 2014

137 Trademark Registrations Issued to Indiana Companies in March 2014

The U.S. Trademark Office issued the following 137 trademarks to persons

and businesses in Indiana in March 2014 based on applications filed by

Indiana trademark attorneys:

Reg. Number Word Mark Click to View
4501535 FNEX View
4501451 ARTBABBLE View
4501411 SCOOP View
4501268 Q View

Continue reading " 137 Trademark Registrations Issued to Indiana Companies in March 2014" »

April 1, 2014

Patent Office Issues 177 Patents To Indiana Citizens in March 2014

The U.S. Patent Office issued the following 177 patent registrations to persons and businesses in Indiana in February 2014, based on applications filed by Indiana patent attorneys:

Patent No. Title
D701,587 Showerhead
D701,586 Showerhead
D701,417 Honeycomb shaped muffin pan
D701,366 Food product
8,682,562 Turbine engine thrust scheduling
8,682,411 Devices, systems and methods for epicardial cardiac monitoring system

Continue reading "Patent Office Issues 177 Patents To Indiana Citizens in March 2014" »

March 31, 2014

Indiana Trademark Litigation: Agler Sues Westheimer Over Use of Stratotone Mark

Fort Wayne, Indiana - Indiana trademark attorneys for Darryl Agler, doing business as The Stratotone Guitar Company of Fort Wayne, Indiana, filed a lawsuit in the Northern District of Indiana alleging that Westheimer Corporation of Northbrook, Illinois infringed the trademarkguitarpicture.bmp "STRATOTONE" (the "Stratotone mark"), Trademark Registration No. 3,986,754 which has been issued by the U.S. Patent and Trademark Office ("USPTO"). Counterfeiting, unfair competition, and false designation of origin arising under the Lanham Act, 15 U.S.C. § 1051 et seq., and the statutes and common law of the State of Indiana have also been alleged.

Agler custom manufactures guitars and sells them across the United States. Each of Agler's guitars is hand crafted from the wood of a customer's choosing and features vintage hardware. Agler currently accepts orders for his guitars on his website at www.stratotoneguitar.com. He also displays and sells his guitars, which sell at retail for $1,250 or more, at vintage guitar shows across the nation. Angler asserts that, since at least as early as January of 2007, his marketing and promotions in connection with his guitars have included the Stratotone Mark.

Agler claims a right to exclude others' use of the "Stratotone" mark in connection with guitars based on, inter alia, ownership of trademark rights to the mark "Stratotone" conferred by U.S. Reg. No. 3,986,754 ("'754 Registration"). The '754 Registration was issued by the USPTO in 2011 as a result of a 2006 application for the Stratotone mark in association with "musical instruments, namely, guitars."

According to the complaint, at the National Association of Music Merchants ("NAMM") show in 2010, Westheimer offered and sold cheaper guitars using the Stratatone mark. Agler states that he spoke to Westheimer personnel twice at this show, notifying them that Westheimer's products were infringing the Stratotone mark. Agler alleges that he was unable to sell any of his guitars at the NAMM show that year.

Agler indicates that, since the 2010 NAMM show, Westheimer has flooded the market with lower quality, cheaper guitars that bear the Stratotone mark. These guitars retail between $199.00 and $399.00. Agler contends that Westheimer's "Stratotone" guitars have destroyed the market for Agler's more expensive Stratotone guitars.

On April 25, 2013, Westheimer filed a petition to cancel the '754 Registration (the "Cancellation Petition") with the Trademark Trial and Appeal Board. The Cancellation Petition is currently pending.

In the complaint, filed by Indiana intellectual property lawyers for Agler, the following counts are alleged:

• Count I: Federal Unfair Competition and False Designation of Origin
• Count II: Federal Trademark Infringement
• Count III: Federal Trademark Counterfeiting
• Count IV: Common Law Unfair Competition and Trademark Infringement
• Count V: Unjust Enrichment
• Count VI: Conversion
• Count VII: Deception
• Count VIII: Indiana Crime Victim's Relief Act

Agler asks the court for injunctive relief; an accounting of damages; the surrender by Westheimer of items featuring the Stratotone mark; damages, including treble damages; and attorney's fees.

Practice Tip: Indiana Code §§ 35-43-4-3 and 35-43-5-3(a)(6) are criminal statutes, claimed in the complaint in conjunction with an attempt to parlay the accusation into an award for damages, costs and attorneys' fees. The Indiana Court of Appeals has discussed "theft" and "conversion" as they pertain to takings of intellectual property in several recent cases (see, for example, here and here) and has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property.

Continue reading "Indiana Trademark Litigation: Agler Sues Westheimer Over Use of Stratotone Mark" »

March 28, 2014

USPTO to Host Roundtables on AIA Trial Proceedings in Eight Cities Nationwide

Alexandria, Virginia - Administrative Patent Judges will share information and collect public input about inter partes review and covered business method review proceedings.

usmap picture.bmpWashington - The U.S. Department of Commerce's United States Patent and Trademark Office ("USPTO") announced this week that it will host a series of roundtables across the country to educate the public and collect feedback about the America Invents Act ("AIA") trial proceedings. The series will begin on April 15 and run until May 8, 2014, with roundtables in Alexandria, VA; New York City; Chicago; Detroit; Silicon Valley; Seattle; Dallas; and Denver. The roundtables provide an opportunity to bring stakeholders together with USPTO administrative patent judges to discuss the inter partes review and covered business method review proceedings.

"These roundtables are a part of USPTO's ongoing efforts to provide more opportunities for the public and other key stakeholders to share ideas, feedback, experiences and insights on additional ways we can improve our processes," said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle Lee.

The roundtables will begin with a lecture focused on the trial process, lessons learned, and previously unreleased statistics about AIA trial filings. The roundtables also will feature mock conference calls targeted on motions for additional discovery and claim amendments. During these mock conference calls, administrative patent judges will identify successful techniques for winning a motion as well as points for improvement. The roundtables will conclude with a panel discussion with administrative patent judges and local practitioners with knowledge and experience with AIA trials. The panel discussion will delve into all aspects of the AIA trials, and the public will have the opportunity to give input throughout the discussion.

Participation in the roundtables is free and open to the public. Seating is available on a first-come, first-served basis. The roundtables in Alexandria, VA on April 15 and Denver on May 8 will be webcast live through the USPTO website. More details about the roundtable logistics, venues, and webcast access information will be available on the Patent Trial and Appeal Board (PTAB) roundtable landing page.

Anyone with non-press inquiries may contact Janet Gongola via email at Janet.Gongola@uspto.gov.

Practice Tip: The Board Trial Rules and Practice Guide can be found here.

March 27, 2014

Indiana Patent Litigation: Orthopaedic Hospital Seeks Injunction and Damages for Patent Infringement

Fort Wayne, Indiana - Patent attorneys for Orthopaedic Hospital of Los Angeles, California (the "Hospital") filed a lawsuit in the Central District of California alleging that DePuy Patent-Picture.bmpOrthopaedics, Inc. of Warsaw, Indiana ("DePuy") infringed Oxidation-Resistant and Wear-Resistant Polyethylenes for Human Joint Replacements and Methods for Making Them, Patent No. 8,658,710, which has been issued by the U.S. Patent Office. The lawsuit was transferred to the Northern District of Indiana pursuant to a joint stipulation by the parties.

The Hospital, located in Los Angeles, is an independent nonprofit charitable organization that treats children with musculoskeletal disorders and conducts scientific research aimed at improving orthopaedic materials, implants, surgical instrumentation, and surgical techniques.

At issue in this Indiana patent lawsuit is United States Patent No. 8,658,710 (the "'710 patent"), which was issued on February 25, 2014. The Hospital asserts that it is the owner of the '710 patent, and that it possesses the exclusive right to bring suit for infringement of the patent.

The Hospital contends that DePuy is infringing and has infringed the '710 patent by making, selling, offering for sale, and using infringing products, including but not limited to DePuy's AOX Antioxidant Polyethylene for Sigma and LCS Rotating Platform Systems. It is also claimed that DePuy's infringement of the '710 patent has been and continues to be willful, deliberate, and/or objectively reckless.

The Hospital further asserts that DePuy has known of the '710 patent since at least February 25, 2014, when the patent issued. It also states that DePuy had constructive notice of the '710 patent by operation of law, as the Hospital and any of its predecessors-in-interest have complied with all marking requirements of 35 U.S.C. § 287.

A single-count complaint asserting patent infringement was filed by California patent lawyers for the Hospital. The Hospital asks that the court:

• Adjudge that DePuy has infringed and is infringing the '710 patent;
• Preliminarily and/or permanently enjoin DePuy and its affiliates and agents from further    infringement, including inducement and contributory infringement, of the '710 patent;
• Award damages for willful infringement of three times the damages so determined, as provided by 35 U.S.C. § 284, together with interest;
• Order an accounting of all accrued damages;
• Award any supplemental damages to the Hospital;
• Award the Hospital their costs and, where appropriate, reasonable attorneys' fees under 35 U.S.C. § 285; and
• Award compensatory damages to the Hospital, together with interest.

Practice Tip

The question of willfulness in the context of patent infringement consists of two elements: (1) an objective element that is often, but not always, a question of law, and (2) a subjective element that is inherently a question of fact, to be decided by the jury.

Under the first prong, if an "accused infringer's position is susceptible to a reasonable conclusion of no infringement," the infringer's conduct cannot be objectively unreasonable. Conversely, an action is objectively unreasonable if the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.

When considering the second prong -- the element of subjective willfulness -- fact-finders should consider: (1) whether the infringer copied the patentee's commercial products; (2) whether the infringer presented evidence that it obtained legal opinions of patent counsel to justify its infringing actions; (3) whether the infringer attempted to avoid infringement by designing around the patents; and (4) whether the infringer acted in accordance with the standards of commerce.

Continue reading "Indiana Patent Litigation: Orthopaedic Hospital Seeks Injunction and Damages for Patent Infringement" »