July 31, 2015

Criminal Copyright Infringement - 17 U.S.C. § 506(a) and 18 U.S.C. § 2319

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The principal criminal statute protecting copyrighted works is 17 U.S.C. § 506(a), which provides that "[a]ny person who infringes a copyright willfully and for purposes of commercial advantage or private financial gain" shall be punished as provided in 18 U.S.C. § 2319. Section 2319 provides, in pertinent part, that a 5-year felony shall apply if the offense "consists of the reproduction or distribution, during any 180-day period, of at least 10 copies or phonorecords, of 1 or more copyrighted works, with a retail value of more than $2,500." 18 U.S.C. § 2319(b)(1).

The 1992 amendments to section 2319 have made it possible to pursue felony-level sanctions for violations relating to all types of copyrighted works, including computer software and other works written, stored or transmitted in a digital format, if the other elements of the statute are satisfied. Felony penalties attach only to violations of a victim's rights of reproduction or distribution in the quantity stated. A misdemeanor shall apply if the defendant does not meet the numerical and monetary thresholds, or if the defendant is involved in the infringement of the other rights bestowed upon the copyright holder, including the right to prepare derivative works, or the right to publicly perform a copyrighted work.

There are four essential elements to a charge of criminal copyright infringement: (1) that a valid copyright; (2) was infringed by the defendant; (3) willfully; and (4) for purposes of commercial advantage or private financial gain. Attempts to infringe are prohibited to the same extent as the completed act. Conspiracies to violate the Copyright Act can be prosecuted under 18 U.S.C. § 371. A minority of courts also require that the government prove the absence of a first sale, and refer to this as a fifth element of a section 506(a) offense. However, the majority position is that the absence of a first sale is an affirmative defense.

The elements of criminal copyright infringement will be discussed in upcoming blog posts.

July 30, 2015

Copyright Law Introduction - Federal Law Preempts State Law

Historically, copyright protection had been provided through a dual system under which the federal government, by statute, provided limited monopolies for intellectual property concurrently with state statutory and common laws that established roughly equivalent protections. In 1976, Congress fundamentally changed this system by introducing a single, preemptive federal statutory scheme. The federal preemption provision, codified at 17 U.S.C. § 301(a), states that:

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

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As stated in the legislative history, "[a]s long as a work fits within one of the general subject matter categories [of federal statutory copyrights], the bill prevents the States from protecting it even if it fails to achieve federal statutory copyright because it is too minimal or lacking in originality to qualify, or because it has fallen into the public domain." H.R. Rep. No. 1476, 94th Cong., 2d Sess. 51, 131 (1976).

Section 301 establishes a two-pronged test to determine whether preemption applies. Under this preemption test, states are precluded from enforcing penalties for copyright violations if the intellectual property at issue falls within the "subject matter of copyright" as defined by federal law and if the claimed property rights are "equivalent to" the exclusive rights provided by federal copyright law.

Practice Tip: Indiana is one of over 40 states with a "true name and address" provision in its code. That section applies only to tangible "recordings" of sounds and/or visual images. Under § 24-4-10-4:

A person may not:
(1) sell;
(2) rent;
(3) transport; or
(4) possess;

a recording for commercial gain or personal financial gain if the recording does not conspicuously display the true name and address of the manufacturer of the recording.

Violation of that provision constitutes a Class A infraction.


July 28, 2015

Supreme Court Keeps Brulotte - Post-Expiration Patent Royalties are Still Unlawful Per Se

Washington, D.C. - The U.S. Supreme Court recently decided a patent-royalty lawsuit, Kimble v. Marvel Entertainment, LLC. The Court, divided 6-3, ruled against Kimble.

Stephen Kimble sued Marvel in 1997 for infringing his patent, U. S. Patent No. 5,072,856,

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 with its "Web Blaster," a toy that allowed users to mimic Spider-Man's web-slinging superpower. The litigation ended with a settlement wherein Marvel purchased Kimble's patent for a lump sum and agreed to pay a 3% perpetual royalty on future sales.

Patent attorneys for Marvel later discovered controlling authority, Brulotte v. Thys Co., 379 U. S. 29 (1964), of which both parties had earlier been unaware. Under Brulotte, an agreement requiring royalties to be paid past the expiration of the patent is unlawful per se. Marvel sued for declaratory relief, asking for a judgment that it could stop paying royalties to Kimble. The district court granted relief to Marvel and the Ninth Circuit affirmed.

In the instant patent litigation, Kimble asked the Supreme Court to overturn Brulotte. The Court acknowledged that Brulotte has been severely criticized but, invoking stare decisis, declined to overrule the longstanding precedent. Stare decisis was particularly appropriate in this litigation, the Court stated, because Brulotte interprets a statute. Consequently, noted the Court, criticisms of the Court's interpretation are "more appropriately addressed to Congress."

Regarding the substance of the ruling, "a patent typically expires 20 years from the day the application for it was filed," stated Justice Kagan, writing for the Court. "And when the patent expires, the patentee's prerogatives expire too, and the right to make or use the article, free from all restriction, passes to the public." Agreements that encumber this freedom, including the settlement into which Kimble and Marvel entered, run "counter to the policy and purpose of the patent laws."

Justice Alito's dissent argued that the decision in Brulotte constituted "a clear case of judicial overreach" that resulted in a "baseless and damaging precedent." Brulotte, he stated, had not been based on statutory interpretation but instead had been based "on an economic theory--and one that has been debunked."

The dissent continued that stare decisis did not require the Court to uphold Brulotte's per se rule. Moreover, it stated, "Brulotte's holding had no basis in the law. Its reasoning has been thoroughly disproved. It poses economic barriers that stifle innovation. And it unsettles contractual expectations." The dissent concluded that the Court should have overruled its obvious mistake.

Justice Kagan delivered the opinion of the Court, in which Justices Scalia, Kennedy, Ginsburg, Breyer and Sotomajor joined. Justice Alito dissented, joined by Chief Justice Roberts and Justice Thomas.

July 24, 2015

Seventh Circuit Trademark Law: WD-40 Did Not Infringe "Inhibitor" Trademark

Chicago, Illinois - The United States Court of Appeals for the Seventh Circuit affirmed the 

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ruling of the United States District Court for the Northern District of Illinois, Western Division in the matter of Sorenson v. WD-40 Company, holding that WD-40's use of "inhibitor" and a crosshair graphic on its product labels did not constitute trademark infringement.

Plaintiff Jeffrey Sorensen founded and is the CEO of a company that produces a line of rust-inhibiting products, which were first sold in 1997. These products contain a substance called volatile corrosion inhibitor ("VCI"). Sorenson owns a federally registered trademark - THE INHIBITOR - for this line of products. He also claims common-law trademark rights to an orange-and-black crosshair design mark that is associated with these products.

In the trial-court litigation, trademark attorneys for Sorenson accused the WD-40 Company of infringing these two marks with its "Specialist" product line, which was introduced in 2011. One product in this line, the "WD-40 Specialist Long-Term Corrosion Inhibitor," contains VCI and also has a similar purpose to Sorenson's VCI product. On that WD-40 product, both the word "inhibitor" and an orange crosshair design, are used. Sorenson sued alleging trademark infringement and unfair competition.

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On a motion for summary judgment, the trial court held in favor of WD-40 on all counts. It found that WD-40's use of the word "inhibitor" constituted a non-trademark descriptive fair use. The trial court also held that insufficient evidence to show a likelihood of confusion between the two companies' crosshair graphics had been presented by Sorenson.

The Seventh Circuit affirmed. While it noted that some of the factors in the likelihood-of-confusion analysis supported Sorenson, the "three most important factors--similarity of the marks, bad faith intent, and evidence of actual confusion--all point decisively in favor of WD-40."

The court concluded by noting that "the clear weakness of Sorenson's marks" significantly influenced its decision. Also of particular importance to the court was the dissimilarity of the marks, held the Seventh Circuit, which stated, "because we conclude that no consumer would think that the marks are similar, we cannot imagine any consumer being confused."

The case was assigned to Hon. William J. Bauer, Hon. Joel M. Flaum and Hon. Daniel A. Manion of the United States Court of Appeals for the Seventh Circuit and assigned Case No. 3:12-cv-50417.


July 23, 2015

Indiana Trade Secret Litigation: Angie's List Alleges Theft of Trade Secrets by Amazon Local and Employees

Indianapolis, Indiana - Indiana intellectual property lawyers for Angie's List Inc. of Indianapolis, Indiana sued in the Southern District of Indiana alleging theft of trade secrets. The Defendants in this litigation are AmazonLocal LLC of Seattle, Washington, Michael Albo, Kristin Baker, Dan Beary, Colton Bozigian, Jake Connerton, Adam DiVincenzo, Brandon Goodwyn, Kristen Haught, Justin Hillman, Amit Jain, Joshua Keezer, Olivia Landergan, Daniel Malamud, Raissa Masket, Samantha McDonald, Jason Patrao, Sharon Porter, Darren Reinstein, Billy Restrepo, Michael Shmunis, and Jacquelyn Vail.

In its 42-page complaint, Angie's List alleges that competing business Amazon Local

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 and some of its employees misappropriated proprietary information belonging to Angie's List by fraudulently obtaining membership accounts and, using this members-only access, obtained and misused proprietary information about thousands of service providers about which Angie's List had gathered data.

This federal lawsuit alleges that the data downloaded by Defendants from Angie's List was subject to a membership agreement, which was a condition of membership and wherein members agreed not to "reproduce, duplicate, copy, sell, re-sell or exploit" any of the data. These restrictions were ignored, says Angie's List, and instead its proprietary information has been used to build a database of service providers for Amazon Local's use.

The complaint, filed by Indiana trade secret attorneys for Angie's List, includes the following claims:

• Count I: Computer Fraud and Abuse Act
• Count II: Breach of Contract
• Count III: Tortious Interference with Contract
• Count IV: Misappropriation of Trade Secrets
• Count V: Conversion
• Count VI: Theft
• Count VII: Unfair Competition
• Count VIII: Computer Tresspass [sic]
• Count IX: Violation of the Stored Communications Act
• Count X: Civil Conspiracy and Concert of Action

• Count XI: Request for Preliminary and Permanent Injunctive Relief

Angie's List seeks damages and injunctive relief.

The case was assigned to Chief Judge Jane E. Magnus-Stinson and Magistrate Judge Debra McVicker Lynch in the Southern District of Indiana and assigned Case No. 1:15-cv-00968-JMS-DML.

Continue reading "Indiana Trade Secret Litigation: Angie's List Alleges Theft of Trade Secrets by Amazon Local and Employees" »

July 22, 2015

Indiana Patent Litigation: Lilly Adds Mylan to List of Defendants Accused of Infringing Alimta

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Indianapolis, Indiana - An Indiana patent attorney for Eli Lilly and Company of Indianapolis, Indiana sued in the Southern District of Indiana alleging that Mylan Laboratories Limited of Hyderabad, India; Mylan Pharmaceuticals Inc. of Morgantown, West Virginia; and Mylan Inc. of Canonsburg, Pennsylvania (collectively, "Mylan") infringed Patent No. 7,772,209 ("the 209 patent"), which covers the pharmaceutical product Alimta®.

Lilly is engaged in the business of research, development, manufacture and sale of pharmaceuticals worldwide. Alimta, which is licensed to Lilly, is a chemotherapy agent used for the treatment of various types of cancer. Alimta is composed of the pharmaceutical chemical pemetrexed disodium. It is indicated, in combination with cisplatin, (a) for the treatment of patients with malignant pleural mesothelioma, or (b) for the initial treatment of locally advanced or metastatic nonsquamous non-small cell lung cancer.

The drug is also indicated as a single agent for the treatment of patients with locally advanced or metastatic nonsquamous non-small cell lung cancer after prior chemotherapy. Additionally, Alimta is used for maintenance treatment of patients with locally advanced or metastatic nonsquamous non-small cell lung cancer whose disease has not progressed after four cycles of platinum-based first-line chemotherapy. One or more claims of U.S. Patent No. 7,772,209 cover a method of administering pemetrexed disodium to a patient in need thereof that also involves administration of folic acid and vitamin B12.

This Indiana patent infringement lawsuit arises out of the filing by Defendants of an Abbreviated New Drug Application ("ANDA") with the U.S. Food and Drug Administration ("FDA") seeking approval to manufacture and sell generic versions of Alimta prior to the expiration of the '209 patent. Defendants included as a part their ANDA filing a certification of the type described in Section 505(j)(2)(A)(vii)(IV) of the Food, Drug and Cosmetic Act, 21 U.S.C. § 55(j)(2)(A)(vii)(IV), with respect to the '209 patent, asserting that the claims of the '209 patent are invalid, unenforceable, and/or not infringed by the manufacture, use, offer for sale, or sale of Defendants' ANDA products.

In its patent infringement complaint, filed by an Indiana patent lawyer, Lilly states that Defendants intends to engage in the manufacture, use, offer for sale and/or sale of Defendants' ANDA Products and the proposed labeling therefor immediately and imminently upon approval their ANDA filing, i.e., prior to the expiration of the '209 patent. Lilly asserts that Defendants' actions constitute and/or will constitute infringement of the '209 patent, active inducement of infringement of the '209 patent, and contribution to the infringement by others of the '209 patent.

Lilly lists a single count in this lawsuit - infringement of U.S. Patent No. 7,772,209 - and asks the court for:

a) A judgment that Mylan has infringed the '209 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of the '209 patent;
b) A judgment ordering that the effective date of any FDA approval for Mylan to make, use, offer for sale, sell, market, distribute, or import Mylan's ANDA Product, or any product the use of which infringes the '209 patent, be not earlier than the expiration date of the '209 patent, inclusive of any extension(s) and additional period(s) of exclusivity;
c) A preliminary and permanent injunction enjoining Mylan, and all persons acting in concert with Mylan, from making, using, selling, offering for sale, marketing, distributing, or importing Mylan's ANDA Product, or any product the use of which infringes the '209 patent, or the inducement of or contribution to any of the foregoing, prior to the expiration date of the '209 patent, inclusive of any extension(s) and additional period(s) of exclusivity;
d) A judgment declaring that making, using, selling, offering for sale, marketing, distributing, or importing of Mylan's ANDA Product, or any product the use of which infringes the '209 patent, prior to the expiration date of the '209 patent, infringes, will infringe, will actively induce infringement of, and/or will contribute to the infringement by other of the '209 patent; and

e) A declaration that this is an exceptional case and an award of attorneys' fees pursuant to 35 U.S.C. § 285.

Practice Tip: Lilly has also sued all Mylan Defendants for patent infringement of Effient®. It has also won a lawsuit, which was heard by the Federal Circuit, against Mylan Pharmaceuticals Inc. for infringing the patented Strattera®.


Continue reading "Indiana Patent Litigation: Lilly Adds Mylan to List of Defendants Accused of Infringing Alimta" »

July 20, 2015

Indiana Trademark Litigation: Trademark Infringement Litigation to Proceed in Federal Court

Indianapolis, Indiana - An Indiana state court complaint filed by Indiana trademark attorneys for 7E Fit Spa Licensing Group LLC, 7E Holdings 1 LLC, and 7E LLC was removed to the Indianapolis Division of the Southern District of Indiana upon the request of trademark lawyers for Defendants 7EFS of Highlands Ranch, LLC, Spectrum Medspa, Gordon Smith and Jane Smith.

Plaintiffs contend that they entered into various agreements with Defendants, including licensing and operating agreements, and that Defendants breached portions of one or more of the agreements in the operation of Defendants' Littleton, Colorado business establishment.

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Defendants are accused of violating the Lanham Act - 15 U.S.C. § 1114(a), 15 U.S.C. § 1125(a) and 15 U.S.C. § l 125(c) - as well as common law trademark infringement, unfair competition, breach of contract, tortious interference, breach of fiduciary duties and conversion.

Plaintiffs also included a civil claim under the Indiana Crime Victims Act, claiming that they have suffered a pecuniary loss as a result of Defendants' violation of Indiana Code § 35-43 et seq. and that, as a consequence, they are entitled to treble damages, costs of the action and reasonable attorney's fees.

Plaintiffs seek both equitable relief and damages.

The case was assigned to Judge Tanya Walton Pratt and Magistrate Judge Tim A. Baker in the Southern District of Indiana and assigned Case No. 1:15-cv-01109-TWP-TAB.

July 14, 2015

House Judiciary Committee Approves Patent Reform Bill by Substantial, Bipartisan Vote

Washington, D.C. - The House Judiciary Committee recently approved the Innovation Act (H.R. 9) by a vote of 24-8. This bipartisan bill takes steps to combat the ever-increasing problem of abusive patent litigation. The legislation addresses abusive practices taking place in federal courts.

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The Innovation Act is supported by a wide range of groups that include stakeholders from all areas of the economy representing businesses of all kinds from every corner of the United States, including independent inventors and innovators.

Key Components of the Innovation Act include:

• Targeting Abusive Patent Litigation: The bill targets abusive patent litigation behavior and not specific entities with the goal of preventing individuals from taking advantage of gaps in the system to engage in litigation extortion. It does not attempt to eliminate valid patent litigation.
• Protecting the Patent System: This legislation does not diminish or devalue patent rights in any way.
• Increasing Transparency: This legislation requires greater transparency in patent litigation and requires parties to explain exactly why they are suing a business or individual. Requiring parties to do a bit of due diligence up front before filing an infringement suit is just plain common sense. It not only reduces litigation expenses, but saves the court's time and resources. Greater transparency and information is a good thing and it makes our patent system stronger.
• Preventing Extortion: The legislation prevents any one party in a patent lawsuit from unilaterally racking up extreme litigation costs for another party in an attempt to force a dubious settlement.
• Providing Greater Clarity: The legislation provides for more clarity surrounding initial discovery, case management, joinder and the common law doctrine of customer stays. The bill works hand-in-hand with the procedures and practices of the Judicial Conference and the courts.
• Small Business Education: The bill provides for small business education and outreach by the U.S. Patent and Trademark Office.
• Placing Reasonable Limits on Venue in Patent Cases: Restores Congress's intent that patent infringement suits only be brought in judicial districts that have some reasonable connection to the dispute. Since 1897, Congress has regulated the venue in which patent actions may be brought. These limits protect parties against the burden and inconvenience of litigating patent lawsuits in districts that are remote from any of the underlying events in the case. In 1990, the U.S. Court of Appeals for the Federal Circuit "reinterpreted" that statute in a way that robbed it of all effect. The Innovation Act corrects the Federal Circuit's error, and restores the congressional purpose of placing some reasonable limits on the venue where a patent action may be brought.

• Reducing Unnecessary, Expensive Discovery: Requires that courts stay discovery in a patent case when a motion to dismiss or a motion to transfer has been filed. This will help parties avoid expensive, wasteful discovery that might otherwise be used as leverage by patent trolls looking for a quick settlement when a case can be resolved quickly and early.

House Judiciary Committee Chairman and chief sponsor of the Innovation Act Bob Goodlatte (R-Va.), Representative Peter DeFazio (D-Ore.), Subcommittee on Courts, Intellectual Property, and the Internet Chairman Darrell Issa (R-Calif..), Subcommittee on Courts, Intellectual Property, and the Internet Ranking Member Jerrold Nadler (D-N.Y.), House Science Committee Chairman Lamar Smith (R-Texas), and House Energy and Commerce's Subcommittee on Communications and Technology Ranking Member Anna Eshoo (D-Calif.) praised the vote.

Chairman Goodlatte: "At its core, abusive patent litigation is a drag on our economy and stifles innovation. It is a problem that impacts businesses and industries of all types and the jobs of the people who work for them, from the tech sector to the hospitality industry and even grocery stores. Everyone from independent inventors, to start-ups, to mid-and large-sized businesses face this constant threat. The tens of billions of dollars squandered on settlements and litigation expenses associated with abusive patent suits represent truly wasted capital - capital that could have been used to create new jobs, fund research and development, and create new innovations and technologies.

"The Innovation Act takes the necessary steps to address abusive patent litigation, while protecting legitimate property rights. Specifically, the legislation targets abusive behavior rather than specific entities, preserves valid patent enforcement tools, preserves patent property rights, promotes invention by independents and small businesses, and strengthens the overall patent system."

Representative DeFazio: "For years, entrepreneurs across the country have been held hostage by patent trolls and have operated at the mercy of opportunistic swindlers who seek to line their own pockets at the expense of small businesses, middle-class jobs, and billions of dollars extracted from the US economy. Until now, there has been little to no recourse for victims of patent trolling against these expensive, frivolous suits, but with the passage of the Innovation Act, there is finally a light at the end of the tunnel for American businesses. I am proud to join with Chairman Goodlatte on this meaningful bipartisan legislation. We came close to getting this done last year, and I urge my colleagues to pass this legislation as swiftly as possible."

Subcommittee Chairman Issa: "George Washington once observed that a people 'who are possessed of the spirit of commerce, who see and who will pursue their advantages, may achieve almost anything.' The American dream has long been a vision of bold entrepreneurs who are presented with the opportunity to turn any good idea into economic prosperity with enough hard work.

"Unfortunately, we increasingly see innovation stifled by patent trolls who see our patent system not as a tool to spur inventiveness, but as a club with which to bludgeon those who truly seek to innovate and grow our economy. The abuse of our patent system is widely recognized, at this point. We must restore the promise that hard work and ingenuity lead not to crippling, frivolous lawsuits, but to well-deserved success."

Subcommittee Ranking Member Nadler: "The United States leads the world in innovation and creativity, and it is our strong patent system that helps fuel economic growth by enabling creators to protect and exploit their inventions. I support the Innovation Act because a strong patent system requires that we protect businesses and consumers from the harm caused by abusive litigation. But I am mindful that, in addressing the patent troll problem, we must not impose too great a burden on legitimate plaintiffs. A strong patent system also depends on inventors having the ability to protect their creations in court."

Representative Smith: "I thank Chairman Goodlatte for his initiative to continue this crucial effort to put an end to the work of abusive of patent trolls. Patent trolls engage in legalized extortion that stifles innovation, economic growth, and job creation. That is why I support this legislation which will restore accountability and rein in abusive, frivolous, costly, and unnecessary lawsuits."

Representative Eshoo: "Abusive patent litigation is robbing our innovation economy of its full potential because the U.S. patent system is not working in a wholesome and robust way. When businesses aren't bogged down with abusive patent litigation, they spend on average $211 million more on research and development than firms that have to redirect resources to protect their original ideas in court. The Innovation Act voted out of the Judiciary Committee today strengthens our patent system."

July 13, 2015

Seventh Circuit Copyright Litigation: Appellate Court Dismisses Copyright Appeal as Premature

Chicago, Illinois - Richard Bell, an Indiana copyright attorney and professional photographer appealed a ruling by the United States District for the Southern District of Indiana, Indianapolis Division to the United States Court of Appeals for the Seventh Circuit. The Seventh Circuit dismissed the appeal for lack of jurisdiction.

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In this copyright lawsuit, Bell, a repeat Plaintiff in the federal courts of Indiana, alleged copyright infringement by multiple Defendants in a lawsuit that he filed on his own behalf in the Southern District of Indiana. He asserted that each Defendant had impermissibly displayed a photo that he owns on websites promoting their respective businesses. His copyright infringement complaint sought both damages and an injunction prohibiting future use of the photo.

Defendants moved for summary judgment on the issue of damages. The district court found that Bell could not demonstrate how Defendants had caused him financial harm and, thus, Bell was entitled to no monetary recovery. After that ruling, the trial court issued a judgment against Bell, which Bell appealed to the Seventh Circuit.

The Seventh Circuit declined to hear the matter on the grounds that it lacked jurisdiction, noting that the district court had ruled on the issue of damages but not on the issue of injunctive relief. The appellate court would not have jurisdiction under 28 U.S.C. § 1291 until a "final decision" had been reached. In turn, such a "final decision" required that the litigation had been concluded on its merits.

Practice Tip: Bell's approach here is curious. First, he appealed the district court's ruling. Then, he apparently argued to the Seventh Circuit that his own appeal was premature because the district court's judgment had not been final. As the appellate court noted, "Bell is correct: the court did not resolve his claims for injunctive relief. As such, the district court's ruling was not final, and Bell's appeal is premature."

Practice Tip: Richard Bell has sued hundreds of defendants for copyright infringement in the Indiana federal courts. Previous blog posts regarding his litigation include:

Bell Rings in the Holiday Weekend with a New Copyright Lawsuit
Bell Files New Copyright Infringement Lawsuit
Bell Sues Georgia-Base FindTicketsFast.com for Copyright Infringement
Richard Bell Files Two New Copyright Infringement Lawsuits
Court Prevents Copyright Plaintiff Bell from Outmaneuvering Legal System; Orders Bell to Pay Almost $34,000 in Fees and Costs
Three Default Judgments of $2,500 Ordered for Copyright Infringement
Court Orders Severance of Misjoined Copyright Infringement Complaint

Richard Bell Files Another Copyright Infringement Lawsuit

Continue reading "Seventh Circuit Copyright Litigation: Appellate Court Dismisses Copyright Appeal as Premature" »

July 10, 2015

Patent Quality Chat Webinar: Face-to-Face Examiner Interviews and a Demonstration of USPTO Tools

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Alexandria, Virginia - The United States Patent and Trademark Office ("USPTO") will hold its next in a series of Patent Quality Chats on Tuesday, July 14th, with its second Chat on this month's topic - Face-to-Face Examiner Interviews: A Demonstration of USPTO Tools hosted by Director of Technology Center 2400 Timothy Callahan. Mr. Callahan will be demonstrating USPTO tools for virtual, face-to-face interviews and discussing various initiatives for enhancing the quality of Examiner-Applicant interviews while collecting feedback and listening for new stakeholder ideas on the same.

The USPTO held its first Patent Quality Chat webinar in June; that month's topic was Clarity of the Record, hosted by Deputy Commissioner for Patent Examination Policy Drew Hirshfeld. Deputy Commissioner Hirshfeld discussed various patent examiner training modules covering the topics of 35 U.S.C § 112, functional claiming, and making the record clear; he also reviewed the Clarity of the Record Quality Initiative. A video recording of this 1-hour inaugural event can be found here and is also linked on the USPTO's Patent Quality Chat webpage where the slide presentation from the June 9th event can also be found.

Regularly scheduled on the second Tuesday of each month, these Patent Quality Chats are a lunchtime webinar series designed to provide information on various patent quality topics and to continue the dialogue between the USPTO and its stakeholders about enhancing patent quality.

Continue reading "Patent Quality Chat Webinar: Face-to-Face Examiner Interviews and a Demonstration of USPTO Tools" »

July 9, 2015

Patent Office Issues 194 Patents To Indiana Citizens in June 2015

The U.S. Patent Office issued the following 194 patent registrations to persons and businesses in Indiana in June 2015, based on applications filed by Indiana patent attorneys:

PAT. NO. Title
D733,329 Wall panel
D733,328 Wall panel
9071116 Apparatus for installing stator winding conductors
9070987 Connector with secure wafer retention
9070518 Starter system
9070023 System and method of alerting a driver that visual perception of pedestrian may be difficult
9068949 System and method for multiplex spectroscopic imaging
9068338 Lift station flow diverter and method of using same
9068123 Multipurpose coke plant for synthetic fuel production
9068038 Extrudable pressure sensitive adhesive composition and methods for preparing the same



Continue reading "Patent Office Issues 194 Patents To Indiana Citizens in June 2015" »

July 7, 2015

Indiana Patent Litigation: Lilly and Lupin in Federal Court Anew, Patent Infringement of Axiron Now Alleged

Indianapolis, Indiana - In conjunction with non-Indiana co-counsel, an Indiana patent attorney for Eli Lilly and Company, Eli Lilly Export S.A. (collectively, "Lilly") and Acrux DDS Pty Ltd., sued in the Southern District of Indiana alleging that Lupin Ltd. of Mubai, India and Lupin Pharmaceuticals, Inc. of Baltimore, Maryland infringed on various of Plaintiffs' patents, including U.S. Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520. These patents have been issued by the U.S. Patent Office.

Lilly is engaged in the business of research, development, manufacture and sale of 

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pharmaceutical products worldwide. Acrux is engaged in the development and commercialization of pharmaceutical products. They sell their products worldwide. The Lupin Defendants are generic pharmaceutical companies that develop, manufacture, market, and distribute generic pharmaceutical products for sale.

At issue in this patent litigation are U.S. Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520. These patents are alleged to cover a testosterone metered transdermal solution used to treat males for conditions associated with a deficiency or absence of endogenous testosterone. This pharmaceutical product, trademarked as Axiron®, is marketed and sold by Lilly.

Plaintiffs contend that the Abbreviated New Drug Application No. 208061 submitted in the name of Lupin Ltd. to the U.S. Food and Drug Administration for approval to market a generic version of Lilly's Axiron product constitutes patent infringement.

In its complaint, filed by an Indiana patent lawyer, Lilly alleges the following counts:

• Count I for Patent Infringement: Direct Infringement of U.S. Patent No. 8,419,307
• Count II for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,419,307
• Count III for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,419,307
• Count IV for Patent Infringement: Direct Infringement of U.S. Patent No. 8,177,449
• Count V for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,177,449
• Count VI for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,177,449
• Count VII for Patent Infringement: Direct Infringement of U.S. Patent No. 8,435,944
• Count VIII for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,435,944
• Count IX for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,435,944
• Count X for Patent Infringement: Direct Infringement of U.S. Patent No. 8,807,861
• Count XI for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,807,861
• Count XII for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,807,861
• Count XIII for Patent Infringement: Direct Infringement of U.S. Patent No. 8,993,520
• Count XIV for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,993,520
• Count XV for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,993,520
• Count XVI for Declaratory Judgment: Infringement of U.S. Patent No. 8,419,307
• Count XVII for Declaratory Judgment: Infringement of U.S. Patent No. 8,177,449
• Count XVIII for Declaratory Judgment: Infringement of U.S. Patent No. 8,435,944
• Count XIX for Declaratory Judgment: Infringement of U.S. Patent No. 8,807,861
• Count XX for Declaratory Judgment: Infringement of U.S. Patent No. 8,993,520


Plaintiffs ask the court for judgment in their favor as follows:


a) United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 are valid and enforceable;
b) Under 35 U.S.C. § 271(e)(2)(A), Defendants infringed United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 by submitting ANDA No. 208061 to the FDA to obtain approval to commercially manufacture, use, offer for sale, sell, or import into the United States Lupin's Generic Product prior to expiration of said patents;
c) Defendants' threatened acts of commercial manufacture, use, offer for sale, or sale in, or importation into, the United States of Lupin's Generic Product prior to the expiration of United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 would constitute infringement of said patents;
d) The effective date of any FDA approval of Lupin's Generic Product shall be no earlier than the latest of the expiration date of United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 and any additional periods of exclusivity, in accordance with 35 U.S.C. § 271(e)(4)(A)
e) Defendants, and all persons acting in concert with Defendants, shall be enjoined from commercially manufacturing, using, offering for sale, or selling Lupin's Generic Product within the United States, or importing Lupin's Generic Product into the United States, until the expiration of United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 in accordance with 35 U.S.C. §§ 271(e)(4)(B) and 283;) This is an exceptional case and Plaintiffs should be awarded their costs, expenses, and disbursements in this action, including reasonable attorney fees, pursuant to 35 U.S.C. §§ 285 and 271(e)(4); and
g) Plaintiffs are entitled to any further appropriate relief under 35 U.S.C.§ 271(e)(4).


The case was assigned to Judge Sarah Evans Barker and Magistrate Judge Debra McVicker Lynch in the Southern District of Indiana and assigned Case No. 1:15-cv-01047-SEB-DML.


Practice Tip: Information on Lilly's lawsuit against the Lupin Defendants, which asserts patent infringement relating to the drug Effient, can be found here.

Continue reading "Indiana Patent Litigation: Lilly and Lupin in Federal Court Anew, Patent Infringement of Axiron Now Alleged" »

July 2, 2015

Indiana Copyright Litigation: Bell Rings in the Holiday Weekend with a New Copyright Lawsuit

Indianapolis, Indiana - Indiana copyright lawyer and professional photographer Richard Bell of McCordsville, Indiana filed a federal intellectual property lawsuit in the Southern District of Indiana. He alleges copyright infringement by Randolph Ventures, LLC of Peoria, Illinois. At issue is a copyrighted photo of the Indianapolis skyline taken by Bell that has been registered by the U.S. Copyright Office.

In 2000, Plaintiff Bell photographed the downtown Indianapolis skyline. Bell indicates in this Indiana complaint that the photo has been registered by the U.S. Copyright Office as Registration Number VA0001785115.

In this Indiana lawsuit for copyright infringement, Bell asserts that Defendant Randolph Ventures used Bell's copyrighted image without permission when it displayed the photo to advertise its business on the Internet at http://webdesign309.com/indianapolis/. Bell claims that the limited liability company that he sued "willfully and recklessly falsely claimed that he owned the copyrights of all images and photos" contained on that website, including Bell's photo of Indianapolis. Bell asserts that Defendant has thus profited from the use of the copyrighted photo.

In this single-defendant lawsuit, Bell contends that "as a direct and proximate result of their wrongful conduct, Defendants have [sic] realized and continue to realize profits and other benefits rightfully belonging to Plaintiff." The acts in question are alleged to have been committed willfully and deliberately and with oppression, fraud, and malice.

In this federal complaint, which copyright attorney Bell filed on his own behalf, counts of copyright infringement and unfair competition are asserted. Bell asks for an accounting of all gains, profits and advantages derived by Defendant Randolph Ventures as a result of the alleged infringement and for statutory and/or actual damages. He also seeks reimbursement of costs and reasonable attorneys' fees.

Practice Tip: Richard Bell has sued hundreds of defendants for copyright infringement in the Indiana federal courts. Previous blog posts regarding his litigation include:

Bell Files New Copyright Infringement Lawsuit
Bell Sues Georgia-Base FindTicketsFast.com for Copyright Infringement
Richard Bell Files Two New Copyright Infringement Lawsuits
Court Prevents Copyright Plaintiff Bell from Outmaneuvering Legal System; Orders Bell to Pay Almost $34,000 in Fees and Costs
Three Default Judgments of $2,500 Ordered for Copyright Infringement
Court Orders Severance of Misjoined Copyright Infringement Complaint

Richard Bell Files Another Copyright Infringement Lawsuit

Continue reading "Indiana Copyright Litigation: Bell Rings in the Holiday Weekend with a New Copyright Lawsuit" »

July 1, 2015

156 Trademark Registrations Issued to Indiana Companies in June 2015

The U.S. Trademark Office issued the following 156 trademark registrations to persons and businesses in Indiana in June 2015 based on applications filed by Indiana trademark attorneys:

Registration No.  Word Mark Click To View
4762035 EASY, DO-IT-YOURSELF SIGNS, FREE, SIGNCREATOR DEFLECTO.COM/SIGNCREATOR, ONLINE, CUSTOMIZABLE TEMPLATES VIEW
4760442 PREPARED TO BE A PIONEER VIEW
4760361 M.E.T.A.: MAPPING EDUCATION TOWARDS ACHIEVEMENT VIEW
4760354 OPOCOFI BREWING VIEW
4760110 MS VIEW
4760087 F.A.D.E: VIEW
4760077 WHERE BEAUTIFUL THINGS BEGIN VIEW
4759863 3 FLOYDS VIEW
4759737 MOVE YOUR FEET SO OTHERS CAN EAT VIEW
4759647 LIVEGREENANDPROSPER VIEW

Continue reading " 156 Trademark Registrations Issued to Indiana Companies in June 2015" »

June 29, 2015

Seventh Circuit Trademark Law: District Court Has Discretion Regarding Award of Attorneys' Fees Under Lanham Act

Chicago, Illinois - The Seventh Circuit affirmed the denial of attorneys' fees under the Lanham Act by the District Court for the Southern District of Illinois.

Plaintiff William Burford and Defendant Accounting Practice Sales, Inc. ("APS") were parties to a contract under which Burford had agreed to market and facilitate the purchase and sale of accounting practices on behalf of APS. APS terminated the contract. Shortly thereafter, Burford started a competing business. For this business, Burford chose the name "American Accounting Practice Sales." Burford also sued APS and Gary Holmes, the owner of APS, for breach of contract.

In response to Burford's contract-claims lawsuit, APS filed a four-count counterclaim. Included in those counterclaims was an allegation that Burford had misappropriated APS's trade name in violation of the Lanham Act, 15 U.S.C. § 1051 et seq. by using the business name "American Accounting Practice Sales."

The district court held for APS on the contract claim, reasoning that the contract between the parties was of indefinite duration and was therefore terminable at will. After this ruling in favor of APS, but before the district court could consider the counterclaim, APS voluntarily dismissed its counterclaim under the Lanham Act with prejudice.

Burford then contended that, as the prevailing party on the Lanham Act claim, he was entitled to attorneys' fees under 15 U.S.C. § 1117(a), asserting that APS's pursuit of the Lanham Act claim was meritless and amounted to an abuse of process. The district court refused to grant attorneys' fees on the theory that APS's claim under the Lanham Act claim could have been pursued by a rational party seeking to protect its trademark.

Burford appealed. As part of his appeal, he asked the Seventh Circuit to reverse the district court's denial of his request for attorneys' fees under the Lanham Act. Circuit Judges William J. Bauer and David F. Hamilton, and District Court Judge Sara L. Ellis, sitting by designation, heard the matter.

The Seventh Circuit first held that the district court had erred in holding that the contract had not been breached. While indefinite-term contracts are by default terminable at will, it noted that the parties had contracted around that general rule by providing that APS could terminate the contract only if Burford violated the terms of the contract. On this issue, the Seventh Circuit reversed the district court.

On the question of attorneys' fees, the Seventh Circuit affirmed the district court. Under 15 U.S.C. § 1117(a)(3), district courts have the discretion to award attorneys' fees to those prevailing under the Act in "exceptional cases." Such an "exceptional case" within the meaning of the Lanham Act can be found in those cases where the district court determines that the decision to bring the claim could be called an abuse of process.

In turn, such an abuse of process can be discerned in cases where, for example, "a rational litigant would pursue [the claim] only because it would impose disproportionate costs on his opponent" or where there was evidence that the party advancing the Lanham Act claim had done so "to obtain an advantage unrelated to obtaining a favorable judgment."

The Seventh Circuit noted that Burford had failed to persuade the district court that the pursuit of the claim was objectively unreasonable or was intended to harass or to obtain an advantage unrelated to winning a favorable judgment. Consequently, because decision whether to award attorneys' fees under the Lanham Act is left to the district court's sound discretion, the lower court's refusal to grant such fees was affirmed.

Continue reading "Seventh Circuit Trademark Law: District Court Has Discretion Regarding Award of Attorneys' Fees Under Lanham Act" »