August 23, 2016

Indiana Patent Litigation: RV Components Makers in Court Again Over Patent Covering Room Seal


South Bend, Indiana - Plaintiff Lifetime Industries, Inc. ("LTI") of Elkhart, Indiana filed a patent infringement lawsuit in the Northern District of Indiana alleging that Defendant Trim-Lok, Inc. of Buena Park, California infringed Plaintiff's patent for a "Two-Part Seal for a Slide-Out Room."

The patent-in-suit, U. S. Patent No. 6,966,590 (the "'590 patent"), has been issued by the U.S. Patent and Trademark Office. Plaintiff states that it "currently produces, sells, and distributes two-part seals covered by the '590 patent" (collectively, "LTI Seals"), which are directed towards the addition of a slide-out room to a recreational vehicle. The LTI Seals include "a mounting portion and a separate bulb portion that slidably connects to the mounting portion."

Plaintiff asserts that Defendant makes, uses, sells, and offers for sale a seal that, once installed on a recreational vehicle, infringes one or more claims of the '590 patent. Plaintiff indicates that it discovered this alleged wrongdoing by Defendant during a visit to Forest River, Inc., a manufacturer of recreational vehicles and mobile living quarters.

Plaintiff also contends that Defendant's infringing behavior was knowing and intentional, citing in part two former LTI engineers who began work for Trim-Lok. These two engineers purportedly had knowledge of the '590 patent and LTI asserts that they "contributed to or designed" Defendant's accused product.

In this lawsuit, filed by Indiana patent attorneys, the following counts are listed:

• Direct Infringement of the '590 Patent
• Induced Infringement of the '590 Patent

• Contributory Infringement of the '590 Patent

Plaintiff seeks damages, including treble damages, along with equitable relief, costs and attorneys' fees.

Practice Tip: This is not the first instance of patent litigation between these parties. LTI sued Trim-Lok in 2013 alleging that Trim-Lok had infringed the same patent by offering another product.

Continue reading "Indiana Patent Litigation: RV Components Makers in Court Again Over Patent Covering Room Seal" »

August 19, 2016

Indiana Trademark Litigation: Get 2 Go, Its Operators and Related Stores Sued for Infringement


Fort Wayne, Indiana - Attorneys for Plaintiffs North Atlantic Operating Company, Inc. and National Tobacco Company, L.P., both of Louisville, Kentucky, filed a trademark infringement lawsuit in the Northern District of Indiana alleging infringement of various registered trademarks covering ZIG-ZAG® roll-your-own cigarette papers and accessories. In addition to trademark infringement under federal law, Plaintiffs allege copyright infringement, false designation of origin and trade dress infringement under federal law as well as trademark infringement and unfair competition under Indiana common law.

Multiple Defendants, most of Fort Wayne, Indiana, are named in this intellectual property lawsuit: KPC Distributor Inc.; Kuldeep Singh; Paramjit Singh; Charanjit Singh; Burger's, Inc., d.b.a. Burger Dairy; JGM Stores Inc., d.b.a. Burger Dairy II; Kirandeep, Inc., d.b.a. Crescent Corner Express; KSL Stores Inc., d.b.a. Get 2 Go #10; KSL Holdings Inc., d.b.a. Get 2 Go #13; Coliseum Quick Mart Inc., a.k.a. Get 2 Go #15; Calhoun Store Inc., a.k.a. Get 2 Go 16; KPC Brothers Inc., a.k.a. Get 2 Go #17 d.b.a. Get 2 Go; Get 2 Go #18; Virk Brothers Enterprises Inc., a.k.a. Get 2 Go 19, d.b.a. Shell Get 2 Go #19; JAT Boyz Stores Inc., a.k.a Harlan Quick Stop; KPC Investments LLC, a.k.a. Iceway Express; John Does 1-10; and XYZ Companies 1-10.

At issue in this Indiana lawsuit are the following trademarks: Registration No. 610,530 for ZIG-ZAG (stylized), Registration No. 1,127,946 for ZIG-ZAG (text), Registration No. 2,169,540 for Smoking Man (design with circle border), Registration No.2,169,549 for Smoking Man (design with no border), Registration Nos. 2,664,694 and 2,664,695 for North Atlantic Operating Company, Inc. (design), and Registration Nos. 2,610,473 and 2,635,446 for North Atlantic Operating Company (text), all of which have been registered by the U.S. Patent and Trademark Office. The ZIG-ZAG trademarks are owned by a French company, Bolloré, S.A., which is not a party to this litigation, and are licensed to Plaintiff North Atlantic.

Defendants are accused of engaging in a widespread scheme to acquire, sell and/or distribute counterfeit products bearing various registered trademarks and/or copyrighted text that Plaintiffs allege is protected by law. This text includes the phrase "Distributed by North Atlantic Operating Company, Inc."

Plaintiffs further contend that one or more Defendants' conduct was willful. They contend that this was demonstrated on more than one occasion when a North Atlantic representative requested a receipt for the purchase of accused goods and this request was refused. On one occasion, when the representative insisted on a receipt, Plaintiffs state that "Defendant KPC Distributor ripped the receipt in two pieces, keeping the piece that displayed Defendant KPC Distributor's contact information for itself."

In this Indiana intellectual property lawsuit, filed by trademark litigators for Plaintiffs, Defendants are accused of having sold "dozens of cartons and hundreds of booklets of confirmed counterfeit ZIG-ZAG® Orange to undercover North Atlantic representatives." Plaintiffs state the following claims:

• Federal Trademark Infringement (15 U.S.C. § 1114)
• False Designation of Origin and Trademark/Trade Dress Infringement (15 U.S.C. § 1225(a))
• Federal Copyright Infringement (17 U.S.C. §§ 101 et seq.)
• Common Law Unfair Competition

• Common Law Trademark Infringement

Plaintiffs ask the federal court for damages, injunctive relief, costs and attorneys' fees.

Continue reading "Indiana Trademark Litigation: Get 2 Go, Its Operators and Related Stores Sued for Infringement" »

August 17, 2016

Indiana Trademark Litigation: Venue in Northern District Not Improper Under "Substantial Part of the Events" Test

Fort Wayne, Indiana - The Northern District of Indiana has denied Defendant's motion to dismiss for improper venue, citing the connection of the Northern District to the events underlying the litigation.

This Indiana trademark litigation, Family Express Corp. v. Square Donuts, Inc., was filed to resolve a dispute over the use of the words "Square Donuts" in connection with the sale of donuts by two different Indiana-based companies.

Defendant Square Donuts of Terre Haute, Indiana claims trademark rights to "Square Donuts" under federal and Indiana law. It currently sells its "Square Donuts" in bakeries located in southern and central Indiana, including locations in Terre Haute, Indianapolis, Bloomington, and Richmond.

Plaintiff Family Express of Valparaiso, Indiana operates convenience stores in northern Indiana and uses the term "Square Donuts" in conjunction with doughnut sales. Plaintiff states that both it and Defendant are expanding their respective businesses into new markets, with Defendant expanding to the north while Plaintiff expands to the south. Thus, territory in which both operate concurrently has become a possibility.

In 2006, Defendant sent a cease-and-desist letter to Plaintiff. Plaintiff and Defendant subsequently discussed the possibility of entering into a co-existence arrangement, but did reach an agreement.

This trademark lawsuit followed. Plaintiff asks the Indiana federal court to declare that its use of the term does not infringe on the trademark rights in "Square Donuts" asserted by Defendant. Plaintiff also asks the court to cancel Defendant's existing Indiana and federal "Square Donuts" trademarks.

Trademark litigators for Defendant asked the court to dismiss the lawsuit, claiming that it had been filed in an improper venue. In evaluating whether venue in the Northern District was permissible, the court first noted that, while it "must resolve all factual disputes and draw all reasonable inferences in the plaintiff's favor," Plaintiff then bears the burden of establishing that venue is proper. It also noted that venue can be proper in more than one district.

The federal venue statute, 28 U.S.C. § 1391(b), provides that venue can exist in "(1) a judicial district in which any defendant resides, if all defendants reside [in the same state]" or "(2) a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred, or a substantial part of the property that is the subject of the action is situated."

Plaintiff relied on subsection (b)(2), claiming that a substantial part of the events giving rise to the lawsuit took place in the Northern District of Indiana. To establish venue, Plaintiff pointed to the fact that Defendant's cease-and-desist letter and other communications had been relayed to Plaintiff in the Northern District. At least some rulings by districts courts located within the Seventh Circuit have held that the requirements for venue "may be satisfied by a communication transmitted to or from the district in which the cause of action was filed, given a sufficient relationship between the communication and the cause of action."

The Northern District of Indiana concluded that such communications, which would be a typical element of litigation under the Declaratory Judgment Act, would defeat the purpose of protecting a defendant from having to litigate "in the plaintiff's home forum, without regard to the inconvenience to the defendant at having to defend an action in that forum or whether the defendant has engaged in substantial activities in that forum."

Instead, the Indiana court considered the underlying substance of the dispute: "whether the Defendant's Square Donuts trademark is valid and, if it is, whether the Plaintiff nevertheless has refrained from infringing on the trademark in connection with the sale of its Square Donuts." The court concluded that, given the extent to which the claims and events at issue in the litigation took place in both the Northern and the Southern District of Indiana, venue was not improper in the Northern District of Indiana.

Practice Tip #1: If neither subsection (b)(1) nor (b)(2) of 28 U.S.C. § 1391 applies, a third subsection may be utilized. That subsection, 28 U.S.C. § 1391(b)(3), permits venue in "any judicial district in which any defendant is subject to the court's personal jurisdiction with respect to such action."

Practice Tip #2: An inquiry into proper venue for a lawsuit is different from one into personal jurisdiction. Personal jurisdiction "goes to the court's power to exercise control over a party," while venue is "primarily a matter of choosing a convenient forum."

Continue reading "Indiana Trademark Litigation: Venue in Northern District Not Improper Under "Substantial Part of the Events" Test" »

August 16, 2016

Seventh Circuit - Trademark Law: Unauthorized Copying of Karaoke Tracks May be Piracy, but Not Trademark Infringement

Chicago, Illinois - The Seventh Circuit Court of Appeals ruled against Plaintiffs Slep-Tone Entertainment Corp. and its successor in interest Phoenix Entertainment Partners LLC (collectively, "Slep-Tone") in a Lanham Act lawsuit asserting trademark infringement and trade dress infringement.

Trademark attorneys for serial litigant Slep-Tone have filed more than 150 lawsuits throughout the country under the Lanham Act alleging unauthorized copying and performance of Slep-Tone's karaoke tracks. Slep-Tone contends that such activities constitute trademark infringement and trade dress infringement.

This federal litigation springs from a technology upgrade available to Slep-Tone customers. Earlier formats on which karaoke songs were offered included CD+G compact discs (with the +G referring to the graphic component) and MP3+G media. With the advent of large-capacity hard drives, some customers opted to transfer the files contained on their lawfully purchased CD+G or MP3+G to a hard drive, a practice known as "media shifting." Because many compact discs can be stored on one hard drive, media shifting removed the need to swap between multiple discs to access different songs. This transfer was permitted by Slep-Tone as long as the customers notified Slep-Tone, agreed to certain terms that restricted multiple copies from being made and agreed to submit to an audit to certify compliance with Slep-Tone's media-shifting policy.

In this lawsuit, filed against Defendants Basket Case Pub, Inc. of Peoria, Illinois and Dannette Rumsey, its president and owner, Slep-Tone alleged that Defendants violated the media-shifting policy. This, it asserted, resulted in an improper "passing off" of illegitimate "bootleg" copies of tracks as genuine Slep-Tone tracks.

Slep-Tone contended that when these unauthorized copies were played by Defendants, the pub's customers would be confused, believing that "they are seeing and hearing a legitimate, authentic Slep-Tone track, when in fact they are seeing an unauthorized copy." This conduct, it claims, is prohibited trademark and trade dress infringement.

A district court in the Central District of Illinois concluded that Slep-Tone had not plausibly alleged that Defendants' conduct resulted in consumer confusion as to the source of any tangible good sold in the marketplace and dismissed Plaintiffs' complaint.

The Seventh Circuit agreed. While the appellate court granted that Slep-Tone may have had a plausible complaint of copyright infringement for "theft, piracy, and violation of Slep-Tone's [media-shifting] policy," consumer confusion is the touchstone of trademark infringement and such confusion was not present. It stated:

What pub patrons see and hear is the intangible content of the karaoke tracks. They will see Slep-Tone's trademark and trade dress and believe, rightly, that Slep-Tone is the source of that intangible content. But patrons will neither see nor care about the physical medium from which the karaoke tracks are played; consequently, any confusion is not about the source of the tangible good containing the karaoke tracks.

Because Slep-Tone's assertions did not constitute trademark infringement or trade dress infringement, the Seventh Circuit affirmed the district court's dismissal of the lawsuit.

Continue reading "Seventh Circuit - Trademark Law: Unauthorized Copying of Karaoke Tracks May be Piracy, but Not Trademark Infringement" »

August 12, 2016

Seventh Circuit Rules on Sanctions for Vexatious and Obstructive Conduct by Attorneys for Porno-Trolling Collective

Chicago, Illinois - The Seventh Circuit ruled in the ongoing intellectual property litigation between Plaintiff Lightspeed Media Corp. and Defendants Anthony Smith et al.

Attorneys for Lightspeed Media Corp. have filed numerous lawsuits nationwide in an apparent attempt to extract quick settlements from individual users who would rather avoid litigating their pornography consumption in open court. After pushback from Defendants and their internet service providers, as well as the imposition of sanctions by the Central District of California in a similar case, the attorneys began to voluntarily dismiss some of the cases.

The litigation against Defendant Smith was one such dismissed lawsuit. After the dismissal, Smith filed a motion for attorney's fees. The Southern District of Illinois found that the Lightspeed lawsuit had been frivolous, baseless, and "smacked of bullying pretense," and imposed sanctions of $261,025.11, jointly and severally, against three lawyers for Lightspeed: Paul Hansmeier, John Steele, and Paul Duffy.

Much legal wrangling ensued. While pleading to the court an inability to pay the sanctions, Steele withdrew over $300,000 from an account that he shared with his wife. Hansmeier withdrew a similar amount from one of his accounts. Each of these transfers was apparently an attempt to conceal the funds from the court and Smith. Other actions, also apparent attempts to conceal the funds, were also taken by the attorneys. Following these actions, Hansmeier filed for bankruptcy and Duffy passed away.

The Seventh Circuit was asked to consider the appropriateness of the sanction against the three attorneys. It declined to hear the matter as to Duffy, stating that because he was deceased he was "beyond [their] jurisdiction." The appeals court dismissed the appeal as to Hansmeier, noting that, in a liquidation proceeding under Chapter 7 of the bankruptcy code, "only the trustee [of the bankruptcy estate] has standing to prosecute or defend a claim belonging to the estate."

After a review of multiple instances of discovery misconduct, the appellate court held that the district court had acted within its discretion in imposing a discovery sanction against Steele for what it called a "pattern of vexatious and obstructive conduct" and "obviously egregious behavior."

The appellate court then turned to the matter of the contempt sanction against Steele. Steele argued that the sanction was in fact criminal in nature, not civil. Thus, he contended, the district court had failed to abide by the enhanced procedural safeguards required for such a sanction.

The Seventh Circuit agreed. It held that, while "civil contempt may be imposed if proven by clear and convincing evidence, and without the full criminal procedural process," imposing criminal contempt required more. Specifically, it required that the contemnor be "afforded the protections that the Constitution requires of such criminal proceedings."

The appellate court also held that the fine, as ordered by the district court, was not "designed either to compel the contemnor into compliance with an existing court order or to compensate the complainant for losses sustained as a result of the contumacy," as was appropriate for a finding of civil contempt. Instead, the sanctions that had been levied against Steele were punitive in nature, and "meant to vindicate the authority of the court." Thus, they were properly deemed criminal sanctions.

Concluding that the procedures required under the Constitution for criminal contempt had not been applied, the Seventh Circuit vacated the contempt sanction.

Continue reading "Seventh Circuit Rules on Sanctions for Vexatious and Obstructive Conduct by Attorneys for Porno-Trolling Collective " »

August 11, 2016

Copyright Law: Awarding Attorney Fees in Copyright Lawsuits May Turn on 'Objective Reasonableness'

Washington, D.C. - In the matter of Kirtsaeng v. John Wiley & Sons, Inc., the U.S. Supreme Court unanimously held that, among the factors considered in awarding attorneys' fees under the Copyright Act, courts must give substantial weight to the objective reasonableness of the losing party's position.

The Court was not persuaded that special consideration should be given to whether the lawsuit resolved important and close legal issues, expressing doubt that fee shifting will encourage parties to litigate such issues. While the Second Circuit test is close to what the Supreme Court prescribes, Justice Kagan wrote, in the Second Circuit, "substantial weight" has become "dispositive weight." However, the Court also stressed that all circumstances of the case must be considered in light of the goals of the Copyright Act, acknowledging that fees may be warranted despite the objective reasonableness of the losing party's position.

The decision is consistent with the position advocated in an AIPLA amicus brief filed in this case.


Supap Kirtsaeng, born in Thailand, attended college in the United States. While he was studying in the United States, Kirtsaeng asked his friends and family in Thailand to buy and mail to him copies of foreign edition English language textbooks at Thai book shops, where they are sold at low prices. When publisher John Wiley & Sons ("Wiley") learned about Kirtsaeng's sales in the United States at low prices, it sued Kirtsaeng for copyright infringement.

In 2013, the Supreme Court ruled in favor of Kirtsaeng, concluding that Wiley's sales of the books in Thailand exhausted its copyright interest in the U.S. sales under the first sale doctrine. On remand, Kirtsaeng's motion for attorneys' fees was denied. In affirming the decision, the Second Circuit relied on the objective reasonableness of Wiley's position that the first sale doctrine did not apply to extra-territorial transactions.

Kirtsaeng asked the Supreme Court to review the attorney fee decision.

Competing Factors

Justice Kagan noted that Section 505 of the Copyright Act states that district courts "may" award attorneys' fees to the prevailing party in copyright litigation, but said that the statute provides no standards for deciding when such awards are appropriate. Guidance for fee awards can be found in the Court's decision in Fogerty v. Fantasy, Inc, she added, which includes a non-exclusive list of factors that further the goals of the Copyright Act.

In this litigation, each party asserted a factor believed to merit substantial weight: for Kirtsaeng, it is whether the lawsuit resolved an important and close legal issue; for Wiley, it is whether the position unsuccessfully argued by the losing party was objectively reasonable.

The Court concluded that the objective reasonableness of the losing party's position is more important than the lawsuit's role in settling a significant and uncertain legal issue. According to Justice Kagan, Wiley's proposal "both encourages parties with strong legal positions to stand on their rights and deters those with weak ones from proceeding with litigation." The copyright holder with no reasonable infringement claim has good reason not to sue in the first instance, she explained, and the infringer with no reasonable defense has every reason to give in quickly, before each side's litigation costs mount.

By contrast, the Court continued, Kirtsaeng's proposal would not produce any sure benefits. While litigation of close cases can advance the public interest by helping to clearly demarcate the boundaries of copyright law, it is not clear that fee shifting will necessarily, or even usually, encourage parties to litigate those cases to judgment, according to the Court. Justice Kagan explained as follows:

Fee awards are a double-edged sword: They increase the reward for a victory--but also enhance the penalty for a defeat. And the hallmark of hard cases is that no party can be confident if he will win or lose. That means Kirtsaeng's approach could just as easily discourage as encourage parties to pursue the kinds of suits that "meaningfully clarif[y]" copyright law. ... It would (by definition) raise the stakes of such suits; but whether those higher stakes would provide an incentive--or instead a disincentive--to litigate hinges on a party's attitude toward risk. Is the person risk-preferring or risk-averse--a high-roller or a penny-ante type? Only the former would litigate more in Kirtsaeng's world. ... And Kirtsaeng offers no reason to think that serious gamblers predominate. ... So the value of his standard, unlike Wiley's, is entirely speculative.

What is more, Wiley's approach is more administrable than Kirtsaeng's. A district court that has ruled on the merits of a copyright case can easily assess whether the losing party advanced an unreasonable claim or defense. That is closely related to what the court has already done: In deciding any case, a judge cannot help but consider the strength and weakness of each side's arguments. By contrast, a judge may not know at the conclusion of a suit whether a newly decided issue will have, as Kirtsaeng thinks critical, broad legal significance. The precedent-setting, law-clarifying value of a decision may become apparent only in retrospect--sometimes, not until many years later. And so too a decision's practical impact (to the extent Kirtsaeng would have courts separately consider that factor). District courts are not accustomed to evaluating in real time either the jurisprudential or the on-the-ground import of their rulings. Exactly how they would do so is uncertain (Kirtsaeng points to no other context in which courts undertake such an analysis), but we fear that the inquiry would implicate our oft-stated concern that an application for attorney's fees "should not result in a second major litigation."

Substantial, But Not Dispositive, Factor

All of that said, objective reasonableness can be only an important factor in assessing fee applications--not the controlling one, Justice Kagan cautioned. "Although objective reasonableness carries significant weight, courts must view all the circumstances of a case on their own terms, in light of the Copyright Act's essential goals," she wrote.

The Court particularly acknowledged the serious concerns raised over the Second Circuit approach. While it frames the inquiry in a similar way, the Second Circuit language at times suggests that a presumption against a fee award arises from a finding of reasonableness. That perspective goes too far in limiting the district court's analysis, according to the Court, observing that district courts in the Second Circuit appear to have turned "substantial" weight into something closer to "dispositive" weight. In particular, the Court acknowledged that hardly any of those decisions have granted fees when the losing party raised a reasonable argument (and none have denied fees when the losing party failed to do so).

Without suggesting that a different conclusion be reached, the Court vacated and remanded the case for further consideration in line with this analysis.

Continue reading "Copyright Law: Awarding Attorney Fees in Copyright Lawsuits May Turn on 'Objective Reasonableness'" »

August 10, 2016

Indiana Copyright Litigation: Design Basics Sues Fort Wayne Homebuilders

Fort Wayne, Indiana - Design Basics, LLC of Omaha, Nebraska filed a copyright infringement lawsuit in the Northern District of Indiana. Defendants, located in Fort Wayne, are KAM Construction, LLC, KAM Construction, Inc., KAM AKAY Enterprises, LLC and Kamran Mirza, the owner of the three other Defendants.

Plaintiff Design Basics states that it is engaged in the business of creating, marketing, publishing and licensing the use of architectural works and technical drawings depicting those architectural works. At issue in this litigation are the following architectural works, which have been registered with the U.S. Copyright Office:


Registration Certificate Nos.

Plan No. 3064 - Eldridge

VA 624-107, 624-108 & 1-093-811

Defendants in this lawsuit are Indiana homebuilders. They are accused of having published, distributed, marketed and advertised floor plans that infringe Plaintiff's copyrighted works. Those accused plans are marketed by Defendants as Monte Carlo and Monte Carlo 3.

Indiana copyright attorneys for Plaintiff list a single cause of action: copyright infringement. The court has been asked to order damages, equitable relief, costs and attorneys' fees.

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August 8, 2016

Indiana Cable/Satellite Litigation: Dish Network Accuses Indiana Pair of Pirating Satellite Signal

Northern District of Indiana - Plaintiffs DISH Network LLC, EchoStar Technologies L.L.C. and NagraStar LLC, all of Englewood, Colorado, sued in the Northern District of Indiana contending that Defendants Paulette Kincaide and Linnis Kincaide of Gary, Indiana wrongfully intercepted satellite signals.

Defendants are accused of circumventing DISH Network's security system and receiving copyrighted satellite programming without having paid the required subscription fee. Plaintiffs contend that this was accomplished by purchasing decryption keys from NFusion Private Server, a pirate television service.

In this Indiana lawsuit, filed by intellectual property lawyers for Plaintiffs, the following causes of action are alleged:

• Count I: Circumventing An Access Control Measure In Violation Of The Digital Millennium Copyright Act, 17 U.S.C. § 1201(a)(l)
• Count II: Receiving Satellite Signals Without Authorization in Violation of the Federal Communications Act, 47 U.S.C. § 605(a)

• Count III: Intercepting Satellite Signals in Violation of the Electronic Communications Privacy Act, 18 U.S.C. §§ 2511(1)(a) and 2520

Plaintiffs claim that Defendants' actions have caused "actual and imminent irreparable harm for which there is no adequate remedy at law." They further contend that violations were willful and for the purpose of commercial advantage or private financial gain.

Plaintiffs ask the federal court for an award of damages, including enhanced damages, as well as injunctive relief and reimbursement of costs, investigative expenses and attorneys' fees.

Continue reading "Indiana Cable/Satellite Litigation: Dish Network Accuses Indiana Pair of Pirating Satellite Signal" »

August 4, 2016

Indiana Patent Litigation: Interactive Alleges Patent Misuse, Sues Patent Licensor

Indianapolis, Indiana - Patent attorneys for Plaintiff Interactive Intelligence, Inc. of Indianapolis, Indiana filed a lawsuit for declaratory judgment in the Southern District of Indiana against Defendant Avaya, Inc. of Santa Clara, California. At issue in this litigation is the proper scope of a patent licensing agreement between Plaintiff and Defendant.

In 2002, Interactive and Avaya agreed to license patents covering Avaya's "call center" products. In exchange for this license, Interactive agreed to pay Avaya a royalty based upon Interactive's sales. The patents-in-suit, which have been issued by the U.S. Patent and Trademark Office are as follows: U.S. Patent Nos. 5,802,058; 5,982,873; 6,009,386; 6,052,460; 6,173,399; 6,192,050; 6,208,970; 6,389,132; 6,392,666; 6,535,601; 6,560,330; 6,636,598; 6,665,395; 6,754,331; 6,850,602; 6,925,166; 7,023,980; 7,215,760; 7,542,558; 7,685,102; 7,702,083; 7,990,899; 8,107,401; 8,379,819; 8,897,428; 9,049,291; and 9,154,629.

In this federal complaint, filed by Indiana patent lawyers, Interactive states that, since 2002, its revenue has expanded to include many sources other than call center software, including "hardware resales, software maintenance and support, training, [and] subscription services for cloud based hosting." It also contends that a "sizeable portion" of its revenue now comes from business outside of the United States.

Interactive claims that Avaya has misused its patents and misconstrued the agreement to require Interactive to pay royalties based on Interactive's "global sales." It argues that sales that are outside of the scope of Avaya's patents, as well as at least some of its foreign sales, should not be subject to a royalty under the agreement. Interactive further asserts that Avaya's "threats of potential patent infringement litigation resulted in Interactive paying significantly more than $1,000,000 in excess payments" under the agreement.

This lawsuit seeks a declaration of patent misuse by Avaya, as well as a declaration that Interactive does not infringe any of the patents asserted by Avaya. Interactive also seeks restitution and/or damages, costs and attorneys' fees.

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August 3, 2016

221 Trademark Registrations Issued to Indiana Companies in July 2016

The U.S. Trademark Office issued the following 221 trademark registrations to persons and businesses in Indiana in July 2016 based on applications filed by Indiana trademark attorneys:

Registration No.  Word Mark Click To View
5014973 10TH & MAIN TSDR
5014748 OLD 55 TSDR
5013063 HOT 97 FM TSDR

Continue reading "221 Trademark Registrations Issued to Indiana Companies in July 2016" »

August 2, 2016

Patent Office Issues 130 Patents To Indiana Citizens in July 2016

The U.S. Patent Office issued the following 130 patent registrations to persons and businesses in Indiana in July 2016, based on applications filed by Indiana patent attorneys:

Patent No. Title
1 D762,324 Stylized signature lamp 
2 9,400,256 Thermographic inspection techniques 
3 9,400,051 Cold operation mode control for an IVT 
4 9,400,045 Housing with a direct flow path for hardware lubrication 
5 9,399,889 Animal crate 
6 9,399,859 Magnetic coupling for faucet handle 
7 9,399,807 Acid and alkali resistant Ni--Cr--Mo--Cu alloys with critical contents of chromium and copper 
8 9,399,792 Sterilizable chemistry for test elements 
9 9,399,790 Stable NAD/NADH derivatives 
10 9,399,660 N-substituted indenoisoquinolines and syntheses thereof 

Continue reading "Patent Office Issues 130 Patents To Indiana Citizens in July 2016" »

July 29, 2016

Indiana Trademark Litigation: Lilly Sues Australian Seller of Gray-Market Veterinary Products

Indianapolis, Indiana - Trademark attorneys for Eli Lilly and Company of Indianapolis, Indiana and Novartis Tiergesundheit AG of Basel, Switzerland filed a lawsuit in the Southern District of Indiana alleging trademark infringement and unfair competition.

Plaintiffs offer pet medications, such as flea-control and heartworm treatments, for sale in the U.S. and other countries worldwide. Among these medications are the following trademarked products, which have been registered by the U.S. Patent and Trademark Office:

ELANCO, registration number 710,473
COMFORTIS, registration number 3,370,168
INTERCEPTOR, registration number 2,015,850
CAPSTAR, registration number 2,510,863

TRIFEXIS, registration number 3,944,743

Plaintiffs allege that Defendants Scott Martin d/b/a Best Value Pet Supplies of Queensland, Australia and various unknown "Doe" Defendants infringed the trademarks at issue by selling in the U.S. trademarked products that were intended for sale in other countries via their website,

Plaintiffs contend that these products are materially different from products intended for sale in the U.S., citing differences such as different units of measure as well as non-U.S. addresses and telephone numbers listed on packaging as contact information.

In this Indiana trademark lawsuit, the following counts are alleged:

• Count I: Trademark Infringement in Violation of Section 32 of the Lanham Act
• Count II: Unfair Competition in Violation of Section 43(a) of the Lanham Act
• Count III: Unfair Competition in Violation of Indiana Common Law

Plaintiffs contend that Defendants' conduct was willful and ask the court to order equitable relief, as well as the payment of compensatory and punitive damages, attorneys' fees and costs of this litigation.

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July 27, 2016

Patent and Copyright Law: Supreme Court to Review Cases on Patent Laches and Copyrightability

The U.S. Supreme Court agreed to review a patent case on the law of laches (SCA Hygiene Products v. First Quality Baby Products, U.S., No. 15-927) and a case on the copyrightability of cheerleader uniforms (Star Athletica, L.L.C. v. Varsity Brands, Inc., U.S., No. 15-866).

Specifically, the question presented in SCA is:

"Whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act's six-year statutory limitations period, 35 U.S.C. § 286." 

The question presented in Star is:

"What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?" 

Federal Circuit En Banc Decision in SCA Hygiene

The Federal Circuit granted en banc review to determine if the Supreme Court's copyright decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014) required a change to the law of laches in patent cases. In Petrella, the Supreme Court held that laches may not bar a copyright infringement suit based on acts that occurred within the statute of limitations period, even though the initial violation occurred years earlier.

In a 6-5 decision, the court held that Petrella did not require a change in the laches rule set out in A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992), for patent infringement actions to recover damages. The court pointed out that, notwithstanding the provisions of Section 286, Congress codified the laches defense in 35 U.S.C. §282 when it included an unenforceability defense in that statute. Thus, laches could bar a damages claim even for acts occurring within the six-year period of 35 U.S.C. §286. However, the court held that Petrella does require a change in Aukerman's rule that only pre-suit damages may be barred by laches. It explained that the availability of injunctive relief or ongoing royalties now depends on an analysis of the circumstances of the delay under eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).

In its petition for Supreme Court review, SCA argued that the en banc decision conflicts with the Petrella decision that laches cannot bar damages claims brought within a statutory limitations period. It also argued that the Federal Circuit observes a presumption in favor laches that is inconsistent with Supreme Court equity practice.

Sixth Circuit Decision in Star Athletica

Varsity Brands makes and sells cheerleading uniforms bearing graphic designs for which it holds copyright registrations. Varsity sued Star for copyright infringement based on Star's sales of competition uniforms bearing the same graphic designs. The district court granted a summary judgment for Star, concluding that the copyrights are invalid because the designs at issue are unprotectable designs of "useful articles." It held that the graphic elements of the designs are not physically or conceptually separable from the utilitarian function of a cheerleading uniform because the "colors, stripes, chevrons, and similar designs typically associated with sports in general, and cheerleading in particular" make the garment they appear on "recognizable as a cheerleading uniform."

The Sixth Circuit reversed, finding that the arrangement of colors, stripes, chevrons, zigzags, and other designs on a cheerleading uniform are copyrightable, separate from utilitarian aspects of the uniform itself. The appellate court rejected the argument that the pictorial, graphic, or sculptural features are inextricably intertwined with the utilitarian aspects of a cheerleading uniform because they serve a decorative function. According to the court, a rule that a decorative function is a "utilitarian aspect of an article" would make all fabric designs that only serve the function to make a garment more attractive ineligible for copyright protection. Judge McKeague wrote a dissenting opinion remarking that this case turns on how function is defined and hence the designs were not copyrightable.

July 25, 2016

Indiana Copyright Litigation: Creator of Architectural Designs Files Two New Copyright Lawsuits

Southern District of Indiana - Copyright lawyers for frequent litigant Design Basics, LLC of Omaha, Nebraska filed two additional intellectual property lawsuits in the Southern District of Indiana alleging copyright infringement.

Plaintiff is engaged in the business of creating, marketing, publishing and licensing the use of architectural works and technical drawings of those works. Defendants are Indiana home designers and homebuilders.

The first lawsuit lists Defendant as T.K. Constructors, Inc. of St. Delaware County, Indiana. In the second lawsuit, two Defendants are listed, Regal Homes of Southern Indiana, L.L.C. of Warrick County, Indiana and The Home Plan Co., LLC of Vanderburgh County, Indiana.

Each Defendant is charged with the violation of a single copyrighted work. Design Basics asserts that T.K. Constructors, Inc. violated the copyright Design Basics' "Lancaster" plan, which has been registered with the U.S. Copyright Office under Registration Nos. VA 371-204, 694-094 and 756-041.

Defendants in the second lawsuit are accused of violating a copyrighted work titled "Briarwood," which was registered under Reg. Nos. VA 624-144, VA 726-369 and VA 624-143. This complaint lists eight counts, four asserting "Non-Willful Copyright Infringement" and four alternatively asserting "Willful Copyright Infringement."

Defendants in each lawsuit are accused of having infringed the copyrighted architectural works by "copying, publishing, distributing, advertising, marketing, selling and/or constructing in the marketplace" various works, such as plans, drawings and houses, that were copied or otherwise derived from Plaintiffs' copyrighted works.

Plaintiff seeks damages, equitable relief, costs and attorneys' fees.

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July 22, 2016

Indiana Patent Law: Court Rules on Invalidity of Patent for Obviousness

Evansville, Indiana - In the matter of Berry Plastics Corporation v. Intertape Polymer Corporation, Judge Richard L. Young of the Southern District of Indiana ruled on Defendant Intertape's motion to reconsider the court's conclusion of patent invalidity on the grounds of obviousness.

This Indiana patent litigation, filed in January 2010, sought a declaratory judgment of non-infringement of U.S. Patent No. 7,476,416 (the "'416 patent"). Plaintiff Berry Plastics Corp. sued competitor Intertape Polymer Corp., which owns the '416 patent.

In the complaint, Berry asked the federal court to rule that it had not infringed the patent-in-suit, titled Process for Preparing Adhesive Using Planetary Extruder. In the alternative, it asked that the court rule that the patent was invalid and unenforceable. Among the reasons cited for this proposed conclusion were assertions that Intertape had engaged in improper conduct before the U.S. Patent and Trademark Office and that the patent was invalid as obvious.

The court held a jury trial in November 2014. The jury found, inter alia, that the '416 patent was not obvious. After the trial, the court heard additional argument on the issue of the validity of the patent and ruled for Berry, holding that the patent-in-suit was invalid as obvious.

In this recent entry, the court rules on Intertape's motion to reconsider on the grounds that the court had ruled too broadly, inadvertently invalidating the entire patent instead of addressing only the asserted claims presented at trial. The court held that it was permitted under Fed. R. Civ. P. 54(b) to modify its previous order ("[A]ny order or other decision ... that adjudicates fewer than all the claims ...does not end the action as to any of the claims or parties and may be revised at any time before the entry of a judgment adjudicating all the claims .... "). It also concluded that, under Fed. R. Civ. P. 50, it had the authority to enter judgment against a party after a jury trial as long as "a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue."

The court first held that certain dependent claims had not been challenged as invalid at trial and, consequently, the court had no jurisdiction to rule on the validity of those claims. On these claims, it granted the motion to reconsider.

Regarding those dependent claims that had been asserted at trial, the court evaluated the evidence and testimony presented and concluded that the dependent claims added no patentable subject matter but were instead simply obvious selections of prior art used in an ordinary way. Consequently, the court denied Intertape's motion to reconsider.

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