October 29, 2014

Indiana Patent Litigation: Draper Sues Vutec for Patent Infringement

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Indianapolis, Indiana - Patent attorneys for Draper, Inc. of Spiceland, Indiana sued in the Southern District of Indiana alleging that Vutec Corporation of Coral Springs, Florida infringed the patented "Roller Operated System with Mounting Assembly for Multi-Stage Installation," Patent No. 6,532,109, and "Screen System," Patent No. 6,816,308, which were issued by the U.S. Patent Office.

Draper provides consumers with products such as projection screens, window shades, projector lifts and mounts and other home theater accessories. Vutec designs and manufactures projection screens and audio-visual accessories.

In its complaint, filed by patent attorneys for Draper, the following claims are asserted:

• Count I: Vutec Motorized Projection Screen Model - LECTRIC I-C - Patent Infringement of United States Patent No. 6,532,109

• Count II: Vutec Motorized Projection Screen Model - LECTRIC III-C - Patent Infringement of United States Patent No. 6,532,109

• Count III: Vutec Motorized Projection Screen Model - LECTRIC II-e Patent Infringement of United States Patent No. 6,532,109

• Count IV: Vutec Motorized Projection Screen Model - LECTRIC IV-e - Patent Infringement of United States Patent No. 6,532,109

• Count V: Vutec Motorized Projection Screen Model - LECTRIC I-C - Patent Infringement of United States Patent No. 6,816,308

• Count VI: Vutec Motorized Projection Screen Model - LECTRIC III-C - Patent Infringement of United States Patent No. 6,816,308

• Count VII: Vutec Motorized Projection Screen Model - LECTRIC II-e Patent Infringement of United States Patent No. 6,816,308

• Count VIII: Vutec Motorized Projection Screen Model - LECTRIC IV-e - Patent Infringement of United States Patent No. 6,816,308

Draper asserts that Vutec's infringement has been willful, deliberate, and with knowledge of Draper's intellectual property rights and asks that the court:

A. adjudge and decree that U.S. Patent Nos. 6,532,109 and 6,816,308 are valid and enforceable against Vutec and that Vutec has infringed and continues to infringe the patents;

B. grant injunctions enjoining acts of infringement by Vutec, its agents, and those acting in concert with it;

C. enter an award to Draper of such damages as it shall prove at trial against Vutec that are adequate to compensate Draper for said infringement as permitted under the Patent Act;

D. order an award to Draper of up to three times the amount of compensatory damages because of Vutec's willful infringement and any enhanced damages as provided by 35 U.S.C. § 284;

E. render a finding that this case is "exceptional" and award Draper its costs and reasonable attorneys' fees, as provided by 35 U.S.C. § 285;

F. award Draper any profits that Draper lost due to Vutec's infringement of U.S. Patent Nos. 6,532,109 and 6,816,308; and

G. award Draper pre-judgment and post-judgment interests on damages.

Practice Tip: Deciding simply to ignore a complaint can be a costly error. Failing to present the defendant's account of the facts and arguments about the proper application of the law can result in the trial court considering only the plaintiff's side of the story. In other words, if the defendants choose to leave a complaint unanswered, the court may deem the well-pled allegations of the plaintiff to have been admitted by the defendants due to their failure to deny them.

Continue reading "Indiana Patent Litigation: Draper Sues Vutec for Patent Infringement" »

October 27, 2014

Indiana Copyright Litigation: ABRO Sues for Infringement of Product Packaging

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South Bend, Indiana - Indiana copyright attorneys for ABRO Industries, Inc. of South Bend, Indiana sued in the Northern District of Indiana alleging that 1 New Trade, Inc. of Baltimore, Maryland ("New Trade"), Quest Specialty Coatings, LLC of Menomonee Falls, Wisconsin ("Quest"), Igor Zorin and Boris Babenchick and Vadim Fishkin, infringed copyright protections associated with ABRO's carburetor and choke cleaner package, pending U.S. Copyright Application Case No. 1-1845314781, which is currently under review with the U.S. Copyright Office.

ABRO markets and sells various automotive, industrial and consumer products throughout the world. It claims ownership of an extensive portfolio of intellectual property rights in more than 165 countries. ARBO indicates that, since at least 1992, it has continuously sold and distributed a carburetor and choke cleaner, the packaging of which is the subject of this intellectual property lawsuit.

In this copyright litigation, ABRO alleges that New Trade, under the direction and control of Zorin, Babenchik and Fishkin, is unfairly competing with ABRO by obtaining products from an affiliate of an ABRO supplier in the United States and then distributing the products in containers nearly identical to ABRO's containers used with identical products, in the same markets, and to the same customers.

Defendants Zorin, Babenchick, Fishkin and New Trade are accused of having reproduced ABRO's packaging work by using "nearly identical" packaging for New Trade's competing carburetor and choke cleaning product. Defendants Zorin and Babenchick are the principal owners of Defendant New Trade. Defendant Fishkin is New Trade's general manager. Defendant Quest is accused of supplying the carburetor and choke cleaning product.

In its complaint, filed by Indiana copyright lawyers, ABRO lists the following claims:

• Count I: Copyright Infringement

• Count II: Personal Liability and/or Vicarious Liability for Copyright Infringement -Zorin, Babenchik, and Fishkin

In its complaint, filed by Indiana copyright lawyers, ABRO asks for the following:

A. Judgment on all counts against each of the Defendants individually and jointly and severally and in favor of ABRO;

B. A preliminary and permanent injunction enjoining and restraining Defendants, their agents, and all persons who act in concert and participation with them who learn of the injunction through personal service or otherwise:

(1) From further acts of infringement; and

(2) From copying, using, distributing, publishing by any means or creating a derivative work of the Work under 17 U.S.C. §502;

C. An award of actual damages caused by and any profits obtained by Defendants attributable to infringement of the Work pursuant to 17 U.S.C. §504(b);
D. For infringement of the Work occurring after registration thereof, an award of statutory damages or alternatively actual damages caused by and any profits obtained by Defendants attributable to the infringement pursuant to 17 U.S.C. §§504(b) and 504(c);
E. Impoundment and destruction of all products, catalogs, advertisements, promotional materials or other materials in Defendants' possession, custody or control found to have been made or used in violation of ABRO's copyrights pursuant to 17 U.S.C. §503;
F. An award of reasonable attorneys' fees and costs pursuant to 17 U.S.C. §505; and
G. An award of prejudgment and post-judgment interest.

Practice Tip:

This is an interesting complaint. Plaintiff makes what, at first glance, appears to be a case of trademark/trade-dress infringement, including allegations such as "intent to capitalize on ABRO's goodwill and well-known reputation," which are normally found in a trademark complaint. ABRO also refers in its complaint to its "extensive anti-counterfeiting program throughout the world... [which has] has resulted in countless raids, product seizures, arrests and jail terms for counterfeiters." Yet this lawsuit is styled as a copyright case.

Copyright law in the United States is founded on the Constitutional goal of "promot[ing] the Progress of Science and useful Arts" by providing exclusive rights to creators. Protection by copyright law gives creators incentives to produce new works and distribute them to the public. In doing so, the law strikes a number of important balances in delineating what can be protected and what cannot, determining what uses are permitted without a license, and establishing appropriate enforcement mechanisms to combat piracy.

The law of copyright is generally thought of as affording protection to works that are typically thought of as art - books, paintings, music and the like. Nonetheless, works that are not primarily designed as art, such as elements of product packaging, might still secure protection by registering with the U.S. Copyright Office. A copyright registration, if available, is easier and less expensive to obtain than a registered patent or trademark. The registration remains valid much longer than a patent and does not require use in commerce, as does a trademark.

Copyright protection also provides benefits to a plaintiff when suing for infringement. In many cases, copyright infringement can be proved more easily than others types of infringement. Moreover, the damages available upon proof of infringement include statutory damages, available without a showing of harm, as well as attorneys' fees, which are available without pleading or proving that the case was "exceptional."

Continue reading "Indiana Copyright Litigation: ABRO Sues for Infringement of Product Packaging" »

October 24, 2014

USPTO and the State Intellectual Property Office of China Launch Direct Electronic Priority Document Exchange

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Washington, D.C. - New free, secure service simplifies patent application procedures.

The U.S. Department of Commerce's United States Patent and Trademark Office ("USPTO") and the State Intellectual Property Office of China ("SIPO") recently launched a new free service that will allow the two offices to electronically exchange patent application priority documents directly. This new service will help streamline the patent application process and reduce costs for businesses, which are increasingly pursuing patent rights globally.

The new service will allow the USPTO and the SIPO, with appropriate permissions, to obtain electronic copies of priority documents filed with the other office from its electronic records management system at no cost to the applicant. With this new service, applicants will no longer need to obtain and file paper copies of the priority documents; however, they are still responsible for ensuring that priority documents are provided in a timely manner.

"The USPTO is committed to building a better patent system both at home and abroad," said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee. "By expediting the processing of patent applications between the USPTO and SIPO, we can provide greater cost savings to applicants and advance our goals toward stronger global intellectual property promotion and protection."

Under the Paris Convention for the Protection of Industrial Property, a treaty that provides a number of important rights for innovators, a patent applicant may file an application in one Paris Convention member country (the priority document), and within 12 months, file corresponding applications in other member countries, while obtaining priority to the first application's filing date. This 12-month period allows applicants to make important decisions about where to file subsequent applications to seek protection for their inventions. In order to perfect the claim of priority to an earlier foreign filing, however, applicants are generally required to file paper copies of the priority document in each of the later-filing offices at their own expense.

The USPTO exchanges priority documents through secure, electronic connections using the Trilateral Document Access (TDA) Web Services at no cost to the applicant. This secure electronic exchange of copies of priority documents promotes sharing of information between the USPTO and the SIPO, and reduces the administrative costs associated with handling paper copies of priority documents and scanning them into the offices' electronic image record management systems. All users will benefit from the simplified process and cost reduction that the new service provides.

Practice Tip: Forms and instructions for using this free service are available on the USPTO's website: www.uspto.gov/patents/process/file/pdx/pdx_index.jsp. For further information, see the Official Gazette Notice: www.uspto.gov/patents/law/notices/2014.jsp.

October 23, 2014

Indiana Patent Litigation: Lilly Sues Alleging Infringement of ALIMTA

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Indianapolis, Indiana - An Indiana patent attorney for Eli Lilly and Company of Indianapolis, Indiana ("Lilly") and The Trustees of Princeton University of Princeton, New Jersey ("Princeton") filed a patent infringement complaint in the Southern District of Indiana alleging that Nang Kuang Pharmaceutical Co., Ltd. of Tainan City, Taiwan and CANDA NK-2, LLC of Waco, Texas infringed and/or will infringe ALIMTA®, U.S. Patent Nos. 5,344,932 ("the '932 patent") and 7,772,209 ("the '209 patent"; collectively, "the patents-in-suit"), which have been issued by the U.S. Patent Office.

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. ALIMTA also is 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 indicated 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 the '209 patent cover a method of administering pemetrexed disodium to a patient in need thereof that also involves administration of folic acid and vitamin B12. The '932 patent, titled "N-(pyrrolo(2,3-d)pyrimidin-3-ylacyl)-Glutamic Acid Derivatives," along with the '209 patent, have been listed in connection with ALIMTA in the FDA's publication Approved Drug Products with Therapeutic Equivalence Evaluations.

This Indiana patent infringement lawsuit arises out of the filing by Defendant Nang Kuang 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 '932 and '209 patents. Nang Kuang filed as a part of that ANDA 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 patents-in-suit, asserting that the claims of the patents-in-suit are invalid, unenforceable, and/or not infringed by the manufacture, use, offer for sale, or sale of Defendants' ANDA products.

In their complaint, filed by an Indiana patent lawyer, Lilly and Princeton state that Defendants intend to engage in the manufacture, use, offer for sale, sale, marketing, distribution, and/or importation of Defendants' ANDA products and the proposed labeling therefor immediately and imminently upon approval of the ANDA i.e., prior to the expiration of the patents-in-suit. Plaintiffs asserts that Defendants' actions constitute and/or will constitute infringement of the patents-in-suit, active inducement of infringement of the patents-in-suit, and contribution to the infringement by others of the patents-in-suit.

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

  • Count I: Infringement of U.S. Patent No. 5,344,932
  • Count II: Infringement of U.S. Patent No. 7,772,209

Lilly and Princeton ask the court for:

(a) A judgment that Defendants have infringed the '932 patent and/or will infringe and/or actively induce infringement of the '932 patent;

(b) A judgment ordering that the effective date of any FDA approval for Defendants to make, use, offer for sale, sell, market, distribute, or import Defendants' ANDA Products, or any product the use of which infringes the '932 patent, be not earlier than the expiration date of the '932 patent, inclusive of any extension(s) and additional period(s) of exclusivity;

(c) A preliminary and permanent injunction enjoining Defendants, and all persons acting in concert with Defendants, from making, using, selling, offering for sale, marketing, distributing, or importing Defendants' ANDA Products, or any product the use of which infringes the '932 patent, or the inducement of any of the foregoing, prior to the expiration date of the '932 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 Defendants' ANDA Products, or any product the use of which infringes the '932 patent, prior to the expiration date of the '932 patent, infringes, will infringe and/or will actively induce infringement of the '932 patent;

(e) A judgment that Defendants have infringed the '209 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of the '209 patent;

(f) A judgment ordering that the effective date of any FDA approval for Defendants to make, use, offer for sale, sell, market, distribute, or import Defendants' ANDA Products, 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;

(g) A preliminary and permanent injunction enjoining Defendants, and all persons acting in concert with Defendants, from making, using, selling, offering for sale, marketing, distributing, or importing Defendants' ANDA Products, 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;

(h) A judgment declaring that making, using, selling, offering for sale, marketing, distributing, or importing of Defendants' ANDA Products, 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 others of the '209 patent;

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

(j) An award of Plaintiffs' costs and expenses in the action.

Practice Tip #1: This summer, Lilly succeeded in defending the '209 method-of-use patent in before District Judge Tanya Walton Pratt in the Southern District of Indiana. The court found, inter alia, that the patent did not fail for "obviousness."

Practice Tip #2: Obviousness is a legal conclusion based on underlying factual findings. Such findings include: 1) the scope and content of the prior art; 2) the differences between the claims and the prior art; 3) the level of ordinary skill in the art; and 4) objective considerations of non-obviousness such as commercial success and satisfaction of a long-felt need. Moreover, it is insufficient that prior art merely includes separate references to the subject matter of a subsequent patent claim. Instead, obviousness requires the additional showing that a person of ordinary skill in the art of the subject matter would have combined those elements of the prior art.

Continue reading "Indiana Patent Litigation: Lilly Sues Alleging Infringement of ALIMTA" »

October 22, 2014

Indiana Patent Litigation: PHD Sues DE-STA-CO for Patent Infringement

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Fort Wayne, Indiana - Indiana patent attorneys for PHD, Inc. of Fort Wayne, Indiana filed an intellectual property complaint in the Northern District of Indiana alleging that DE-STA-CO of Auburn Hills, Michigan infringed its patent on the "Long Travel Gripper," Patent No. 7,490,881, which has been registered by the U.S. Patent Office.

Plaintiff asserts rights acquired via assignment to a patented product called "Long Travel Gripper," U.S. Patent No. 7,490,881 (the "'881 Patent"). On April 29, 2014, Defendant was notified that its product "RPR Gladiator Series Gripper" appeared to infringe the '881 Patent.

In this Indiana patent litigation, Defendant is accused of infringing the '881 Patent as well as inducing infringement by others. Plaintiff contends that the infringing activities have been willful and that this case is exceptional, entitling it to an award of attorneys' fees.

Plaintiff asks the court for a judgment of infringement; damages, including treble damages; a declaration that the case is exceptional and an award of attorneys' fees pursuant to such a finding; and injunctive relief.

Practice Tip: The U.S. Supreme Court expanded upon existing jurisprudence regarding "exceptional" patent lawsuits this year. In two related cases, it held that a trial court may as a matter of its discretion award attorneys' fees in cases of patent infringement litigation that it deems "exceptional." These Supreme Court rulings revisiting how "exceptional" is defined may benefit any company that is the target of a questionable patent infringement lawsuit, as trial judges will now have greater latitude to award attorneys' fees - including awarding attorneys' fees to prevailing defendants - in those cases in which they determine that the conduct of the losing party "stands out from others."

Continue reading "Indiana Patent Litigation: PHD Sues DE-STA-CO for Patent Infringement" »

October 20, 2014

Indiana Cyberpiracy Litigation: Burns Rent-Alls Sues Aays Rent-All and Michael Sharp

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South Bend, Indiana - An Indiana intellectual property attorney for Burns Rent-Alls, Inc. of Mishawaka, Indiana filed a cyberpiracy lawsuit in the Northern District of Indiana alleging that Michael Sharpe and Aays Rent-All Co., Inc., also of Mishawaka, Indiana, had wrongfully registered and used domain names that would result in confusion with the "BURNS RENT-ALLS" common-law trademark.

Burns Rent-Alls is a fifth-generation family-owned firm that has been in business for over 100 years. It offers goods and services throughout northern Indiana and southwest Michigan under the BURNS RENT-ALLS brand including equipment rentals, convention services, event rentals, portable toilet rentals, costume rentals, and tent and canopy rentals.

Aays Rent-All is, according to Plaintiff, in a similar business and provides rentals throughout northern Indiana and southwest Michigan, including equipment rentals, convention services, event rentals, and tent and canopy rentals.

Burns Rent-Alls claims that, by virtue of its "longstanding and continuous use" of the BURNS RENT-ALLS mark, it owns common law trademark rights to that mark for use in connection with Burns Rent-Alls' goods and services.

Aays Rent-All and Sharpe are accused of registering and using domain names that are confusingly similar to Burns Rent-Alls' Mark, with a bad-faith intent to profit from their use and registration of those domain names. At issue are: (i) burnspartyrentall.com; (ii) burnspartyrental.com; and (iii) burnsrentall.com. Plaintiff contends that Defendants are using these names to redirect Internet traffic intended for the Burns Rent-Alls' website to Aays Rent-All's website. This use, Plaintiff asserts, is likely to cause confusion or mistake, or to deceive consumers into believing that there is an association between Aays Rent-All and Burns Rent-Alls.

Plaintiff also states that it agreed to pay, and did pay, $100 to purchase the burnsrentall.com domain name but that Defendants did not transfer the domain name as allegedly agreed.

In its complaint, Indiana intellectual property counsel for Burns Rent-Alls alleges the following:

  • Count I: Unfair Competition
  • Count II: Cyberpiracy 
  • Count III: Breach of Contract

Burns Rent-Alls requests injunctive relief, including the transfer of the domain names at issue; damages, including treble damages; and costs and attorneys' fees.

Practice Tip:

Plaintiff indicates that it attempted to obtain an agreement from Defendants regarding at least one of the domain names at issue prior to filing this lawsuit. Plaintiff contends that, despite this effort, Defendants continued to use the allegedly infringing website names. This lawsuit for unfair competition, cyberpiracy and breach of contract followed.

Another approach available to a plaintiff in such a situation is to seek a transfer of the domain names under the Uniform Domain-Name Dispute-Resolution Policy ("UDRP"). This policy was established to resolve "The Trademark Dilemma" inherent in the largely unpoliced sales of domain names -- the registration of a trademark without the consent of the trademark owner.

As part of the process of registering a domain name, registrants must, among other things, 1) "represent and warrant" that registering the name "will not infringe upon or otherwise violate the rights of any third party" and 2) agree to have the matter heard as an UDRP proceeding if any third party asserts that the domain name violates its trademark rights.

The UDRP is an administrative procedure. A UDRP limits itself to matters concerning abusive registrations and will not intervene in genuine disputes over trademark rights. To prevail in a UDRP proceeding, for each domain name, the complainant must establish three elements:

  1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  2. The registrant does not have any rights or legitimate interests in the domain name; and
  3. The registrant registered the domain name and is using it in "bad faith."

Continue reading "Indiana Cyberpiracy Litigation: Burns Rent-Alls Sues Aays Rent-All and Michael Sharp" »

October 16, 2014

Indiana Trademark Litigation: NextEra Sues Nextra for Trademark Infringement

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South Bend, Indiana - A trademark attorney for NextEra Energy, Inc. of Juno Beach, Florida filed an intellectual property complaint in the Northern District of Indiana. Defendant Nextra Technologies, LLC of Granger, Indiana is accused of infringing one or more of NextEra's 132 federally registered trademarks. Nextra is also accused of unfair competition and false advertising.

NextEra is a clean-energy company. It has approximately 42,500 megawatts of generating capacity in 26 states in the United States and four provinces in Canada. Through its affiliates, it provides wind and solar energy goods and services. Its wind-energy services include consulting, developing, construction and installation of wind energy systems, including wind-powered energy-generating turbines and turbine transformers. Its solar-energy systems include solar panels, solar arrays, solar photovoltaic equipment, solar thermal equipment and transformers.

Plaintiff asserts that Defendant Nextra is in a similar business and that it has manufactured, imported, promoted, distributed and/or sold energy products and services - including wind turbine components, solar panels, and energy systems - in the United States. Plaintiff further contends that Nextra's goods and services are offered under "Nextra" mark and that the "Nextra" mark infringes upon NextEra's "NextEra" family of trademarks.

Due to the alleged similarity between the types of goods and/or services offered by the two companies and the marks under which they are offered, NextEra claims that Nextra's sales of energy products and services is likely to cause confusion, mistake and deception among purchasers as to the existence of a relationship between NextEra and Nextra.

In its complaint, filed by a trademark lawyer for NextEra, the following claims are made:

• Federal Trademark Infringement,

• Federal Unfair Competition, and

• Common Law Trademark Infringement and Unfair Competition.

NextEra seeks injunctive relief and damages, including punitive damages, as well as costs and attorneys' fees.

Practice Tip: A finding of trademark infringement requires a "likelihood of confusion." There are seven factors relevant to the likelihood-of-confusion analysis: (1) the similarity between the plaintiff's mark and the allegedly infringing mark in appearance and suggestion; (2) actual confusion; (3) the similarity between the products and services offered by the plaintiff and defendant; (4) the area and manner of use; (5) the degree of care likely to be exercised by consumers; (6) the strength of the plaintiff's mark; and (7) the defendant's intent.

Continue reading "Indiana Trademark Litigation: NextEra Sues Nextra for Trademark Infringement" »

October 15, 2014

Indiana Copyright and Trademark Litigation: Edible Arrangements Sues Edible Creations and Owner

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Fort Wayne, Indiana - An Indiana trademark attorney for Edible Arrangements, LLC ("EA") and Edible Arrangements International, LLC ("EAI") of Wallingford, Connecticut filed an intellectual property complaint in the Northern District of Indiana alleging trademark and copyright infringement by Tom Drummond and Edible Creations, LLC ("EC") of Allen County, Indiana. Defendants are accused of infringing several trademarks (below), which have been issued by the U.S. Trademark Office, as well as a copyrighted work.

Since 1998, EAI has been using the phrase "Edible Arrangements," together with various related design marks, in connection with various food products. Its products include fruit cut to look like flowers as well as other fruit products. EAI operates a franchise network of over 1,200 independent owner-operated franchise locations throughout the United States and internationally. It sublicenses the trademarks at issue in this Indiana litigation to its franchisees.

The other Plaintiff, EA, owns the following trademarks relating to "Edible" and "Edible Arrangements":  

In August 2013, Defendants Edible Creations and the company's owner, Tom Drummond, Filed an application for what Plaintiffs content is a mark that is confusingly similar to one or more of EA's trademarks:  

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In September 2013, Plaintiffs sent a cease-and-desist letter demanding that Edible Creations cease using the mark. It later filed an opposition before the Trademark Trial and Appeal Board ("TTAB") challenging the registration on the grounds of deceptiveness, false suggestion of a connection between Edible Creations and EA, likelihood of confusion, dilution, misdescriptiveness and fraud. Edible Creations did not respond to EA's opposition and the TTAB entered a default against Edible Creations and refused to register Edible Creations' mark.In August 2013, Defendants Edible Creations and the company's owner, Tom Drummond, filed an application for what Plaintiffs contend is a mark that is confusingly similar to one or more of EA's trademarks:

In this lawsuit, Defendants have been accused of continuing to advertise, promote and sell fruit arrangements in Indiana using the phrase "Edible Creations" and "Edible Creations Creator of Edible Floral Arrangements." They have also been accused of violating EA's copyright in a sculpture known as the "Hearts and Berries Fruit Design" by displaying the copyrighted design in print, including on vehicles, and on the internet.

In its complaint, filed by an Indiana trademark and copyright lawyer, Plaintiffs list the following claims:

  • Trademark Infringement
  • False Designation of Origin
  • Trademark Dilution
    • By Blurring
    • By Tarnishment
  • Copyright Infringement
  • Unfair Competition
  • Unfair Competition

Plaintiffs seek damages, including punitive damages, as well as injunctive relief.

Practice Tip

Allegations of trademark dilution involve a different analysis from claims of trademark infringement. The first type of trademark dilution is dilution by blurring. An allegation of dilution by blurring requires that the plaintiff prove, among other things, that its mark is "famous." This is not an easy burden, requiring that the mark have "extensive public recognition and renown" within the population of average consumers. There are some marks, such as Chanel, Coke and Microsoft, for which establishing such renown is likely achievable. However, this bar is extremely high. Even trademarks that are very well known, such as Coach, which has been used since 1961 and under which several billion dollars of sales are made annually, have been found to be "not famous" for the purposes of a dilution analysis. Edible Arrangements will have a difficult time proving this claim.

The second type of trademark dilution is dilution by tarnishment. Edible Arrangements will also have a difficult time establishing the elements of this type of trademark dilution. This cause of action is generally brought when the reputation of a well-known mark is harmed by another's use of that trademark or a similar mark within a sexual context. For example, in Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 949-50 (N.D. Ill. 2002), the court held that the use of the term "VelVeeda" by a pornographic website tarnished the trademark held by the makers of Velveeta cheese. Courts may also find dilution by tarnishment where a defendant offers inferior products or services. It is unclear that Plaintiffs here have alleged facts sufficient to support a claim of tarnishment.

Continue reading "Indiana Copyright and Trademark Litigation: Edible Arrangements Sues Edible Creations and Owner " »

October 13, 2014

Indiana Teen Indicted for Theft of Intellectual Property Valued More Than $100 Million

District of Delaware - Four members of an international computer hacking ring were

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 indicted for stealing gaming technology and Apache helicopter training software. Two have already pled guilty.

Four members of an international computer hacking ring have been charged with breaking into computer networks of prominent technology companies and the U.S. Army and stealing more than $100 million in intellectual property and other proprietary data. Two of the charged members have already pleaded guilty. The alleged cyber theft included software and data related to the Xbox One gaming console and the Xbox Live online gaming system; popular games such as "Call of Duty: Modern Warfare 3" and "Gears of War 3"; and proprietary software used to train military helicopter pilots.

On September 30, Assistant Attorney General Leslie R. Caldwell of the Justice Department's Criminal Division, U.S. Attorney Charles M. Oberly, III of the District of Delaware and Special Agent in Charge Stephen E. Vogt of the FBI's Baltimore Field Office announced the guilty pleas of two of the defendants.

"As the indictment charges, the members of this international hacking ring stole trade secret data used in high-tech American products, ranging from software that trains U.S. soldiers to fly Apache helicopters to Xbox games that entertain millions around the world," said Assistant Attorney General Caldwell. "The American economy is driven by innovation. But American innovation is only valuable when it can be protected. Today's guilty pleas show that we will protect America's intellectual property from hackers, whether they hack from here or from abroad."

"Electronic breaking and entering of computer networks and the digital looting of identities and intellectual property have become much too common," said U.S. Attorney Oberly. "These are not harmless crimes, and those who commit them should not believe they are safely beyond our reach."

Nathan Leroux, 20, of Bowie, Maryland; Sanadodeh Nesheiwat, 28, of Washington, New Jersey; David Pokora, 22, of Mississauga, Ontario, Canada; and Austin Alcala, 18, of McCordsville, Indiana, were charged in an 18-count superseding indictment returned by a federal grand jury in the District of Delaware on April 23, 2014, and unsealed in September. The charges in the indictment include conspiracies to commit computer fraud, copyright infringement, wire fraud, mail fraud, identity theft and theft of trade secrets. The defendants are also charged with individual counts of aggravated identity theft, unauthorized computer access, copyright infringement and wire fraud.

Today, Pokora and Nesheiwat pleaded guilty to conspiracy to commit computer fraud and copyright infringement and are scheduled for sentencing on Jan. 13, 2015. Pokora was arrested on March 28, 2014, while attempting to enter the United States at the Lewiston, New York, Port of Entry. Pokora's plea is believed to be the first conviction of a foreign-based individual for hacking into U.S. businesses to steal trade secret information.

According to the superseding indictment and other court records, from January 2011 to March 2014, the four men and others located in the United States and abroad allegedly hacked into the computer networks of Microsoft Corporation, Epic Games Inc., Valve Corporation, Zombie Studios and the U.S. Army. The defendants and others allegedly obtained access to the victims' computer networks through methods including SQL injection and the use of stolen usernames and passwords of company employees and their software development partners. Once inside the victims' computer networks, the conspirators accessed and stole unreleased software, software source code, trade secrets, copyrighted and pre-release works and other confidential and proprietary information. Members of the conspiracy also allegedly stole financial and other sensitive information relating to the companies - but not their customers - and certain employees of such companies.

Specifically, the data cyber-theft allegedly included source code, technical specifications and related information for Microsoft's then-unreleased Xbox One gaming console; intellectual property and proprietary data related to Xbox Live, Microsoft's online multi-player gaming and media-delivery system; Apache helicopter simulator software developed by Zombie Studios for the U.S. Army; a pre-release version of Epic's video game, "Gears of War 3;" and a pre-release version of Activision's video game, "Call of Duty: Modern Warfare 3." The defendants also allegedly conspired to use, share and sell the stolen information.

The value of the intellectual property and other data that the defendants stole, as well as the costs associated with the victims' responses to the conduct, is estimated to range between $100 million and $200 million. To date, the United States has seized over $620,000 in cash and other proceeds related to the charged conduct.

In addition to those charged in the United States, an Australian citizen has been charged under Australian law for his alleged role in the conspiracy.

An indictment is merely an allegation, and the defendants are presumed innocent unless and until proven guilty in a court of law.

This case is being investigated by the FBI, with assistance from the Criminal Division's Office of International Affairs, the U.S. Department of Homeland Security's Homeland Security Investigations and Customs and Border Patrol, and the U.S. Postal Inspection Service. The investigation also has been coordinated with the Western Australia Police and the Peel Regional Police of Ontario, Canada.

The case is being prosecuted by Trial Attorney James Silver of the Criminal Division's Computer Crime and Intellectual Property Section and Assistant U.S. Attorney Edward J. McAndrew of the District of Delaware.

Practice Tip:

The Computer Crime and Intellectual Property Section ("CCIPS") of the U.S. Department of Justice ("DOJ") is responsible for implementing the DOJ's national strategies in combating computer and intellectual property crimes worldwide. CCIPS prevents, investigates, and prosecutes computer crimes by working with other government agencies, the private sector, academic institutions, and foreign counterparts.

Section attorneys work to improve the domestic and international infrastructure - legal, technological, and operational - to pursue network criminals most effectively. The Section's enforcement responsibilities against intellectual property crimes are similarly multi-faceted.

Intellectual property has become one of the principal U.S. economic engines, and the nation is a target of choice for thieves of material protected by copyright, trademark, or trade-secret designation. In pursuing all these goals, CCIPS attorneys regularly run complex investigations, resolve unique legal and investigative issues raised by emerging computer and telecommunications technologies; litigate cases; provide litigation support to other prosecutors; train federal, state, and local law enforcement personnel; comment on and propose legislation; and initiate and participate in international efforts to combat computer and intellectual property crime.

October 10, 2014

Trademark Update: eTAS Enhancements

The following improvements were made by the United States Patent and Trademark Office to the Electronic Trademark Assignment System ("eTAS") during fiscal year 2014. These enhancements are designed to facilitate filing and recording assignments with the Assignment Recordation Branch.

  • NEW CONVEYANCE TYPES: Added three new Conveyance Types to improve database specificity and reduce the need to file two documents in the case of a merger involving a name change:
    • Merger and Change of Name" allows customers to select both conveyance types in a single submission
    • Entity Conversion 
    • Court Order
  • ORDER OF RECORDATION: Added a method for customers to designate the order of recordation for multiple, related assignment submissions.
  • PHONE COMMUNICATION: Introduced new service in which the USPTO will contact customers by phone: (1) to resolve recordation issues rather than issuing a Non-Recordation Notice, and (2) to help identify potential typographical errors that might result in the filer having to file a subsequent corrective assignment.
  • ELECTRONIC RESUBMISSION: Added electronic resubmission capability allowing customers who receive a Non-Recordation Notice to resubmit the corrected paperwork electronically.
  • COUNTRY CODES: Updated and reordered country codes in the eTAS (1) to be consistent with other USPTO systems such as the Trademark Electronic Application System and (2) to enable the USPTO to add and delete countries from the list.
  •  SPECIAL CHARACTERS: Added the ability for customers to enter special characters in the name fields in eTAS. For example, customers may now enter a corporation called XYZ*, Inc. as a name.
  • NOTICE DELIVERY: Instituted delivery of recordation notices via three methods in succession: (1) first attempt is via email, (2) if email is unsuccessful, then send via fax and, (3) if fax is unsuccessful, then send via postal mail.
  • VERIFICATION: Added a statement to the validation page requiring a filer to verify that he/she is aware that the unauthorized use of eTAS is a misrepresentation to the federal government, is prohibited and is subject to criminal and civil penalties. This change was made in an attempt to prevent the filing of false transfers against another's property.

October 9, 2014

USPTO Seeks Public Input Regarding Cybersecurity

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The facts are alarming: the cybersecurity threat to the U.S. - and the world - is real and growing. The Economist Magazine reported early this year that one security firm estimated that cybercrime costs the world $113 billion per year and affects 378 million people, while a research institute estimated that malicious cyber-attacks in 2012 cost U.S. companies $277 for each customer's or user's account put at risk.

To combat the threat, the United States Patent and Trademark Office ("USPTO") and National Institute of Standards and Technology ("NIST") have teamed up to explore viable cybersecurity solutions and are asking for help from the public.

NIST's Request for Information is accessible at: https://federalregister.gov/a/2014-20315. The 45-day comment period ends October 10, 2014. All RFI responses should be submitted to cyberframework@nist.gov and will be posted on NIST's website.

Background Information

In 2013, the Framework for Improving Critical Infrastructure Cybersecurity call to action was introduced by President Obama in Executive Order (13636). The Department of Commerce is playing a crucial role to establish the framework and connect the government's efforts to the business community. U.S. Secretary of Commerce Penny Pritzker said "The Obama administration and Commerce Department are committed to continue supporting this framework to ensure it keeps up with evolving cyber threats and the needs of American businesses."

In response to the Executive Order, NIST developed Cybersecurity Framework Version 1.0, which includes standards, guidelines, and practices that organizations of all types can use to create, guide, assess or improve cybersecurity programs. NIST has recently issued a Request for Information to gain an understanding of organizations' awareness of and experiences with version 1.0 of the Framework.

Upcoming Initiatives

Moving forward, the USPTO is pursuing initiatives to work with stakeholders to find ways new cybersecurity technology can be quickly moved into the marketplace and ensure patents related to the technology are of the highest quality.

The initiatives include:

  • Hosting a Cybersecurity Partnership Customer meeting on November 14, 2014 to discuss topics related to cybersecurity. Meeting participants will be invited to share ideas on what activities the USPTO should initiate or expand.
  • Hosting a roundtable discussion with cyber startups later in 2015 to increase awareness of the importance of protecting intellectual property ("IP") and to promote the USPTO's application programs. Participants will be encouraged to share information about hurdles or issues startups face when trying to implement an IP strategy - and how the USPTO can help them.
  • Working with industry experts to further expand training opportunities for patent examiners on cybersecurity standards and emerging technologies. The USPTO welcomes partnering on training with innovators in cybersecurity and network security from private industry, academia and other government organizations. Leaders in this important sector are encouraged to volunteer and share their expertise by applying through the USPTO's Patent Examiner Technical Training Program.
Practice Tip #1: The national and economic security of the United States depends on the reliable functioning of critical infrastructure, which has become increasingly dependent on information technology. Recent cyber attacks and publicized weaknesses reinforce the need for improved capabilities for defending against malicious cyber activity. This will be a long-term challenge.

Practice Tip #2: More information on the November 14 meeting will be forthcoming on the USPTO's Initiatives & Events webpage within a month.

Practice Tip #3: For more information on the initiatives, you may also contact the USPTO at cybersecuritypartnership@uspto.gov.

October 8, 2014

185 Trademark Registrations Issued to Indiana Companies in September 2014

The U.S. Trademark Office issued the following 185 trademark registrations to persons and businesses in Indiana in September 2014 based on applications filed by Indiana trademark attorneys:

Reg. Number Word Mark Click To View
4596040 ESG SECURITY VIEW
4611624 AROUND THE CLOCK SPORTS TALK VIEW
4609858 EVERY CONTACT MATTERS VIEW
4609713 CENTERFIRST VIEW
4609559 GOD ROCKS VIEW
4609463 LEAF VIEW
4609273 REAL PURITY VIEW
4609053 GRAND DESIGN VIEW
4608998 B. HAPPY PEANUT BUTTER VIEW
4608976 OMNI HEALTH AND FITNESS VIEW
4608873 SPRINGBUK VIEW
4608870 THE POWER OF BEST VIEW
4608869 STORYTIME SERIES VIEW
4608863 PENTREXFLU VIEW

Continue reading " 185 Trademark Registrations Issued to Indiana Companies in September 2014" »

October 6, 2014

Patent Office Issues 219 Patents To Indiana Citizens in September 2014

The U.S. Patent Office issued the following 219 patent registrations to persons and businesses in Indiana in September2014, based on applications filed by Indiana patent attorneys:

PAT. NO. TITLE
8849728 Visual analytics law enforcement tools 
8849673 Rule generation 
8849459 Power management system for a handheld medical device 
8849458 Collection device with selective display of test results, method and computer program product thereof 
8849439 Mass production of orthopedic implants 
8847756 Bed status indicators 
8847446 Method and apparatus for fastening cooling fans to electro-mechanical machines 
8847114 Laser-assisted micromachining system and method 
8847030 Inbred corn line XHK20 
8846717 Stable insecticide compositions and methods for producing same 
8846570 Herbicidal compositions comprising 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl)pyridine-2- -carboxylic acid or a derivative thereof and microtubule inhibiting herbicides 
8846231 Battery assembly with temperature control device 
8846132 Method for producing polymer layers 
8846068 Methods and compositions for treating post-operative pain comprising a local anesthetic 
8846059 Extracellular matrix adjuvant and methods for prevention and/or inhibition of ovarian tumors and ovarian cancer 
8845772 Process and system for syngas production from biomass materials 
8845749 Modular orthopaedic component case 
8845744 Ulnar head implant 

Continue reading "Patent Office Issues 219 Patents To Indiana Citizens in September 2014" »

October 3, 2014

If You Have Been Sued for Patent Infringement

How does a patent infringement lawsuit begin?

A patent lawsuit begins with the filing of a complaint alleging patent infringement by the patent 

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holder. If a lawsuit is filed against you, the patent owner must serve two documents on you: (1) a document called a "complaint," which explains the accusations made against you; and (2) a document called a "summons." The patent owner may first send a "demand" letter that states that you are potentially infringing the claims of a patent and requests that you pay for a license to use the patented invention, or it may go straight to court.

What are my options for responding to the suit?

If you are sued, you must formally respond or you will likely face significant repercussions for your failure to do so. The response must be filed with the court within the time period set and a copy must be served on the patent owner. If you do not respond, the court may enter a default judgment against you, which may order you to pay damages and/or stop infringing on one or more patent claims. If you are sued for patent infringement in Indiana, it would be wise to consult with an Indiana patent attorney to help you decide on the best course of action. In general, your options include:

  • Denying that the patent owner has proved that you infringe any claim of the patent or patents. 
  • Negotiating with the patent owner for settlement of the lawsuit, for example, by agreeing to a license or a statement that you do not infringe the patent. A mediator may help you reach an agreeable settlement. 
  • Trying to invalidate the patent based on references that show that the patent or patents are invalid.

These options may be pursued in or outside of court, but court-based litigation is often very expensive (costing hundreds of thousands to millions of dollars) and slow. It often takes several years before the federal district court (the court in which the patent infringement trial is held) will reach a verdict. Even if the case results in a court decision, it may then be appealed to the Federal Circuit, and potentially the U.S. Supreme Court, requiring additional time and money.

How can I tell whether or not I'm infringing?

To determine whether or not you are infringing a patent, you or your attorney would need to compare a patent's claims and the accused product, system, or process. To infringe a patent, the accused must perform each and every element of one or more of its claims, or actively encourage, sell or offer to sell a component that leads to another's infringement. The best way to understand each claim is in light of the description provided through the patent (called the "specification"). A person knowledgeable in the technology should be able to read the specification and be able to tell how to make and use the invention.

The written record created when the United States Patent and Trademark Office ("USPTO") examined the patent application, called the "prosecution history" or "file wrapper," provides further context for understanding the boundaries of the claims, especially with respect to the closest "prior art." Prior art consists of the references (books, articles, web pages and other information) that were publicly available before the date that the application was filed. For many patents, the prosecution history is available for free via the USPTO Public PAIR (Patent Application Information Retrieval) website. If the prosecution history is not available on Public PAIR, you may order it online on the USPTO website. A registered patent lawyer can advise you regarding all of the above.

How do I find a lawyer?

Only an attorney can represent you in court. Patent litigation is a nuanced specialty. Thus, it is advisable to enlist the aid of an experienced patent litigator. A list of registered patent agents and attorneys may be obtained from the USPTO (see, e.g., Indiana patent attorney Paul B. Overhauser).

Practice Tip: Deciding simply to ignore a complaint can be a costly error. Failing to present the defendants' account of the facts and arguments about the proper application of the law can result in the trial court considering only the plaintiff's side of the story. In other words, if the defendants choose to leave a complaint unanswered, the court may deem the well-pled allegations of the plaintiff to have been admitted by the defendants due to their failure to deny them.

The information presented on this site does not constitute legal advice on patent law or any other legal matters. It should not be considered as a replacement for advice from an intellectual property attorney.

October 2, 2014

Indiana Copyright Litigation: Brinker's Jewelers Sues The Diamond Galleria by Rogers

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Evansville, Indiana - Indiana copyright attorneys for Brinker Manufacturing Jewelers, Inc. d/b/a Brinker's Jewelers of Evansville, Indiana (Brinker's) and South Central Communications Corporation d/b/a South Central Digital of Nashville, Tennessee ("South Central Digital") filed a copyright infringement lawsuit in the Southern District of Indiana alleging, inter alia, that Rogers Galleria Jewelers, LLC d/b/a The Diamond Galleria by Rogers of Evansville, Indiana ("Rogers"), Tyna Wheat of Hendersonville, Kentucky and Sharon Sartore of Henderson, Kentucky infringed the advertising material on Brinker's website, which has been copyrighted by the U.S. Copyright Office.

Brinker's has operated a jewelry store in Evansville, Indiana since 1972. Rogers opened a nearby store called The Diamond Galleria by Rogers in 2013. The two showrooms are approximately 3 miles apart.

In this Indiana copyright complaint, Brinker's accuses Rogers of "blatant and extreme violations of federal copyright and trade dress and unfair competition law and Indiana statutory and common law with regard to Brinker's intellectual property rights, business relationships, goodwill and business reputation."

Specifically, Rogers is accused of copying Brinker's advertising and branding materials including the design of Brinker's showroom and jewelry boxes, as well as copying some of Brinker's taglines, written advertisements and Internet advertising. Brinker's also contends that Rogers falsely represented the nature of Rogers' business to two jewelry vendors so that it could offer jewelry to the public that had previously been offered exclusively by Brinker's.

In its complaint, filed by Indiana copyright litigators, Plaintiffs allege the following:

  • Count I: Copyright Infringement
  • Count II: Trade Dress Infringement and Unfair Competition under the Lanham Act
  • Count III: Common Law Trademark Infringement, Unfair Competition and Deceptive Trade Practices
  • Count IV: Conversion
  • Count IV [sic]: Misappropriation of Advertising Ideas and Style of Doing Business
  • Count V: Tortious Interference with Contract or Business Relationship

Plaintiffs ask the court:

  • that Rogers, Wheat, and Sartore, jointly and severally, be found liable for actual or statutory damages; 
  • for an accounting of, and the imposition of a constructive trust with respect to, the Defendants' profits attributable to their infringement of Brinker's copyrights and trade dress and unfair competition violations;
  •  for a preliminary and permanent injunction prohibiting the Defendants and their agents from continuing to infringe Brinker's copyrights and violate Brinker's rights to its intellectual property pursuant to the Lanham Act and common law; 
  • for treble or punitive damages; 
  • for prejudgment interest; and
  • for Brinker's attorneys' fees and expenses.

Practice Tip:

The traditional rationale behind granting copyright protection is to encourage the production of creative works. Without such protection, investment in creative works would be substantially diminished.

For example, those who incur the costs of creating an original work - e.g., the creators of a movie spend time writing a script, pay actors, rent studio space and the like - would not be able to recoup such costs if others were allowed to reproduce the work for no more than it costs to copy a DVD and then offer it to the marketplace at a price point that did not include all of the costs of the work's creation.

The traditional argument for copyright protection is not as strong in the advertising context. Critics of copyright protection for advertising argue that most marketing works would be created regardless of the existence of copyright protection for the work because effective advertising results in direct benefits for its creators in the form of increased sales. Thus, no additional protection is necessary.

As a result, some have advocated statutory adjustments to the copyright protection that advertising may receive. Among the proposals is that Congress extend the doctrine of "thin" copyright protection, which is used for, e.g., factual compilations, to advertising material. Under this proposed level of copyright protection, a virtual identity between the original advertising and the accused advertising would be required before liability for copyright infringement would be found.

Continue reading "Indiana Copyright Litigation: Brinker's Jewelers Sues The Diamond Galleria by Rogers" »