April 30, 2015

Supreme Court Holds TTAB Decision Can Have Issue Preclusion Effect

The Supreme Court on March 24, 2015, held that a Trademark Trial and Appeal Board (TTAB) decision should be given issue preclusion effect when the usages it adjudicated are materially the same as those before a district court. B&B Hardware, Inc. v. Hargis Industries, Inc., U.S., No. 13-352, 3/24/2015.

Reversing an Eighth Circuit decision, the Court found no categorical reason why issue preclusion can never apply. The same likelihood of confusion standard applies for both registration and infringement, Justice Alito explained, even if the TTAB and the district court do not always consider the same usages. A concurring opinion was filed by Justice Ginsburg, who stressed that preclusion will not apply for a great many TTAB decisions. Justice Thomas (joined by Justice Scalia) dissented, objecting to the presumption of preclusion for adjudicating agencies. The Court's decision is consistent with the position taken in an AIPLA amicus brief filed in this case.

Background

This litigation concerns alleged infringement of B&B's registered mark "Sealtight" for fastener products largely used in the aerospace industry. Hargis attempted to register its "Sealtite" mark for fasteners used in the construction trade, but its application was refused based on the B&B registration, which Hargis then attempted to cancel. The TTAB refused to cancel the registration, finding B&B's registration incontestable, and it subsequently sustained B&B's opposition to Hargis's attempted registration of "Sealtite."

In a district court action, however, a jury found the B&B mark to be merely descriptive, and the district court refused to defer to the TTAB decision.

The Eighth Circuit affirmed the district court decision. The simple fact that both the TTAB's registration decision and the district court's infringement decision addressed the concept of "likelihood of confusion" does not mean they addressed the same issue, according to the court.

Administrative Preclusion

Writing for the Supreme Court majority, Justice Alito first made clear that issue preclusion is not limited to situations where the same issue is before two courts, pointing out that preclusion also often applies where a single issue is before a court and an administrative agency. He quoted Astoria Fed. Sav. & Loan Assn. v. Solimino, 501 U. S. 104 (1991), that "courts may take it as given that Congress has legislated with the expectation that the principle [of issue preclusion] will apply except when a statutory purpose to the contrary is evident." The Court said a presumption of administrative preclusion is also supported by United States v. Utah Constr. & Mining Co., 384 U. S. 394 (1966), and by the Restatement (Second) of Judgments.

Constitutional Issues

The Court was not persuaded that TTAB preclusion raised concerns over the Seventh Amendment right to a jury trial and the separation of executive and judicial powers. The jury issue was not raised below, and the constitutionality of TTAB preclusion is not before the Court, Justice Alito observed.

Specifically, the Court stated that, under Parklane Hosiery Co. v. Shore, 439 U. S. 322 (1979), the right to a jury trial does not negate issue preclusion, even if the judgment in question was entered by a juryless tribunal. Moreover, in 1791, a party had no right to a jury determination of issues previously adjudicated by a chancellor in equity, Justice Alito added.

Congressional Intent

The Court also found no "evident" reason why Congress would object to giving preclusive effect to TTAB decisions. Neither the text nor the structure of the Lanham Act forbids issue preclusion, and nothing can be inferred about Congressional intent from the availability of de novo district court review of TTAB decisions, Justice Alito wrote. If a party to a court proceeding fails to challenge an adverse decision, that decision can have preclusive effect in other cases, even if it would have been reviewed de novo, he explained.

While the Astoria decision found no issue preclusion, Justice Alito pointed out that this case is different in that Astoria involved a plaintiff that exhausted administrative remedies and sued in court about the same alleged conduct. The concern there was that issue preclusion could render the judicial action "strictly pro forma." By contrast, the party here in district court was not seeking review of the TTAB registration decision, and the TTAB proceeding was not a prerequisite to the infringement action.

No Categorical Reason Against TTAB Preclusion

Finally, the Court was unable to find a categorical reason why TTAB registration decisions can never meet the ordinary elements of issue preclusion. Even if the TTAB and district courts consider different factors, the same likelihood-of-confusion standard applies to both registration and infringement. Justice Alito explained as follows:

To begin with, it does not matter that registration and infringement are governed by different statutory provisions. Often a single standard is placed in different statutes; that does not foreclose issue preclusion. * * * Neither does it matter that the TTAB and the Eighth Circuit use different factors to assess likelihood of confusion. For one thing, the factors are not fundamentally different, and "[m]inor variations in the application of what is in essence the same legal standard do not defeat preclusion." * * * More important, if federal law provides a single standard, parties cannot escape preclusion simply by litigating anew in tribunals that apply that one standard differently. A contrary rule would encourage the very evils that issue preclusion helps to prevent.

The real question, therefore, is whether likelihood of confusion for purposes of registration is the same standard as likelihood of confusion for purposes of infringement. We conclude it is, for at least three reasons. First, the operative language is essentially the same; the fact that the registration provision separates "likely" from "to cause confusion, or to cause mistake, or to deceive" does not change that reality. * * * Second, the likelihood-of-confusion language that Congress used in these Lanham Act provisions has been central to trademark registration since at least 1881. * * * That could hardly have been by accident. And third, district courts can cancel registrations during infringement litigation, just as they can adjudicate infringement in suits seeking judicial review of registration decisions. * * * There is no reason to think that the same district judge in the same case should apply two separate standards of likelihood of confusion.

The Court conceded that the TTAB is concerned with whether marks "resemble" each other, and that infringement is concerned with "use in commerce." However, to give a categorical effect to this difference would mistake a "reason not to apply issue preclusion" with a "reason never to apply issue preclusion." Justice Alito wrote the following:

Just because the TTAB does not always consider the same usages as a district court does, it does not follow that the Board applies a different standard to the usages it does consider. If a mark owner uses its mark in ways that are materially the same as the usages included in its registration application, then the TTAB is deciding the same likelihood-of-confusion issue as a district court in infringement litigation. By contrast, if a mark owner uses its mark in ways that are materially unlike the usages in its application, then the TTAB is not deciding the same issue. Thus, if the TTAB does not consider the marketplace usage of the parties' marks, the TTAB's decision should "have no later preclusive effect in a suit where actual usage in the marketplace is the paramount issue." 6 McCarthy §32:101, at 32-246.

Materiality is an essential consideration, the Court continued, since trivial variations between usages cannot create different issues. It is of no consequence that the TTAB may place more weight on certain factors than it should, Justice Alito said, since that that is an occasion for judicial review.

Finally, the Court concluded that procedural differences in TTAB and district courts (such as the absence of live witnesses and limitations on discovery at the TTAB) by themselves do not defeat preclusion. The correct inquiry for issue preclusion is whether the first proceeding was poor, cursory or unfair, Justice Alito observed, and no one has given a "categorical reason" to doubt the quality, extensiveness or fairness of the TTAB proceedings. 
 
The Eighth Circuit decision was reversed and remanded.

Concurring and Dissenting Opinions

In her concurring opinion, Justice Ginsburg said the Court rightly recognizes that issue preclusion will not apply for a great many registration decisions.

In his dissenting opinion, Justice Thomas (joined by Justice Scalia) objected to the majority's application of a presumption of administrative preclusion in this case. He contended that the presumption is based solely on dictum in Astoria where preclusion was denied, and that history undercuts the suggestion that administrative preclusion was widely accepted at common law.

To read the opinions in this case, click here.

April 29, 2015

Indiana Patent Litigation: Eli Lilly Again in Federal Court Asserting Patent Infringement

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Indianapolis, Indiana - An Indiana patent lawyer for Eli Lilly and Company of Indianapolis, Indiana; Daiichi Sankyo Co., Ltd. of Tokyo, Japan; Daiichi Sankyo, Inc. of Parsippany, New Jersey; and Ube Industries, Ltd of Yamaguchi, Japan (collectively "Lilly") sued in the Southern District of Indiana alleging that Lupin Ltd. of Mumbai, India and Lupin Pharmaceuticals, Inc. of Baltimore, Maryland infringed Patent Nos. 8,569,325, titled Method of Treatment with Coadministration of Aspirin and Prasugrel and 8,404,703, titled Medicinal Compositions Containing Aspirin, which have been issued by the U.S. Patent Office.

This lawsuit adds another two new Defendants, Lupin Ltd. and Lupin Pharmaceuticals, Inc. (collectively "Lupin"), to Lilly's Indiana patent litigation efforts. In these "Effient" patent-infringement lawsuits, the Lilly group of Plaintiffs alleges infringement of its pharmaceutical product Effient. The patents at issue in the Lupin litigation are Effient-related patents 8,404,703 "Medicinal Compositions Containing Aspirin," (the "'703 patent") and 8,569,325 "Method of Treatment with Coadministration of Aspirin and Prasugrel" (the "'325 patent").

This complaint asserts patent infringement arising out of the filing by Lupin of an Abbreviated New Drug Applications ("ANDA") with the United States Food and Drug Administration ("FDA") seeking approval to manufacture and sell generic versions of two pharmaceutical products - Effient 5mg and Effient 10mg tablets - prior to the expiration of the '703 patent and the '325 patent. These patents cover two Effient products and/or methods of using Effient products and for which Lilly claims an exclusively license.

Effient products were approved by the FDA for the reduction of thrombotic cardiovascular events in certain patients with acute coronary syndrome (ACS) who are to be managed with percutaneous coronary intervention (PCI, or angioplasty). Effient products contain prasugrel hydrochloride, which is also known as 5-[(1RS)-2-cyclopropyl-1-(2-fluorophenyl)-2-oxoethyl]-4,5,6,7-tetrahydrothieno[3,2-c]pyridin-2-yl acetate hydrochloride or 2-acetoxy-5-(alpha-cyclopropylcarbonyl-2-fluorobenzy1)-4,5,6,7-tetrahydrothieno[3,2-c]pyridine hydrochloride, and is covered by the '726 patent.

The instructions accompanying Effient products state that patients taking Effient products should also take aspirin. The use of Effient products in combination with aspirin for the reduction of thrombotic cardiovascular events in patients with ACS who are to be managed with PCI is allegedly covered by the claims of the '703 and '325 patents.

Lupin is accused of planning to infringe the patents-in-suit by including with its products instructions for use that substantially copy the instructions for Effient products, including instructions for administering Lupin's products with aspirin as claimed in the '703 and '325 patents.

Plaintiffs contend that Lupin knows that the instructions that Lupin intends to include with its products will induce and/or contribute to others using those products in the allegedly infringing manner set forth in the instructions. Moreover, the Lilly Plaintiffs also contend that Lupin specifically intends for health care providers, and/or patients to use Lupin's products in accordance with the instructions provided by Lupin and that such use will directly infringe one or more claims of the '703 and '325 patents. Thus, state Plaintiffs, Lupin's actions will actively induce and/or contribute to infringement of the '703 and '325 patents.

The complaint, filed by an Indiana patent attorney, lists four counts:

• Count I: Infringement of U.S. Patent No. 8,404,703
• Count II: Declaratory Judgment of Infringement of U.S. Patent No. 8,404,703
• Count III: Infringement of U.S. Patent No. 8,569,325

• Count IV: Declaratory Judgment of Infringement of U.S. Patent No. 8,569,325

Plaintiffs ask the court for judgment:

• That Lupin has infringed the '703 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of one or more claims of the '703 patent;

• That Lupin has infringed the '325 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of one or more claims of the '325 patent;

• That, pursuant to 35 U.S.C. § 271(e)(4)(B), Lupin be permanently enjoined from making, using, selling or offering to sell any of its accused products within the United States, or, where applicable, importing accused products into the United States prior to the expiration of the '703 and '325 patents;

• That, pursuant to 35 U.S.C. § 271(e)(4)(A), the effective date of any approval of the Lupin ANDA under § 505(j) of the Federal Food, Drug and Cosmetic Act (21 U.S.C. § 355(j)) shall not be earlier than the later of the expiration dates of the '703 and '325 patents, including any extensions;

• If Lupin commercially makes, uses, sells or offers to sell any accused product within the United States, or, where applicable, imports any accused product into the United States, prior to the expiration of either of the '703 and '325 patents, including any extensions, that Plaintiffs be awarded monetary damages for those infringing acts to the fullest extent allowed by law and be awarded prejudgment interest based on those monetary damages;

• That the case be deemed exceptional under 35 U.S.C. § 285;

• That the '703 patent remains valid and enforceable;

• That the '325 patent remains valid and enforceable; and

• That Plaintiffs be awarded reasonable attorney's fees, costs and expenses.

Continue reading "Indiana Patent Litigation: Eli Lilly Again in Federal Court Asserting Patent Infringement" »

April 28, 2015

Indiana Copyright Litigation: Magistrate Rejects Malibu Media's Request for Fees and Sanctions

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Indianapolis, Indiana - Magistrate Judge Mark J. Dinsmore recommended that Judge William T. Lawrence deny Malibu Media's motion for fees and sanctions against two Defendants and copyright lawyer Jonathan Phillips.

This Indiana federal lawsuit involves allegations of the use of BitTorrent to illegally download copyrighted adult films. Plaintiff Malibu Media, LLC of Malibu, California initiated copyright litigation in the Southern District of Indiana alleging that Charles and Kelley Tashiro, husband and wife, violated its intellectual property rights by downloading copyrighted videos without authorization.

On the morning of a scheduled evidentiary hearing in the matter, attorney Phillips, who at the time represented both husband and wife, learned of Mr. Tashiro's intent to invoke his Fifth Amendment rights to avoid testifying about certain matters. The defense attorney for the Tashiros advised the court that, as a result, a conflict of interest between husband and wife had arisen and that he would be withdrawing as the defense attorney for Mr. Tashiro. As a result, the court postponed that day's hearing.

Malibu Media subsequently filed a motion asking the court for sanctions, seeking to hold Mr. Tashiro and his copyright attorney jointly and severally liable for the costs and fees incurred in its preparations for the postponed hearing. Malibu Media contended that the defense lawyer's failure to recognize the conflict of interest between the two Defendants in a timely manner had required Malibu Media to incur unnecessary expenses for the evidentiary hearing. More specifically, Malibu Media contended that it incurred several thousand dollars in unnecessary fees, travel expenses, and other costs. It sought to recover those fees, expenses, and costs 1) under Federal Rule of Civil Procedure 37; 2) under 28 U.S.C. § 1927; 3) through an exercise of the court's inherent authority; and 4) under Federal Rule of Civil Procedure 16.

Magistrate Judge Dinsmore first concluded that FRCP 37 was inapplicable, as it was generally appropriate for "disputes or misconduct during discovery" and the delay of the evidentiary hearing had not resulted from discovery misconduct.

Plaintiff's claim under 28 U.S.C. § 1927 was also rejected. That section provides that the court may order costs, expenses, and attorneys' fees incurred as a result of an attorney's unreasonable or vexatious expansion of the proceedings in litigation.

Malibu Media asserted that this section applied because the copyright attorney's failure to timely recognize a conflict of interest between the husband-and-wife Defendants failed to meet the standard of care required of attorneys. The court disagreed, stating that the case had involved no incompatibility of the copyright Defendants' positions, as both had steadfastly asserted that neither had infringed any of Malibu Media's copyrighted material and that no evidence had been destroyed. Consequently, the defense attorney's belief that he could provide concurrent representation to both Defendants was neither unreasonable nor vexatious and, thus, relief under 28 U.S.C. § 1927 was unavailable.

Moreover, the court explained, even had § 1927 applied, it provided recompense only for the excess costs and fees incurred - those that would not have been otherwise necessary. Because much of the material prepared by intellectual property counsel for Malibu Media would likely prove useful later in the litigation, those costs and fees had not been incurred unnecessarily.

Magistrate Judge Dinsmore also rejected Malibu Media's argument that the court should sanction Mr. Tashiro and the defense attorney under the inherent authority that the court holds to manage its affairs through the sanctioning of a party that has abused the judicial process. The court had already determined during its analysis under § 1927 that the defense attorney had acted neither unreasonably nor vexatiously. Thus, a sanction against the defense attorney for abuse of process was similarly found to be improper. The court also declined to hold that Mr. Tashiro's decision to invoke his Fifth Amendment rights was an abuse of judicial process.

The court then addressed Malibu Media's contention that Federal Rule of Civil Procedure 16 authorized sanctions in this case. It concluded that, as the rule authorized the imposition of sanctions only in matters regarding scheduling conferences or other pre-trial conferences, it did not apply to the evidentiary hearing at issue in this request for sanctions.

Finally, Magistrate Judge Dinsmore recommended to Judge Lawrence that Malibu Media's motion, which had been filed without the required statement showing that Plaintiff's attorney made reasonable efforts to confer with opposing counsel prior to filing the motion for sanctions, be denied for failure to comply with Local Rule 7-1(g).

Continue reading "Indiana Copyright Litigation: Magistrate Rejects Malibu Media's Request for Fees and Sanctions" »

April 24, 2015

USPTO Offers New Tool to Receive Email Alerts When Patent Applications Publish

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Washington, D.C. - The U.S. Patent and Trademark Office ("USPTO") recently announced the release of the Patent Application Alert Service. This system provides customized email alerts to the public for free when patent applications of interest are published. Additionally, the system offers direct access to the published applications that meet users' search criteria.

After receipt of these customized email alerts, the public may identify prior art for "pre-issuance" submission into these applications. The pre-issuance submission process was established under the America Invents Act and, to date, the Office has received more than 2,600 submissions across all technologies. More information on the pre-issuance submission program and how members of the public can participate can be found here.

The idea for the patent application alert service came from a public roundtable held at the USPTO in April 2014 where the USPTO solicited input regarding the use of crowdsourcing and pre-issuance submissions to identify relevant prior art. The USPTO expects that this new service may be used to enhance the quality of examination and issued patents.

April 23, 2015

USPTO Announces Patents for Humanity Winners

Washington, D.C. - The U.S. Commerce Department's United States Patent and Trademark Office ("USPTO") recently announced the latest winners of the Patents for Humanity program. The Patents for Humanity program was launched by the USPTO in February 2012 as part of an Obama administration initiative promoting game-changing innovations to solve long-standing development challenges.

"As innovation and economic progress have made the world increasingly connected, more and more industries are realizing that their technologies can improve lives everywhere," said Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Michelle K. Lee. "The experiences of businesses across industries have shown that helping the less fortunate can go hand in hand with developing commercial markets, and that humanitarian entrepreneurship provides new opportunities for those with vision to pursue them."

The Patents for Humanity Award is the top award for applicants best representing the Patents for Humanity principles. Award recipients will receive public recognition at an award ceremony sponsored by the USPTO. They will also receive a certificate to accelerate certain matters before the USPTO: a patent application, ex parte reexam, or an ex parte appeal to the Patent Trial and Appeal Board. Inter partes matters and other post-grant proceedings may not currently be accelerated. Honorable mentions will receive accelerated examination of one patent application and a featured write-up on the USPTO website. A portion of honorable mentions may be awarded for the best up-and-coming technologies.

Entrants competed in five categories: medicine, nutrition, sanitation, household energy and living standards. Applications to the pilot were accepted through October 31, 2014.

Following is a list of the 2015 Patents for Humanity winners:

Sanofi
Artemisinin is an important antimalarial drug derived from the sweet wormwood plant in Asia and Africa. Growing cycles, crop yields, and weather cause supply volatility of artemisinin, making it difficult to obtain at times. To address this problem, a public-private partnership to create synthetic artemisinin was formed in 2004 by PATH, the University of California Berkeley (a 2013 Patents for Humanity award winner), and Amyris, Inc., with support from the Bill & Melinda Gates Foundation. In 2007, Sanofi joined the project as the manufacturing partner for their chemical expertise and industrial capacity, taking this project from laboratory experiments to factory production. Sanofi is now supplying large quantities of artemisinin anti-malarial compounds on a no-profit-no-loss basis for use in developing countries.

Novartis
Tuberculosis kills more adults worldwide than any infectious disease except HIV/AIDS. One of the biggest challenges facing tuberculosis researchers has been how to combat multidrug-resistant tuberculosis, which is caused by an organism that is resistant to the most potent tuberculosis drugs. Novartis has discovered a class of compounds called indolcarboxamides that are active against drug-sensitive and multidrug-resistant strains of tuberculosis. In an arrangement requiring no upfront or milestone payments, Novartis has provided their entire tuberculosis R&D program, including these compounds, to the TB Alliance, a non-profit product-development partnership that seeks to find new and improved tuberculosis treatment regimens. The agreement allows the TB Alliance to develop these compounds further into potential tuberculosis treatments and potentially conduct clinical trials. Early toxicology, safety, and therapeutic studies have been promising.

American Standard Brands
American Standard's "SaTo" (Safe Toilet) Technology was created for people worldwide who do not have access to safe, basic sanitation. The SaTo Technology includes specially designed latrine pans and collectors with a counterweighted trapdoor-like flapper that can be flushed by pouring a small amount of water onto it. Upon closure, the flapper door creates an air-tight seal that reduces odors and prevents insects from entering and exiting the pit, eliminating a primary route of disease transmission. American Standard has partnered with BRAC, UNICEF, Save the Children, and other non-governmental organizations to distribute SaTo pans and collectors throughout the developing world. Over 700,000 SaTo pans have been distributed in Bangladesh, Uganda, Haiti, Malawi, and the Philippines.

SunPower Corp.
Nearly 18 percent of the world's population is energy impoverished. Traditional forms of lighting are combustion-based (firewood, charcoal, kerosene and dung), contributing to an estimated 3.5 million deaths a year from health impacts and house fires. For these communities, SunPower has outfitted a standard shipping container with solar panels on top and equipment inside to power hundreds of safe, rechargeable lanterns. Locals rent these lanterns for a small fee which is then reinvested to expand and improve the program. SunPower donates the container and supplies to partner organizations, along with ongoing technical support.

Nutriset
According to UNICEF, as many as 67 million children suffer from acute malnutrition every year. Children suffering from prolonged malnutrition often develop digestive problems that interfere with eating more food, causing further health problems and death. Nutriset developed nutritional products made from peanuts and other ingredients that helps malnourished children quickly and safely regain weight and digestive function. In addition to delivering their Plumpy'Nut branded products throughout the world with partners like UNICEF and USAID, Nutriset also offers open licensing to producers in the developing world so communities can work toward self-sufficiency. Their PlumpyField® network assembles entrepreneurs in participating countries to manufacture the Plumpy range of products for local needs.

Golden Rice
Despite current interventions, vitamin A deficiency is the leading killer of children globally (2 - 3 million annually) and also is the leading cause of childhood blindness (500,000 cases annually). Most cases occur in Asia where the staple food white rice, eaten by 3.5 billion people daily, lacks vitamin A sources typically found in animal products and leafy vegetables. These deaths and blindness are preventable. Golden Rice was genetically enhanced to provide a source of vitamin A for people subsisting mainly on rice, making it one of the first biofortified foods. Professors Potrykus and Beyer invented the technology after a decade of research, and have worked with Dr. Dubock since 2000 to donate it to the resource poor in developing countries. Local Golden Rice varieties are currently being developed by public sector institutions in Bangladesh, China, India, Indonesia, the Philippines, and Vietnam. Through licenses with national governments, farmers are free to plant, grow, harvest, locally sell, and replant seed - there are no licenses for farmers and no fees for use.

Global Research Innovation & Technology ("GRIT")
An estimated 65 million people in the developing world require wheelchairs. However, conventional wheelchairs don't function well on the rough and uneven terrain commonly found in developing regions. GRIT was created by engineering graduates of the Massachusetts Institute of Technology ("MIT") to increase mobility for the disabled around the world. Their three-wheel Leveraged Freedom Chair uses a push-lever drivetrain to help people move over broken pavement, dirt roads, fields, hills, rocky terrain and more. It's built from standard bicycle parts to enable local repairs with available materials. After graduating, the MIT students founded GRIT to bring the product to market, and MIT assisted by transferring the patent rights to GRIT for further development. The chair has been distributed in partnership with the World Bank, Red Cross, and others in India, Brazil, Guatemala, Guinea, Kenya, Haiti, Easter Island, Nepal, and Tanzania. A new version of the Leveraged Freedom Chair, known simply as the Freedom Chair, is now available in the United States for recreational use, helping Americans move beyond the pavement.

For more information on Patents for Humanity, including expanded descriptions of the winning patents and selection criteria, visit www.uspto.gov/patents/init_events/patents_for_humanity.jsp.

April 22, 2015

Indiana Intellectual Property Litigation: G & G Files Another Illegal Interception Lawsuit

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Indianapolis, Indiana - An intellectual property attorney for G & G Closed Circuit Events, LLC ("G & G") of Campbell, California initiated a lawsuit in the Southern District of Indiana alleging that Elsa Valdez and Tikal #2, Inc., both of Indianapolis, Indiana, illegally intercepted and broadcast the Saul Alvarez v. Austin Trout fight program (the "Program").

G & G states that it holds exclusive nationwide rights to the commercial, closed-circuit distribution of the Program. It has sued Elsa Valdez and Tikal #2, both individually and doing business as Sabor Latino Bar a/k/a Johnny's Park Inn Restaurant & Bar, under the Communications Act of 1934 and the Cable & Television Consumer Protection and Competition Act of 1992.

As in another recent lawsuit brought by G & G alleging interception, Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the Program on Saturday, April 20, 2013 without an appropriate license. Regarding the claim under 47 U.S.C. §605, G & G's Indiana federal complaint alleges that with "full knowledge that the Program was not to be intercepted...[and] exhibited" without authorization, "each and every one of the above named Defendants . . . did unlawfully ... exhibit the Program" for the purpose of commercial advantage and/or private financial gain. A count of conversion is also included. The complaint asserts that Defendants' acts were "willful, malicious, egregious, and intentionally designed to harm Plaintiff."

In the complaint, the intellectual property lawyer for G & G listed the following counts and requests for redress:

• Count I: Violation of Title 47 U.S.C. § 605. For this count, G & G states that it is entitled to (a) statutory damages for each willful violation in an amount of $100,000, and (b) the recovery of all costs, including reasonable attorneys' fees. Later in the complaint, the intellectual property attorney for G & G requests statutory damages of $110,000.
• Count II: Violation of Title 47 U.S.C. § 553. For this count, G & G asks the court for (a) statutory damages of $60,000 for each willful violation; (b) the recovery of all costs; and (c) and in the discretion of the court, reasonable attorneys' fees.

• Count III: Conversion. For this count, the court is asked to order both compensatory and punitive damages from Defendants as the result of the Defendants' allegedly egregious conduct, theft, and conversion of the program and deliberate injury to Plaintiff. G & G also seeks costs and attorneys' fees under this count.

Continue reading "Indiana Intellectual Property Litigation: G & G Files Another Illegal Interception Lawsuit" »

April 20, 2015

Indiana Intellectual Property Litigation: G & G Sues for Illegal Interception of Championship Fight

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Indianapolis, Indiana - An intellectual property attorney for G & G Closed Circuit Events, LLC ("G & G") of Campbell, California filed an intellectual property lawsuit in the Southern District of Indiana alleging that Zeferino Alvarez and Sabor Bohemio, LLC, both d/b/a El Bohemio Bar of Indianapolis, Indiana illegally intercepted and broadcast the Saul Alvarez v. Austin Trout fight program (the "Program").

G & G states that it holds exclusive nationwide rights to the commercial, closed-circuit distribution of the Program. It has sued Zeferino Alvarez and Sabor Bohemio, LLC, both individually and doing business as El Bohemio Bar under the Communications Act of 1934 and The Cable & Television Consumer Protection and Competition Act of 1992.

Specifically, Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the Program at issue on Saturday, April 20, 2013 without an appropriate license. Regarding the claim under 47 U.S.C. §605, the Complaint alleges that with "full knowledge that the Program was not to be intercepted...[and] exhibited" without authorization, "each and every one of the above named Defendants . . . did unlawfully ... exhibit the Program" for the purpose of commercial advantage and/or private financial gain. A count of conversion is also included. The complaint asserts that Defendants' acts were "willful, malicious, egregious, and intentionally designed to harm Plaintiff."

In the complaint, the intellectual property lawyer for G & G listed the following counts and requests for redress:

• Count I: Violation of Title 47 U.S.C. § 605. For this count, G & G requests (a) statutory damages for each willful violation in an amount to $100,000.00, and (b) the recovery of all costs, including reasonable attorneys' fees.

• Count II: Violation of Title 47 U.S.C. § 553. For this count, G & G asks the court for (a) statutory damages of $60,000 for each willful violation; (b) the recovery of all costs; and (c) and in the discretion of the court, reasonable attorneys' fees.

• Count III: Conversion. For this count, the court is asked to order both compensatory and punitive damages from Defendants as the result of the Defendants' allegedly egregious conduct, theft, and conversion of the program and deliberate injury to G&G.

Continue reading "Indiana Intellectual Property Litigation: G & G Sues for Illegal Interception of Championship Fight" »

April 16, 2015

Indiana Trade Secret Law: Think Tank's Information Was Not a Trade Secret as a Matter of Law

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Indianapolis, Indiana - The Court of Appeals of Indiana affirmed the directed verdict of Special Judge William E. Alexa of Porter Superior Court. Writing for the Indiana appellate court, Judge John Baker concluded that the trial court had not erred in ruling that Defendants' information was insufficiently private to constitute trade secrets.

Appellant-Plaintiff Think Tank Software Development Corporation, d/b/a Think Tank Networking Technologies Group and Think Tank Information Systems ("Think Tank") is engaged in computer-related business activities, including systems and network engineering, problem solving, systems design, implementation, sales, client training, and computer maintenance. During 2001 and 2002, multiple employees left Think Tank and joined its competitor, Chester, Inc.

In 2002, Think Tank sued Chester as well as former Think Tank employees Mike Heinhold, John Mario, Joel Parker, Thomas Guelinas, Jon Meyer, Daniel Curry, Eric M. Wojciechoswki, Michael Gee, Philip Ryan Turner and Carl Zuhl alleging: 1) breach of the covenant not to compete, 2) breach of the confidentiality clause, 3) breach of the agreement not to solicit its employees for other work, 3) tortious interference with contracts, 4) misappropriation of trade secrets, 5) tortious interference with business relationships, 6) unjust enrichment, and 7) defamation. Think Tank also included a claim for unfair competition against Chester.

After much litigation, including two prior appeals to the Indiana Court of Appeals, this Indiana trade secret lawsuit was again heard by the trial court on the remaining claims: misappropriation of trade secrets, tortious interference with contracts, and breach of the covenant not to compete and confidentiality provisions.

The most interesting of the claims in this lawsuit is Think Tank's assertion of misappropriation of trade secrets. Defendants moved for a directed verdict on that count, as well as all other claims against them. The trial court granted the directed verdict on Think Tank's claim for misappropriation of trade secrets, reasoning that, "[it] is a question of law for the Court relative to what is and what is not a trade secret. Plaintiff has failed to show that the information obtained was ever, in law, a trade secret."

Shortly after this ruling, Think Tank sought review a third time from the Indiana Court of Appeals. It claimed that its trade secrets included: 1) the nature and design of its technical solutions; 2) the design of its customers' computer systems; 3) pricing; and 4) customer identities. Think Tank further argued that the trial court could not determine as a matter of law whether information was a trade secret under Indiana Code section 24-2-3-2, which defines a trade secret as:

information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

(1) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and

(2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

The Indiana appellate court declined to address Think Tank's argument whether a trial court could determine as a matter of law whether information was a trade secret under Indiana law. However, it concluded that Think Tank had failed in its burden to avoid the directed verdict: "as a matter of law, Think Tank failed to produce enough evidence to allow a reasonable fact finder to determine that the proffered information was trade secrets." Specifically, it found that Think Tank failed to show that any of the information alleged to be trade secrets was not generally known to or ascertainable by the public.

The appellate court agreed with the Indiana trial court that: 1) the computer certifications and intellectual capital that Think Tank possessed was readily available information; 2) knowledge of customers' computer systems and current or future needs was readily ascertainable, as such information belonged to the customers in question; and 3) pricing information did not constitute a trade secret, as it too was readily available from the customers. Thus, the information was not a trade secret.

The Indiana appellate court continued that Think Tank appeared not to be trying to protect its trade secrets, but instead to prevent competition. Such a goal, the court said, might be effectuated by a non-competition agreement. However, the use of Indiana legislation designed to protect trade secrets could not properly be stretched to hinder the use of information that appeared to be generally known or readily obtained from another source.

Continue reading "Indiana Trade Secret Law: Think Tank's Information Was Not a Trade Secret as a Matter of Law" »

April 15, 2015

Patent Law: EFF Busts Podcasting Patent, Invalidating Key Claims at Patent Office

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San Francisco, California - The U.S. Patent and Trademark Office ("USPTO") invalidated key claims in the so-called "podcasting patent" last week after a petition for review from the Electronic Frontier Foundation ("EFF"). This decision significantly curtails the ability of a patent troll to threaten podcasters big and small.

"We're grateful for all the support of our challenge to this patent. Today is a big victory for the podcasting community" said EFF Staff Attorney Daniel Nazer, who also holds the Mark Cuban Chair to Eliminate Stupid Patents. "We're glad the Patent Office recognized what we all knew: 'podcasting' had been around for many years and this company does not own it."

The "podcasting patent" became big news in 2013, when a company called Personal Audio, LLC, began demanding licensing fees from podcasters including comedian Adam Carolla and three major television networks. Personal Audio doesn't do podcasting itself, but instead used its patent to claim infringement and collect payouts from actual creators.

In petitions filed with Patent Office, EFF showed that Personal Audio did not invent anything new before it filed its patent application, and, in fact, other people were podcasting for years previously. Earlier examples of podcasting include Internet pioneer Carl Malamud's "Geek of the Week" online radio show and online broadcasts by CNN and the Canadian Broadcasting Corporation (CBC).

"We have a lot to celebrate here," said EFF Staff Attorney Vera Ranieri. "But unfortunately, our work to protect podcasting is not done. Personal Audio continues to seek patents related to podcasting. We will continue to fight for podcasters, and we hope the Patent Office does not give them any more weapons to shake down small podcasters."

EFF partnered with attorneys working pro bono and the Cyberlaw Clinic at Harvard's Berkman Center for Internet and Society to craft the petition for review with the USPTO.

This edited article was provided by the Electronic Frontier Foundation, a nonprofit group which advocates for innovators and users of technology. The article has been licensed under the Creative Commons Attribution License.

This should not be taken as legal advice specific to any individual network operator. If you want such advice, please consult a copyright attorney.

Continue reading "Patent Law: EFF Busts Podcasting Patent, Invalidating Key Claims at Patent Office" »

April 13, 2015

Indiana Copyright Litigation: Court Grants Plaintiff's Motion to Dismiss Copyright Lawsuit

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Indianapolis, Indiana - Indiana copyright attorneys for Redwall Live Corporation ("Redwall") of Indianapolis, Indiana asked the Southern District of Indiana to dismiss Redwall's own copyright litigation. Redwall's complaint alleged that ESG Security, Inc. ("ESG"), also of Indianapolis, Indiana, infringed the logo that Redwall had designed for ESG. That logo has been registered by the U.S. Copyright Office. The court dismissed the complaint in its entirety. Redwall will be permitted to refile the non-copyright counts in Indiana state court but the copyright count was dismissed with prejudice.

Redwall is a consulting and design-services firm engaged in the business of strategic branding and advertising. Its services include developing a clear message and a unique visual image as well as developing brand value for its clients.

In its 2013 complaint against ESG, Redwall stated that it had been hired by ESG to reinvent ESG's brand. As part of this project, it created a new logo design for ESG, which was copyrighted under Registration No. VA 1-874-872. Redwall asserted that ESG had failed to pay Redwall in full for the work done and that ESG nonetheless had continued to use Redwall's copyrighted logo on a variety of items. Indiana copyright lawyers for Redwall sued for copyright infringement under federal law, as well as breach of contract and unjust enrichment under Indiana state law.

Redwall later decided that pursuing the copyright portion of the claim was not worth the expense. As the Judge Sarah Evans Barker put it, they concluded that "the game is not worth the candle." Copyright attorneys for Redwall asked the court to dismiss the copyright complaint without prejudice. Attorneys for ESG asked the court instead to dismiss Redwall's copyright claim with prejudice.

In evaluating Redwall's motion to dismiss, the court cited its discretion to attach conditions to the dismissal of a lawsuit - "the quid for the quo of allowing the plaintiff to dismiss his suit without being prevented by the doctrine of res judicata from bringing the same suit again." The court noted that Redwall seemed to have added a less-than-robust copyright claim as leverage to obtain its true goal of payment under its contract with ESG. Judge Barker concluded that to allow Redwall to withdraw that copyright claim without any res judicata consequences would reward that gamesmanship. The court determined that, as a proper exercise of its discretion, it would dismiss Redwall's copyright claim with prejudice but permit Redwall's remaining state-law claims to be refiled in state court.

Practice Tip: Filing a copyright lawsuit can be perilous, as the plaintiff may later be unable to dismiss that litigation without incurring liability for the defendant's attorney fees. As the Seventh Circuit held in Riviera Distribs., Inc. v. Jones, a voluntary dismissal of a copyright claim by the plaintiff - if that claim is dismissed with prejudice - is sufficient to trigger the duty of the plaintiff to pay the attorney's fees incurred defending against the allegations of copyright infringement: "[Defendant] Midwest obtained a favorable judgment. That this came about when [Plaintiff] Riviera threw in the towel does not make Midwest less the victor than it would have been had the judge granted summary judgment or a jury returned a verdict in its favor. Riviera sued; Midwest won; no more is required." Similarly here, ESG qualifies as a "prevailing party" under the Copyright Act and is thus presumptively entitled to attorneys' fees for the litigation of that claim under 17 U.S.C. § 505.

Continue reading "Indiana Copyright Litigation: Court Grants Plaintiff's Motion to Dismiss Copyright Lawsuit" »

April 10, 2015

Indiana Trade Secret Litigation: College Retailers Sue for Full Access to Purdue-Amazon Agreement

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Tippecanoe County, Indiana -An Indiana trade secret attorney for the National Association of College Stores Inc. ("NACS"), an Ohio-based organization, sued Purdue University of West Lafayette, Indiana in Tippecanoe Superior Court seeking full disclosure of an agreement between Purdue and Amazon.com Inc.

Earlier this year, Amazon opened its first brick-and-mortar store on the campus of Purdue University. This store, which allows merchandise to be both picked up and dropped off, was promoted as a way to save Purdue students money. Initial estimates suggest that the Purdue-Amazon partnership has resulted in savings of more than 40% for students.

In response to this addition to Purdue's campus, NACS requested a copy of the agreement between Amazon and Purdue under Indiana's Access to Public Records Act ("APRA"), codified as Ind. Code § 5-14-3-1 et. seq. Purdue released only a redacted copy, stating that Amazon considered the omitted material to be protectable as trade secrets, which are defined under APRA as:

information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

(1) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and

(2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

In an advisory opinion later released by the State of Indiana, Public Access Counselor Luke Britt elaborated that APRA not only permits the withholding of this trade-secret information, but requires it to prevent competitive injury to Amazon. Moreover, he stated, APRA allows a public agency to withhold the entirety of a document that contains trade secrets, although Purdue acted reasonably by merely redacting the protectable information. In the advisory opinion, Britt indicated that the information deemed to be a trade secret would not be disclosed pursuant to a public records request unless compelled to do so by a court of law.

This Indiana trade secret litigation has been assigned to Judge Steven Meyer.

April 9, 2015

Indiana Trademark Lawsuit: Bekins Sues Licensee of "Bekins" Trademark

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Indianapolis, Indiana - An Indiana trademark lawyer for Wheaton Van Lines, Inc. and Bekins Van Lines, Inc., both of Indianapolis, Indiana (collectively, "Bekins"), filed a trademark-infringement lawsuit in the Southern District of Indiana alleging that Faulk-Collier Moving & Storage, LLC and David Vaughn, both of Louisiana, infringed the trademark BEKINS®, which has been registered by the U.S. Trademark Office as Trademark Registration No. 2427605.

Faulk-Collier, a moving-and-storage company in business since 1932, has been sued by Bekins for both trademark infringement and breach of contract. Bekins, which was founded in 1891, contends that it has made extensive use of the Bekins trademark, which it asserts has become both incontestable and famous. Bekins' uses, it states, include inclusion in all of Bekins' advertising materials, as well as being emblazoned on the side of all of the trucks, vans and trailers operating under Bekins' authority for over ten years. Bekins has also sued Vaughn for more than $73,000, alleging that he personally guaranteed payment to Bekins.

In its Indiana trademark complaint, Bekins states that, in February 2014, it entered into an agreement with Faulk-Collier under which Faulk-Collier would serve as an interstate household agent for Bekins. Bekins further claims that, due to uncured breaches of that agreement by Faulk-Collier, Bekins terminated the arrangement in October 2014. After terminating the agreement, Bekins advised Defendants that they must cease all use of logos and trademarks owned by Bekins, including the removal of the Bekins trademark from all advertising, trucks, equipment, websites, and similar.

Nonetheless, contends Bekins, Faulk-Collier has continued to advertise moving services under the name "Bekins." The accused uses include advertising on social media as well as operating numerous pieces of equipment in interstate commerce which bear one or more trademarks owned by Bekins. Bekins states that these uses by Faulk-Collier are unauthorized.

This federal lawsuit followed. In its complaint, filed by an Indiana trademark attorney, Bekins asserts the following:

• Count I - Breach of Contract
• Count II - Account Stated
• Count III - Federal Trademark Infringement

• Count IV - Federal and State Unfair Competition/Trademark Dilution

Bekins asks the court to enter preliminary and permanent injunctions; award Bekins monetary damages, statutory and otherwise, and punitive damages; and order Defendants to pay Bekins' attorneys' fees and costs.

Continue reading "Indiana Trademark Lawsuit: Bekins Sues Licensee of "Bekins" Trademark" »

April 8, 2015

USPTO Appoints New Deputy Commissioner for Trademark Operations

Washington, D.C. - The U.S. Department of Commerce's United States Patent and Trademark Office ("USPTO") announced last week the appointment of Meryl Hershkowitz as Deputy Commissioner for Trademark Operations. In her new position, Hershkowitz will oversee the examination and processing of applications throughout trademark operations.

"Meryl Hershkowitz is a talented, committed professional who is going to excel in her position as Deputy Commissioner for Trademark Operations," said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee. "Her extensive background at the USPTO gives her a unique expertise from which I believe her whole team will benefit."

"Meryl has done a stellar job here at the USPTO in a variety of roles over the years," said Commissioner of Trademarks Mary Boney Denison. "She has an impressive track record of success in Trademark Operations. She has much to offer the agency and its customers in her new role."

Hershkowitz has been one of two group directors for trademark operations of the USPTO for the last seven years. As group director, she led a staff of 10 law offices comprised of more than 200 trademark examining attorneys.

She has been actively involved in the management and coordination of the award-winning Trademark Work at Home Program and was the first Trademark managing attorney to lead a law office of all work at home examining attorneys, piloting the concept of hoteling at the USPTO. She first joined the USPTO as a trademark examining attorney in 1990, became a senior trademark attorney in 1996, a managing attorney in 1998, and joined the Senior Executive Service as a Group Director in 2006.

April 6, 2015

157 Trademark Registrations Issued to Indiana Companies in March 2015

The U.S. Trademark Office issued the following 157 trademark registrations to persons and businesses in Indiana in March 2015 based on applications filed by Indiana trademark attorneys:

Registration No.  Word Mark Click To View
4708210 BRING ON THE LIGHT Live
4708079 INDIANA GRAND RACING · CASINO Live
4708012 KST Live
4707919 THUMBSUCKERZ Live
4707916 INTELLIVIEW Live
4707767 ELEMENT THREE Live
4707669 BLOM Live

Continue reading "157 Trademark Registrations Issued to Indiana Companies in March 2015" »

April 3, 2015

Copyright Law: Report on Technological Upgrades to Registration and Recordation Released

The Register of Copyrights has released a report from the Special Projects Team responsible for studying technology issues and business improvements related to the Copyright Office's services. The report was delivered to the Register by the Copyright Office Chief Information Officer Doug Ament, who chaired the multi-year analysis. The effort was one of 10 areas of focus publicly announced by the Office in Priorities and Special Projects of the United States Copyright Office: 2011-2013.

The Office's technology infrastructure impacts all of the Office's key services and is the single greatest factor in its ability to administer copyright registration, recordation services, and statutory licenses effectively. The report thus provides a number of recommendations that, if adopted, could significantly improve the Office's operations and interactions with the public.