Indiana Intellectual Property Law News

Indianapolis, Indiana - Ambre Blends, LLC of Fishers, Indiana has filed a trademark infringement lawsuit in the Southern District of Indiana alleging that doTERRA, Inc., doTERRA International, LLC, both of Orem, Utah (collectively, "doTERRA") and Kerry Dodds d/b/a Kerry Essentials of Indianapolis, Indiana ("Kerry") infringed SOLACE®, Trademark No. 4266473, which has been registered by the U.S. Trademark Office.

In its complaint, Ambre Blends claims to have been producing organic body products since 2001. It offers four fragrances which are designed to be worn by both women and men. Founded in 2008, doTERRA offers essential oils both as single oils and as proprietary essential oil blends via independent product consultants. Both companies claim rights in the mark "Solace" in connection with essential oil products.

Ambre Blends asserts that it has used the Solace mark continuously in commerce since at least as early as February 2007. It holds a federally registered trademark on the mark in connection with "Aromatic preparations, namely, oils, body creams, body sprays, soaps, shower gel; Beauty creams; Body and beauty care cosmetics; Body cream; Body sprays; Essential oils for use in aromatherapy; Essential oils for use in manufacturing of candles, lip balm, shower gel, shampoo, conditioner; Face and body lotions; Non-medicated skin creams with essential oils for use in aromatherapy; Oils for perfumes and scents; Perfume; Perfume oils; Perfumed creams; Perfumed soaps; Scented body spray; Skin soap." It describes its essence as having been "created for the sole purpose of comfort and attraction" and marks its products with "Solace®".

According to the doTERRA website, doTERRA sells its product, a blend for women, as "Solace™". It describes its oil as "a proprietary blend of Certified Pure Therapeutic Grade® essential oils carefully formulated to balance hormones and manage symptoms of PMS and the transitional phases of menopause." (It also provides the disclaimer, required by the Food and Drug Administration, that the "product is not intended to diagnose, treat, cure, or prevent disease.")

In its complaint, Ambre Blends contends that doTERRA willfully and intentionally used the Solace mark knowing both that the mark was the property of Ambre Blends and that such a use was unlawful. It further asserts that doTERRA's use of the mark was intended to cause confusion, mistake or deception among the general public and that doTERRA acted in bad faith.

The complaint asserts, inter alia, violations of the Lanham Act and unfair competition:

• Count I: Trademark Infringement
• Count II: False Designation of Origin
• Count III: Unfair Competition
• Count IV: Forgery
• Count V: Corrective Advertising Damages
• Count VI: Declaratory Judgment
• Count VII: Preliminary and Permanent Injunctive Relief

Trademark counsel for Ambre Blends seeks a declaratory judgment; a preliminary injunction; a permanent injunction; damages, including treble damages; costs and attorney's fees; the transfer to Ambre Blends of any domain name that includes "Solace"; and corrective-advertising damages.

Practice Tip #1: From the complaint, this appears to be a straightforward case of infringement. However, Ambre Blends may have a tougher case than is obvious from the complaint itself. It appears from doTERRA's sales literature that doTERRA has used the mark "Solace" along with "™", thus claiming rights in the mark, at least as early as 2011. In contrast, Ambre Blends did not file its application until April 4, 2011; it was published for opposition on October 16, 2012. A federal registration confers a presumption of validity. However, here, the right to use the mark "Solace" may result in a battle of the facts.

Practice Tip #2: This complaint highlights the difference between the "®" mark and the "™" mark. While the former may not be used until a mark has been granted a federal registration, the latter has no such requirement. Instead, it may be used whenever a business wishes to put competitors on notice that it considers the mark to be its intellectual property.

Practice Tip #3: doTERRA is currently embroiled in litigation in both state and federal court in Utah with Young Living, another giant in the essential-oil industry.

Continue reading "Ambre Blends Sues doTERRA For Trademark Infringement of "Solace" " »

Washington, D.C. - As part of an ongoing dialogue with the high-tech innovation community, the U.S. Department of Commerce's United States Patent and Trademark Office ("USPTO") will host its next public Software Partnership Meeting on Thursday, December 5, 2013, at the USPTO campus in Alexandria, Virginia. Partnership Meetings are an opportunity to bring stakeholders together to share ideas, experiences, and insights and to provide a forum for informal discussion of many topics specific to the software community.

The USPTO received ideas from the public regarding future topics of discussion for enhancing the quality of software-related patents at the February Software Partnership Roundtables in Silicon Valley and New York, and from responses to a January 2013 Federal Register Notice. The public expressed an interest in exploring ways to improve the USPTO's prior art searching techniques and tools. In response to this input, the USPTO is holding the December 5 meeting, which will be webcast, to educate the public on the prior art resources utilized by its examiners. In addition, there will be presentations from selected external speakers on additional prior art resources and search techniques, which will be followed by a question and comments session. This meeting will be of particular interest to search professionals, practitioners interested in search resources, and software industry experts.

What: Software Partnership Meeting

When: Thursday, December 5, 2013 from 1:00 p.m. - 4:30 p.m. ET

Where: USPTO Madison Auditorium North 
            Concourse Level
            Alexandria, VA 22314

More information including directions, the meeting agenda, and RSVP details can be found on the Software Partnership page on the USPTO website:   www.uspto.gov/patents/init_events/software_partnership.jsp.

For further information, please contact Seema Rao, Director, Technology Center 2100, via e-mail at seema.rao@uspto.gov, or by telephone at 571-272-0800.

Indianapolis, Indiana - Endotach LLC of Plano, Texas sued Cook Medical Inc. of Bloomington, Indiana alleging infringement of Endovascular Bypass Graft, U.S. Patent No. 5,122,154 (the "'154 patent") and Endovascular Stent with Secure Mounting Means, U.S. Patent No. 5,593,417 (the "'417 patent"; collectively, the "Rhodes patents") issued by the U.S. Patent Office. Endotach filed its complaint in the Northern District of Florida. The case was transferred to the Southern District of Indiana upon Cook's request.

The patents at issue, both of which were issued in the 1990s, were granted to Dr. Valentine Rhodes, an award-winning surgeon who practiced in the field of vascular medicine for over 30 years. The patents are directed to intraluminal and endovascular grafts for placement within a blood vessel, duct or lumen to hold it open. As it pertains to this lawsuit, the patents-in-suit are used for revascularization of aneurysms or stenosis occurring in blood vessels which includes anchoring projections to aid in securing the graft in place within the blood vessel.

Upon the death of Dr. Rhodes, the patents-in-suit passed as part of his estate. Dr. Rhodes' Will bequeathed all "tangible personal property" to his wife, Brenda Rhodes ("Mrs. Rhodes"). However, there was no specific bequest of the Rhodes patents or mention of any intangible property. The Will's residuary clause bequeathed "all the residue of [Dr. Rhodes'] estate, real and personal" to a Trust (the "Rhodes Trust"). Upon Dr. Rhodes' death, his two daughters and Mrs. Rhodes became Co-Trustees of the Trust.

In November 2009, Mrs. Rhodes executed a document entitled "Exclusive License Agreement," listing herself as the "patent owner." The agreement purported to transfer an exclusive license on the '417 patent to Acacia Patent Acquisition LLC. That license was later assigned to Endotach and amended to include the '154 patent.

Endotach sued Cook in July 2012 asserting infringement of one or more claims in each of the patents-in-suit. In that complaint, it asserted that Mrs. Rhodes owned the patents-in-suit and that, as a result of the exclusive license Mrs. Rhodes had granted, Endotach had the right to enforce the patents against all infringers.

Cook moved to dismiss the lawsuit for lack of subject matter jurisdiction arguing that Endotach did not have standing to bring suit. On July 12, 2013, presumably in response to the motion, an "amendment" to the exclusive licensing agreement transferred an exclusive license on the Rhodes patents to Endotach from the Rhodes Trust. It was signed by Mrs. Rhodes and the other Co-Trustees.

In this opinion, Senior Judge Larry J. McKinney addressed Cook's contention that Endotach did not have standing to sue. The court concluded that Endotach did lack standing as Mrs. Rhodes did not have any individual property interest in the Rhodes patents at the time that she purported to convey an exclusive license. The court dismissed Endotach's lawsuit without prejudice.

Practice Tip #1: The principle of standing that is important in this case is whether or not Endotach had any legal rights and interests to the Rhodes patents at the time it filed suit. While there are some exceptions, in general, a plaintiff may not sue to assert rights held by third parties.

Practice Tip #2: Apparently realizing that the earlier effort to convey the license might be successfully challenged (as it was) and the case dismissed as a result (as it was), an additional complaint was filed on July 16, 2013, shortly after a new attempt was made to convey to Endotach an exclusive license to the patents-in-suit, this time by the Rhodes Trust. See here.

Continue reading "Endotach's Patent Infringement Lawsuit Against Cook Medical Dismissed for Lack of Standing" »

Indianapolis, Indiana - J & J Sports Productions, Inc. of Campbell, California ("J & J Sports") has sued Joseph M. Hubbard and Alison Kay, LLC, both of Indianapolis, Indiana and d/b/a Wing'N It in the Southern District of Indiana alleging the unlawful interception and broadcast of the Manny Pacquiao v. Juan Manuel Marquez, WBO Welterweight Championship Fight Program.

J & J Sports states that it is the exclusive domestic commercial distributor of the Manny Pacquiao v. Juan Manuel Marquez, WBO Welterweight Championship Fight Program (the "program"). It has sued Alison Kay, which is listed on the complaint as the name of a limited liability company, as well as Joseph M. Hubbard as an individual, 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 on November 12, 2011 without a commercial 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, received, published, divulged, displayed, and/or exhibited by commercial entities unauthorized to do so, each and every one of the above named Defendants . . . did unlawfully intercept, receive, publish, divulge, display, and/or exhibit the Program" for the purpose of commercial advantage and/or private financial gain.

A count of conversion is also included which asserts that Defendants' acts were "willful, malicious, egregious, and intentionally designed to harm Plaintiff J & J Sports" and that, as a result of being deprived of their commercial license fee, J & J Sports suffered "severe economic distress and great financial loss."

In addition to naming the separate legal entity, Alison Kay, LLC, which apparently owns the restaurant, Plaintiff has also sued Hubbard alleging that he had the right and ability to supervise the activities of Wing'N It. J & J Sports asserts that those activities included the unlawful interception of Plaintiff's program.

J & J Sports also contends that Hubbard specifically directed the employees of Wing'N It to unlawfully intercept and broadcast Plaintiff's program at Wing'N It or, if he did not, that the actions of the employees of Wing'N It are directly imputable to Hubbard by virtue of his purported responsibility for the activities of Wing'N It. Hubbard has also been named individually as a result of J & J Sports' contention that he is a managing member of Alison Kay, LLC. J & J further asserts that Hubbard, as an individual specifically identified on the liquor license for Wing'N It, had an obvious and direct financial interest in the activities of Wing'N It.

In the complaint, the intellectual property attorney for J & J Sports listed the following counts and requests for redress:

•Count I: Violation of Title 47 U.S.C. § 605. For this count, J & J Sports requests (a) statutory damages for each willful violation in an amount to $100,000.00 pursuant to Title 47 U.S.C. 605(e)(3)(C)(ii), and (b) the recovery of full costs, including reasonable attorneys' fees, pursuant to Title 47 U.S.C. § 605(e)(3)(B)(iii).

•Count II: Violation of Title 47 U.S.C. § 553. For this count, J & J Sports asks the court for (a) statutory damages for each violation in an amount to $10,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(A)(ii); (b) statutory damages for each willful violation in an amount to $50,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(B); (c) the recovery of full costs pursuant to Title 47 U.S.C. § 553 (c)(2)(C); and (d) and in the discretion of the court, reasonable attorneys' fees, pursuant to Title 47 U.S.C. § 553 (c)(2)(C).

•Count III: Conversion. For this count, the court is requested 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 the Plaintiff.

Practice Tip #1: While on the surface this appears to be a copyright case, an allegation of interception under 47 U.S.C. § 605 is a different cause of action from copyright infringement. However, a suit alleging interception does not preclude an additional lawsuit alleging different causes of action. For example, the copyright holder can also sue for copyright infringement, which could increase damages by as much as $150,000.

Practice Tip #2: As part of its complaint, J & J Sports claims that the Defendants' actions have subjected it to "severe economic distress and great financial loss." It will be interesting to see what evidence it offers as proof that, as a result of allegedly not receiving its full commercial fee for the programming purportedly displayed by the Defendants - a circumstance presumably known to few other than the Defendants themselves - it has suffered severe economic distress and great financial loss.

Continue reading "J & J Sports Sues Wing'N It and its Owners for Unlawful Interception and Broadcast of Championship Fight" »

Indianapolis, Indiana - An intellectual property lawyer for Joe Hand Promotions, Inc. of Feasterville, Pennsylvania has sued in the Southern District of Indiana alleging that Alice Baldwin and two limited liability companies, all of Evansville, Indiana and doing business as Bucks Tavern, unlawfully intercepted and broadcast the "Rousey v. Carmouche" championship fight.

Joe Hand Promotions was granted rights to distribute via closed-circuit television and encrypted satellite signal the Ultimate Fighting Championship ("UFC") "Rousey v. Carmouche" fight (the "Program"), which was telecast nationwide on February 23, 2013.

In the complaint against Baldwin and Bucks Tavern, intellectual property counsel for Joe Hand Promotions has alleged such wrongful acts as interception, reception, publication, divulgence, display, exhibition, and "tortuous" [sic] conversion of the Program.

In addition to naming the separate legal entities which apparently own Bucks Tavern, Joe Hand Promotions has also sued Baldwin as an individual, claiming that she owns those legal entities and that she had the right and ability to supervise the activities of Bucks Tavern. Plaintiff asserts that those activities included the unlawful interception of its UFC Program. It further claims that Bucks Tavern and Baldwin received financial benefit from the unlawful display of the Program.

Baldwin and the Bucks Tavern entities have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553. The complaint also lists a count of conversion. Joe Hand Productions seeks statutory damages of $110,000 for each willful violation of 47 U.S.C. § 605; $60,000 for each willful violation of 47 U.S.C. § 553; compensatory and punitive damages on the claim of conversion; and costs and attorney's fees. These claims have been made both against Bucks Tavern and as personal liability claims against Baldwin.

Practice Tip #1: Joe Hand Productions has sued three entities: two limited liability companies and an individual who is allegedly a principal in both. While limited liability companies are intended, as the name suggests, to limit the liability of the principals, they are not always successful in doing so. Where a principal is personally involved in certain types of illegal activity, legal mechanisms (such as a limited liability company) that are designed to shield the principal from liability may fail to do so. Unfortunately for Baldwin, it is likely that she, as an individual, will be the primary target of this lawsuit as, according to the complaint, it seems that both of the limited liability companies have been administratively dissolved, making their inclusion as defendants likely irrelevant.

Practice Tip #2: While on the surface this appears to be a copyright case, an allegation of interception under 47 U.S.C. § 605 is a different cause of action from copyright infringement. However, a suit alleging interception does not preclude an additional lawsuit alleging different causes of action. For example, the copyright holder can also sue for copyright infringement, which could increase damages by as much as $150,000.

Practice Tip #3: Joe Hand Promotions is a frequent litigant and has brought several cases in recent years against defendants alleged to have illegally intercepted and/or broadcast UFC fights. Indiana Intellectual Property Law News has previously blogged on the cases below:

• Joe Hand Promotions Sues Fishbowl Pub and its Owners for Unlawful Interception and Broadcast of UFC Fight
• Joe Hand Promotions Sues Ho Bo Jungle Bar Over Unauthorized Interception of the Ultimate Fighting Championship Broadcast
• Joe Hand Promotions Sues Lawrenceburg, Indiana Bar for Showing UFC Fight Without Authorization
• Joe Hand Promotions Sues Beerbelly's over Interception of Broadcast Signal
• Joe Hand Promotions Sues Longwell and Pitt Stop Pub & Grill for Intercepting UFC Broadcast

Continue reading "Joe Hand Promotions Sues Bucks Tavern and its Owner for Unlawful Interception and Broadcast of Championship Fight" »

New Albany, Indiana - WindStream Technologies, Inc. of North Vernon, Indiana filed a trademark infringement lawsuit in the Southern District of Indiana alleging that Rambo LLC, Rambo Montrow Corporation (collectively, "Rambo") and Rick Keebler, all of Madison, Indiana, as well as ten unidentified John Does residing in Indiana, infringed its trademarked TurboMill, Trademark Registration No. 3,986,494, which has been registered by the United States Patent and Trademark Office.

WindStream manufactures wind turbines for municipal, residential and commercial use. Those turbines are shipped worldwide from its Indiana manufacturing facility. It contracted with Rambo and Keebler, who is asserted to be a principal of the Rambo entities, to provide component parts and to act as an authorized dealer of TurboMill turbines in certain territories.

WindStream has multiple contractual disputes with Defendants and Defendants' predecessors in interest and asserts that component parts in which WindStream has an interest are being held "hostage" in an attempt to renegotiate the terms of one of the contracts. Further, WindStream contends that the failure of Defendants to deliver the parts has damaged its business. WindStream also charges Defendants with unfair competition, claiming that they are selling WindStream products, including WindStream's TurboMill, as their own. Finally, it asserts that, among the prospective customers that Keebler and Rambo are targeting are individuals and entities that had previously been identified by WindStream as potential customers.

In its complaint, filed by the trademark attorney for WindStream, the following counts are alleged:

• Federal Unfair Competition and Passing Off (15 U.S.C. § 1125(a))
• Trademark Infringement (15 U.S.C. § 1114)
• Breach of Contract (Dealer Agreement)
• Breach of Contract (Purchase Orders)
• Interference with Contract and Prospective Economic Advantage

WindStream asks the court for an injunction prohibiting trademark infringement and similar conduct; damages, including treble damages; punitive damages for Defendants' willful and malicious acts; and attorney's fees and costs of the lawsuit.

Practice Tip: The complaint asserts that the trademark for TurboMill was registered on June 28, 2001 and that the mark has been used in commerce since at least 2009. In contrast, the registration is listed by the U.S. Patent and Trademark Office as having occurred on June 28, 2011 with the mark shown as having first been used in commerce in 2011, the same year in which WindStream began manufacturing its wind turbines. While the former inconsistency, which adds exactly ten years to the apparent life of the trademark, can be assumed to be a typographical error, the origin of the latter inconsistency, which adds another two years to the period during which the TurboMill mark is claimed to have been used in commerce, in unclear.

Continue reading "WindStream Sues Rambo and Keebler for Trademark Infringement" »

New Albany, Indiana - Silver Streak Industries, LLC of Tempe, Arizona ("Silver Streak") has filed a copyright infringement lawsuit in the Southern District of Indiana alleging that Squire Boone Caverns, Inc. of Floyd County, Indiana ("Squire Boone") infringed the copyrighted work Ore Car display and game card which has been registered by the U.S. Copyright Office.

Silver Streak's Ore Car display and game card (the "Work"), a whimsical representation of a mining ore car used to display polished stones and an accompanying brochure that lists the type of stones displayed, was copyrighted in 1995. Retail consumers may select stones for purchase. They are able to keep track of each type of stone collected with the brochure. Silver Streak generates revenue through the sales of copies of the Work to third parties retail establishments, such as travel centers, and through re-supply of the polished stones displayed with the Work.

Silver Streak alleges that, within the nine-month period prior to the filing of this action for copyright infringement, Squire Boone deliberately and willfully infringed Silver Streak's copyright in the Work by producing an "Ore Car and Tumbled Stone" product, which it claims infringes the copyrighted Ore Car display.

Intellectual property attorneys for Silver Streak contend that Squire Boone offered its purportedly infringing product to one of Silver Streak's existing customers at a retail-merchandise trade show in early 2013 at a deeply discounted price. It also asserts that Squire Boone has made at least one sale of the Ore Car to Six Flags, a potential customer of Silver Streak.

In its complaint, Silver Streak lists two causes of action:

• Count I: Copyright Infringement
• Count II: Tortious Interference with Contract

Silver Streak asks the court to impound and destroy all copies of the allegedly infringing work;
enjoin Squire Boone from further infringement; enjoin Squire Boone from unlawfully interfering with existing or prospective contracts between Silver Streak and its customers; order an accounting of profits and other damages that resulted from copyright infringement or interference with contract and prospective advantage; award to Silver Streak actual damages and profits under 17 U.S.C. § 504(a)(1) and § 504(b), or in the alternative, statutory damages for copyright infringement pursuant to 17 U.S.C. § 504 (a)(2) and § 504(c); award punitive damages; and award to Silver Streak its costs and expenses, including reasonable attorney's fees.

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

Continue reading "Silver Streak Industries Sues Squire Boone Caverns for Copyright Infringement" »

The US Trademark Office issued the following 119 trademark registrations to persons and businesses in Indiana in October, 2013, based on applications filed by Indiana Trademark Attorneys:

Continue reading "119 Trademark Registrations Issued to Indiana Companies in October, 2013" »

The US Patent Office issued the following 198 patent registrations to persons and businesses in Indiana in October, 2013, based on applications filed by Indiana Patent Attorneys:

Continue reading "Patent Office Issues 198 Patents To Indiana Citizens in October, 2013" »

Indianapolis, Indiana - Joe Hand Promotions, Inc. of Feasterville, Pennsylvania has sued in the Southern District of Indiana alleging that Timothy H. Fishburn of Marion County, Indiana; David M. Rickelman of Morgan County, Indiana and MWCC, Inc. d/b/a Fishbowl Pub At Midwest Sports Complex of Indianapolis, Indiana unlawfully intercepted and broadcast the Ultimate Fighting Championship "Aldo v. Hominick" Program.

Joe Hand Promotions was granted rights to distribute via closed-circuit television and encrypted satellite signal the Ultimate Fighting Championship ("UFC") "Aldo vs. Hominick" fight ("the Program"), which was telecast nationwide on April 30, 2011.

In the complaint against Fishburn, Rickelman and Fishbowl Pub, intellectual property counsel for Joe Hand Promotions has alleged such wrongful acts as interception, reception, publication, divulgence, display, exhibition, and "tortuous" [sic] conversion of the Program.

In addition to naming the separate legal entity, MWCC, Inc., which apparently owns Fishbowl Pub, Plaintiff has also sued Fishburn and Rickelman as individuals, claiming that they own MWCC and that they had the right and ability to supervise the activities of Fishbowl Pub. Plaintiff asserts that those activities included the unlawful interception of its Program. It further claims that Fishbowl Pub and its owners received financial benefit from the unlawful display of the Program.

Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553. The complaint also lists a count of conversion. Joe Hand Productions seeks statutory damages of $110,000 for each willful violation of 47 U.S.C. § 605; $60,000 for each willful violation of 47 U.S.C. § 553; compensatory damages on the claim of conversion; and costs and attorney's fees. These claims have been made both against Fishbowl Pub and as personal liability claims against the owners.

Practice Tip #1: Among its assertions of wrongdoing, Joe Hand Productions has alleged interception of the Program under 47 U.S.C. § 605, which is a different cause of action from copyright infringement.

Practice Tip #2: When Congress passed the Cable Communication Act, a statute of limitations was not included. Some federal courts have determined that a two-year statute of limitation is appropriate while other federal courts have used a three-year statute of limitations. The alleged wrongdoing here occurred on April 30, 2011. If the court interprets the interception claim to have a two-year statute of limitations, this may pose a problem for the Plaintiff, as the complaint was filed on October 15, 2013.

Practice Tip #3: It is unclear precisely what unlawful act is being alleged in this complaint. In the paragraph 12, it is asserted that Defendants wrongfully intercepted and broadcast the UFC "Aldo vs. Hominick" fight. However, in paragraph 32, the Plaintiff requests a finding of unauthorized exhibition of the "St-Pierre v. Sheilds Broadcast," which is presumably a different program.

Overhauser Law Offices, the publisher of this website, has represented several hundred persons and businesses accused of infringing satellite signals.

Continue reading "Joe Hand Promotions Sues Fishbowl Pub and its Owners for Unlawful Interception and Broadcast of UFC Fight" »

Indianapolis, Indiana - Nexans, Inc. of New Holland, Pennsylvania sued Belden, Inc. of Richmond, Indiana in the District of Delaware. At issue were allegations of infringement of Patent Nos. 6,074,503, Making enhanced data cable with cross-twist cabled core profile; 7,135,641, Data cable with cross-twist cabled core profile; 7,977,575, High performance data cable; 5,796,046, Communication cable having a striated cable jacket; and 7,663,061, High performance data cable, which have been issued by the U.S. Patent Office. Two days after Nexans' complaint was filed, Belden sued Nexans regarding the same patent infringement claims in the Southern District of Indiana. The Indiana court has stayed the litigation filed by Belden pending a ruling by the Delaware court.

On November 19, 2012, Nexans filed a complaint for declaratory action in the District of
Delaware against Belden seeking a declaration of non-infringement and invalidity of U.S. Patent Nos. 6,074,503 (the "'503 Patent"), 7,135,641 (the "'641 Patent"), and 7,977,575 (the "'575 Patent"), as well as a judgment that Belden has infringed U.S. Patent No. 5,796,046 (the "'046 Patent").

On November 21, 2012, Belden sued Nexans in Indiana, alleging infringement of the '503, '575, and '064 Patents. It also alleged infringement of U.S. Patent No. 7,663,061 (the "'061 Patent"). On December 3, 2012, Nexans filed an amended complaint in the Delaware action, seeking an additional declaratory judgment of non-infringement and invalidity of Belden's '061 Patent.

In this opinion, Magistrate Judge Mark J. Dinsmore ruled on Nexans' motion to stay the patent infringement lawsuit filed by Belden in Indiana. Nexans argued that a stay should be issued until the Delaware Court, as the first-filed court, had decided the issue of venue.

Judge Dinsmore first discussed the analysis appropriate to a determination of whether to stay litigation. Specifically, the following factors must be considered in deciding whether to stay an action: (i) whether a stay will unduly prejudice or tactically disadvantage the non-moving party, (ii) whether a stay will simplify the issues in question and streamline the trial, and (iii) whether a stay will reduce the burden of litigation on the parties and on the court.

In the case of duplicative patent actions, the general rule is that the first-filed action is preferred, even if it is declaratory, unless consideration of judicial and litigant economy, and the just and effective disposition of disputes, requires otherwise. Belden argued that two circumstances warranted departing from the general first-filed rule: 1) the convenience factors under 28 U.S.C. § 1404, which it argued would favor proceeding in Indiana, and 2) that Nexans' suit in Delaware constituted forum shopping, which would allow the Indiana court to bypass the first-filed rule.

The court was not persuaded by this reasoning. Instead, it noted that, while the Seventh Circuit has approved of second-filed courts doing this analysis, and proceeding when it is in the interests of justice to do so, the Federal Circuit's rulings control this issue in patent infringement cases. In turn, the Federal Circuit has expressly declined to apply the departure test to patent infringement cases, and has held that it prefers the first-filed rule.

The court next addressed the issue of whether the second-filed court may decide the applicability of the first-filed rule. It observed that the Federal Circuit has not yet expressly addressed whether the second-filed court may decide the applicability of the first-filed rule. While commenting that district courts have come to differing conclusions on the issue, the court was most convinced by the reasoning in those cases that have reserved the application of the first-filed rule for the first-filed court.

In concluding, the court found that it "would be at odds with the promotion of judicial and litigant economy for the court to proceed with the analysis of the exceptions to the first-filed rule." It held that the "first-to-file rule has generally been interpreted to dictate not only which forum is appropriate, but also which forum should decide which forum is appropriate" and stayed the Indiana litigation, pending a ruling on venue from the Delaware court.

Practice Tip: The present action was stayed pending the Delaware court's resolution of the pending motions to enjoin and dismiss. The parties in this case have been instructed to notify the Indiana court of the Delaware district court's rulings on these motions as soon as they are issued.

Continue reading "Second-Filed Litigation Stayed Pending Venue Ruling in First-Filed Litigation" »

Washington, D.C. - The U.S. Patent and Trademark Office ("USPTO") draft plan sets priorities to strengthen the USPTO, drive innovation, and support economic growth.

The USPTO recently announced that its draft Strategic Plan for fiscal years ("FY") 2014-2018 has been posted for public review and comment on the USPTO website at www.uspto.gov/about/stratplan/index.jsp. The draft plan sets out the USPTO's mission-focused strategic goals: to optimize patent quality and timeliness; to optimize trademark quality and timeliness; and to provide global and domestic leadership to improve intellectual property ("IP") policy, protection, and enforcement worldwide.

To achieve these goals, the plan identifies the USPTO's priorities, notably:

1. Working with stakeholders to refine long-term pendency goals that will meet the needs of both the office and the IP community.

2. Increasing efficiencies and examination capacity to align with optimal pendency goals, such as hiring/retaining a nationwide workforce.

3. Increasing international cooperation and work sharing, such as implementing Cooperative Patent Classification and the Global Dossier.

4. Continuing to enhance patent quality by evaluating and refining the measurement of quality data, and maximizing its usage to improve the quality of patent and trademark examination.

5. Ensuring optimal IT service delivery to both employees and stakeholders, for example, by stabilizing legacy systems.

6. Continuing and enhancing stakeholder and public outreach to promote the availability of educational resources for applicants and other users; e.g., the patent pro bono program and partnerships.

7. Maintaining the Patent Trial and Appeal Board's ("PTAB") ability to provide timely and high quality decisions by defining optimal pendencies for PTAB proceedings, and ensuring consistency in PTAB decisions.

"We worked with stakeholders around the country to implement the America Invents Act in a way that was open, transparent, and responsive to your needs and concerns," said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Teresa Stanek Rea. "In order for our nation to continue to lead and thrive in this global 21st century economy, we need that kind of dynamic, interactive private-public partnership to continue and that is why we would like your input on our 2014-2018 Strategic Plan."

Written comments should be sent by email to: strategicplan@uspto.gov by November 25, 2013. Comments may also be submitted by mail addressed to: The USPTO Strategic Plan Coordinator, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Bonita Royall. Although comments may be submitted by postal mail, submission by email to the above address is preferable. The comments will be available for public inspection on the USPTO website at www.uspto.gov.

A public forum on the USPTO 2014-2018 Strategic Plan will be held on November 5, 2013, from 10:00 a.m. to 11:00 a.m. ET in the USPTO's Madison Auditorium located at 600 Dulany Street in Alexandria, Va. in Madison Auditorium. Those wishing to present oral comments at the forum should notify the office not later than November 1, 2013. No written comments or transcripts of the public forum will be made available.

The USPTO anticipates posting the final strategic plan for FY 2014-2018 on http://www.uspto.gov in February 2014.

Indianapolis, Indiana - Magistrate Judge Mark J. Dinsmore of the Southern District of Indiana has recommended that Plaintiff Patrick Collins, Inc.'s request to void the judgment entered as a result of Plaintiff's two earlier requests for voluntary dismissal of Defendant Derrick Lund be denied.

[Full Disclosure - Overhauser Law Offices, the publisher of Indiana Intellectual Property Law News, represented the successful defendant in this case.]

Attorney Paul Nicoletti, copyright counsel for Plaintiff Patrick Collins, filed a complaint in June 2012 against thirteen "John Doe" Defendants identified only by their Internet Protocol addresses. Patrick Collins claimed that the Defendants had infringed upon its copyrighted films by downloading them using BitTorrent, a peer-to-peer file-sharing service. Defendant Derrick Lund was identified following a subpoena to his internet service provider.

Initially, Lund filed neither an answer nor any other pleading. Consequently, a default judgment was granted against him. What followed was a series of requests to the court by counsel for Patrick Collins that was characterized by the court as a "complicated procedural history." On the day following the default judgment against Lund, Nicoletti filed a notice of voluntary dismissal against Lund, seeking to dismiss him with prejudice. On that same day, Nicoletti also filed an unopposed motion making the same request: to vacate the default judgment against Lund and to dismiss him with prejudice. Judge Pratt granted Patrick Collins' motion the next day.

One day following Judge Pratt's order, Patrick Collins filed a motion to withdraw the voluntary dismissal. The court granted this motion and reinstated Lund as an active Defendant. Lund filed a motion for reconsideration on Lund's reinstatement. The court granted Lund's motion and vacated its reinstatement order, finding that Lund had not been properly served.

In this current opinion, the court again considered Patrick Collins' motion to withdraw its voluntary dismissal, asking "whether Plaintiff can just 'withdraw' this notice of dismissal." The court answered, "[s]imply, the answer is no, as the dismissal [constituted] a final judgment." Once the Plaintiff filed a notice of dismissal, "the case is closed and the plaintiff may not unilaterally withdraw or amend the notice."

In its latest request to the court, Patrick Collins had neither cited Rule 60(b) of the Federal Rules of Civil Procedure nor given reasons under this Rule that the judgment should be subject to vacatur. Instead, Plaintiff had simply argued that "the parties had not reached a settlement agreement and therefore the dismissal with prejudice was unintentional."

Nonetheless, the court sua sponte considered whether the final judgment should be set aside under Rule 60(b). Again, the court was not inclined to grant the Plaintiff's plea to void an order that the Plaintiff itself had requested.  While Rule 60(b) permits the Plaintiff to ask the court to vacate a dismissal, relief from a final judgment is an extraordinary measure and may only be granted in the exceptional circumstances.

Rule 60(b) permits a court to relive a party from a final judgment, order or proceeding for the following reasons:

1) mistake, inadvertence, surprise, or excusable neglect;
2) newly discovered evidence;
3) fraud, misrepresentation, or misconduct by an opposing party;
4) the judgment is void;
5) the judgment has been satisfied, released or discharged; it is based on an earlier judgment that has been reversed or vacated; or applying it prospectively is no longer equitable; or
6) any other reason that justifies relief.

The court noted that "Plaintiff twice filed requests with the Court - each filing being hours apart - to not only dismiss the action against Lund, but to dismiss it with prejudice. These filings show an unequivocal intent to dismiss Lund with prejudice." Magistrate Judge Dinsmore concluded that Patrick Collins had not demonstrated "how its argument amounts to mistake, inadvertence, surprise, or excusable neglect" and recommended that Judge Pratt deny Plaintiff's motion to withdraw voluntary dismissal.

Practice Tip #1: This case highlights the distinction between a dismissal "with prejudice" and "without prejudice." The opinion focuses on whether Plaintiff Patrick Collins, Inc. could obtain "relief" from its own dismissal. Why would a litigant need "relief" from a court order granting its own motion? Because the dismissal was "with prejudice," meaning that Patrick Collins was not allowed to simply file a second suit asserting the same claim. Because the dismissal was "with prejudice," the defendant may be a considered a "prevailing party," even though a judgment was never entered in either party's favor. Nonetheless, because the Copyright Act allows a "prevailing party" to recover its attorney's fees, the defendant can recover them.

Practice Tip #2: Patrick Collins, Inc. is represented by Paul Nicoletti, one of the country's most notorious "copyright troll" attorneys. In addition to filing suits on behalf of Patrick Collins, Inc., he has also sued hundreds of defendants on behalf of copyright trolls Malibu Media, LLC and TCYK, LLC. (Search for these company names on this site to find articles about those other suits, or visit www.fightcopyrighttrolls.comor www.dietrolldie.com.)

Continue reading "Patrick Collins Twice Requests to Dismiss Lund; Lund Dismissed; Court Denies Patrick Collins' Request to Reinstate" »

Indianapolis, Indiana -- Broadcast Music, Inc. of New York, New York ("BMI") has filed a copyright infringement lawsuit in the Southern District of Indiana alleging that SC Entertainment, LLC d/b/a Blu and Shawn Cannon ("Cannon"), both of Indianapolis, Indiana, infringed the copyrighted works LAST NIGHT A D.J. SAVED MY LIFE, SHOW ME LOVE, and I'LL BE AROUND which have been registered by the U.S. Copyright Office. Five other Plaintiffs,Comart Music, EMI Virgin Songs, Inc. dba EMI Longitude Music, EMI Blackwood Music, Inc, Song A Tron Music, and Warner-Tamerlane Publishing Corporation, are also listed in the complaint.

Broadcast Music, Inc. ("BMI") is a "performing rights society" under 17 U.S.C. § 101 that operates on a non-profit-making basis and licenses the right to publicly perform copyrighted musical works on behalf of the copyright owners of these works. The other Plaintiffs in this action are the copyright owners of the three compositions at issue in this lawsuit.
SC Entertainment is an Indiana limited liability company that operates Blu, an establishment which is asserted to publicly perform musical compositions and/or cause musical compositions to be publicly performed.

BMI asserts that Cannon is a member of SC Entertainment and that he has primary responsibility for the operation and management of the company and of Blu. Cannon also allegedly has the right and ability to supervise the activities of SC Entertainment and a direct financial interest in the company and in Blu.

BMI and the other Plaintiffs, via copyright counsel, have asserted willful copyright infringement of the three copyrights-in-suit in their complaint. They further claim that the Defendants' entire course of conduct, including the ongoing unauthorized public performances of the copyrighted works, has caused and is continuing to cause the Plaintiffs great and incalculable damage.

Practice Tip:

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

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

Continue reading "BMI Asserts Copyright Infringement Against Blu" »

Washington, D.C. -- Using information gathered from the After Final Consideration Pilot ("AFCP"), as well as input from stakeholders and examiners obtained through the Request for Continued Examination ("RCE") outreach initiative, the U.S. Patent and Trademark Office ("USPTO") launched the After Final Consideration Pilot 2.0 ("AFCP 2.0") on May 19, 2013. Designed to be more efficient and effective than the AFCP, AFCP 2.0 is part of the USPTO's ongoing efforts towards compact prosecution and increased collaboration between examiners and stakeholders.

"Compact prosecution remains one of our top goals," said Teresa Stanek Rea, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO. "As with the original AFCP pilot, the new AFCP 2.0 pilot allows additional flexibility for applicants and examiners to work together and provides even greater opportunity for communication after final than the original pilot."

Like AFCP, AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection. Under AFCP 2.0, examiners will also use the additional time to schedule and conduct an interview to discuss the results of their search and/or consideration with you, if your response does not place the application in condition for allowance. In this way, you will benefit from the additional search and consideration afforded by the pilot, even when the results do not lead to allowance.

In addition, the procedure for obtaining consideration under AFCP 2.0 has been revised. The revised procedure focuses the pilot on review of proposed claim amendments and allows the USPTO to better evaluate the pilot.

To be eligible for consideration under AFCP 2.0, you must file a response under 37 CFR §1.116, which includes a request for consideration under the pilot (Form PTO/SB/434) and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. Please see the notice published in the Federal Register at 78 Fed. Reg. 29117 for a complete description of how to request consideration under AFCP 2.0. As was the case with the AFCP, examiners will continue to use their professional judgment to decide whether the response can be fully considered under AFCP 2.0. This will include determining whether any additional search is required and can be completed within the allotted time, in order to determine whether the application can be allowed.

As always, the option to request an interview with the examiner, consistent with Manual of Patent Examining Procedure Section 713, is available to you irrespective of whether the submission was considered under AFCP 2.0.

If you are considering filing a response to a final rejection under 37 CFR 1.116 that you believe will lead to allowance of your application with only limited further searching and/or consideration by the examiner, you should consider requesting consideration of the response under AFCP 2.0.

Click here for the guidelines related to the consideration of responses under AFCP 2.0.

Form

Form PTO/SB/434 may be used to request consideration under AFCP 2.0.

Dates

AFCP 2.0 has been extended to run through December 14, 2013; therefore, any request to consider a response after final rejection under AFCP 2.0 must be filed on or before December 14, 2013.

Contacts

You may email any question regarding AFCP 2.0 to the AFCP 2.0 mailbox at afterfinalconsiderationpilotafcp20@uspto.gov.

Alternatively, you may telephone one of the following:

• for an EFS-Web or PAIR system question, contact the Electronic Business Center at 866-217-9197;
• for an application-specific issue with AFCP 2.0, contact Tariq Hafiz, Director, Technology Center 2600, at 571-272-4550; or
• for a question regarding the After Final Consideration Pilot Program 2.0 Federal Register notice, contact Raul Tamayo, Senior Legal Advisor, Office of Patent Legal Administration, at 571-272-7728.

Practice Tip: Various current workload patent statistics may be viewed in the Patents Dashboard data visualization center at: http://www.uspto.gov/dashboards/patents/main.dashxml.