Indiana Intellectual Property Law News

Indianapolis, IN - The Southern District of Indiana ruled in favor of Plaintiff Patrick Collins, Inc. by denying the motion of pro se Defendant John Doe No. 7 to quash or modify Plaintiff's subpoena.

 In a lawsuit originally styled "Patrick Collins, Inc. v. John Does 1 - 13," Patrick Collins, Inc. of Canoga Park, California ("Patrick Collins"), alleged direct and contributory infringement by 13 then-unidentified individuals including John Doe No. 7.  The suit was filed by copyright attorney Paul Nicoletti.

By motion, Dustin Hillman ("Hillman"), identifying himself only as "John Doe 7," asked the court to quash or modify the subpoena seeking to compel his internet service provider to provide his real name to the Plaintiff, stating that "such actions violate right to privacy and the disclosure of such matters may result in wrongful or unjust incrimination."

Hillman attached for the court's review an article which concluded that a common approach for identifying users infringing copyright law using BitTorrent (via the Internet) was not conclusive.  He then asked the court to require Plaintiff to provide further information about its methods of identifying defendants and proof of the reliability of those methods.  "Hardly a day goes by," said Hillman, "that the news does not contain a story where a computer system containing highly confidential data has been hacked, spoofed and infected by malware."  He asked for the subpoena to be quashed or modified on these grounds.

The court was not persuaded.  It discussed those situations under FRCP 45(c)(3)(A) where a court must quash or modify a subpoena and then those situations under FRCP 45(c)(3)(B) where a court may quash or modify a subpoena.  Citing the Malibu Media litigation, a similar matter which we blogged about here, the court then noted that the burden of establishing the grounds to quash a subpoena is borne by the party seeking to quash it.  Hillman, it said, had made an argument denying liability based on the possibility that his IP address may have been used by someone else.  Such an objection was an argument on the merits of the case and was "irrelevant and premature" in the discovery phase of the litigation. 

Hillman also asked the court to require the Plaintiff to disclose its "shake down methods" of collection, how much it had collected from alleged copyright infringers, the percentage of cases settled without trial and the total costs incurred by the Plaintiff.  The court was not moved by this request, either, stating that no evidence of abusive settlement tactics had been presented to the court.

Hillman's identity was deemed "relevant information that is reasonably calculated to lead to the discovery of admissible evidence" and Hillman's motion to quash or modify the subpoena was denied.  

Practice Tip: Patrick Collins, Inc. has filed quite a few suits, including another case naming over 1,000 John Doe defendants.  The company has been called a "copyright troll" on more than one occasion.  The actions of companies such as Patrick Collins and Malibu Media have been called "extortionate" and, in at least one case, a class action suit has been filed against these "trolls." 

Continue reading "Court Refuses to Quash or Modify Subpoena Designed to Identify Alleged Infringer of Copyrighted Movie " »

Indianapolis, IN - Plaintiff Malibu Media, LLC of Los Angeles, CA has sued seventeen "John Does" for copyright infringement in separate complaints filed in both the Southern District of Indiana and the Northern District of Indiana.

Paul Nicoletti, a copyright attorney, has filed seventeen nearly identical suits in Indiana federal court on behalf of Malibu Media.  The "John Does" allegedly used the BitTorrent file-sharing protocol to illegally download, copy and distribute elements of various works of copyrighted material.

We have previously blogged about Malibu Media here.  We have also blogged about some of the other copyright-infringement litigation filed by Paul Nicoletti here.

Malibu Media seeks a permanent injunction against infringing activities; an order by the court to remove infringing materials from all computers of each defendant; an award of statutory damages of $150,000 per infringed work - which would total over $1 million for many defendants - and reasonable attorneys' fees and costs.

Practice Tip: The BitTorrent protocol is a decentralized method that allows users to distribute data via the Internet, and has become an extremely popular method for unlawful copying, reproducing and distributing files in violation of the copyright laws. While the copyright infringements committed with BitTorrent once consisted mostly of music copyright violations, the adult entertainment industry has increasingly been filing suit against infringers who have used BitTorrent-based technology. 

Continue reading "Malibu Media Sues Seventeen "John Doe" Defendants for Copyright Infringement" »

Indiana patent attorneys obtained issuance of the following 160 patents from the US Patent Office to persons and businesses in Indiana in February, 2013:

Continue reading "The US Patent Office issued the following 160 patents to persons and businesses in Indiana in February, 2013, based on applications filed by Indiana Patent Attorneys:" »

The US Trademark Office issued the following  137 trademark registrations to persons and businesses in Indiana in February, 2013, based on applications filed by Indiana Trademark Attorneys:

Continue reading "137 Trademark Registrations Issued to Indiana Companies in February, 2013" »

Indianapolis, IN - Eli Lilly and Company of Indianapolis, Indiana filed an additional patent infringement suit in the Southern District of Indiana alleging that Accord Healthcare, Inc., USA of Durham, North Carolina will infringe U.S. Patent No. 7,772,209 (the "'209 patent") which has been issued by the U.S. Patent Office if relief is not afforded by the court. 

In a complaint that was almost identical to a previous complaint filed in January 2012, patent attorneys for Eli Lilly and Company ("Lilly") initiated an additional lawsuit against Accord Healthcare, Inc., USA ("Accord") for attempting to gain FDA approval to manufacture and sell a generic version of Lilly's ALIMTA, a drug that is used in the treatment in certain types of lung cancer.  ALIMTA is protected by the '209 patent. 

This is the second suit by Lilly against Accord involving the '209 patent.  This suit was initiated after Accord filed an Abbreviated New Drug Application ("ANDA") with the FDA for a product that competes with Lilly's ALIMTA, which is an "Antifolate Combination Therapies" product.  The complaint from 2012 alleged intent to infringe by, among other activities, the production and sale of Accord's "Pemetrexed Disodium for Injection," a generic version of ALIMTA, in 100 mg/vial and 500 mg/vial products.  The current complaint alleged intent to infringe with a "Pemetrexed Disodium for Injection" product in a 1000 mg/vial strength.  As part of its ANDA filing, Accord alleged that the claims of the '209 patent are invalid and/or not infringed by Accord's product. 

Eli Lilly has sued alleging infringement of the patented ALIMTA before: 

·         Eli Lilly Sues Apotex Inc. for Patent Infringement of ALIMTA  

·         Eli Lilly and Company Sues Accord Healthcare for Patent Infringement of Lung Cancer Drug ALIMTA

·         Lilly Wins Patent Infringement Suit Regarding Chemotherapy Drug

·         Eli Lilly Company Sues APP Pharmaceuticals LLC for Patent Infringement of Chemotherapy Drug

Lilly seeks a judgment that Accord has infringed and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of the '209 patent; a judgment ordering that Accord delay virtually all activities pertaining to its ANDA product until after the '209 patent has expired; a preliminary and permanent injunction against activity that infringes upon the '209 patent; a declaratory judgment of infringement; a declaration that the case is exceptional and an award of attorneys' fees pursuant to such a declaration; and Lilly's costs and expenses. 

Practice Tip #1: The FDA's ANDA process for generic drugs has been abbreviated such that, in general, the generic drug seeking approval does not require pre-clinical (animal and in vitro) testing.  Instead, the process focuses on establishing that the product is bioequivalent to the "innovator" drug that has already undergone the full approval process.  The statute that created the abbreviated process, however, had also created some interesting jurisdictional issues with respect to declaratory judgments.  For an interesting look at some of the issues, see here.

Continue reading "Eli Lilly Sues Accord Healthcare Again for Infringement of Patented ALIMTA" »

San Jose, CA - Lilly of Indianapolis, Indiana filed a declaratory judgment suit against Genentech asking the U.S. District Court, Northern District of California to invalidate Genentech's recombinant-antibody patents.

This suit, filed by patent attorneys for Eli Lilly & Company ("Lilly") and its subsidiary ImClone Systems LLC, of Delaware, included as defendants both Genentech, Inc. ("Genentech") and City of Hope National Medical Center ("City of Hope").

Genentech, also known as "Genetic Engineering Technology, Inc." is a wholly owned subsidiary of F. Hoffmann-La Roche Holding AG engaged in biotechnology research. 

It has won numerous awards as an employer and corporate citizen, including earning the number-one spot on Fortune Magazine's "100 Best Companies To Work For" in 2006.

City of Hope is a private, not-for-profit clinical research center, hospital and graduate medical school located in Duarte, California.

The suit involves two patents held by Genentech: 6,331,415: "Methods of producing immunoglobulins, vectors and transformed host cells for use therein" ("Cabilly II") and 7,923,221: "Methods of making antibody heavy and light chains having specificity for a desired antigen," ("Cabilly III"), together known as the "Cabilly patents" after one of the inventors.  They have been issued by the U.S. Patent Office.

At issue is the drug Erbitux (cetuximab), made by Lilly's ImClone unit.  Genentech claims that the drug, approved in the U.S. to treat colon cancer and tumors of the head and neck, infringes the Cabilly patents through the unlicensed use of a patented process and various patented starting materials.

Despite that Lilly already has a non-exclusive license to the Cabilly patents, it filed a declaratory judgment action.  It asserts that it has no obligation to pay royalties on the sale of Erbitux, arguing that the Cabilly patents are invalid and unenforceable, and, further, not infringed by Lilly.  It alleges that Cabilly patents are invalid for, among other reasons, lack of inventorship, inequitable conduct and violation of 35 U.S.C. § 135(c) (which relates to the filing of settlement agreements with the PTO in interference actions).  Lilly also alleges that Genentech deceived the U.S. Patent Office into issuing the Cabilly patents.

Lilly seeks a declaratory judgment that the Cabilly patents are invalid and unenforceable, and are not implicated in the manufacture of Erbitux.

Practice Tip: The Cabilly patents have a potentially broad scope and could confront any manufacturer of recombinant antibodies.  Genentech has been quoted as stating that the patents broadly cover the co-expression of immunoglobulin heavy and light genes in a single host cell, and are not limited by the type of antibody or host cell.  Genentech has also been quoted as stating that the Cabilly II patent is "the backbone of recombinant antibody production in the biotech industry."  Given Genentech's history of actively litigating this family of patents (see, e.g., MedImmune, Inc. v. Genentech, Inc, et al., which was litigated to the U.S. Supreme Court), and the purported broad scope of the Cabilly patents, it seems that litigation regarding these patents may continue for quite some time.

Continue reading "Lilly Sues Genentech to Invalidate Cabilly Patents" »

Indianapolis, IN - Copyright lawyers for Broadcast Music, Inc. ("BMI"), of New York, NY and eight other plaintiffs have sued VAT, Inc. ("VAT") d/b/a Carey Tavern and its owners, Matthew and Valerie Schachte of Westfield, IN, for copyright infringement in the Southern District of Indiana.

In its complaint, BMI states that it has been granted the right to license the public performance rights of more than seven million copyrighted musical compositions, including the compositions at issue.  The other plaintiffs are the owners of the copyrighted music that was allegedly infringed and include such artists as Dolly Parton, via her sole proprietorship Velvet Apple Music, and R.E.M., via Night Garden Music, a division of R.E.M./Athens LTD.  Also plaintiffs in this case are: Sony/ATV Songs, LLC d/b/a Sony/ATV Tree Publishing, Moebetoblame Music, Sony/ATV Songs LLC, ECAF Music, Blues Traveler Publishing Corporation, and Universal Music-Z Tunes LLC d/b/a Universal Music Z Songs.

The suit, brought under The Copyright Act, alleges that the defendants infringed multiple songs in BMI's repertoire by performing the copyrighted songs and/or causing the copyrighted songs to be performed publically in Carey Tavern.  It alleges that there were seven instances of infringement, with each artist-plaintiff having at least one copyrighted song infringed by the defendants. 

Plaintiffs allege that VAT has a direct financial interest in Carey Tavern, as do Matthew and Valerie Schachte.  Further, it is alleged that Matthew and Valerie Schachte are officers of VAT, with primary responsibility for the operation, management and supervision of the activities of VAT.

The plaintiffs claim that further acts of infringement will injure them irreparably and ask that the court enjoin the defendant from committing further acts of infringement.  The plaintiffs also seek statutory damages pursuant to 17 U.S.C. §504(c) and costs, including reasonable attorneys' fees.

Continue reading "BMI and Copyright Owners Sue Carey Tavern and its Owners for Copyright Infringement" »

Indianapolis, IN - Boston Scientific Corporation ("Boston Scientific") of Natik, Massachusetts, was granted three of its four requests to exclude Defendant's expert testimony in its declaratory judgment suit against Mirowski Family Ventures, LLC ("Mirowski") of Bethesda, Maryland.

The litigation surrounding the Boston Scientific/Guidant Corp. ("Guidant") / Mirowski / St. Jude Medical, Inc. ("St. Jude") matter began in the Southern District of Indiana (and also in Delaware) as a patent infringement suit regarding an implantable cardioverter defibrillator. It was appealed to the Federal Circuit, reversed and returned to the Southern District of Indiana. It was later appealed again to the Federal Circuit. The second ruling of the Federal Circuit was then appealed to the U.S. Supreme Court, which declined to hear the case. The matter was finally settled and the case dismissed but a subsequent dispute regarding the settlement resulted in the commencement of the current litigation.

In 1996, patent attorneys for Guidant (Boston Scientific's predecessor) sued St. Jude for infringement of, inter alia, Mirowski's Patent No. 4,407,288 ("the '288 patent") which had been issued by the U.S. Patent Office, and for which Guidant had an exclusive license. Mirowski was added as a Plaintiff in 2001. That same year, a jury found that St. Jude had infringed the '288 patent that had been licensed to Guidant and jointly awarded Guidant and Mirowski $140 million in damages.

The court disagreed with the jury's conclusions and, in 2002, entered a judgment as a matter of law for St. Jude on most issues, including finding both the '288 patent and another of Mirowski's patents invalid. It granted a new trial on many of the issues on which St. Jude had not prevailed. The court also sanctioned Guidant $300,000 for misconduct relating to a Guidant expert witness.

Mirowski and Guidant appealed. Guidant also ceased royalty payments to Mirowski, as the agreement for royalties was limited to only those devices that were covered by a valid, unexpired patent. The Federal Circuit reversed the district court's determination of invalidity of the '288 patent and remanded the case for further proceedings.

In 2010, Boston Scientific (which had acquired Guidant in 2006), Mirowski and St. Jude entered into a stipulation of dismissal and the case was closed. Boston Scientific paid Mirowski approximately $5.3 million and later slightly less than $1.4 million, the latter amount covering an error in the calculation of the earlier payment.

Continue reading "Southern District of Indiana Grants in Part Plaintiff's Daubert Motion to Preclude Expert Testimony Regarding Damages " »

Hammond, IN - Unverferth Manufacturing Company, Inc. of Kalida, OH has filed suit against Par-Kan Company of Silver Lake, IN for the infringement of United States Patent No. 8,221,047, which has been registered by the USPTO.

Patent attorneys for Unverferth Manufacturing Company, Inc. filed a civil suit in Northern District of Indiana alleging that Par-Kan Company infringed, and continues to infringe, upon Unverferth's patented seed tender products, including its "Seed Weigh" product.  Unverferth alleges that Par-Kan has engaged in both the "unauthorized, infringing manufacture, use, importation, sale and/or offer for sale" of the product and inducing others to infringe.

Unverferth further alleges that the infringing behavior continued after Par-Kan was notified of the infringement and, as such, some or all of the infringement was willful.

Unverferth asks for preliminary and permanent injunctions, for lost profits in an amount no less than a reasonable royalty, and that such damages be trebled.  It also seeks a judgment that the case is "exceptional," and that, as such, it is entitled to all costs and expenses of the action, including reasonable attorneys' fees.

Continue reading "Unverferth Manufacturing Company, Inc. sues Par-Kan Company for Infringement of U.S. Patent No. 8,221,047" »

Indianapolis, IN - Commercial Recovery Corporation of Blaine, MN has filed a patent infringement suit in the Southern District of Indiana against American Financial Credit Services, Inc. for infringement of U.S. Patent No. 7,167,839 ("the '893 Patent") which has been registered by the U.S. Patent Office.  

Patent attorneys for Commercial Recovery Corporation filed this suit, the latest of six patent suits filed by the Plaintiff since September 2011, alleging infringement of their patented "Collection Agency Data Access Method."  This patent protects a data-access method which allows secure access to an account database, such as the account database of a collection agency, via a network by affiliated agencies and clients. 

Plaintiff alleges that American Financial Credit Services, Inc. has infringed and continues to infringe on the Plaintiff's patent by, among other ways, providing clients of collection agencies with secure access to client accounts using methods that infringe on the Patent.  Plaintiff seeks remedies that include an injunction, treble damages, attorneys' fees and costs. 

Practice Tip: Patents are not granted solely on physical inventions but also on innovations in, among other things, a process or a method.  If you are uncertain whether a process your business utilizes is patented, consult an experienced patent attorney.

Continue reading "Commercial Recovery Corporation Sues American Financial Credit Services, Inc. for Infringement of U.S. Patent 7,167,839" »

Indiana patent attorneys obtained issuance of the following 179 patents from the US Patent Office to persons and businesses in Indiana in January, 2013:

Continue reading "Indiana Patent Attorneys Obtain 179 Patents for Indiana Companies in January , 2013" »

Continue reading "The US Trademark Office issued the following 126 trademark registrations to persons and businesses in Indiana in January, 2013, based on applications filed by Indiana Trademark Attorneys:" »

Indianapolis, IN - The Southern District of Indiana has issued an Order concerning claim construction for three of nine patents-in-suit: U.S. Patent Nos. 5,699,038,6,147,592 and 7,538,659.

Patent attorneys for Hill-Rom Services, Inc., Hill-Rom Company, Inc. and Hill-Rom Manufacturing, Inc. (collectively, "Hill-Rom") filed a patent-infringement action against Stryker Corporation, doing business as Stryker Medical and Stryker Sales Corporation (collectively, "Stryker"), alleging that Stryker had infringed nine of its patents. Stryker countered, alleging non-infringement and invalidity of the patents-in-suit.

The suit, initially filed in the Western District of Wisconsin, was transferred to the Southern District of Indiana. Six of the nine patents-in-suit are currently undergoing reexamination before the United States Patent and Trade Office pursuant to Stryker's request and the Court considered only the other patents-in-suit.

In this Order, the Court determined the scope and meaning of the asserted patent claims, a necessary step before ruling on the question of infringement. The three patents-in-suit addressed involve data transfer patents that allow hospital personnel to monitor the status of patients' beds remotely.

Five claim terms from the three patents at issue were presented to be construed by the Court: 1) "datalink", 2) "interface board including processor", 3) "message", 4) "bed condition message" and 5) "message validation information".

In each case, Hill-Rom proposed no definition other than reiterating the precise wording of each claim term at issue, apparently relying substantially on the heavy, but rebuttable, presumption that claim terms will be afforded their full ordinary and customary meaning. In contrast, Stryker criticized Hill-Rom's failure to expand on what a plain and ordinary meaning would be when considered in the context of the specification and prosecution history.

The Court agreed with Stryker. For each of the five claim terms at issue, the Court exactly or substantially adopted Stryker's proposed definition.

For "datalink", which was both the claim term and the proposed construction by Hill-Rom, the Court adopted Stryker's proposal exactly, construing it to mean "A cable connected to the bed that carries data".

The Court construed "interface board including processor" to mean "A board that processes an input signal to create bed condition messages and sends those messages to a remote location via the wall interface unit. It can also receive messages through the wall interface unit." Of all of the claim terms, the Court differed the most from Stryker's proposal -- "A board that includes the electronics that control the sending of messages to, and the receiving of messages from, a remote location." -- on the construction of this term.

The third term, "message", again proposed to mean only "message" by Hill-Rom, was interpreted to mean "A plurality of data fields of appropriate length assembled into a defined structure. A message is distinct from an input signal."

"Bed condition message" was construed to mean "A message not generated in response to any user request that contains the status of all conditions the bed is capable of monitoring."

Finally, "message validation information" was construed to mean "A data field within a message that is used to verify that the message was received exactly the same as it was sent."

The case was referred to Magistrate Judge LaRue for further proceedings.

Practice Tip #1: Hill-Rom's interpretation of "plain and ordinary meaning" as requiring merely the repetition of the terms at issue was soundly rejected by this Court, as it has been by other courts. Instead, it is often true that, in those cases that a lawsuit is filed, the parties can expect that there will be disagreements on what constitutes a "plain and ordinary meaning." Consequently, it is advisable for both parties to consider providing the court with additional language supporting their respective positions. Failure to do so results in the court being presented with only one alternate definition to consider when construing claims, a situation not likely to benefit the party providing no additional language.

Continue reading "Stryker Prevails on the Construction of All Claims in Patent Infringement Suit" »

Indianapolis, IN - The Southern District of Indiana has denied all summary judgment motions of both plaintiff CleanTech and all defendants in this multi-district litigation involving patents issued by the US Patent Office.

GreenShift Corp. and its subsidiary GS CleanTech Corp. ("CleanTech") have brought a series of suits alleging infringement of their family of patented methods of extracting corn oil from byproducts of ethanol manufacturing.  This multi-district litigation, In re Method of Processing Ethanol Byproducts and Related Subsystems ('858) Patent Litigation, consolidates 11 separate actions in multiple states involving several similar patents in the Southern District of Indiana. 

The defendants are: Big River Resources Galva, LLC; Big River Resources West Burlington, LLC; Cardinal Ethanol, LLC; ICM, Inc.; LincolnLand Agri-Energy, LLC; David J. Vander Griend; Iroquois Bio-Energy Co., LLC; Al-Corn Clean Fuel; Blue Flint Ethanol, LLC; ACE Ethanol, LLC; Lincolnway Energy, LLC; United Wisconsin Grain Producers, LLC; Bushmills Ethanol, Inc.; Chippewa Valley Ethanol Co.; Heartland Corn Products and Adkins Energy, LLC.

The initial litigation alleged infringement of one patent, U.S. Patent No. 7,601,858 (the "'858 patent"), which was issued on October 13, 2009.  CleanTech sued GEA Westfalia Separator, Inc. (not a party in this matter) and others alleging infringement of that patent shortly after its issuance.

Allegations of infringement of three additional patents, U.S. Patent Nos., 8,008,516 (the "'516 patent"), 8,008,517 (the "'517 patent") and 8,283,484 (the "'484 patent"; collectively known, together with the '858 patent, as the "'858 patent family") were later added.  The patents in the '858 family share an identical specification and have substantially similar claim terms.  As such, the court concluded that the construction of the '858 patent applied to all of the asserted claims in the other patents in the '858 family.

CleanTech's patented methods recover corn oil by evaporating, concentrating and mechanically separating thin stillage ("stillage"), a byproduct of ethanol produced from corn, into two components: corn oil and a post-recovery syrup ("syrup") with most of its corn oil removed.  In the patents, the term "substantially oil free" (and the essentially identical term "substantially free of oil") had been used to describe the syrup after the patented process had removed the corn oil. 

The defendants argued that this language required that, to infringe upon the patented processing, a removal process must remove almost all of the corn oil from the syrup.  The defendants moved for a finding on summary judgment that they had not infringed, arguing that the patented process did not include one which did not render the processed syrup "substantially oil free."  The court disagreed that this was the proper construction of the term.

Defendants also asked the court to construe "substantially oil free" to require that at least 95% of the oil from the unprocessed stillage be removed by the patented oil-removal process, thus rendering any less efficient process non-infringing.  While the court agreed that a comparison between the oil levels in the input stillage and the output syrup was appropriate when considering the term, it declined to limit the protection afforded by the patent to this, or any, specific percentage and held that the term "substantially oil free" was to be interpreted according to its ordinary meaning.

In addressing the issue, the court discussed the language of the various patents and noted that, across the entire '858 patent family, the term "substantially oil free" had been found in only two substantially similar claims.  Further, the one reference found in the specification had been parenthetical -- "[r]ecombining the syrup (which is substantially free of oil) from the centrifuge..." -- and, according to the court, "almost an afterthought." 

In sum, on this issue, the court found that none of the claims in the '858 patent family required that the post-oil-recovery syrup be substantially free of oil and concluded, instead, that the '858 patent family merely disclosed that the post-oil-recovery syrup was "substantially free of oil."  The court held that the primary focus of the invention was not the amount of oil that remained in the syrup but, instead, on the recovery of oil.

Additionally, the defendants (except Adkins) asked the court to revisit an earlier construction of the term "substantially oil," as applied to the corn oil captured, asking that it be held to mean that the oil must be nearly pure.  Defendant Cardinal further argued that the "substantially oil" term should be construed to mean nearly 100% pure, with only trace amounts of contaminants.  The court declined to readdress the construction of this term. 

The court also denied CleanTech's motions for summary judgment against various defendants.

Finally, the court acknowledged that, since receiving the parties' summary judgment motions, it had allowed CleanTech to amend its complaints against each defendant such that nearly all patents in the '858 family were asserted against each defendant.  Consequently, all summary judgment motions were denied without prejudice and with leave to re-file them to address the amended complaint. 

Practice Tip #1: Multi-district litigation affords consistency and judicial economy, as well as allowing plaintiffs and defendants to concentrate their efforts in one forum.  However, lawsuits that are not settled before trial must later be remanded to the transferring court and to a judge who has had little opportunity to become familiar with the issues.

Practice Tip #2: In this case, CleanTech filed suit almost immediately after the issuance of the first of the patents in the '858 family.  Thus, damages are limited to a reasonable royalty upon a showing that an infringer had actual notice of the published patent application and that the patent was subsequently issued on essentially the same claims.  As such, if a patent is filed in anticipation of litigation, it is wise to provide such notice immediately upon publication of the patent application. 

Continue reading "Southern District of Indiana Denies All Summary Judgment Motions Regarding Family of Corn Oil Extraction Patents" »

Geneva, Switzerland - The World Trade Organization ("WTO") has granted its permission for the twin-island nation of Antigua and Barbuda ("Antigua") to disregard intellectual property rights granted by the United States (i.e., patents, copyrights and trademarks).  The decision follows nearly ten years of negotiations and litigation pursuant to a 2003 complaint to the WTO by Antigua.

In the United States, there are three separate federal laws (the "Wire Act," the "Travel Act" and the "Illegal Gambling Business Act") and various state laws promulgated by Louisiana, Massachusetts, South Dakota and Utah that prohibit certain means of delivering gambling services, most particularly the interstate delivery such services.  The dispute centered on the conformance of these laws with an international trade agreement when the laws restricted online gambling services offered in the U.S. by Antigua.  [NB: Other WTO members participated as complainants but, by 2009, the U.S. had negotiated agreements with each of them.]

Via its attorneys, Antigua alleged that, together, the federal and state restrictions amounted to discrimination against foreign companies and constituted a breach of the United States' agreement under the WTO's General Agreement on Trade in Services ("GATS").  Antigua stated that its economy, which had, without the restrictions, included a substantial volume of online gambling services offered to the residents of the U.S., had been significantly damaged.

The United States argued that it was, in fact, in compliance with the GATS and that the WTO's interpretation of the GATS did not reflect the original intent of the U.S.  It stated that the broad language allowing foreign companies to provide "other recreational services" should not be interpreted to supersede the U.S.'s longstanding restrictions on interstate gambling under federal law.  It also argued that the regulation of interstate gambling fell within the GATS public morals exception.

In 2004, the WTO issued its first ruling in favor of Antigua.  A series of appeals and negotiations followed.  In 2007, the U.S. initiated an attempt to resolve the dispute by engaging in the WTO process that allows clarification of the agreement.

Later in 2007, an Arbitrator determined that Antigua was impaired by the U.S.'s actions in the amount of $21 million per year and suspended Antigua's WTO obligations to the United States with the limitation that the suspension could affect trade between the United States and Antigua by no more than $21 million per year.

 On January 28, 2013, the WTO granted a similar "authorization to retaliate" by suspending U.S. intellectual property rights within Antigua up to $21 million per year.  This sanction not only has the effect of harming innocent property holders, it was designed with that goal in mind.

According to Mark Mendel, an attorney for Antigua in this case, this sanction is not designed to compensate Antigua but rather "to pressure the bad government [the United States] domestically."  Specifically, he says, the retaliation is designed to damage private - and innocent - third parties within the U.S.  This would be done in an attempt to force those private parties to pressure the U.S. government to comply with the GATS as interpreted by the WTO.  Given that ten years of litigation and negotiation have failed, the only way to protect these innocent third parties appears to require the U.S. to change its laws.  If the U.S. does not change its laws or otherwise come into compliance with the GATS, as interpreted by the WTO, the penalty will be borne by a multitude of innocent parties when their private property is taken without payment.

Practice tip #1: The U.S. has successfully negotiated with every country but Antigua in this dispute.  As a result of this failure to reach an agreement that allows the U.S. to keep its laws intact, it appears that the WTO is attempting to force the U.S. to repeal its laws against interstate gambling by legalizing what is all but universally recognized as theft.  This "retaliation" was designed not to compensate Antigua but to punish innocent holders of U.S. intellectual property and thereby cause pressure from those individuals and companies to demand that, in effect, the U.S. cede this portion of its sovereignty to the WTO.

Practice tip #2: Companies should consider proactively registering their .ag domain name(s), as the reach of federal legislation such as the "Anticybersquatting Act," which is designed to protect company names against improper use as a domain name by another company (or "cybersquatting"), is unclear.