August 25, 2014

Indiana Copyright Litigation: Bake Me A Wish Sued for Copyright Infringement

Indianapolis, Indiana - Larry G. Philpot, a professional photographer from Indianapolis, 

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Indiana, sued asserting a violation of his intellectual property rights by Bake Me A Wish, LLC of New York. The lawsuit, filed in the Southern District of Indiana, alleges that Defendant Bake Me A Wish infringed the copyright of Philpot's photograph of Willie Nelson, Certificate No. VAu 1-132-411, which was issued by the U.S. Copyright Office.

On October 4, 2009, Plaintiff Philpot photographed Willie Nelson during a performance in St. Louis, Missouri. In an effort to increase his marketability and reputation and to gain more work, on May 31, 2011, Philpot made the photograph of Nelson generally available through Wikimedia under the Creative Commons Attribution 2.0 Generic license ("CC BY 2.0"). Philpot asserts that CC BY 2.0 requires a licensee to (a) reference CC BY 2.0 with every copy of the photo used and (b) provide attribution in the manner specified by the author. He claims that these requirements applied to republication of his copyrighted photo of Nelson.

Philpot states that Bake Me A Wish owns and operates the website www.bakemeawish.com and a related Facebook page and that those websites are used to generate business. Defendant Bake Me A Wish is accused of placing a copy of the Nelson photo on its Facebook page on April 30, 2013 without displaying the proper attribution to Philpot.

In the copyright complaint, filed by Philpot acting as a pro se litigant, the following claims are made:

• Count I: Copyright Infringement and Unfair Competition
• Count II: Unauthorized Distribution of Copyrighted Material
• Count III: Removal of Identifying Information

Philpot asks the court for an injunction, damages, costs and attorneys' fees.

Practice Tip #1: This complaint suffers from a number of legal and factual deficiencies. Among them is that Philpot simultaneous admits that Bake Me A Wish removed the content when requested and also alleges not only willful conduct but ongoing willful conduct. The allegation of ongoing willful conduct is made by Plaintiff in support of his contention that Defendant's conduct entitles him to the maximum statutory damages allowable. Statutory damages may be awarded in a sum not less than $750 or more than $30,000 for each finding of infringement. A determination of willful copyright infringement permits the court in its discretion to increase the award of statutory damages up to $150,000 per infringement.

Practice Tip #2: Defendants who fail to appear run a significant risk of having a default judgment entered against them. There is a significant disparity in the dollar amount awarded in default judgments against defendants in copyright infringement cases. In two separate cases, Judge William T. Lawrence ordered defendants who failed to appear to pay $20,000 for the copyright infringement that was deemed to have been admitted by the defendants' failure to defend against the allegations. See here and here. However, in a similar case, Judge Jane Magnus-Stinson ordered an entry of default judgment against a defendant for $151,425, the full amount requested.

Overhauser Law Offices, the publisher of this website, has represented several hundred persons and businesses regarding copyright infringement and similar matters.

Continue reading "Indiana Copyright Litigation: Bake Me A Wish Sued for Copyright Infringement" »

August 22, 2014

Indiana Patent Litigation: Kimball International Sues Westin-Nielsen for Infringement of Two Design Patents

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Indianapolis, Indiana - Indiana patent attorneys for Kimball International, Inc. of Jasper, Indiana commenced intellectual property litigation in the Southern District of Indiana alleging that NWN, Inc., d/b/a Westin-Nielsen, infringed Design Patent Nos. D654,718 for a "Side Chair" and D665,188, also for a "Side Chair." These design patents have been issued by the U.S. Patent Office.

Kimball, a furniture design and manufacturing company that has operated for over four decades, asserts that Westin-Nielsen's "Cascade" line of chairs infringes Kimball's intellectual property rights in two design patents. The Cascade line of chairs, named after the Cascade River in northern Minnesota, is designed for plus-sized seating.

At issue in this design patent litigation are United States Design Patent Nos. D654,718 (the "'718 Patent") and D665,188 (the "'188 Patent"). Westin-Nielsen is accused of infringing these patented designs, either directly or contributorily, by making, using, selling, offering for sale, or supplying products such as Westin-Nielsen's Cascade line of chairs. Kimball asserts that Westin-Nielsen will continue to do so unless enjoined.

The complaint, filed by Indiana patent lawyers for Kimball, lists the following counts:

• Infringement of United States Design Patent No. D654,718

• Infringement of United States Design Patent No. D665,188

Kimball asks that the court:

• Adjudge that NWN has infringed the '718 and '188 Patents in violation of 35 U.S.C. § 271;

• Issue preliminary and permanent injunctive relief prohibiting NWN and its agents from infringing the '718 and '188 Patents pursuant to 35 U.S.C. § 283;

• Award Kimball damages for patent infringement, and prejudgment interest and costs against NWN pursuant to 35 U.S.C. § 284;

• Adjudge that NWN's infringement of the '718 and '188 Patents has been deliberate, willful, and wanton;

• Adjudge that NWN's infringement of the '718 and '188 Patents has been exceptional under 35 U.S.C. § 285;

• Treble the damage award under 35 U.S.C. § 284;

• Award Kimball its reasonable attorneys' fees under 35 U.S.C. § 285; and

• Award Kimball the total profits received or derived by NWN from the manufacture, marketing, sale, offering for sale, and/or distribution of products bearing or using any copy or colorable imitation of the '718 and '188 Patents pursuant to 35 U.S.C. § 289.

Practice Tip: The U.S. Supreme Court ruled this year that a trial court may award attorneys' fees in case of patent infringement litigation that it deems "exceptional." These Supreme Court rulings revisiting how "exceptional" is defined may benefit any company which is the target of a questionable patent infringement lawsuit, as trial judges will now have greater latitude to award attorneys' fees in those cases in which they determine that the conduct of the losing party "stands out from others."

Continue reading "Indiana Patent Litigation: Kimball International Sues Westin-Nielsen for Infringement of Two Design Patents" »

August 21, 2014

U.S. Copyright Office Announces Release of Draft of the Compendium of U.S. Copyright Office Practices, Third Edition

This Tuesday Register of Copyrights Maria A. Pallante (pictured) released a public draft of the 

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Compendium of U.S. Copyright Office Practices, Third Edition (the "Third Edition"). The first major revision in more than two decades, the draft presents more than 1200 pages of administrative practices and sets the stage for a number of long-term improvements in registration and recordation policy. It will remain in draft form for approximately 120 days pending final review and implementation, taking effect on or around December 15, 2014.

"The new Compendium is an exhaustive undertaking that explains and reconciles the many legal interpretations, regulations, and procedures of the Copyright Office in administering the copyright law," said Pallante. "At the same time, it provides a necessary and authoritative foundation for ongoing policy and regulatory discussions that are pertinent to the digital era."

While prior publications were largely internally directed, the Third Edition is a comprehensive overhaul that makes the practices and standards of the Office more accessible and transparent to the public. It will serve as a technical manual for staff, as well as a guidebook for authors, copyright licensees, practitioners, scholars, the courts, and members of the general public. As in the past, it will address fundamental principles of copyright law - for example, standards of copyrightability, joint authorship, work for hire, and termination of transfers - as well as routine questions involving fees, records retrieval, litigation documents, and other procedural matters.

Among other improvements, the Third Edition will offer the significant benefits of electronic publication. More than three times the size of the previous edition, it will nonetheless be more navigable than before and allow for a regular schedule of updates. In final form, it will feature hypertext links to cross-referenced material, glossary terms, and statutory and regulatory provisions.

In the years ahead, the Copyright Office will introduce a number of public discussions regarding the application and deposit requirements for many digital works, including websites, software, photographs, e-books, audiovisual works, and musical works, many of which have multiple authors, multiple dates of creation, and multiple dates of publication. A key objective will be creating digital copyright records that are accurate, affordable, and as useful as possible when it comes to the identification of ownership and copyrighted works.

Practice Tip:

The Compendium is the administrative manual of the Register of Copyrights concerning the mandate and statutory duties of the Copyright Office under Title 17 of the United States Code. See 37 C.F.R. § 201.2(b)(7).

The Compendium, Third Edition is the result of more than two and a half years of work. Read acknowledgements. Members of the public may provide feedback on the Compendium at any time before or after the Third Edition goes into effect. See www.copyright.gov/comp3/ for more information.

August 20, 2014

United States Patent Law: Supreme Court Holds Prevailing Defendants in "Unreasonable" Patent Lawsuit Can Be Awarded Legal Fees; Federal Circuit Review Curtailed

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Washington, D.C. - In two related rulings, the United States Supreme Court addressed the standards for granting and reviewing awards of legal fees in patent infringement lawsuits.

In the first matter, Octane Fitness, LLC was sued by Icon Health & Fitness, Inc. At issue was Icon's contention that the use of a particular component in elliptical fitness machines constituted patent infringement. After Octane prevailed, it sought $1.8 million in attorneys' fees. The district court denied these fees and an appeal was taken on the issue.

In its review, the Federal Circuit applied the rule from Brooks Furniture Mfg., Inc. v. Dutailier Int'l, Inc. In Brooks Furniture, the Federal Circuit had defined an "exceptional case," which would warrant an award of legal fees, as one that either involves "material inappropriate conduct" or is both "objectively baseless" and "brought in subjective bad faith." It then rejected Octane's assertion - that attorneys' fees were appropriate because Icon had asserted an unreasonable claim construction - as not falling within the Brooks Furniture definition and declined to overrule the district court's denial of attorney's fees.

In Octane Fitness v. Icon Health & Fitness, Case No. 12-1184, the Supreme Court reversed and remanded. Justice Sotomayor, writing for a unanimous court, said that the Federal Circuit's interpretation of 35 U.S.C. §285 was overly rigid and "superimposes an inflexible framework onto statutory text that is inherently flexible." Instead, the Court held that "an 'exceptional' case is simply one that stands out from others with respect to the substantive strength of a party's litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.

The Court also revised the standard of proof that had been required by the Federal Circuit. In Brooks Furniture, the Federal Circuit had held that §285 requires that parties establish the "exceptional" nature of a case by "clear and convincing evidence." The Supreme Court opined that such a high standard was not supported by the statute. Instead, as patent infringement litigation is generally governed by a preponderance-of-the-evidence standard, that standard was also appropriate for the award of attorneys' fees.

The second patent infringement litigation decided by the Supreme Court pertained to a patent infringement lawsuit filed by Allcare Health management Systems. After Allcare lost in the district court, the district judge awarded $5 million in attorneys' fees to Highmark. The Federal Circuit reviewed the district court's judgment de novo and reversed the award.

In Highmark v. Allcare Health Management Systems, Case No. 12-1163, the Supreme Court reversed the Federal Circuit's reversal, holding that, in light of the traditional framework of review, the Federal Circuit should be more deferential to the trial court on the issue of the award of fees. The Supreme Court stated, "Traditionally, decisions on 'questions of law' are 'reviewable de novo,' decisions on 'questions of fact' are 'reviewable for clear error,' and decisions on 'matters of discretion' are 'reviewable for abuse of discretion.'" The determination of whether a case should be considered to be "exceptional" for the purposes of awarding attorneys' fees is a matter of discretion. As such, it is properly reviewed not de novo but instead for abuse of discretion.

Practice Tip: Under U.S. patent law, a trial court may award attorneys' fees in case of patent infringement litigation that it deems "exceptional." These Supreme Court rulings revisiting how "exceptional" is defined may benefit Google, Apple and other large technology companies, which are often targets of questionable patent infringement lawsuits, as trial judges will now have greater latitude to award attorneys' fees in those cases in which they determine that the conduct of the losing party "stands out from others."

Continue reading "United States Patent Law: Supreme Court Holds Prevailing Defendants in "Unreasonable" Patent Lawsuit Can Be Awarded Legal Fees; Federal Circuit Review Curtailed" »

August 18, 2014

Southern District of Indiana Seeks Comments on Reappointment of Incumbent Magistrate Judge

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Indianapolis, Indiana - The Southern District of Indiana has released a public notice regarding the reappointment of Incumbent Magistrate Judge Craig M. McKee. Magistrate Judge McKee (pictured left) is currently in office at Terre Haute, Indiana, and his current term is set to expire on August 22, 2015.

By law, the Court is required to seek and establish a panel to reconsider the reappointment of Magistrate Judge McKee to a new four-year term. Comments from members of the bar and the public are invited as to the reappointment. All comments should be directed to Laura A. Briggs, Clerk, Attn: Reappointment Panel, United States District Court, 46 East Ohio Street, Room 105, Indianapolis, Indiana 46204 or via email to: localrules@insd.uscourts.gov.

Comments must be received no later than August 29, 2014.

August 15, 2014

Indiana Patent Owners - Beware of Maintenance Fee Scam

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Alexandria, Virginia - The United States Patent and Trademark Office ("USPTO") has repeated its warning about unsolicited communications regarding maintenance fees.

Many patent owners have received unsolicited communications that at first glance appear to be "official" but are not actually from the USPTO. These communications usually contain warnings about the expiration of patents for failure to pay the maintenance fees of the patent. The communications often sound urgent, in hopes that recipients will be intimidated into paying the fees listed, which frequently include the cost to maintain the patent as well as a "service charge" for the third party's trouble.

While maintenance fees must be paid three, seven, and 11 years after the patent issues, a patent owner can pay the fee without the assistance of a third party. In fact, the USPTO has made it possible for a patent owner to pay the fee online easily and securely. Further, if you need assistance with determining when maintenance fees are due, you can check online or contact the USPTO at the Inventor Assistance Center at 1-800-786-9199 for assistance.

Practice Tip: If you receive a letter or an email that you suspect may be deceptive, contact the USPTO via email or telephone at 571-272-8877. Additionally, you can file a complaint with the Federal Trade Commission ("FTC"). The FTC will not resolve individual complaints, but they may initiate investigations and prosecutions based upon widespread complaints about particular companies and business practices.

August 14, 2014

Indiana Patent Infringement Lawsuit: CeraMedic Sues DePuy Orthopaedics

South Bend, Indiana - In conjunction with New York intellectual property co-counsel, 

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Indiana patent attorneys for CeraMedic LLC of Plano, Texas sued in the Northern District of Indiana alleging that DePuy Orthopaedics, Inc. of Warsaw, Indiana ("DePuy") infringed "Sintered AL₂O₃ Material, Process for Its Production and Use of the Material," Patent No. 6,066,584 (the "'584 patent"), which has been issued by the U.S. Patent Office.

The '584 patent relates to the field of ceramics and concerns sintered Al₂O₃ compositions and methods for the use of such material as medical implants or tool material. It was issued in May 2000 to Fraunhofer-Gesellschaft zur Förderung der Angewandten Forschung e.V., Germany ("Fraunhofer"), Europe's largest application-oriented research organization. CeraMedic states that Fraunhofer, the assignee of over 1,500 U.S. patents, assigned ownership of the '584 patent to CeraMedic in early 2014.

CeraMedic indicates that non-party CeramTec GmbH ("CeramTec") developed and manufactures BIOLOX Delta, an aluminum oxide matrix composite ceramic consisting of approximately 82% alumina (Al₂O₃), 17% zirconia (ZrO₂), and other trace elements.

CeraMedic then states that Defendant DePuy "designs, develops, manufactures, offers for sale, sells, uses, distributes, and markets hip implants, many of which include" CeramTec's BIOLOX Delta and that such actions constitute infringement of the '584 patent. DePuy is accused of infringing the '584 patent directly, literally, and/or by equivalents.

The complaint, filed by New York patent attorneys in conjunction with Indiana patent lawyers, lists a single count: infringement of the '584 patent. CeraMedic asks the court for a judgment against DePuy determining that DePuy has infringed and continues to infringe one or more claims of the '584 patent; enjoining DePuy and its agents from further infringing the '584 patent; ordering DePuy to account for and pay to CeraMedic all damages suffered by CeraMedic as a consequence of DePuy's alleged infringement of the '584 patent, together with interest and costs; trebling or otherwise increasing CeraMedic's damages under 35 U.S.C. § 284 upon a finding that the asserted infringement by DePuy of the '584 patent was deliberate and willful; and declaring that this case is exceptional and awarding to CeraMedic its costs and attorneys' fees in accordance with 35 U.S.C. § 285.

Practice Tip: DePuy Orthopaedics Inc. has been involved in similar Indiana patent infringement litigation before. See, e.g.:

Howmedica Osteonics Corp. and Stryker Ireland Ltd. Sues DePuy Orthopaedics Inc.
for Patent Infringement of a Surgical Implant Used in Hip Replacement Procedures

Orthopaedic Hospital Seeks Injunction and Damages for Patent Infringement

Continue reading "Indiana Patent Infringement Lawsuit: CeraMedic Sues DePuy Orthopaedics" »

August 13, 2014

Indiana Patent and Trade Dress Litigation: Polymer Technology Systems Asserts Patent and Trade Dress Infringement of Its Cholesterol Testing Technology

Indianapolis, Indiana - Indiana patent attorneys for Polymer Technology Systems, Inc. ("PTS") of Indianapolis, Indiana filed an intellectual property lawsuit in the Southern District of Indiana alleging that Jant Pharmacal Corporation of Encino, California ("Jant") Infopia America LLC of Titusville, Florida ("Infopia USA") and Infopia Co., Ltd. of Kyunggi, Korea ("Infopia 

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Korea") infringed "Method for determining HDL concentration from whole blood or plasma," Patent No. 7,087,397, which was issued by the U.S. Patent Office. PTS has also accused Defendants of federal unfair competition under the Lanham Act.

PTS develops, manufactures and sells point-of-care diagnostic products for the human healthcare market. At issue in this Indiana litigation is PTS's "CardioChek® Multi-Analyte Strip," a hand-held, point-of-care testing system that can test for total cholesterol, high-density lipoproteins (HDL) and triglycerides with a single drop of blood. In August 2006, Patent No. 7,087,397 ("the '397 Patent") was issued to PTS. PTS indicates that this patent includes a significant portion of the technology embodied in this Indiana invention.

Defendant Infopia Korea has also developed a test strip that tests for total cholesterol, high-density lipoproteins and triglycerides. This system is branded as the LipidPlus Lipid Profile Test Strip. PTS contends that Infopia Korea imports the LipidPlus testing strip into the United States and that Defendants Infopia USA and Jant offer and sell the LipidPlus product in the U.S. market.

PTS alleges that much of the technology incorporated into the LipidPlus testing strip is copied from PTS's CardioChek product. It contends that the copied aspects include the concept of the testing strip itself, the analytes selected for analysis, the structure of the strip and the chemistries used. PTS also contends that Defendants have copied the trade dress of PTS's CardioChek testing strip. PTS further accuses Defendants of offering the LipidPlus testing strip at a price that is both extremely low and below cost.

In its complaint, filed by Indiana trade-dress and patent lawyers, PTS alleges the following:

• Count I: Patent Infringement of the '397 Patent

• Count II: Violation of the Lanham Act, 15 U.S.C. 1125(a)

PTS asks the court:

• for a judgment that the '397 Patent is valid and enforceable;

• for a judgment of direct or indirect infringement, or inducement to infringe, by Defendants;

• to declare that Defendants have unfairly competed with PTS by infringing and misappropriating PTS's trade dress;

• for an award to PTS of lost profits and a reasonable royalty for Defendants' acts of patent infringement and trade-dress infringement;

• to treble the award of damages pursuant to a finding of willful, intentional and deliberate infringement;

• for an injunction prohibiting Defendants from engaging in acts of infringement or unfair competition; and

• for a declaration that the case is exceptional and an award of attorneys' fees.

Practice Tip: The United States Supreme Court addressed the elements required for trade dress to be protected in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). In Two Pesos, the Court held that, to establish a cause of action for trade dress infringement, a plaintiff must establish that (a) the design is non-functional; (b) the design is inherently distinctive or distinctive by virtue of having acquired secondary meaning; and (c) there is a likelihood of confusion.

Continue reading "Indiana Patent and Trade Dress Litigation: Polymer Technology Systems Asserts Patent and Trade Dress Infringement of Its Cholesterol Testing Technology" »

August 11, 2014

Consumers May No Longer Have to Fear Copyright Litigation Resulting from Unlocking Cell Phones

Washington D.C. - The Leahy-Grassley cell phone unlocking bill has been signed into law.cellphonespicture.jpg The House unanimously passed bipartisan legislation recently that would restore the ability of consumers to more easily transfer their cell phones to other wireless carriers, just one week after the Senate approved the same measure. Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) and Ranking Member Chuck Grassley (R-Iowa) coordinated with House Judiciary Committee Chairman Bob Goodlatte (R-Va.) and Ranking Member John Conyers Jr. (D-Mich.) on the issue. The lawmakers praised Congress's action to pass the pro-consumer bill, which was signed by President Obama on August 1, 2014.

The legislation approved by the House, which the Senate unanimously approved, reinstates a 2010 rulemaking by the Librarian of Congress so that consumers can transfer, or "unlock," their cell phones without running afoul of copyright laws. It also directs the Librarian of Congress to consider whether other wireless devices, like tablets, should be eligible for unlocking.

The chairmen and ranking members of the Senate and House Judiciary Committees began working together on the issue last year after more than 100,000 consumers signed a "We the People" petition calling for a change in cell phone unlocking law. 

"I thank the House for moving so quickly on the bill we passed in the Senate last week and for working in a bipartisan way to support consumers. The bipartisan Unlocking Consumer Choice and Wireless Competition Act puts consumers first, promotes competition in the wireless phone marketplace, and encourages continued use of existing devices," Leahy said. "Once the President signs this bill into law, consumers will be able to more easily use their existing cell phones on the wireless carrier of their choice." 

With today's House passage of the bipartisan Unlocking Consumer Choice and Wireless Competition Act, this important legislation is headed to the President for his signature," Goodlatte said. "This law will protect consumer choice by allowing flexibility when it comes to choosing a wireless carrier. This is something that Americans have been asking for and I am pleased that we were able to work together to ensure the swift passage of legislation restoring the exemption that allowed consumers to unlock their cell phones."

"The cell phone unlocking bill has a direct impact on Americans as we become more reliant on our wireless devices. This bipartisan bill is pro-consumer and pro-competition and allows for greater ease in the portability of devices. It will provide greater competition and more consumer choice," Grassley said. "I appreciate the House's quick action and look forward to the President signing this bipartisan bill."

"House passage of the Unlocking Consumer Choice and Wireless Competition Act now ensures this important bipartisan legislation will be signed into law without further delay and consumers can engage in the phone marketplace flexibly," Conyers said. "During these tough economic times, consumers deserve to have options in what carriers they choose and what phones they want to use. I applaud the truly bipartisan efforts of both the Senate and House Judiciary Committees in getting this bill to the President's desk."

An outline of the Unlocking Consumer Choice and Wireless Competition Act can be found here, and text of legislation can be found online.

Practice Tip: This legislation was initiated by a digital petition on the White House's We the People site, an online platform where citizens can offer ideas for the government to take action on important issues facing our country. A digital rights activist submitted a simple request: restore an exception to the law to let consumers take their mobile phone to the carrier that best suits their needs by "unlocking" the device.

August 7, 2014

Patent Office Issues 208 Patents To Indiana Citizens in July 2014

The U.S. Patent Office issued the following 208 patent registrations to persons and businesses in Indiana in July 2014, based on applications filed by Indiana patent attorneys:

PAT. NO. Title
D709,765 Shaker lid 
8792221 Electrical protection circuitry for a docking station base of a hand held meter and method thereof 
8791790 System and method for accessing a structure using a mobile device 
8791342 Soybean cultivar 21202 
8791340 Soybean cultivar 76983 
8791333 Soybean variety 20872NNR2Y 
8791193 Non-black rubber membranes 
8791135 Nonpeptide HIV-1 protease inhibitors 
8791048 Herbicidal compositions comprising 4-amino-3-chloro-5-fluoro-6-(4-chloro-2-fluoro-3-methoxyphenyl) pyridine-2-carboxylic acid or a derivative thereof and clomazone 

Continue reading "Patent Office Issues 208 Patents To Indiana Citizens in July 2014" »

August 7, 2014

Indiana Trademark Litigation: Rieke Corporation Sues Riekes Packaging Corporation for Trademark Infringement

Fort Wayne, Indiana - An Indiana trademark attorney for Rieke Corporation d/b/a Rieke Packaging Systems of Auburn, Indiana sued in the Northern District of Indiana alleging that Riekes Packaging Corporation of Nebraska infringed the trademark Rieke Packaging Systems®, Trademark No. 2742836, which has been registered by the U.S. Trademark Office.

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Plaintiff Rieke Corporation states that it is one of the largest manufacturers of packaging components in the world. Its product line includes pumps, foamers, and sprayers for household dispensers as well as plastic and steel closures, caps, drum and pail enclosures, rings and levers for the industrial market. These products are used to store, transport, process and dispense various products in the agricultural, beverage, food, household products, industrial, medical, nutraceutical, personal care and pharmaceutical markets.

Plaintiff asserts that it has spent a considerable amount of money establishing the "Rieke Packaging Systems" trade name and trademark in the minds of customers as a source of high-quality and reliable packaging dispensers and closures. It claims that the trade name and trademark have become associated in the minds of purchasers with Plaintiff as "one of the largest and most reputable manufacturers and distributors of high quality and reliable packaging dispensers and closures in the world."

Defendant Riekes Packaging Corporation has been manufacturing and selling packaging components since the corporation's formation in 2012, according to Plaintiff. Rieke Corporation indicates that the "Riekes Packaging Corporation" name is shown on Defendant's glass bottles, plastic bottles, plastic closures, caps, metal closures, dispensing closures and systems, tubes and other similar goods.

In this Indiana trademark lawsuit, Rieke Corporation accuses Riekes Packaging Corporation of knowing, deliberate, and intentional violations of Plaintiff's trademark rights, stating Defendant's use of the "Riekes Packaging Corporation" trade name or trademark with or on its products is likely to cause confusion in the marketplace regarding whether there is an association between Plaintiff and Defendant and as to the source or origin of Defendant's goods. In their complaint, filed by an Indiana trademark lawyer, Plaintiff lists the following counts:   

  • Count I-rademark Infringement under the Lanham Act
  • Count II-Unfair Competition under Section 43(a) of the Lanham Act
  • Count III-Common Law Trademark Infringement and Unfair Competition

 Rieke Corporation asks the court to:

     • enjoin Defendant and its agents from using "Riekes Packaging Corporation" as business name; in connection with sales or other commercial activities; or in a way that would be likely to lead others to believe that Defendant or its products were connected with Plaintiff; 

     • enjoin Defendant from engaging in any other activity that would constitute unfair               competition; 

     • direct Defendant to recall infringing materials; 

     • declare that Defendant's use of "Riekes Packaging Corporation" in connection with the   sale of packaging products and components constitutes trademark infringement under the Lanham Act and the common law of the state of Indiana; 

    • direct that Defendant cancel or otherwise modify any trademark applications containing the "Riekes Packaging Corporation" name; and

    • award to Rieke Corporation damages, including enhanced damages, costs and attorney's fees.

Practice Tip: Under U.S. trademark law, trademarks that are primarily surnames, or which consist of a surname and other material that is not registrable as a trademark, are treated the same as descriptive trademarks. Thus, the trademark will not be protected as intellectual property until it has achieved secondary meaning through advertising and/or use over an extended period of time. Once that surname has acquired secondary meaning, it may be protectable as a trademark and others can be prevented from using the trademark on confusingly similar goods, even if that person has the same last name. So, for example, Joe McDonald could expect a legal challenge - presumably one that would succeed - if he opened a restaurant named "McDonald's," despite that "McDonald" is his last name. 

Continue reading "Indiana Trademark Litigation: Rieke Corporation Sues Riekes Packaging Corporation for Trademark Infringement" »

August 4, 2014

Indiana Patent Litigation: Tippmann Family Dispute Regarding Patent Ownership and Validity Escalates to Litigation

Fort Wayne, Indiana - Indiana patent attorneys for Vincent P. Tippmann, Sr. Family, LLC and Tippmann Refrigeration, Inc., both of Fort Wayne, Indiana, filed an intellectual property lawsuit in the Northern District of Indiana against Gerald Tippmann of Fort Wayne, Indiana to correct ownership of Patent No. 8,220,287, "Apparatus and Method for Blast Freezing or Thawing A Product," which was issued by the U.S. Patent Office. In addition to listing requests regarding inventorship, this Indiana patent lawsuit asks the court to, in the alternative, grant a judgment under Indiana State law of negligent misrepresentation and constructive fraud on the part of Defendant, Gerald Tippmann, and for associated relief and damages.

PatentPicture08042014.bmpVincent P. Tippmann Sr. Family, LLC ("Tippmann Family, LLC") claims ownership of the patent-in-suit, a technology that facilitates rapid and efficient freezing and thawing of food products. It also indicates that it is the inventing and owning company of various patents and patent applications related to apparatuses and methods for blast freezing and/or thawing of products.

Rapid freezing was historically done in blast freezers, which are expensive and result in irregular freezing rates across arranged product stacks. Plaintiffs assert that Defendant Gerald Tippmann and Vincent P. Tippmann Jr. (presumably an employee of Tippmann Family, LLC) were the first to recognize, and jointly design, test and reduce to practice a new method and system for freezing and thawing boxes or pallets of a commodity more efficiently and rapidly through the strategic arrangement of product boxes and pallets to create a directional airflow.

This Indiana patent litigation concerns that invention, U.S. Patent No. 8,220,287 (the "'287 Patent"), for which Tippmann Family, LLC is the assignee. According to Plaintiffs, the inventor declaration for the patent-in-suit that was signed by Gerald Tippmann averred that he and Vincent P. Tippmann Jr. were co-inventors and that the invention "was not in public use or on sale in the United States of America more than one year prior to filing this application."

In May 2012, Gerald Tippmann left the employ of Tippmann Refrigeration, and became associated with Tippmann Construction, LLC ("Tippmann Construction"), a competitor of Tippmann Family, LLC. The owners of the Tippmann Family, LLC and the competing Tippmann Construction are relatives.

In June 2013, Gerald Tippmann and the Indiana patent lawyer for Tippmann Construction prepared a supplemental inventor declaration and disclosure statement to "clarify" statements Gerald Tippmann had made in his previous disclosures in the Tippmann Family, LLC applications. According to Plaintiffs, this supplemental declaration directly contradicts all previous declarations made by Gerald Tippmann with regard to his joint inventorship with Vincent P. Tippmann Jr., especially including its assertions that Gerald Tippmann was the sole inventor of the patent-in-suit.

In this supplemental declaration, Gerald Tippmann also indicates that he had been "mistaken" regarding the initial public display of the invention. Specifically, he claims that he had commercialized and publically used the underlying invention while in the employ of an unrelated Florida company called Citrus World on or about 1996-97.

The complaint, filed by Indiana intellectual property counsel, lists the following causes of action:

• Declaratory Judgment of Joint Inventorship, Correction of Inventorship under 35 U.S.C. § 256
• Negligent Misrepresentation under Indiana State Law
• Constructive Fraud under Indiana State Law

Plaintiffs ask that the court:

(a) Find that Gerald Tippmann and Vincent P. Tippmann Jr. are the true inventors of the '287 Patent;
(b) Find that Gerald Tippmann's actions at Citrus World were an experimental use, not a public use or a commercialization, and that the invention was not ready for patenting at that time;
(c) Estop Gerald Tippmann from declaring the assertions set forth in his Declaration in the related continuation and divisional applications associated with the '287 Patent and any future related patents that he has assigned to the Tippmann Family, LLC;
(d) Award to Tippmann Family, LLC all costs and attorney's fees;
(e) Alternatively to (a)-(d), find that Gerald Tippmann has committed negligent misrepresentation with respect to the actions described above, and that the Tippmann Family, LLC be awarded costs, attorney's fees, and damages; and
(f) Alternatively to (a)-(d), find that Gerald Tippmann has committed constructive fraud with respect to the actions described above, and that the Tippmann Family, LLC be awarded costs, attorney's fees, and damages.

Practice Tip: Public disclosure - as Gerald Tippmann has apparently claimed - is often, but not always, a bar to patentability. Indiana inventors are advised to consult with an Indiana patent lawyer to determine whether their invention(s) can be protected under U.S. patent law.

Continue reading "Indiana Patent Litigation: Tippmann Family Dispute Regarding Patent Ownership and Validity Escalates to Litigation" »

August 1, 2014

183 Trademark Registrations Issued to Indiana Companies in July 2014

The U.S. Trademark Office issued the following  183 trademark registrations to persons and businesses in Indiana in July 2014 based on applications filed by Indiana trademark attorneys:

Reg. Number Word Mark Click to view
86188876 SABOTAGE View
86158448 PL"8"TED View
86151387 KINGFISHER View
86146172 TURTLEBACK View
86134928 TEAM FILM View
86133861 THE TRAVEL ADDICT View
86133176 COMPASSION KEY View
86126781 BAD MAMMA JAMMA FITNESS View
86121883 IRONWOOD BREWING CO View
86120959 TOTAL DENT & HAIL RESTORATION LLC HAIL YES WE CAN FIX IT! View

Continue reading " 183 Trademark Registrations Issued to Indiana Companies in July 2014" »

July 31, 2014

Indiana University Maurer School of Law Added to USPTO Law School Clinic Certification Pilot Program

Indianapolis, Indiana - The U.S. Department of Commerce's United States Patent and220px-IUB_-_Law_School_-_P1100601.jpg Trademark Office ("USPTO") yesterday announced the selection of 19 law schools, including Indiana University Maurer School of Law, that will join the USPTO's Law School Clinic Certification Pilot Program this fall. Indiana University Maurer School of Law (pictured) and four other law schools will join both the Patent and Trademark portions of the Program, four law schools will join the Patent portion of the Program, and ten law schools will join the Trademark portion of the Program. These law schools join the 28 law schools currently participating in the Program.

The selection committees chose these schools based on their solid intellectual property curricula, pro bono services to the public, and community networking and outreach. The Program enables law students to practice patent and/or trademark law before the USPTO under the guidance of an approved faculty clinic supervisor.

"Expanding the USPTO's Law School Clinic Certification Pilot Program will provide more students - future intellectual property lawyers - with the real-world experience and tools crucial to tackle the complexities of today's IP law landscape," said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee. "The addition of law schools and students in the program will also increase pro bono representation to American businesses and entrepreneurs, thereby helping ensure they have the resources to grow, create jobs and compete globally."

The other law schools selected to participate in the Patent Program are: Brooklyn Law School; Lincoln Law School; New York Law School; South Texas College of Law; Southern Methodist University School of Law; Texas A&M University School of Law; University of California, Los Angeles School of Law; and University of Detroit School of Law.

The other law schools selected to participate in the Trademark Program are: Lewis and Clark College School of Law; Lincoln Law School; Loyola University Chicago School of Law; Northwestern University School of Law; Roger Williams University School of Law; Saint Louis University School of Law; Southern Methodist University School of Law; Texas A&M University School of Law; The John Marshall Law School; University of California, Los Angeles School of Law; University of Idaho School of Law; University of North Carolina at Chapel Hill School of Law; University of Tennessee School of Law; and Western New England University School of Law.

Practice Tip #1:

The Law School Clinic Certification Pilot program is helping to develop the next generation of Indiana patent and trademark attorneys by allowing law students enrolled in a participating law school's clinic program to practice intellectual property law before the USPTO under the strict guidance of a law school faculty clinic supervisor. The program currently consists of students practicing in both patent and trademark law before the USPTO. The program is administered by the Office of Enrollment and Discipline. The Director of the Office of Enrollment and Discipline grants the law students limited recognition to practice before the Office.

Students gain experience drafting and filing either patent applications or trademark applications for clients of the law school clinic. Further, as they are authorized to practice before the USPTO, they gain experience answering Office Actions and communicating with either patent examiners or trademark examining attorneys for the applications they have filed.

Practice Tip #2: In 2012, the Notre Dame Law School's Intellectual Property and Entrepreneur Clinic was selected to take part in an earlier phase of the USPTO's Patent Law School Clinic Certification Pilot Program. It currently participates in both the Patent Program and the Trademark Program.

July 30, 2014

Indiana Trade Secret Law: Removing Allegation of Theft of Trade Secrets Results in Defendants' Release from "Lockdown"

secret-300x237.jpgIndianapolis, Indiana - In 2013, a federal indictment including counts of theft of trade secrets belonging to Eli Lilly and Company ("Lilly") was presented to the Southern District of Indiana. On the basis of this indictment, the court ordered Defendants Guoqing Cao and Shuyu Li, formerly employed by Eli Lilly and Company, to be detained at housing provided by Volunteers of America - Indiana ("VOA"), pending their criminal trial. When the 2013 indictment was superseded by a second indictment that did not include counts for the theft of trade secrets, the court granted Defendants' request to be released to home detention.

On August 14, 2013, Defendants Cao and Li, two doctoral-level scientists formerly employed by Lilly, were charged with multiple counts of theft. At issue was intellectual property belonging to Lilly valued at $55 million. Counts one through three of the indictment, as well as counts five through ten, were listed as theft of trade secrets and aiding and abetting. Count four alleged conspiracy to commit theft of trade secrets.

In the initial proceedings, the United States maintained that the Defendants were traitors who had conveyed "American trade secrets" - specifically, "crown jewels" in the form of many millions worth of intellectual property belonging to Lilly - to Jiangsu Hengrui Medicine Co., Ltd., a company located in Shanghai, China. These arguments strongly impacted the court's decision to order "lockdown" detention at the VOA.

A second indictment was later filed by the United States. Under the new indictment, the Defendants faced no charges of trade-secret theft. Instead, they were charged with one count each of wire fraud, aiding and abetting, and conspiracy to commit wire fraud. Based on the absence of allegations relating to trade-secret theft in the subsequent indictment, the Defendants asked the court to modify the terms of their detention.

The court was persuaded that such a change was warranted. It noted that there was "a difference between allegations of 'theft of trade secrets' and disclosure of 'Lilly Property.'" It further stated that the earlier allegation - that Lilly's "crown jewel" secrets had been stolen and provided to China - had been a critical factor in justifying the Defendants' incarceration.

When the allegations of trade secret misappropriation were removed, the court found that those justifications were no longer applicable: "No longer are the Defendants accused of stealing 'trade secrets'--those words are found nowhere in the superseding indictment" and released the Defendants from lockdown to the less-restrictive conditions of home detention.

Practice Tip #1: Nine Lilly trade secrets pertaining to pharmaceuticals under development for cardiovascular disease, diabetes and cancer were at issue in this Indiana criminal prosecution for theft of intellectual property.

Practice Tip #2: Defendants' home detention restricts individuals to their residence at all times except for employment; education; religious services; medical, substance abuse, or mental health treatment; attorney visits; court appearances; court-ordered obligations; or other activities approved in advance by the pretrial services office or supervising officer. Defendants were also ordered not to access or use any internet-enabled device with the exception of utilizing email to communicate with counsel.

Continue reading "Indiana Trade Secret Law: Removing Allegation of Theft of Trade Secrets Results in Defendants' Release from "Lockdown"" »