December 24, 2013

Innovations in Santa Detection Proliferate for Both National and Personal Uses

For over 50 years, the North American Aerospace Defense Command ("NORAD") and itspicture-1.bmp predecessor, the Continental Air Defense Command, have tracked Santa's flight around the world. Their high-technology approach includes not only radar and satellites in geo-synchronous orbit but also the recent additions of strategically placed SantaCams and jet pilots flying F-15s, F-16s and F-22s to escort Santa as he delivers presents to children on the "nice" list worldwide.

However, as technologically advanced as NORAD's equipment is, it lacks the precision that some children desire. It is, after all, one thing to know that Santa is in your city. It is another thing entirely to receive notification of Santa's arrival in your house.

As a result, even as NORAD finalizes this year's preparations to track Santa, enterprising children have turned to some recent innovations to fill this gap. Among them is the "Santa Claus Detector," U.S. Patent No. 5,523,741. This invention includes a pin in the toe of the Christmas stocking, as illustrated in Figures 2 and 4.

After this stocking is hung by the chimney with care, the pin in the stocking is attached with a cord to another decoration hung on the other side of the chimney. This configuration would result in a layout similar to the following:

picture-2.bmpWhen Santa enters the house to deliver presents, he will walk through the cord. In doing so, he will pull the pin from the stocking. That, in turn, will break the electrical circuit in the stocking which will cause the stocking to emit auditory and visual alarms, thus announcing the arrival of Santa.

Practice Tip #1: Children considering employing this device may wish to consider the possibility that the implementation of such Santa-detection measures may result in a removal from the "nice" list.

Practice Tip #2: From everyone at Overhauser Law Offices, we wish you happy holidays!

December 23, 2013

CleanTech Adds Three Additional Defendants to Multidistrict Litigation

Indianapolis, Indiana - GS CleanTech Corporation of Alpharetta, Georgia ("CleanTech") has filed complaints against three new Defendants in its ongoing multidistrict litigation in which it asserts infringement of its patented corn-oil-extraction technology. Patent lawyers for gas_pump1.jpgCleanTech sued Homeland Energy Solutions, LLC of Lawler, Iowa ("Homeland") in the Northern District of Iowa. Pacific Ethanol, Inc. of Sacramento, California ("Pacific") was sued in the Eastern District of California. Guardian Energy, LLC of Janesville, Minnesota ("Guardian") was sued in the District of Minnesota. At issue in this litigation are the following: Patent Nos. 7,601,858, Method of Processing Ethanol Byproducts and Related Subsystems; 8,008,516, Method of Processing Ethanol Byproducts and Related Subsystems; 8,008,517, Method of Recovering Oil from Thin Stillage; 8,283,484, Method of Processing Ethanol Byproducts and Related Subsystems; and 8,168,037, Method and Systems for Enhancing Oil Recovery from Ethanol Production Byproducts, which have been issued by the U.S. Patent Office. The cases were transferred to Southern District of Indiana as part of Multidistrict Litigation No. 2181.

This Multidistrict Litigation ("MDL") began with an assertion of patent infringement by CleanTech of Patent No. 7,601,858 (the "'858 patent"), which was issued on October 13, 2009. CleanTech sued numerous Defendants alleging infringement of that patent shortly after its issuance. The Defendants accused of patent infringement in prior litigation include: 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; Adkins Energy, LLC; Little Sioux Corn Processors, LLLP; Little Sioux Corn Processors, LLLP and Western New York Energy, LLC.

Since September 29, 2011, when the court overseeing the MDL issued its order on claim construction with respect to the disputed claims of the '858 patent, patentee CleanTech has further asserted infringement by some of the allegedly infringing Defendants of four additional patents in the '858 patent family: U.S. Patent Nos. 8,008,516 (the "'516 patent"), 8,008,517 (the "'517 patent"), 8,283,484 (the "'484 patent") and, the newest addition, 8,168,037 ("the '037 patent"), (the '858, '516, '517, '484, '037 patents are, collectively, the "'858 patent family" or "the patents-in-suit").

CleanTech claims that the method claimed increases the efficiency and economy of recovering corn oil. 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 one embodiment, the patented method comprises initially processing the whole stillage by mechanically separating (such as by using a centrifugal decanter) the whole stillage into distillers wet grains and thin stillage, and then introducing the thin stillage into an evaporator to form a concentrated syrup byproduct. Prior to recombining the then-concentrated syrup with the distillers wet grains, the syrup is introduced into a second mechanical separator, such as a second centrifuge, which is different from the centrifuge that mechanically separated the whole stillage into distillers wet grains and thin stillage. This second centrifuge separates corn oil from the syrup thereby allowing for the recovery of usable corn oil. The syrup that exits the centrifuge is then recombined with the distillers wet grain and dried in a dryer. The corn oil that is extracted from the syrup can be used for various purposes such as feedstock for producing biodiesel.

Patent attorneys for CleanTech have made different claims against the three new Defendants. All of the patents-in-suit - the '858 patent, the '516 patent, the '517 patent, the '484 patent, and the '037 patent - have purportedly been infringed by Homeland. Guardian has been accused of having infringed four of the five patents-in-suit: the '858 patent, the '516 patent, the '517 patent and the '484 patent. One claim of patent infringement, regarding the '858 patent, has been asserted against Pacific.

Practice Tip: 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.

Continue reading "CleanTech Adds Three Additional Defendants to Multidistrict Litigation" »

December 20, 2013

Indiana University Sues AngioDynamics for Patent Infringement

Indianapolis, Indiana - Patent attorneys for Indiana University Research and Technology Corporation ("IURTC") of Indianapolis, Indiana sued in the Southern District of Indiana alleging that AngioDynamics, Inc. of Latham, New York infringed Patent No. 6,719,717, which has been registered with the United States Patent and Trademark Office ("USPTO"). This Indiana patent has a publication date of April 13, 2004.

patent-picture.bmpIURTC is a not-for-profit corporation that fosters collaboration between Indiana University faculty and researchers and private industry through the licensing of technology. IURTC states that its goals include acting as a resource for researchers, for industry and for Indiana.

AngioDynamics was founded in 1988. It seeks to provide benefits to patients through the designing, developing, manufacturing and marketing of innovative therapeutic devices used by interventionalists and surgeons for the minimally invasive treatment of peripheral vascular disease, tumor therapy and other, non-vascular disease.

IURTC, via its patent attorneys, is suing AngioDynamics for patent infringement under 35 U.S.C. § 101, et seq. The patent at issue is Patent No. 6,719,717 (the "'717 Patent"), which relates to thrombectomy treatment systems and methods. IURTC states that, by assignment, it is the current owner of all rights, title, and interests in the '717 Patent, including the right to enforce the patent.

The products accused of infringing IURTC's patent (the "Accused Products") are allegedly manufactured by Vortex Medical, Inc., a wholly owned subsidiary of AngioDynamics. IURTC contends that AngioDynamics has made and/or currently imports, sells, offers to sell, and/or uses the Accused Products. It also asserts that AngioDynamics provides instructions and directions on how to use the Accused Products to doctors, and other medical personnel.

IURTC further claims that AngioDynamics has known of the '717 Patent since at least the date of its issuance by the USPTO. It contends that, as a result, AngioDynamics' infringement of the '717 Patent has been and continues to be willful and deliberate.

Patent lawyers for IURTC filed a complaint alleging a single count of patent infringement. The complaint contends that AngioDynamics is currently infringing and has infringed the '717 Patent directly by, without authority, having made and/or currently importing into the United States, and/or using, selling, and/or offering for sale the Accused Products, which embody the inventions claimed in the '717 Patent. It also claims that AngioDynamics is actively, intentionally, and/or knowingly inducing infringement of the '717 Patent by others, including doctors,and other medical professionals, and is thus liable to IURTC pursuant to 35 U.S.C. § 271(b).

IURTC has asked that the court enter judgment:

A. Finding that U.S. Patent No. 6,719,717 is valid, enforceable, and infringed by AngioDynamics, and that AngioDynamics is liable for inducement of infringement and contributory infringement of the '717 Patent;
B. Entering a permanent injunction against AngioDynamics, enjoining it, its respective directors, officers, agents, employees, successors, subsidiaries, assigns, and all persons acting in privity or in concert or participation with AngioDynamics from making, using, selling, or offering for sale in the United States, or importing into the United States, any and all products and/or services embodying the patented inventions claimed in the '717 Patent;
C. Holding that AngioDynamics acted willfully in causing damage to IURTC;
D. Awarding IURTC such damages to which it is entitled, pursuant to 35 U.S.C. § 284;
E. Awarding IURTC enhanced damages, pursuant to 35 U.S.C. § 284;
F. Awarding IURTC pre-judgment and post-judgment interest as allowed by law; and
G. Awarding IURTC its costs, expenses, and fees, including reasonable attorneys' fees, pursuant to 35 U.S.C. § 285.

Practice Tip:

Universities today often own sizeable portfolios of patents and can earn substantial royalties from licensing those patents. To maintain that revenue, most universities seek ownership of the inventions created by their employees, typically by having the employee assign the intellectual property rights to the university. Moreover, if federal funds were used to pursue the research leading to the invention, universities are required under the Bayh-Dole Act to obtain ownership of the resulting patent.

Substantial legal difficulty can arise when the ownership of a patent is unclear. Such a problem can arise when the duty of an inventor to convey ownership of his or her invention has not been established in advance of the creation of new intellectual property. An Indiana patent attorney can help Indiana inventors determine what rights they have with respect to their inventions.

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December 19, 2013

Former Google Executive Michelle K. Lee Named as Next Deputy Director of the U.S. Patent and Trademark Office

WASHINGTON, D.C. - U.S. Secretary of Commerce Penny Pritzker recently announced the appointment of Michelle K. Lee as the next Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office ("USPTO"). Lee currently serves as the Director of the USPTO's Silicon Valley satellite office and will begin her new role at USPTO headquarters in Alexandria, Virginia on January 13, 2014.

photo-google.bmpWhile Director of the USPTO's Silicon Valley satellite office, Lee has served as the agency's primary liaison with the innovation community in the Silicon Valley and West Coast, leading the establishment of a temporary office in Menlo Park and working creatively with California's Congressional, state, and local leadership to successfully secure a permanent office location in San Jose. In that role, she has also been actively engaged in education and outreach initiatives, empowering the USPTO to more effectively develop programs, policies, and procedures to meet the needs of the West Coast innovation community. Beyond the Silicon Valley office, Lee has also played a broader role in helping shape key policy matters impacting the nation's intellectual property (IP) system, focusing closely on efforts to continually strengthen patent quality, as well as curbing abusive patent litigation. Prior to becoming Director of the Silicon Valley USPTO, Lee served two terms on the USPTO's Patent Public Advisory Committee, whose members are appointed by the U.S. Commerce Secretary and serve to advise the USPTO on its policies, goals, performance, budget and user fees.

"Michelle Lee has proven herself to be a tremendous asset to the USPTO and the Department of Commerce," said Secretary Penny Pritzker. "She has a great mix of skills and experiences to assume this leadership position during a time when the administration is deeply focused on strengthening the nation's intellectual property system. And her years of working in the IP community, both in the private and public sectors, will support the key focus on innovation and the digital economy in the Commerce Department's new 'Open for Business' policy agenda. I look forward to working with her in her new capacity."

An engineer and patent attorney by training, Lee has developed a distinguished career over the past 25 years focused on various key facets of patent law, technology, and innovation policy in private practice, industry, and the executive and judicial branches of the federal government. Prior to joining the USPTO, Lee served as Deputy General Counsel for Google and was the company's first Head of Patents and Patent Strategy. As a patent lawyer, she also served as a partner at the Silicon Valley-based law firm of Fenwick & West, where she specialized in advising a wide range of high-technology clients from start-ups to Fortune 100 companies on all aspects of patent law, intellectual property, litigation and corporate matters. Prior to her career as a legal advisor to technology companies, Lee worked in the federal judiciary, serving as a law clerk for the Honorable Vaughn R. Walker on the U.S. District Court for the Northern District of California and the Honorable Paul R. Michel on the U.S. Court of Appeals for the Federal Circuit. Before building her legal career, Lee worked as a computer scientist at Hewlett-Packard Research Laboratories, as well as at the Massachusetts Institute of Technology ("M.I.T.") Artificial Intelligence Laboratory. She holds a B.S. and an M.S. in electrical engineering and computer science from M.I.T., as well as a J.D. from Stanford Law School.

"I have truly valued my years working with the USPTO, both on the Patent Public Advisory Committee and more recently helping to build a robust USPTO office in the Silicon Valley," Lee said. "One of the best parts of my experience has been working with the talented and hard-working women and men at the USPTO. In my new role, I'm excited to further my service to the agency, the Commerce Department, and the American innovation community."

Upon assuming her role as USPTO Deputy Director, Lee will perform the functions and duties of the USPTO Director, a position that is currently vacant. In accordance with statutory law, she will assume the title of "Acting Director" once President Obama nominates a Director.

After Lee begins her new role in January, John Cabeca, a 25-year veteran of the USPTO, will serve as the Director of the Silicon Valley satellite office until the permanent office in San Jose City Hall becomes operational. Cabeca is currently the Senior Advisor to the Under Secretary for Intellectual Property and Director of the USPTO and a former Semiconductor Technology Center Director. In addition to seeing the office through its build-out and hiring, Cabeca will focus on continuing the strong education and outreach initiatives by assembling a public engagement team that will guide educational programs tailored to the Silicon Valley's unique ecosystem of industries and stakeholders.

December 18, 2013

J & J Sports Sues Cancun Mexican Grill and Its Owner Alleging Illegal Interception

Fort Wayne, Indiana - J & J Sports Productions, Inc. of Campbell, California ("J & J Sports"), via a complaint filed by its intellectual property lawyer, has sued in the Northern District of Indiana alleging that Christine Kotsopoulos, purportedly a managing member of Geo-Joe, LLP, which owns and operates Cancun Mexican Grill, all of Fort Wayne, Indiana, unlawfully intercepted and broadcast "Good v. Evil": Miguel Angel Cotto v. Antonio Margaritio, WBA Super World Light Middleweight Championship Fight Program (the "Program") telecast on December 3, 2011.

sub_banner.jpgJ & J Sports states that it is the exclusive domestic commercial distributor of the Program. It has sued Geo-Joe, as well as Christine Kotsopoulos 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 December 3, 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. It 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, Geo-Joe, which apparently owns the restaurant, Plaintiff has also sued Kotsopoulos alleging that she had the right and ability to supervise the activities of Cancun Mexican Restaurant. J & J Sports asserts that the activities that she supervised included the unlawful interception of Plaintiff's program. J & J Sports contends that Kotsopoulos specifically directed the employees of Cancun Mexican Restaurant to unlawfully intercept and broadcast Plaintiff's program at Cancun Mexican Restaurant or, if she did not, that the actions of the employees of Cancun Mexican Restaurant are directly imputable to Kotsopoulos by virtue of her purported responsibility for the activities of the restaurant.

Kotsopoulos has also been named individually as a result of J & J Sports' contention that she is a managing member of Geo-Joe. J & J Sports further asserts that Kotsopoulos, as an individual specifically identified on the liquor license for Cancun Mexican Restaurant, had an obvious and direct financial interest in the activities of Cancun Mexican Restaurant.

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 J & J Sports.

Practice Tip #1: The interception claim has a two-year statute of limitations, which explains why this complaint was filed on December 2, 2013 almost exactly two years after the broadcast of the Program. J & J Sports initiated 708 lawsuits in 2011 alone. It appears that many of them were also filed near the eve of the two-year anniversary of the broadcast of the program at issue in each individual lawsuit.

Practice Tip #2: J & J Sports has sued two entities: a limited liability company and an individual who is apparently a principal in that company. 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.

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

Continue reading "J & J Sports Sues Cancun Mexican Grill and Its Owner Alleging Illegal Interception" »

December 16, 2013

Cummins Alleges Trademark Infringement and Counterfeiting in Lawsuit

Indianapolis, Indiana - Cummins Inc. of Columbus, Indiana has sued in the Southern District of Indiana alleging counterfeiting, trademark infringement and trademark dilution by T'Shirt Factory of Greenwood, Indiana; Freedom Custom Z of Bloomington, Indiana; Shamir Harutyunyan of Panama City Beach, Florida and Doe Defendants 1 - 10. Defendants are accused of infringing various trademarks, including those protected by Trademark Registration Nos. 4,103,161 and 1,090,272, which have been registered by the U.S. Patent and Trademark Office.

Cummins was founded nearly a century ago and is a global power leader with complementary business units that design, manufacture, distribute and service engines and related Cummins-word-mark.jpgtechnologies, including fuel systems, controls, air handling, filtration, emission solutions and electrical power generation systems. Cummins employs approximately 46,000 people worldwide and serves customers in approximately 190 countries.

Defendants include T'Shirt Factory and Shamir Harutyunyan, who is alleged to be an owner, agent, and/or officer of T'Shirt Factory. Cummins claims that Harutyunyan was personally aware of, and authorized and/or participated in, the wrongful conduct alleged in Cummins' complaint. Freedom Custom Z is also named as a Defendant. Its business purportedly includes the sale of t-shirts, sweatshirts and other apparel upon which logos have been printed or affixed. Doe Defendants 1 - 10, the identities of whom are currently unknown, have also been accused of the illegal acts alleged.

Cummins states that it owns and maintains hundreds of trademark registrations worldwide covering a broad spectrum of goods and services. Among those is Trademark Registration No. 4,126,680, which covers the following goods: "Men's and women's clothing, namely, sweatshirts, hooded sweatshirts, aprons, shirts, sport shirts, jackets, t-shirts, polo shirts, baseball caps and hats, ski caps, fleece caps, headbands, scarves, quilted vests, coveralls, leather jackets, t-shirts for toddlers and children" in International Class 25.

Cummins also asserts that it owns Trademark Registration No. 4,103,161. It indicates that this trademark registration covers the following goods: "Men's and women's clothing, namely, sweatshirts, hooded sweatshirts, aprons, shirts, sport shirts, jackets, t-shirts, polo shirts, baseball caps and hats, ski caps, fleece caps, headbands, scarves, quilted vests, coveralls, leather jackets, t-shirts for toddlers and children" in International Class 25. Cummins also states that it owns Trademark Registration No. 4,305,797, registered for similar goods.

Finally, Cummins claims Trademark Registration Nos. 579,346; 1,090,272 and 1,124,765, which also relate to the Cummins Mark, as its intellectual property.

In December 2013, Cummins employees observed apparel bearing the Cummins Marks offered for sale at kiosks located in the College Mall in Bloomington, Indiana; in the Greenwood Park Mall in Greenwood, Indiana; and in the Castleton Mall in Indianapolis, Indiana.

Trademark lawyers for Cummins have sued in the Southern District of Indiana. Cummins accuses Defendants of having acted intentionally, willfully and maliciously. It makes the following claims in its complaint:

• Count I: Trademark Infringement Under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)
• Count II: Trademark Dilution Under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c)
• Count III: Trademark Counterfeiting Under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1)

Cummins asks 1) for a temporary restraining order allowing inspection and seizure of the accused goods as well as enjoining Defendants from, inter alia, manufacturing or selling items bearing counterfeit Cummins Marks; 2) for preliminary and permanent injunctions prohibiting Defendants from, inter alia, manufacturing or selling items bearing counterfeit Cummins Marks; and 3) that the court order the destruction of all unauthorized goods.

It also asks the court to find that the Defendants 1) have infringed Cummins' trademarks in violation of 15 U.S.C. § 1114; 2) have created a false designation of origin and false representation of association in violation of 15 U.S.C. § 1125(a); 3) have diluted Cummins' famous trademarks in violation of 15 U.S.C. § 1125(c) and 4) have willfully infringed.

Cummins asks for Defendants' profits from the sales of the infringing and counterfeit goods bearing the Cummins Marks; treble actual damages, costs, reasonable attorneys' fees as well as pre-judgment and post-judgment interest.

Practice Tip: Repercussions for counterfeiting are not limited to the damages that can be awarded for civil wrongdoing. Increasingly, defendants who engage in counterfeiting, especially counterfeiting on a large scale or during high-profile events, can find themselves facing criminal charges (see, e.g., an arrest made on allegations of counterfeiting during Super Bowl XLVI) in addition to being sued by the owner of the trademark.

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December 13, 2013

USPTO Seeking Comments on Proposed Rules to Implement Title I of the Patent Law Treaties Implementation Act of 2012

Washington, D.C. - A new law allows applicants to file a single international design application to acquire global protection.

The U.S. Department of Commerce's United States Patent and Trademark Office ("USPTO") recently announced a proposal to amend the rules of practice in patent cases to implement the provisions of Title I of the Patent Law Treaties Implementation Act of 2012 (also known as "PLTIA"). The law, which serves as the implementing legislation for both the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs ("the Hague Agreement") and the Patent Law Treaty, will allow applicants to file a single international design application to acquire global protection.

When the Hague Agreement comes into effect in the United States, U.SPicture.bmp. applicants will be able to file a single application for protection of an industrial design which will have effect in more than 40 territories.

"The ability for American industrial design creators to file a single, English-language application will allow small and medium sized businesses to easily and swiftly acquire design protection in multiple markets," said Commissioner for Patents Margaret A. (Peggy) Focarino (pictured right).

The new provisions will standardize formal requirements for international design applications; establish the USPTO as an office through which international design applications may be filed; provide for substantive examination by the Office of international design applications that designate the United States; provide provisional rights for published international design applications that designate the United States; and set the patent term for design patents issuing from both national design applications and international design applications designating the United States at 15 years from the date of patent grant.

Practice Tip: Patent attorneys seeking further information about the proposed rules and instructions for submitting comments may look here: Federal Register Notice.

December 12, 2013

Redwall Sues ESG for Copyright Infringement

Indianapolis, Indiana - Redwall Live Corp. ("Redwall") has sued ESG Security, Inc. ("ESG") in the Southern District of Indiana alleging copyright infringement, breach of contract and unjust enrichment. Both parties are located in Indianapolis, Indiana. The design at issue in this lawsuit has been registered by the U.S. Copyright Office under Registration No. VA 1-874-872.

Picture.pngRedwall is a consulting and design services firm engaged in the business of strategic branding and advertising. Its services include, but are not limited to, developing a clear message and a unique visual image as well as developing brand value for its clients.

Redwall states that it was engaged by ESG to reinvent ESG's brand. As part of the design plan, Redwall indicates that it created a new logo design for ESG (the "Design") to be utilized on ESG's business cards, letterhead, brochures, and on ESG's website. Redwall asserts that the agreement relating to the creation of the Design required that ESG's business cards and letterhead be printed by Redwall and provided to ESG upon request.

In May 2013, Redwall registered the Design with the United States Copyright Office. A Certificate of Copyright Registration issued by the Register of Copyrights under Registration No. VA 1-874-872.

SBVillage.pngRedwall asserts that, despite its performance in full, ESG has failed to pay to Redwall the remaining balance for the work completed. It also claims that ESG has used and continues to use Redwall's copyrighted Design on a variety of items including, but not limited to, its website and traffic barricades.

Copyright lawyers for Redwall filed a complaint against ESG asserting the following:

• Count I: Copyright Infringement
• Count II: Breach of Contract
• Count III: Unjust Enrichment

Redwall asks the court for findings that ESG committed copyright infringement, breached its contractual obligations to pay for services rendered and were unjustly enriched by such actions; temporary and permanent injunctions against using the Design; damages; impoundment of items containing the copyrighted Design; and attorneys' fees and costs.

Practice Tip: Commissioning someone to create a copyrightable work does not necessarily mean the copyrights in the resulting work are owned by the commissioning party. The commissioning party will only own the work if it is a "work made for hire" under the Copyright Act. A "work made for hire" is usually limited to situations in which there is either an employer-employee relationship or where the work is a contribution to a "collective work." Absent these circumstances, the commissioning party will own the work only if it is expressly assigned to it by the party preparing the work. A commissioning party should usually have a written agreement stating that the party preparing the work assigns its copyrights to the commissioning party.

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December 11, 2013

Project Management Academy Sues Former Instructor for Misappropriation of Trade Secrets

Indianapolis, Indiana - eCity Market, Inc. d/b/a Project Management Academy ("PMA") of Lafayette, Indiana has sued Vaughn Scott Burch ("Burch") and Graywood Consulting Group, Inc. d/b/a Graywood Training Solutions of Leesburg, Virginia (collectively, "Graywood") alleging infringement of its Project Management Professional examination and certification training. This suit was initially filed in Delaware County Circuit Court No. 4 but was removed to the Southern District of Indiana.

PMA offers preparation courses for the Project Managementpicture.png Institute's Project Management Professional ("PMP") examination and certification process. PMA states that Burch was one of its most-trusted PMP course instructors in the Washington, D.C. area and that, in connection with that position, PMA provided him with access to its proprietary manner of conducting its PMP-examination preparation courses. Moreover, PMA claims that it commissioned Burch and Graywood, Burch's company, to draft and prepare as a "work for hire" certain training modules that would be for PMA's exclusive use.

PMA alleges that Burch and Graywood are now teaching PMP courses that are in direct competition with PMA. It also contends that Defendants have stolen PMA's confidential, proprietary and copyrighted materials to further their own course offerings. PMA further indicates that Defendants are violating the non-competition covenants by reproducing PMA's copyrighted materials and are passing them off as their own. Finally, PMA contends that Defendants are attempting to engage in unfair competition with PMA by publishing student testimonials as if they were from Defendants' students when, PMA states, the testimonials were actually given by the students of PMA.

An intellectual property lawyer for PMA filed a complaint alleging the following:

• Count I - Breach of Contract
• Count II - Breach of Duty of Loyalty
• Count III - Misappropriation of Trade Secrets
• Count IV - Theft/Conversion
• Count V - Tortious Interference with Prospective Business Relationship and Advantage
• Count VI - Lanham Act Violations
• Count VII - Unfair Competition

PMA asks for preliminary and permanent injunctions; an order requiring the return of all PMA materials; judgment in favor of PMA on the seven counts listed; damages, including treble and punitive damages; attorney's fees and costs; and interest.

Practice Tip: There has also been a growing trend, perhaps fueled in part by states' difficulties in paying increasing unemployment benefits, to limit via legislation the enforceability of non-compete agreements. Indiana considers non-compete agreements to be in restraint of trade and, thus, construes them narrowly. Among the states that have considered such limitations are Maryland, New Jersey, Minnesota, Massachusetts and Virginia.  However, even in those cases where a non-compete agreement is found to be unenforceable, such a finding will not prevent a party from suing to protect its other rights, such as the intellectual property rights granted under copyright law.

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December 10, 2013

BMI Sues Roadhouse Bar & Grill and Its Owner for Copyright Infringement

Hammond, Indiana - Broadcast Music, Inc. of New York, New York ("BMI"), along with the owners of the copyrights to various musical compositions, have filed a copyright infringement lawsuit in the Northern District of Indiana alleging that Stamper Properties, Inc. d/b/a Roadhouse Bar & Grill and R. Bruce Stamper of Valparaiso, Indiana infringed multiple copyrighted works which have been registered by the U.S. Copyright Office.

Taylor-Swift.bmpBMI 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 compositions on behalf of the copyright owners. The other Plaintiffs in this action own the copyrights to the ten compositions at issue in this lawsuit.

Stamper Properties is an Indiana corporation that operates Roadhouse Bar & Grill, an establishment which is asserted to publicly perform musical compositions and/or cause musical compositions to be publicly performed. BMI contends that Mr. Stamper has the right and ability to supervise the activities of Stamper Properties and that he has a direct financial interest in the company and the restaurant.

BMI and the other Plaintiffs, via this suit filed by a copyright lawyer, have asserted willful infringement of the ten copyrights-in-suit. They further claim that 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. They have asked the court for an injunction against further infringement. Plaintiffs also seek statutory damages pursuant to 17 U.S.C. §504(c) and costs, including reasonable attorneys' fees.

Practice Tip:

Copyright protection is automatic upon creation of an original work, but registration of the copyright is required in order to bring an infringement suit.

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.

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December 6, 2013

Stant Sues Briggs & Stratton for Infringing Its Patented Fuel Cap

Indianapolis, Indiana - Stant USA Corp. of Connersville, Indiana has sued for patent infringement in the Southern District of Indiana alleging that Briggs & Stratton Corp. of Wauwatosa, Wisconsin infringed its Evaporative Emissions Control Fuel Cap, Patent Number 7,261,093, which has been registered by the U.S. Patent and Trademark Office ("USPTO").

Stant designs andpicture.bmp manufactures vapor-management systems, fuel-delivery systems and thermal-management systems. Among its products are fuel caps intended for use as original equipment by automotive manufacturers and other manufacturers, including small engine manufacturers and for use as replacement parts in the aftermarket. Stant has been in business since 1898.

Briggs & Stratton, founded in 1908, holds itself out as the world's largest producer of air-cooled gasoline engines for outdoor power equipment and has annual revenues in excess of $2 billion. The company builds over 9,000,000 engines in the U.S. each year and employs over 3,000 employees in six states.

It is alleged that Stant employees met with Briggs & Stratton employees in 2004 and disclosed to them a fuel cap for use on a lawn mower or other small engine that incorporated carbon to filter the fuel vapor before it escaped to the atmosphere.

On July 21, 2004, Stant filed U.S. provisional patent application no. 60/589,761 directed to an evaporative emissions control fuel cap. On July 19, 2005, Stant filed U.S. utility patent application no. 11/184,474 also directed to an evaporative emissions control fuel cap. Based on these applications, the USPTO issued U.S. Patent No. 7,261,093 ("the '093 patent"). The caps disclosed in these applications are purportedly similar to the caps disclosed to Briggs & Stratton in 2004.

Stant asserts that Briggs & Stratton has made, used, sold and/or offered for sale lawn mower engines that include a fuel cap that incorporates carbon particles to control evaporative emissions. It also contends that the fuel caps made by Briggs & Stratton embody the patented inventions of, and infringe at least claims 1 and 22 of, the '093 patent.

Patent attorneys for Stant ask the court for a permanent injunction; an order directing the destruction of all molds, machines, tooling or other equipment used in the manufacture of Briggs & Stratton's fuel caps; damages, including up to treble damages; costs; fees and prejudgment interest.

Practice Tip: In the United States, an inventor has a grace period of one year from the time an invention is publicly disclosed and the time that a patent application may be filed, if patent protection for that invention is desired. However, many countries have no grace period. It is therefore wise to file a patent application before disclosing an invention publically. If that is not practicable, executing a written non-disclosure agreement prior to disclosure is advisable.

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December 5, 2013

Patent Office Issues 168 Patents To Indiana Citizens in November, 2013

The US Patent Office issued the following 168 patent registrations to persons and businesses in Indiana in November, 2013, based on applications filed by Indiana Patent Attorneys:

Patent No. Title
8,594,760 In vivo analyte monitor with malfunction detection 
8,593,627 Apparatus and method for inspecting the inner surface of a tubular structure for contamination 
8,593,284 System and method for reporting status of a bed 
8,593,021 Coolant drainage system and method for electric machines 
8,592,859 Methods and apparatus for antimonide-based backward diode millimeter-wave detectors 
8,592,775 Radiation detector having a ribbed scintillator 
8,592,756 Systems and methods for transfer of ions for analysis 
8,592,653 Corn event DAS-59122-7 and methods for detection thereof 
8,592,645 Engineered zinc finger proteins targeting plant genes involved in fatty acid biosynthesis 
8,592,617 Redox mediators 

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December 4, 2013

148 Trademark Registrations Issued to Indiana Companies in November, 2013

The US Trademark Office issued the following 148 trademark registrations to persons and businesses in Indiana in November, 2013, based on applications filed by Indiana Trademark Attorneys:

Reg. Number


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December 2, 2013

Wounded Warrior Project Sues Help Indiana Vets for False Advertising, Defamation and Unfair Competition

Indianapolis, Indiana - Wounded Warrior Project, Inc. ("WWP") of Jacksonville, Florida has sued in the Southern District of Indiana alleging that Dean M. Graham and Help Indiana Vets, Inc. ("HIVI"), both of Acton, Indiana, defamed WWP. The lawsuit also asserts that HIVI engaged in false advertising and unfair competition. While this suit did not allege trademark WWP-logo.pnginfringement, it included references to WWP's trademark, U.S. Trademark Registration No. 30014447, which has been registered by the U.S. Trademark Office.

WWP is a Virginia nonprofit corporation, which has been registered with the Internal Revenue Service ("IRS") as a 501(c)(3) nonprofit organization. It was founded in 2003 as a small nonprofit corporation to provide comfort items to service members injured in combat after September 11, 2001. In the years which followed, WWP grew into a complete rehabilitative effort to assist service members injured in combat with both visible and invisible injuries (such as post-traumatic stress disorder, combat and operational stress, and depression) as they recover and transition back to civilian life.

HIVI is believed to be an Indiana nonprofit corporation. WWP indicates that HIVI was founded in April 2013 by Graham. WWP asserts that HIVI's business is to offer financial help to Indiana veterans through donor support as a nonprofit. As such, WWP contends, HIVI is a direct competitor of WWP.

HIVI-Logo.jpgWWP asserts that, over the last decade, it has invested substantial time and resources to develop the WWP mark through national direct-mail campaigns, marketing, corporate product promotions and press releases. WWP indicates that it has received substantial national and local press coverage for its efforts. It claims that its success is due in no small part to the support of the media and celebrities who support WWP. Finally, WWP indicates that, over the last decade, it has received approximately 30 billion media impressions with an estimated publicity value of $500 million. WWP claims that, due to its efforts, the WWP mark has become famous.

This suit is founded upon, inter alia, WWP's contentions that HIVI published false and misleading statements of fact regarding WWP. The assertions allegedly made by HIVI included that Wounded Warrior Project is a fraud and that it is pulling the biggest "Oke Doke" ever pulled on the American public. WWP contends that, on the page containing the purportedly false and misleading statements about WWP, a PayPal link is included so that users of the HIVI site may make charitable donations to HIVI.

WWP further alleges that HIVI has contacted numerous government entities and officials, as well as multiple media outlets, claiming that WWP is a fraud.

Trademark attorneys for WWP assert the following in their complaint against Graham and HIVI:

• Count I: False Advertising - Lanham Act
• Count II: Criminal Deception - Indiana Crime Victims Act
• Count III: Defamation - Indiana Common Law
• Count IV: Unfair Competition - Indiana Common Law
• Count V: Tortious Interference with Business Relationships - Indiana Common Law
• Count VI: Unjust Enrichment - Indiana Common Law

WWP asks the court for a permanent injunction; treble damages under the Indiana Crime Victims Act; an order compelling Defendants to disgorge all financial benefits realized as a result of the alleged wrongful conduct; and an award of costs and attorneys' fees.

Practice Tip: Paul Overhauser was interviewed regarding this unusual lawsuit between nonprofit entities. See here.


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November 29, 2013

U.S. Patent and Trademark Office Selects San Jose City Hall as Permanent Space for Silicon Valley Satellite Office

Washington, D.C. - The U.S. Department of Commerce's United States Patent and Trademark Office ("USPTO") recently announced that the San Jose City Hall building, located at 200 East Santa Clara Street, has been selected as the permanent location for the USPTO's Silicon Valley satellite office. The search for permanent office space was put on hold in July due to sequestration. Generous support and assistance from the City of San Jose, the California State Assembly's Speaker's Office, along with the collective support for the satellite office championed by members of the California congressional delegation, will enable the USPTO to move forward with occupying permanent space in Silicon Valley by the end of 2014.

Days before the selection, U.S. Secretary of Commerce Penny Pritzker outlined her "Open for Business Agenda." Promoting American innovation is a core priority of the Agenda, as Pritzker-photo.jpgtechnology and innovation are key drivers of U.S. competitiveness, wage and job growth, and long term economic growth. The selection of a permanent USPTO office in the Silicon Valley is a key part of the Commerce Department's efforts to boost America's innovation economy.

"A permanent USPTO office in Silicon Valley will help grow the regional innovation ecosystem by empowering entrepreneurs to more readily navigate the nation's intellectual property system," said U.S. Secretary of Commerce Penny Pritzker. "The USPTO plays a crucial role in helping protect the cutting-edge ideas that drive our economy and keep the U.S. globally competitive. The permanent satellite offices help advance the Commerce Department's innovation agenda by helping entrepreneurs get their products to market more quickly, provide resources tailored to the needs of local start-ups, and create good paying, high-skilled jobs."

A permanent West Coast office will enable the USPTO to help more entrepreneurs protect their intellectual property so they can attract capital, put their business plans into action, and help create more jobs. The San Jose City Hall location provides office space for patent examiners and Patent Trial and Appeal Board ("PTAB") judges, a robust examiner training facility, and public hearing rooms for PTAB proceedings, including its trial proceedings, which clarify the quality and certainty of a patent right and serve as a low-cost and efficient alternative to litigation in the federal court system.

In addition, small businesses and entrepreneurs will be able to learn about USPTO services, meet with examiners, and access USPTO's comprehensive search databases. The space will also provide public access to search equipment and teleconference capabilities to facilitate in-person and virtual meetings with examiners. This access to patent examiners and trademark educational initiatives will help clarify application questions earlier on in the process, thereby improving the quality of examination and increasing the efficiency of moving a new product or technology to the marketplace.

"The USPTO never faltered in its commitment to opening a permanent Silicon Valley satellite office, despite the setback caused by sequestration," said Deputy Under Secretary of Commerce for Intellectual Property and USPTO Deputy Director Teresa Stanek Rea. "A permanent office will allow us to attract additional intellectual property professionals who will work closely with regional entrepreneurs to process patent applications, reduce the backlog of unexamined patents, and speed up the overall process--creating good jobs and promoting American innovation."

Since April 2013, the USPTO has been operating out of temporary office space in Menlo Park secured via the General Services Administration. Until the new San Jose City Hall space is ready, Silicon Valley Office Director Michelle Lee and nine PTAB judges will continue working from that location. The USPTO aims to staff the permanent office with at least 60 patent examiner hires and approximately 20 PTAB judges in its first year of operation, thus creating a minimum of 80 high-paying new jobs in the area.

"The entire Silicon Valley community, including business leaders, entrepreneurs, and individual inventors, as well as congressional, state and local leaders, have been tremendously supportive of the Silicon Valley office from the start," said Lee. "As a result of this support and shared belief in the benefits of a Silicon Valley satellite office, we are excited to be able to move forward now with the opening of the permanent location of the Silicon Valley office and to fulfill the full vision and promise of this office for the benefit of the innovation community."

Despite the delay in selection of the permanent office space, Lee and her team have been actively engaged in education, outreach, and public input solicitation, including: the organization of Software Partnership outreach events; hosting local training programs on the Leahy-Smith America Invents Act ("AIA"); planning STEM (science, technology, education and math) workshops to train K-12 teachers in local school districts on innovation, entrepreneurship, and intellectual property; and building relationships with local innovators, industries, intellectual property bar associations, incubators, venture capitalists, and universities. The USPTO intends to continue conducting this outreach so that the agency can develop policies, programs and procedures to best meet the needs of the innovation community.

USPTO was forced to suspend its search for permanent office space in Silicon Valley in July of this year. The City of San Jose has offered approximately 40,000 square feet of permanent office space in its City Hall, with two years of free rent and three additional years of discounted rent. In addition, the California State Assembly Speaker's Office has offered the USPTO $500,000, which will help the agency continue to provide education and outreach efforts and accelerate the momentum toward opening the permanent office.

The AIA, which became law in September 2011, called for the USPTO to establish three or more satellite offices, subject to available resources. The USPTO opened its first permanent office space, the Elijah J. McCoy Satellite Office, in Detroit in July 2012. USPTO has identified permanent locations for the remaining satellite offices, at the Terminal Annex Federal Building in Dallas, and at the Byron G. Rogers Federal Office Building in Denver, with the latter office slated to open in July 2014.

For non-press inquiries pertaining to the satellite site selection, please contact USPTO's Director of the Office of Administrative Services John Hassett at 571-272-6250 or Special Advisor to the Under Secretary of Commerce for Intellectual Property Vikrum Aiyer at 571-272-8818.