July 16, 2014

Indiana Patent Litigation - Stopinc AG Sues J.W. Hicks Inc. for Patent Infringement

Hammond, Indiana - An Indiana patent attorney for Stopinc Aktiengesellschaft of Stopinc-Patent-Picture2.bmpHünenberg, Switzerland sued in the Northern District of Indiana alleging that J. W. Hicks Inc. of Merrillville, Indiana infringed "Slide Gate for a Container Containing Molten Metal," Patent No. 6,422,435, which has been issued by the U.S. Patent Office.

Plaintiff Stopinc Aktiengesellschaft ("Stopinc AG") asserts that it is the owner by assignment of Patent No. 6,422,435 (the "'435 patent"). It charges Defendant J. W. Hicks Inc. with infringing upon the patent by, inter alia, importing into the United States and selling its product, known both as the OMEGA Slidegate Systems and also as the TITAN Slidegate, that infringes at least claims 1, 8, 11 and 12 of the '435 patent. Stopinc AG also asserts that J. W. Hicks Inc. has induced and contributed to the infringement of the patent by others. Finally, Stopinc AG contends that Defendant's acts of infringement and inducement to infringe are willful, knowing and deliberate.

A single count - patent infringement - is listed in Stopinc AG's complaint, which was filed by an Indiana patent lawyer. The Indiana court is asked for the following relief:

• An injunction prohibiting Defendant and its agents from marketing, importing, offering for sale, selling, advertising or promoting or distributing in the United States any products that infringe the '435 patent;
• An Order that all infringing products, as well as all means for producing, advertising or promoting those products, be destroyed;
• An Order that all infringing products already distributed be recalled;
• Damages, including Defendant's profits, as well as for Plaintiff's lost sales, attorney's fees, and interest; and
• That damages be trebled.

Practice Tip: Patent infringement can be demonstrated under two general theories: literal infringement and infringement under the doctrine of equivalents. An assertion of "literal infringement" will require a showing that every element recited in a claim has identical counterpart in the accused device or method. A claim may also be infringed under the "doctrine of equivalents" if some other element of the accused device or method performs substantially the same function, in substantially the same manner, to achieve substantially the same result.

Continue reading "Indiana Patent Litigation - Stopinc AG Sues J.W. Hicks Inc. for Patent Infringement" »

July 14, 2014

Indiana Patent Litigation: HEC Pharm Added to Effient Patent Infringement Litigation

Indianapolis, Indiana - An Indiana patent attorney for Eli Lilly and Company of Indianapolis, Indiana; Daiichi Sankyo Co., Ltd of Tokyo, Japan; Daiichi Sankyo, Inc. of Parsippany, New Jersey; and Ube Industries, Ltd. of Yamaguchi, Japan sued in the Southern District of Indiana alleging that HEC Pharm Co., Ltd. of China and HEC Pharm USA Inc. of Princeton, New Jersey (collectively, "HEC Pharm") infringed Lilly's patented Effient® product, Patent No. 8,404,703, which has been issued by the United States Patent Office.

patentpicture.bmpThis lawsuit adds another defendant, HEC Pharm, to Lilly's Indiana patent litigation regarding Effient. In these Effient patent-defense lawsuits, Lilly et al. allege infringement of certain patents related to the pharmaceutical Effient. At issue in the litigation against HEC Pharm is only one of the Effient-related patents, 8,404,703 "Medicinal Compositions Containing Aspirin," (the "'703 patent").

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

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

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

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

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

The complaint, filed by an Indiana patent lawyer, lists two counts:

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

Plaintiffs ask the court for judgment:

• That HEC Pharm has infringed the '703 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of one or more claims of the '703 patent;
• That, pursuant to 35 U.S.C. § 271(e)(4)(B), HEC Pharm be permanently enjoined from making, using, selling or offering to sell any of its accused products within the United States, or, where applicable, importing accused products into the United States prior to the expiration of the '703 patent;
• That, pursuant to 35 U.S.C. § 271(e)(4)(A), the effective date of any approval of the HEC Pharm ANDA under § 505(j) of the Federal Food, Drug and Cosmetic Act (21 U.S.C. § 355(j)) shall not be earlier than the later of the expiration dates of the '703 patent, including any extensions;
• If HEC Pharm commercially makes, uses, sells or offers to sell any accused product within the United States, or, where applicable, imports any accused product into the United States, prior to the expiration of either of the '703 patent, including any extensions, that Plaintiffs be awarded monetary damages for those infringing acts to the fullest extent allowed by law and be awarded prejudgment interest based on those monetary damages;
• That the case be deemed exceptional under 35 U.S.C. § 285;
• That the '703 patent remains valid and enforceable;
• That Plaintiffs be awarded reasonable attorney's fees, costs and expenses.

Practice Tip #1: The Effient litigation also involves Patent No. 5,288,726, "Tetrahydrothienopyridine Derivatives, Furo and Pyrrolo Analogs Thereof and Their Preparation and Uses for Inhibiting Blood Platelet Aggregation," and Patent No. 8,569,325, "Method of Treatment with Coadministration of Aspirin and Prasugrel."

Practice Tip #2: The FDA's ANDA process for generic drugs has been abbreviated such that, in general, the generic drug seeking approval does not require pre-clinical (animal and in vitro) testing. Instead, the process focuses on establishing that the product is bioequivalent to the "innovator" drug that has already undergone the full approval process.

The statute that created the abbreviated process, however, had also created some interesting jurisdictional issues with respect to declaratory judgments. For an interesting look at some of the issues, see here

Continue reading "Indiana Patent Litigation: HEC Pharm Added to Effient Patent Infringement Litigation" »

July 11, 2014

Indiana Copyright Litigation: Count in Dallas Buyers Club Copyright Lawsuits Reaches 80 Defendants

Indianapolis, Indiana - A copyright attorney for Dallas Buyers Club, LLC of The Woodlands, Texas has filed three additional complaints against Doe Defendants in the Southern District of Indiana. Two of these latest complaints include allegations against 20 separate as-yet-MV5BMTg0MDc3ODUwOV5BMl5BanBnXkFtZTcwMTk2NjY4Nw@@__V1_SX214_CR0,0,214,317_AL_.jpgunidentified Defendants, while the third lists 16 new Defendants. The Doe Defendants are accused of infringing the copyright of the motion picture "Dallas Buyers Club," which has been registered with the U.S. Copyright Office.

The movie in question, Dallas Buyers Club, stars Matthew McConaughey (pictured) as an AIDS patient who smuggled unapproved AIDS-treatment drugs into the United States during the 1980s for his own use and to distribute to others afflicted with AIDS. The movie was nominated for six Academy Awards and won three. Matthew McConaughey and Jared Leto also won Oscars for Best Actor and Best Supporting Actor, respectively, for their performances in the movie.

These copyright lawsuits are in addition to another similar complaint filed recently by Plaintiff, wherein 24 separate Doe Defendants were sued. In these latest Indiana copyright infringement lawsuits, filed by a copyright lawyer for Dallas Buyers Club, LLC, Plaintiff asserts that the copyrighted movie was infringed by another 56 as-yet unnamed individuals, who were sued as "Doe" Defendants.

Plaintiff alleges that this copyright infringement occurred using the "BitTorrent protocol," which is different from the standard peer-to-peer protocol. Specifically, the BitTorrent protocol enables numerous computers, even those with low bandwidth, to exchange pieces of a computer file among themselves. Each computer that has downloaded a particular piece of a file then becomes a source from which other computers may download that piece of the file. As a result, the entirety of a computer file may be disseminated across the Internet quickly without having to rely on a central source from which to download.

Plaintiff contends that Defendants in each lawsuit acted as part of a "collective enterprise" to infringe its work and that the acts constituting the infringement were "willful, intentional, and in disregard of and with indifference" to Plaintiff's intellectual property rights.

The court is asked to enter judgment for the following monetary and injunctive relief:

• for entry of permanent injunctions providing that each Defendant shall be enjoined from directly or indirectly infringing Plaintiff's rights in the movie;
• for judgment that Defendants have: a) willfully infringed Plaintiff's rights in its federally registered copyright pursuant to 17 U.S.C. §501; and b) otherwise injured the business reputation and business of Plaintiff;
• for actual or statutory damages pursuant to 17 U.S.C. §504 in an amount to be determined at trial;
• for an Order of Impoundment under 17 U.S.C. §§503 and 509(a) impounding all infringing copies of the movie that are in Defendants' possession or under their control; and
• for attorneys' fees, litigation expenses, including fees and costs of expert witnesses, and other costs of this action.

Practice Tip #1:

Copyright trolling, also known as "porn trolling" when the plaintiff owns copyrights to pornographic material, has changed in the years since the practice began. Most early lawsuits were filed against tens, hundreds or even in excess of a thousand anonymous defendants. When judges such as District Judge Otis Wright made it clear that this misjoinder would not be permitted, porn trolls began filing multiple lawsuits claiming copyright infringement against single defendants.

Porn trolls also responded to this change in the judicial landscape by adding a new exhibit, "Exhibit C," with each filing. Exhibit B to each complaint was a legally relevant listing of the Malibu Media copyrights that were allegedly infringed. However, Exhibit C listed other pornographic material - material not owned by Malibu Media - allegedly downloaded by the internet protocol address of the accused.

While the titles of Malibu Media's copyrighted works are often fairly innocuous - "Almost Famous," "Blonde Ambition" and "LA Plans" are among their works - the titles listed in Exhibit C were decidedly not. In response these and other Malibu Media copyright litigation tactics, one federal judge, District Judge William Conley, said, "[t]hese Internet copyright infringement cases ... give off an air of extortion." He sanctioned Malibu Media's counsel under Rule 11 and ordered a fine of $2,200.

Practice Tip #2:

Mass misjoinder in copyright cases has also been flagged as impermissible in other, non-pornography, cases that assert copyright infringement against multiple defendants. In one recent Indiana copyright lawsuit, Magistrate Judge Denise K. LaRue, writing for the Southern District of Indiana, severed all but one defendant from the copyright infringement complaint of Richard Bell, an Indiana copyright attorney. The court also ordered Bell to pay separate filing fees for each new cause of action.

Continue reading "Indiana Copyright Litigation: Count in Dallas Buyers Club Copyright Lawsuits Reaches 80 Defendants" »

July 10, 2014

Indiana Patent Litigation: CeraMedic Sues Zimmer for Patent Infringement

South Bend, Indiana - Indiana patent lawyers for CeraMedic LLC of Plano, Texas sued for biolox picture.jpgpatent infringement in the Northern District of Indiana alleging that Zimmer Holdings, Inc. and Zimmer, Inc., both of Warsaw, Indiana (collectively "Zimmer"), infringed "Sintered Al₂O₃ Material, Process for Its Production and Use of the Material," Patent No. 6,066,584, which has been issued by the United States Patent Office.

Patent No. 6,066,584 (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. Similar litigation was also recently commenced against Biomet by Indiana patent attorneys for CeraMedic.

The '584 patent 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, (pictured) an aluminum oxide matrix composite ceramic consisting of approximately 82% alumina (Al₂O₃), 17% zirconia (ZrO₂), and other trace elements.

The allegations Defendant Zimmer include that it "designs, develops, manufactures, offers for sale, sells, uses, distributes, and markets hip implants, many of which include" CeramTec's Biolox product and that such actions constitute infringement of the '584 patent. Zimmer is accused of infringing the '584 patent directly, literally, and/or by equivalents.

The complaint, filed by Indiana patent counsel, lists a single count: infringement of the '584 patent. CeraMedic asks the court for a judgment against Zimmer determining that Zimmer has infringed and continues to infringe one or more claims of the '584 patent; enjoining Zimmer and its agents from further infringing the '584 patent; ordering Zimmer to account for and pay to CeraMedic all damages suffered by CeraMedic as a consequence of Zimmer'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 Zimmer 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:

Zimmer has been sued for patent infringement before. One patent lawsuit, Stryker v. Zimmer, is illustrative of the potential cost of willful infringement. In that litigation, the jury found that Zimmer had committed patent infringement and awarded $70 million in damages. The jury also held that Zimmer's infringement had been willful. Plaintiff Stryker asked the court for, inter alia, attorneys' fees and enhanced damages.

Under 35 U.S.C. § 285, if the prevailing party establishes by clear and convincing evidence that the case is "exceptional," the court may exercise its discretion to award attorneys' fees. The court in this case cited various factors that could be used in determining whether a case was exceptional, for example: "willful infringement, fraud or inequitable conduct in procuring the patent, misconduct during litigation, vexatious or unjustified litigation, [or] conduct that violates Federal Rule of Civil Procedure 11." The court awarded Stryker's attorneys' fees, holding that that the jury's finding of willful infringement weighed heavily in favor of such an award ("indeed, when a trial court denies attorney fees in spite of a finding of willful infringement, the court must explain why the case is not 'exceptional' within the meaning of the statute.")

The court also evaluated whether an award of enhanced damages was warranted. Under 35 U.S.C. § 284, "the court may increase the damages up to three times the amount found or assessed" at trial. For this determination, the court referred to Read Corp. v. Portec, Inc. In Read, the Federal Circuit held that the "paramount determination in deciding to grant enhancement and the amount thereof is the egregiousness of the defendant's conduct based on all the facts and circumstances." In evaluating the egregiousness of the defendant's conduct, courts typically rely on the nine Read factors, which are:

1. whether the infringer deliberately copied the patentee's ideas or design;
2. whether the infringer investigated the scope of the patent and formed a good faith belief that it was invalid or not infringed;
3. the infringer's conduct during litigation;
4. the infringer's size and financial condition;
5. closeness of the case;
6. duration of the infringing conduct;
7. remedial actions, if any, taken by the infringer;
8. the infringer's motivation for harm; and
9. whether the infringer attempted to conceal its misconduct.

The court found that all nine Read factors favored substantial enhancement and trebled the jury's award of damages. The court stated, "Zimmer chose a high-risk/high-reward strategy of competing immediately and aggressively in the pulsed lavage market and opted to worry about the potential legal consequences later." In total, Zimmer was ordered to pay Stryker over $228 million.

Continue reading "Indiana Patent Litigation: CeraMedic Sues Zimmer for Patent Infringement " »

July 9, 2014

Indiana Copyright Litigation: Dallas Buyers Club, LLC Sues 24 Doe Defendants for Copyright Infringement

Indianapolis, Indiana - A copyright attorney for Dallas Buyers Club, LLC of The Woodlands, Dallas_Buyers_Club_poster.jpgTexas sued in the Southern District of Indiana alleging that 24 Doe defendants infringed the copyright of the motion picture "Dallas Buyers Club," which has been registered with the U.S. Copyright Office.

The movie in question, Dallas Buyers Club, stars Matthew McConaughey as an AIDS patient who smuggled unapproved AIDS-treatment drugs into the United States during the 1980s for his own use and to distribute to others afflicted with AIDS. The movie was nominated for six Academy Awards and won three. Matthew McConaughey and Jared Leto also won Oscars for Best Actor and Best Supporting Actor, respectively, for their performances in the movie.

In this Indiana copyright infringement lawsuit, filed by a copyright lawyer for Dallas Buyers Club, LLC, plaintiff asserts that the copyrighted movie was infringed by 24 as-yet unnamed individuals, who were sued as "Doe" defendants. It alleges that this copyright infringement took place using the "BitTorrent protocol," which is different from the standard peer-to-peer protocol. Specifically, the BitTorrent protocol enables numerous computers, even those with low bandwidth, to exchange pieces of a computer file among themselves. Each computer that has downloaded a particular piece of a file then becomes a source from which other computers may then download that piece of the file. As a result, the entirety of a computer file may be disseminated across the Internet quickly without having to rely on a central source from which to download.

Plaintiff contends that the 24 defendants acted as part of a "collective enterprise" to infringe its work and that the acts constituting the infringement were "willful, intentional, and in disregard of and with indifference" to plaintiff's intellectual property rights.

The court is asked to enter judgment for the following monetary and injunctive relief:

• for entry of permanent injunctions providing that each defendant shall be enjoined from directly or indirectly infringing plaintiff's rights in the movie;
• for judgment that defendants have: a) willfully infringed plaintiff's rights in its federally registered copyright pursuant to 17 U.S.C. §501; and b) otherwise injured the business reputation and business of plaintiff;
• for actual or statutory damages pursuant to 17 U.S.C. §504 in an amount to be determined at trial;
• for an Order of Impoundment under 17 U.S.C. §§503 and 509(a) impounding all infringing copies of the movie that are in defendants' possession or under their control; and
• for attorneys' fees, litigation expenses, including fees and costs of expert witnesses, and other costs of this action.

Practice Tip: 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 involving BitTorrent. 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: Dallas Buyers Club, LLC Sues 24 Doe Defendants for Copyright Infringement" »

July 7, 2014

Indiana Intellectual Property Litigation: Joe Hand Promotions Sues Johnson's Tavern and its Owner for Unlawful Interception and Broadcast of Championship Fight

Indianapolis, Indiana - An intellectual property lawyer for Joe Hand Promotions, Inc. of Feasterville, Pennsylvania has sued in the Northern District of Indiana alleging that Michael J. Casteel, individually and d/b/a Johnson's Tavern and Casteel Enterprises of Galveston, Inc., 200px-UFC_148_Event_Poster.jpgboth of Galveston, Indiana, unlawfully intercepted and broadcast the "Ultimate Fighting Championship 148: Anderson Silva v. Chael Sonnen" championship fight (the "Program").

Joe Hand Promotions was granted rights to distribute the Program, which was telecast nationwide on Saturday, July 7, 2012. In the complaint against Casteel and Casteel Enterprises, both d/b/a Johnson's Tavern, an intellectual property lawyer for Joe Hand Promotions has alleged such wrongful acts as interception, reception, publication, divulgence, display and/or exhibition," claiming that Defendants "tortuously [sic] obtained possession of the Program" and engaged in conversion when they displayed the Program in Johnson's Tavern.

In addition to naming the separate legal entity which allegedly owns Johnson's Tavern, Joe Hand Promotions has also sued Casteel as an individual, claiming that he is an officer of Casteel Enterprises and that he had the right and ability to supervise the activities of Johnson's Tavern on the night of the Program. Plaintiff asserts that those activities included the unlawful interception of its UFC Program. It further claims that Johnson's Tavern and Casteel received financial benefit from the unlawful display of the Program.

Casteel has been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553. The complaint also lists a count of conversion. Joe Hand Productions seeks statutory damages of $100,000 for each willful violation of 47 U.S.C. § 605; $60,000 for each willful violation of 47 U.S.C. § 553; compensatory damages on the claim of conversion; and costs and attorney's fees. These claims have been made against both Casteel Enterprises and as personal liability claims against Casteel.

Practice Tip #1: Joe Hand Productions has sued two entities: a corporation and an individual who is allegedly a principal of that corporation. While corporations were designed, among other purposes, 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 corporation or a limited liability company) that are designed to shield the principal from liability may fail to do so.

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

Continue reading "Indiana Intellectual Property Litigation: Joe Hand Promotions Sues Johnson's Tavern and its Owner for Unlawful Interception and Broadcast of Championship Fight" »

July 3, 2014

Indiana Patent Litigation: CeraMedic Sues Biomet for Patent Infringement

South Bend, Indiana - Indiana patent attorneys for CeraMedic LLC of Plano, Texas filed an intellectual property lawsuit in the Northern District of Indiana alleging that Biomet, Inc. of Picture of Judge.jpgWarsaw, Indiana infringed "Sintered Al₂O₃ Material, Process for Its Production and Use of the Material", Patent No. 6,066,584, which has been issued by the United States Patent Office.

This Indiana patent litigation concerns Patent No. 6,066,584 (the "'584 patent"), which 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.

The '584 patent 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 Biomet "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. Biomet is accused of infringing the '584 patent directly, literally, and/or by equivalents.

The complaint, filed by Indiana patent lawyers, lists a single count: infringement of the '584 patent. CeraMedic asks the court for a judgment against Biomet determining that Biomet has infringed and continues to infringe one or more claims of the '584 patent; enjoining Biomet and its agents from further infringing the '584 patent; ordering Biomet to account for and pay to CeraMedic all damages suffered by CeraMedic as a consequence of Biomet'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 Biomet 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:

The Federal Circuit has somewhat tempered the threat of a finding of willfulness in patent infringement in recent years. In 2007, sitting en banc, it established a heightened standard for willfulness that included an inquiry into whether a defendant's actions were "objectively reckless" in In re Seagate Technology LLC.

In 2012, in Bard Peripheral Vascular Inc. v. W.L. Gore & Associates Inc., the Federal Circuit removed the threat of findings of willfulness by "runaway juries," including the uncertainties inherent in the fact that such jury findings would be delayed for many years as patent litigation made its way to trial and finally to a jury verdict. In that case, the Federal Court held that the threshold determination for willful infringement is a question of law and, as such, is to be decided by the trial court.

Nonetheless, compensatory damages in patent infringement litigation can reach seven, eight or even nine figures. Given that a finding of willfulness can treble those damages, patent infringement defendants must not take assertions of willfulness lightly.

Continue reading "Indiana Patent Litigation: CeraMedic Sues Biomet for Patent Infringement" »

July 2, 2014

Patent Office Issues 194 Patents To Indiana Citizens in June 2014

The U.S. Patent Office issued the following 194 patent registrations to persons and businesses in Indiana in June 2014, based on applications filed by Indiana patent attorneys:

PAT. NO. Title
D707590 Race car 
D707483 Side rail 
D707480 Bed frame 
8762766 Distributed fault tolerant architecture for a healthcare communication system 
8762289 Method, apparatus, and computer readable storage for training human searchers 
8762018 Method and apparatus for clutch pressure control 
8761941 Method for displaying medical data by a medical device during display failure 
8761940 Time block manipulation for insulin infusion delivery 
8761898 Flexible neural probe for magnetic insertion 
8761787 Methods, systems and apparatus to facilitate ranked network priority 
8760521 Calibration of large camera networks 
8760303 Spray drift systems and methods including an input device 

Continue reading "Patent Office Issues 194 Patents To Indiana Citizens in June 2014" »

July 1, 2014

174 Trademark Registrations Issued to Indiana Companies in June 2014

The U.S. Trademark Office issued the following 174 trademark registrations to persons and businesses in Indiana in June 2014 based on applications filed by Indiana trademark attorneys:

Reg. Number Word Mark Click To View
4556061 THE BRIDGE VIEW
4556052 STAY METRICS VIEW
4556051 STAY METRICS VIEW
4556027 ABRO VIEW
4556007 YOUR JOURNEY BEGINS HERE VIEW
4556005 TIER 2 CONTROLS VIEW
4555905 THERE'S A CODE FOR THAT VIEW
4555856 PACEMATES VIEW
4555815 VALLEY BLOOM VIEW
4555770 TAKING YOU WHERE BANKS WON'T. VIEW
4555768 ACQUIRE GROW SUCCEED VIEW
4555766 BUY. BUILD. SELL. VIEW
4555714 CONTRIB VIEW

Continue reading " 174 Trademark Registrations Issued to Indiana Companies in June 2014" »

June 30, 2014

Indiana Patent Litigation - Lilly Adds Panacea Biotec to List of Patent Infringement Defendants

Indianapolis, Indiana - An Indiana patent attorney for Eli Lilly and Company of Indianapolis, Indiana; Daiichi Sankyo Co., Ltd of Tokyo, Japan; Daiichi Sankyo, Inc. of Parsippany, NewEffient-pill.jpg Jersey; and Ube Industries, Ltd. of Yamaguchi, Japan sued in the Southern District of Indiana alleging that Panacea Biotec, Ltd. of New Delhi, India ("Panacea") infringed Effient® products, Patent Nos. 8,404,703 and 8,569,325, which have been issued by the United States Patent Office.

This lawsuit adds another defendant, Panacea, to Lilly's Indiana patent litigation. In these "Effient" patent-defense lawsuits, Lilly et al. assert allegations of infringement of Effient. At issue in the Panacea litigation are Effient-related patents 8,404,703 "Medicinal Compositions Containing Aspirin," (the "'703 patent") and 8,569,325 "Method of Treatment with Coadministration of Aspirin and Prasugrel" (the "'325 patent").

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

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

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

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

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

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

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

Plaintiffs ask the court for judgment:

• That Panacea has infringed the '703 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of one or more claims of the '703 patent;
• That Panacea has infringed the '325 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of one or more claims of the '325 patent;
• That, pursuant to 35 U.S.C. § 271(e)(4)(B), Panacea be permanently enjoined from making, using, selling or offering to sell any of its accused products within the United States, or, where applicable, importing accused products into the United States prior to the expiration of the '703 and '325 patents;
• That, pursuant to 35 U.S.C. § 271(e)(4)(A), the effective date of any approval of the Panacea ANDA under § 505(j) of the Federal Food, Drug and Cosmetic Act (21 U.S.C. § 355(j)) shall not be earlier than the later of the expiration dates of the '703 and '325 patents, including any extensions;
• If Panacea commercially makes, uses, sells or offers to sell any accused product within the United States, or, where applicable, imports any accused product into the United States, prior to the expiration of either of the '703 and '325 patents, including any extensions, that Plaintiffs be awarded monetary damages for those infringing acts to the fullest extent allowed by law and be awarded prejudgment interest based on those monetary damages;
• That the case be deemed exceptional under 35 U.S.C. § 285;
• That the '703 patent remains valid and enforceable;
• That the '325 patent remains valid and enforceable; and
• That Plaintiffs be awarded reasonable attorney's fees, costs and expenses.

Practice Tip: In March 2014, Lilly et al. filed a 101-page complaint making similar accusations against more than thirty defendants: Accord Healthcare, Inc. USA; Accord Healthcare, Inc.; Intas Pharmaceuticals Ltd.; Amneal Pharmaceuticals LLC; Amneal Pharmaceuticals of New York, LLC; Amneal Pharmaceuticals Co. India Pvt. Ltd.; Aurobindo Pharma Limited; Aurobindo Pharma USA Inc.; Dr. Reddy's Laboratories, Ltd; Dr. Reddy's Laboratories, Inc.; Glenmark Generics Inc., USA; Glenmark Generics Ltd.; Glenmark Pharmaceuticals Ltd.; Hetero USA Inc.; Hetero Labs Limited; Hetero Labs Limited Unit V; Hetero Drugs Ltd.; Mylan Pharmaceuticals Inc.; Mylan Inc.; Mylan Laboratories Limited; Par Pharmaceutical Companies, Inc.; Par Pharmaceutical, Inc.; Sun Pharma Global FZE; Caraco Pharmaceutical Laboratories, Ltd.; Sun Pharma Global Inc.; Sun Pharmaceutical Industries, Ltd.; Teva Pharmaceuticals USA, Inc.; Teva Pharmaceutical Industries, Ltd.; Watson Laboratories, Inc.; Actavis plc; Actavis, Inc.; Actavis Pharma, Inc.; Zydus Pharmaceuticals USA, Inc.; and Cadila Healthcare Ltd. d/b/a Zydus Cadila.

Continue reading "Indiana Patent Litigation - Lilly Adds Panacea Biotec to List of Patent Infringement Defendants" »

June 27, 2014

Terry Unveils Draft Legislation to Address Abusive Patent Demand Letters

WASHINGTON, D.C. - Commerce, Manufacturing, and Trade Subcommittee Chairman Lee Terry (R-NE) (pictured) recently proposed draft text of legislation to address illegitimate patent demand letters. The legislation is designed to protect businesses from abusive patent assertion entities, also known as PAEs or patent trolls, while preserving the ability of LeeTerryPicture.jpglegitimate companies to prosecute their patents.

The draft legislation seeks to increase transparency and accountability to help expose and prevent fraudulent infringement claims. It would require patent demand letters to include certain basic information to help companies determine whether a letter is legitimate. It would also enhance Federal Trade Commission (FTC) authority to levy fines on fraudulent patent demand practices, and provide state Attorney General enforcement of the federal standard.

Terry stated, "Patent trolls cost American companies tens of billions of dollars each year, and are threatening job creation and innovation. We heard from countless small businesses about the destructive consequences of these scams, and after listening to these concerns, it became clear Congress needs to act to stop this growing abuse. But we must also be careful not to reach too broadly and limit legitimate business practices."

Practice Tip: Information on the hearing, the Majority Memorandum, a witness list, and witness testimony will be available here as they are posted.

June 26, 2014

Indiana Patent Law: Magistrate Declines to Grant Crime-Fraud Exception to Attorney-Client Privilege

Evansville, Indiana - In the matter of Berry Plastics Corp. v. Intertape Polymer Corp., Indiana patent attorneys for Berry Plastics Corporation ("Berry") invoked the crime-fraud exception to the attorney-client privilege, asking the court to compel Intertape Polymer Corporation ("Intertape") to produce documents and testimony it had withheld as privileged. Magistrate Judge William G. Hussmann, Jr. of the Southern District of Indiana denied the request.

This Indiana patent lawsuit was filed in January 2010 and seeks a declaratory judgment. Plaintiff Berry of Evansville, Indiana requested a judgment that Patent No. 7,476,416, titled Process for Preparing Adhesive Using Planetary Extruder, was invalid and unenforceable due to inequitable conduct before the U.S. Patent and Trademark Office ("USPTO") by Intertape, a company located in Bradenton, Florida.

In this current order, Magistrate Judge Hussmann addresses Berry's request to compel Intertape to produce documents and testimony that had been withheld as subject to attorney-client privilege. Indiana patent lawyers for Berry argued that this was proper because Intertape had engaged in inequitable conduct or defrauded the USPTO.

The Magistrate first emphasized that this ruling pertained only to discovery, as the question of whether Intertape had perpetrated a fraud upon the USPTO was one of the ultimate issues in the litigation. As such, that question of fact would be decided at trial by Chief Judge Richard L. Young.

The general rule in discovery is that a party to litigation is entitled to discover from his adversary "any nonprivileged matter that is relevant to any party's claim or defense." An exception to the attorney-client privilege is made when the communication between the attorney and the client is made in furtherance of a crime or fraud. To successfully invoke this exception, Berry must offer evidence demonstrating that:

1) Intertape made a false representation as to a material fact;
2) Intertape made its false representation with intent to deceive;
3) the USPTO justifiably relied upon Intertape's false representation; and
4) the USPTO suffered an injury as a consequence of its reliance on Intertape's false representation.

In an attempt to prove that the elements of the crime-fraud exception applied, Berry offered "numerous allegations and ... extensive evidence suggesting Intertape engaged in inequitable conduct or defrauded" the USPTO. Intertape responded to each allegation with "numerous defenses and extensive evidence suggesting its dealings with the USPTO were lawful and forthright."

The Magistrate held for Intertape. Citing Federal Circuit precedent, which governs the application of the crime-fraud exception to privilege in patent cases, the court called the piercing of the attorney-client privilege an "extreme remedy." The rule in such cases is that, if the court were to find Intertape's explanation satisfactory, it must leave the privilege intact. After an analysis of the defenses proffered by Intertape, the court found that Intertape's explanation for each of the allegations of fraud sufficient to avoid a piercing of the privilege.

Practice Tip: Magistrate judges are adjuncts to Article III district judges. They often dispose of pretrial matters such as motions, evidentiary hearings and pretrial conferences. However, their authority, and thus their role, in federal litigation is constrained by constitutional and statutory limits. Because the factual issue of whether Intertape committed fraud against the USPTO was one of the ultimate issues in the litigation, Magistrate Hussman expressly limited his ruling in this opinion to the discovery dispute before him. At trial, Chief Judge Young, in his role as the ultimate finder of fact, may determine that Intertape did, indeed, commit fraud.

Continue reading "Indiana Patent Law: Magistrate Declines to Grant Crime-Fraud Exception to Attorney-Client Privilege " »

June 25, 2014

Indiana Trademark Law: Personal Jurisdiction Cannot be Based on Alter-Ego Theory

Indianapolis, Indiana - In the matter of American Petroleum Institute v. Bullseye Automotive Products, et al., Indiana trademark litigators Paul B. Overhauser and John M. Bradshaw of Overhauser Law Offices, attorneys for Carlos Silva, petitioned the court to dismiss Silva for lack of personal jurisdiction. District Judge Tanya Walton Pratt granted the motion to dismiss.

In July 2013, Indiana trademark attorneys for American Petroleum Institute ("API") of Washington, D.C. sued in the Southern District of Indiana alleging that Bullseye Automotive Products Inc. and Bullseye Lubricants Inc., both of Chicago, Illinois (collectively, "Bullseye"), and Carlos Silva of Chicago Ridge, Illinois infringed registered API "Starburst" and "Donut" trademarks, Registration Nos. 1864428, 1868779, and 1872999.

The Bullseye entities are Illinois corporations that bottle and sell motor oil. Defendant Silva is the sole incorporator and shareholder of the Bullseye entities. Plaintiff API is a trade association for the petroleum and natural-gas industry.

API brought various claims against Bullseye and Silva as an individual, including trademark infringement and trademark dilution. It claimed that Bullseye's labeling infringed on its "Starburst" and "Donut" certification marks. While Bullseye did not contest jurisdiction in Indiana, trademark lawyers for Silva asked the court to dismiss the claims against him for lack of personal jurisdiction.

API countered that the exercise of personal jurisdiction over Silva in Indiana was proper, contending that Silva personally directed the allegedly infringing activities, that he exercised complete control over Bullseye and that he and Bullseye were essentially the same entity for jurisdictional purposes. API made no argument that Silva personally had sufficient contacts with Indiana to permit an Indiana court to exercise personal jurisdiction.

The court rejected API's "alter-ego" theory of personal jurisdiction, stating that this argument pertained to liability, not jurisdiction. Even if the court determined that Silva were the alter ego of Bullseye, a finding that the court explicitly declined to make, such potential for liability for corporate acts was held to be irrelevant to the question of personal jurisdiction. In so ruling, the court stated that it was refusing to disregard the corporate form and bypass the protections it offers, citing the longstanding rule that a "corporation exists separately from its shareholders, officers, directors and related corporations...."

The court then analyzed whether it would be appropriate to exercise personal jurisdiction over Silva based on his personal contacts with the state of Indiana. It concluded that Silva as an individual had not purposefully availed himself of the privilege of conducting activities within Indiana such that he would reasonably anticipate being haled into an Indiana court. Finding that the minimum contacts necessary had not been established, the court held that exercising personal jurisdiction over Silva would offend due process and the "traditional notions of fair play and substantial justice" and dismissed Silva from the lawsuit.

Practice Tip: Many of the arguments API made - for example, that Silva personally selected the text and design for Bullseye's labels, that he personally negotiated with suppliers and that he oversaw production - do not support an "alter ego" theory. Activities such as these must necessarily be carried out by the sole shareholder of a small corporation. To find that a small corporation is the alter ego of a sole shareholder merely because that shareholder acts on behalf of the company would violate the basic principles of corporation law.

Paul B. Overhauser, Managing Partner of Overhauser Law Offices, also recently prevailed on the issue of personal jurisdiction in the Seventh Circuit in another lawsuit alleging trademark infringement.

Continue reading "Indiana Trademark Law: Personal Jurisdiction Cannot be Based on Alter-Ego Theory" »

June 23, 2014

Indiana Copyright Law: Three Default Judgments of $2,500 Ordered for Copyright Infringement

Indianapolis, Indiana - In Bell v. Glacier International, District Judge Tanya Walton Pratt (pictured) ofJudgePratt.jpg the Southern District of Indiana granted default judgments against three defendants, DiamondIndyLimo.com, Lon Dunn and Glacier International. In the three nearly identical opinions, the three defendants were each ordered to pay statutory damages of $2,500 for infringing a copyrighted photograph.

In January 2013, Indiana copyright attorney and professional photographer Richard N. Bell, acting as his own copyright lawyer, sued alleging copyright infringement under the Copyright Act and conversion under Indiana statutory law as a result of the allegedly unauthorized use of a photograph he had taken. This photograph had been registered with the United States Copyright Office.

In this lawsuit, Bell sued forty-eight Defendants: Jerry Gordon; Demand Media, Inc.; Bryce Welker; Royal Corniche Travel Ltd.; VRBO.com, Inc.; Experience Credit Unions, LLC; Jaclothing.com; Glacier International; ABNHotels.com; 1&1 Internet, Inc.; Conde Nast Digital; Flixter, Inc.; Financing-USA.com; SodaHead, Inc.; NuMedia Marketing, Inc.; Jynell Berkshire; Tzvetelin Petrov; Los Pentecostales del Area de la Bahia; 10Best, Inc.; Keyes Outdoor Advertising; Zoom Communications Inc.; Christine Nevogt; Zarzar, Inc.; Hydro-Gear; Tam T. Dang; Lon Dunn; William McLaws, Trustee; Natl-electronic Residential Payment History Recording Agency; CVI; Constant Contact, Inc.; Charles Lantz; Schumacher Cargo Logistics; Eventbrite, Inc.; Celebrity Entertainment Corp.; Association of Equipment Manufacturers; Yardi Systems Inc.; DiamondIndyLimo.com; Marcelo Santos; National Rural Recruitment & Retention Network; Anbritt Stengele; Pinnacle Sports Equipment, Inc.; Marygrove College; RunAnyCity.com; Buzzle.com, Inc.; Charles Onuska; University of Indianapolis; and PersephoneMagazine.com.

Bell alleged that each Defendant, independent of each other Defendant, "created a website to promote and advertise its own business" and placed Bell's copyrighted photo on each of the Defendants' respective websites. In addition to asserting copyright infringement, Bell also alleged criminal misconduct under Indiana statutory law. Bell requested an injunction and a declaratory judgment. He also asked the court for damages for copyright infringement under the Copyright Act as well as treble damages under an Indiana criminal statute prohibiting conversion.

In September 2013, the court entered default judgments against each of the three Defendants. Last week, the court issued three new opinions addressing the damages to be assessed against those Defendants.

The court first discussed the issue of damages for copyright infringement. Under 17 U.S.C. § 504(c)(1), statutory damages, in lieu of actual damages and profits, 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.

In determining the appropriate measure of statutory damages, the court considers factors including: (1) the infringer's state of mind; (2) the expenses saved, and profits earned, by the infringer; (3) the revenue lost by the copyright holder; (4) the deterrent effect on the infringer and third parties; (5) the infringer's cooperation in providing evidence concerning the value of the infringing material; and (6) the conduct and attitude of the parties.

The court declined to find the copyright infringement to be willful, in part because Bell requested statutory damages well under $30,000.00 per instance of infringement. Instead, the court found that $2,500 per Defendant was an appropriate measure of damages. An injunction was also granted, as it would serve the public interest by protecting copyrighted material and encouraging compliance with federal law. The injunction will be lifted upon payment of the award of statutory damages.

A claim of conversion under Indiana state law, and treble damages awarded pursuant to such a claim, was denied as preempted by the Copyright Act. Indiana code § 35-43-4-3(a) provides that a "person who knowingly or intentionally exerts unauthorized control over property of another person commits criminal conversion." However, section 310 of the Copyright Act preempts "all legal or equitable rights that are the equivalent to any of the exclusive rights within the general scope of copyright" and that "no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State." The court held that the photograph in question was clearly under the scope of the Copyright Act and that Bell had not sufficiently alleged a right apart from the Act. Thus, no damages were available under Bell's state law conversion claim.

Practice Tip:

Deciding to simply ignore a complaint, as these defendants apparently did, can be a costly error. Failing to present the defendants' versions of the facts and arguments results in the court considering only the plaintiff's side of the story. Here, because the defendants chose to leave the complaint unanswered, the well-pled allegations of the plaintiff relating to liability were taken as true.

After the entry of default judgment, the court then conducted an inquiry to ascertain the amount of damages. Again, in such circumstances, it serves a defendant well to plead his case - to present the court with reasons that the plaintiff should not get 100% of what he requests.

Under 17 U.S.C. § 504(c)(1), a copyright owner may elect actual or statutory damages. Statutory damages range from a sum of not less than $750 to not more than $30,000. The determination of the exact amount is left to the discretion of the court. In this case, Richard Bell asked the court for no less than $5,000. In some cases, courts in determining damages in cases of default judgment have granted the entire amount. In this case, the court took the additional step of considering the cost to purchase Plaintiff Bell's picture - $200 - and incorporated that into its determination of the proper amount of damages to be awarded.

Continue reading "Indiana Copyright Law: Three Default Judgments of $2,500 Ordered for Copyright Infringement" »

June 20, 2014

USPTO Launches Glossary Pilot to Promote Patent Claim Clarity

Washington, D.C. - The United States Patent and Trademark Office ("USPTO") recently 600px-US-PatentTrademarkOffice-Seal_svg.pngannounced the launch of a new Glossary Pilot as part of a White House Executive Action designed to enhance claim clarity in the specification of software-related patent applications.

The pilot runs for six months from the start date of June 2, 2014.

Pilot participation requires an applicant to include a glossary section in the patent application specification to define terms used in the patent claim. Applications accepted into the pilot will receive expedited processing, be placed on an examiner's special docket prior to the first office action and have special status up to the issuance of a first office action.

Practice Tip: More information about the Glossary Pilot can be found at: www.uspto.gov/patents/init_events/glossary_initiative.jsp.