February 11, 2015

Indiana Patent Litigation: Four Mile Bay Asserts Patent Infringement Claims Against Zimmer

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Hammond, Indiana - Patent attorneys for Four Mile Bay LLC ("FMB") of Wadsworth, Ohio instituted intellectual property litigation in the Northern District of Indiana alleging that Zimmer Holdings, Inc. ("Zimmer") of Warsaw, Indiana infringed its patented "Hip Implant With Porous Body," Patent Nos. 8,821,582 and 8,506,642, which have been registered by the U.S. Patent Office.

Zimmer is a manufacturer and marketer of reconstructive orthopedic implants, including hip implants. At issue in this Indiana patent lawsuit are United States Patent Nos. 8,821,582 (the "'582 patent") and 8,506,642 (the "'642 patent"). Zimmer is accused of having infringed and continuing to infringe the '582 and '642 patents by making, selling, and using hip implants, including a Trabecular Metal Primary Hip Prosthesis, that embody the patented invention.

Ownership of the '582 patent, issued for an invention in a method of machining, fabricating, and attaching components of a hip implant with a porous body, is claimed by FMB. FMB also asserts ownership of the '642 patent.

In this Indiana litigation, patent lawyers for FMB ask the court for the following:

      • Judgment that Zimmer has directly infringed claims of the '582 patent and the '642 patent;
      • For a reasonable royalty; and
      • For pre-judgment interest and post-judgment interest at the maximum rate allowed by law.

The case was assigned to Chief Judge Philip P. Simon and Magistrate Judge Christopher A. Nuechterlein in the Northern District of Indiana and assigned Case No. 3:15-cv-00063-PPS-CAN.

Continue reading "Indiana Patent Litigation: Four Mile Bay Asserts Patent Infringement Claims Against Zimmer" »

February 9, 2015

United States District Court of Southern Indiana Selects New Magistrate

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Indianapolis, Indiana - The Honorable Richard L. Young, Chief Judge of the United States District Court for the Southern District of Indiana, recently announced the selection of New Albany attorney Van T. Willis as part-time United States Magistrate Judge. Mr. Willis' appointment will be made upon completion of a Federal Bureau of Investigation background check, a process that can take a few months. Once appointed, he will fill the vacancy created by the passing of The Honorable Michael G. Naville, who served the court from November 1995 to September 2014.

As the Magistrate Judge in the New Albany Division of the Southern District of Indiana, Mr. Willis will preside over preliminary criminal proceedings in that division. He will also continue in the private practice of law as a senior partner with the firm of Kightlinger & Gray, LLP. He has been with the firm since 1991, and his primary areas of practice are civil rights, corporate and business law, employment, insurance defense litigation, trademark and copyright infringement, and worker's compensation. Prior to joining Kightlinger & Gray, from 1989 to 1991, Mr. Willis served as a law clerk to United States District Judge Gene E. Brooks.

Mr. Willis was born and raised in Franklin, Kentucky. He received a business administration degree from the University of Kentucky in 1983, then attended law school there, graduating in 1988. Mr. Willis was admitted to the Kentucky Bar in 1988 and is also admitted to practice before the Indiana Bar; the United States District Court for the Southern District of Indiana, Western District of Kentucky, and Eastern District of Kentucky; and the United States Court of Appeals for the Seventh Circuit. He is a member of the Indiana State Bar Association, Kentucky Bar Association, Floyd County Bar Association, Louisville Bar Association, DRI, and Defense Trial Counsel of Indiana.

Mr. Willis is also engaged in many civic activities, currently serving as president of the Governing Board of Floyd County Head Start; vice-president of the Board of Trustees of Our Lady of Providence High School; and as a member of the Board of Directors of Goodwill of Southern Indiana. Mr. Willis and his wife, Kathy, have been married for 26 years and have four children. Part-time Magistrate Judges are appointed by the Judges of the United States District Courts for terms of four years, and are eligible for reappointment to successive terms.

February 5, 2015

144 Trademark Registrations Issued to Indiana Companies in January 2015

The U.S. Trademark Office issued the following 144 trademark registrations to persons and businesses in Indiana in January 2015 based on applications filed by Indiana trademark attorneys:

Reg. Number Word Mark Click to View
4679071 PROJECT LEAD THE WAY PLTW Live
4679063 LOUISVILLE CITY Live
4678991 INTERCOASTAL Live
4678989 EVERCHILL Live
4678987 GREYSTONE Live
4678817 "NOW THAT'S GOOD STUFF!" Live
4678703 ACL Live
4678603 USI Live

Continue reading " 144 Trademark Registrations Issued to Indiana Companies in January 2015" »

February 4, 2015

Patent Office Issues 111 Patents To Indiana Citizens in January 2015

The U.S. Patent Office issued the following 111 patent registrations to persons and businesses in Indiana in January 2015, based on applications filed by Indiana patent attorneys:
PAT. NO. TITLE
D721,793 Faucet spout
D721,792 Faucet body
D721,791 Faucet handle
D721,790 Faucet
D721,568 Latching mechanism for an animal enclosure
8942778 Analyte monitoring sensor system for monitoring a constituent in body tissue
8941917 Tensioned projection screen

Continue reading "Patent Office Issues 111 Patents To Indiana Citizens in January 2015" »

February 3, 2015

Federal Agencies Seize Over $19.5 Million in Fake NFL Merchandise During 'Operation Team Player'

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Phoenix, Arizona - Federal officials teamed with the National Football League (NFL) Thursday to announce the results of a nationwide law enforcement effort aimed at combatting counterfeit sports merchandise.

Speaking at a NFL news conference, U.S. Immigration and Customs Enforcement (ICE) Director Sarah R. Saldaña, U.S. Customs and Border Protection (CBP) Director of Field Operations William K. Brooks, and NFL Counsel Dolores F. DiBella discussed the results of the initiative, dubbed "Operation Team Player."

This year's operation began immediately following the conclusion of Super Bowl XLVIII and targeted international shipments of counterfeit merchandise as it entered the United States. Authorities identified warehouses, stores, flea markets, online vendors and street vendors selling counterfeit game-related sportswear and tickets throughout the country.

Fake jerseys, ball caps, t-shirts, jackets and other souvenirs are among the counterfeit merchandise and clothing confiscated by teams of special agents and officers from ICE's Homeland Security Investigations (HSI), CBP, U.S. Postal Inspection Service (USPIS), and state and local police departments around the country - all in partnership with the NFL and other major sports leagues.

"Counterfeiting is not a game," said ICE Director Saldaña. "It is most certainly not a victimless crime either. Whether it's the child in Southeast Asia working in deplorable conditions, or local stores going out of business, intellectual property theft is a very real crime with very real victims. No good comes from counterfeiting American products regardless of whether they are all-star jerseys, airbags, or aspirin."

Special agents from HSI and officers with CBP worked with sports leagues and law enforcement agencies throughout the nation to identify illegal shipments imported into the U.S., as well as stores and vendors selling counterfeit trademarked items. The teams seized more than 326,147 items of phony sports memorabilia along with other counterfeit items worth more than $19.5 million. Law enforcement officers have made 52 arrests in relation to Operation Team Player so far, with Super Bowl XLIX efforts continuing through Feb. 6.

"The NFL is proud to once again partner with ICE and the IPR Center in combating the illegal sale of counterfeit merchandise and tickets," said DiBella. "Together, we are working hard to protect fans and prevent them from being scammed by criminals seeking to profit from the public's passion for the NFL, their home teams and Super Bowl XLIX."

"The sale of counterfeit products [is] connected to smuggling and other criminal activities and threatens the competitiveness of our businesses, the livelihoods of U.S. workers, and in some cases the health and safety of the consumer," said CBP Commissioner R. Gil Kerlikowske. "CBP works closely with our federal government partners to protect the United States from these damaging and unsafe goods."

Understanding the economic impact of intellectual property theft, the U.S. Chamber of Commerce is also spreading the word about the dangers that counterfeit products pose to the economy.

"Major events like the Super Bowl can highlight an economic problem we face throughout the year - counterfeit products put good, high-paying jobs at risk in places like Seattle, New England and Phoenix," said David Hirschmann, president and CEO of the U.S. Chamber's Global Intellectual Property Center. "Innovative IP-intensive industries are responsible for over 1.4 million jobs in Massachusetts, 1.2 million in Washington, and 750,000 in Arizona. Sports fans need to be aware of criminals trying to take advantage of big events and holidays to sell counterfeit goods and compete with legitimate companies, like the ones that make the hats, jerseys, or other Super Bowl souvenirs from many of our most trusted brands."

The IPR Center is one of the U.S. government's key weapons in the fight against criminal counterfeiting and piracy. Working in close coordination with the Department of Justice Task Force on Intellectual Property, the IPR Center uses the expertise of its 23 member agencies to share information, develop initiatives, coordinate enforcement actions and conduct investigations related to intellectual property theft. Through this strategic interagency partnership, the IPR Center protects the public's health and safety and the U.S. economy.

To report IP theft or to learn more about the IPR Center, visit www.IPRCenter.gov.

February 2, 2015

Indiana Patent Litigation: Lilly in Court Again Asserting Infringement of Alimta

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Indianapolis, Indiana - An Indiana patent attorney for Eli Lilly and Company ("Lilly") of Indianapolis, Indiana filed an intellectual property lawsuit in the Southern District of Indiana alleging that Fresenius Kabi USA, LLC ("Fresenius") of Lake Zurich, Illinois infringed the patented product ALIMTA®, Patent No. 7,772,209, which has been registered by the U.S. Patent Office.

Lilly is engaged in the business of research, development, manufacture and sale of pharmaceutical products worldwide. Fresenius is in the business of manufacturing, marketing, and selling generic drug products.

ALIMTA, which is licensed to Lilly, is a chemotherapy agent used for the treatment of various types of cancer. ALIMTA is composed of the pharmaceutical chemical pemetrexed disodium. It is indicated, in combination with cisplatin, (a) for the treatment of patients with malignant pleural mesothelioma, or (b) for the initial treatment of locally advanced or metastatic nonsquamous non-small cell lung cancer. The drug is also indicated as a single agent for the treatment of patients with locally advanced or metastatic nonsquamous non-small cell lung cancer after prior chemotherapy. Additionally, ALIMTA is used for maintenance treatment of patients with locally advanced or metastatic nonsquamous non-small cell lung cancer whose disease has not progressed after four cycles of platinum-based first-line chemotherapy. One or more claims of U.S. Patent No. 7,772,209 ("the '209 patent") cover a method of administering pemetrexed disodium to a patient in need thereof that also involves administration of folic acid and vitamin B12.

This Indiana patent infringement lawsuit arises out of the filing by Defendant Fresenius of an Abbreviated New Drug Application ("ANDA") with the U.S. Food and Drug Administration ("FDA") seeking approval to manufacture and sell generic versions of ALIMTA prior to the expiration of the '209 patent. Fresenius included as a part its ANDA filing a certification of the type described in Section 505(j)(2)(A)(vii)(IV) of the Food, Drug and Cosmetic Act, 21 U.S.C. § 55(j)(2)(A)(vii)(IV), with respect to the '209 patent, asserting that the claims of the '209 patent are invalid, unenforceable, and/or not infringed by the manufacture, use, offer for sale, or sale of Fresenius' ANDA products.

In its patent infringement complaint, filed by an Indiana patent lawyer, Lilly states that Fresenius intends to engage in the manufacture, use, offer for sale, sale, marketing, distribution, and/or importation of Fresenius' ANDA Products and the proposed labeling therefor immediately and imminently upon approval its ANDA filing, i.e., prior to the expiration of the '209 patent. Lilly asserts that Fresenius' actions constitute and/or will constitute infringement of the '209 patent, active inducement of infringement of the '209 patent, and contribution to the infringement by others of the '209 patent.

Lilly asserts that, in a prior case, 10-cv-1376-TWP-DKL, the court rejected Fresenius' challenges to the validity of certain claims of the '209 patent. Accordingly, states Lilly, Fresenius should be estopped from challenging the validity of those claims of the '209 patent in the instant litigation.

Lilly lists a single count in this lawsuit - Infringement of U.S. Patent No. 7,772,209 - and asks the court for:

a) A judgment that Fresenius has infringed the '209 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of the '209 patent;

b) A judgment ordering that the effective date of any FDA approval for Fresenius to make, use, offer for sale, sell, market, distribute, or import Fresenius' ANDA Product, or any product the use of which infringes the '209 patent, be not earlier than the expiration date of the '209 patent, inclusive of any extension(s) and additional period(s) of exclusivity;

c) A preliminary and permanent injunction enjoining Fresenius, and all persons acting in concert with Fresenius, from making, using, selling, offering for sale, marketing, distributing, or importing Fresenius' ANDA Product, or any product the use of which infringes the '209 patent, or the inducement of or contribution to any of the foregoing, prior to the expiration date of the '209 patent, inclusive of any extension(s) and additional period(s) of exclusivity;

d) A judgment declaring that making, using, selling, offering for sale, marketing, distributing, or importing of Fresenius' ANDA Product, or any product the use of which infringes the '209 patent, prior to the expiration date of the '209 patent, infringes, will infringe, will actively induce infringement of, and/or will contribute to the infringement by other of the '209 patent;

e) A declaration that this is an exceptional case and an award of attorneys' fees pursuant to 35 U.S.C. § 285; and

f) An award of Lilly's costs and expenses in this litigation.

Continue reading "Indiana Patent Litigation: Lilly in Court Again Asserting Infringement of Alimta" »

January 30, 2015

Indiana Trademark Litigation: Archetype Sues Alleging Trade Dress Infringement

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Indianapolis, Indiana - An Indiana intellectual property attorney for Archetype Ltd. ("Archetype") of Short Hills, New Jersey sued in the Southern District of Indiana alleging that LTD Commodities LLC ("LTD") of Bannockburn, Illinois infringed the trademark PathLights™.

Plaintiff Archetype contends that it has been marketing a distinctive and famous battery-operated motion-detection lighting system under the PathLights trademark since at least as early as 2009. It states that the overall look and feel of the PathLights product is non-functional and serves as a source identifier. In this Indiana lawsuit, Archetype accuses LTD of trade dress infringement, false designation of origin or sponsorship, passing off, and unfair competition.

Archetype indicates in the complaint that LTD is marketing, selling, and promoting a battery-operated motion-detection lighting product that is almost identical to Archetype's PathLights product. It further claims that the accused LTD lights illustrated on LTD's website are actually images of Archetype's PathLights product and that the lighting products that consumers actually receive from LTD upon purchase of the LTD product are not an Archetype's PathLights product but are, instead, a different, lower-quality light.

Defendant LTD is accused of "intentionally, willfully and deliberately pull[ing] a 'bait and switch' on consumers" and, in doing so, damaging Archetype's sales volume and business reputation.

In this lawsuit, filed by an Indiana intellectual property lawyer for Archetype, the following counts are asserted:

• Count I: Trade Dress Infringement

• Count II: False Designation of Origin or Sponsorship and Passing Off

• Count III: False Advertising

• Count IV: Trade Dress Dilution

Archetype asks the court for judgment that LTD's acts constitute trade dress infringement, unfair competition, false designation of origin and/or sponsorship, false advertising and trade dress dilution; for an award of LTD's profits and actual damages, including corrective advertising, as well as trebling those damages pursuant to 15 U.S.C. § 1117; for an order that all accused LTD products and other accused materials be surrendered for destruction; for an injunction; and for an award of Archetype's attorneys' fees, costs and expenses.

The case was assigned to Chief Judge Richard L. Young and Magistrate Judge Denise K. LaRue in the Southern District of Indiana and assigned Case No. 1:15-cv-00106-RLY-DKL.

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January 29, 2015

Indiana Patent Litigation: Knauf Alleges Infringement of Three Patents

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Indianapolis, Indiana - Indiana patent attorneys for Knauf Insulation, LLC of Shelbyville, Indiana; Knauf Insulation GmbH of Iphofen, Germany; and Knauf Insulation SPRL of Visé, Belgium filed a patent infringement lawsuit in the Southern District of Indiana alleging that Johns Manville Corporation and Johns Manville, Inc., both of Denver, Colorado, infringed Patent Nos. 8,114,210 and 8,940,089, both for "Binders," and D631,670 for "Insulation Material."

Plaintiffs Knauf Insulation GmbH, Knauf Insulation SPRL, and Knauf Insulation, LLC are affiliated companies (collectively, "Knauf Insulation"). They produce and sell building materials including fiberglass insulation and related products. Defendants Johns Manville Corporation and Johns Manville, Inc., which are wholly owned subsidiaries of Berkshire Hathaway Inc., are stated to be direct competitors of Knauf Insulation GmbH and Knauf Insulation, LLC in the U.S. for fiberglass insulation products.

Plaintiffs Knauf Insulation SPRL and Knauf Insulation, LLC are each owners of one-half undivided interests of United States Patent Nos. 8,114,210 ("the '210 Patent"), 8,940,089 ("the '089 Patent") and D631,670 ("the '670 Patent"; collectively, the patents-in-suit), which have been registered by the U.S. Patent Office.

Defendants offer for sale various bio-based binder insulation products, including "Formaldehyde Free" "Bio-based binder" insulation products. These products are marketed as "EasyFit," "RANGE-GLAS EQ," "SPIN-GLAS WH EQ," "Flex-Glass EQ," "Microlite EQ," "Microlite L," "ComfortTherm," and "PEBS Blanket" insulation. Plaintiffs claim that the manufacture of these products infringes upon the patents-in-suit.

Specifically, Knauf Insulation contends that Defendants have infringed - directly, contributory and/or by inducement - various method claims of the patents-in-suit. That infringement, they claim, was willful and done with knowledge by Defendants with respect to the '210 and '670 patents. No claim of knowing or willful infringement was made with respect to the '089 patent, which issued on January 27, 2015, the date on which the complaint was filed. Knauf Insulation states that the patent infringement includes, in part, the manufacture of Johns Manville's bio-based binder insulation.

In this lawsuit, Indiana patent lawyers for Knauf Insulation list three counts against the Johns Manville Defendants:

• Count I - Infringement of U.S. Patent 8,114,210

• Count II - Infringement of U.S. Patent 8,940,089

• Count III - Infringement of U.S. Patent D631,670

Knauf Insulation asks the court for a judgment of infringement of the patents-in-suit; an injunction; damages, including treble damages; an award of Defendants' total profits, as well as other remedies under 35 U.S.C. §289 for the infringement of the '670 Patent; and an award of interest, fees and costs.

The case was assigned to Judge William T. Lawrence and Magistrate Judge Mark J. Dinsmore in the Southern District of Indiana and assigned Case No. 1:15-cv-00111-WTL-MJD.

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January 28, 2015

Indiana Copyright Litigation: Microsoft Asserts Copyright, Trademark Infringement by Ace Recycling

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Fort Wayne, Indiana - An Indiana copyright and trademark attorney for Microsoft Corporation ("Microsoft") of Redmond, Washington sued in the Northern District of Indiana alleging that Ace Recycling, Inc. and Kevin Cawood, both of Fort Wayne, Indiana (collectively, "Defendants"), infringed copyrighted material belonging to Microsoft. Defendants have also been accused of trademark infringement, false designation of origin, false description and representation, counterfeiting and unfair competition. Microsoft seeks damages, an accounting, the imposition of a constructive trust upon Defendants' illegal profits, and injunctive relief.

Microsoft develops, markets, distributes and licenses computer software. Ace Recycling is engaged in the business of advertising, marketing, installing, offering, and distributing computer hardware and software, including the software at issue, which Microsoft contends is unauthorized.

Microsoft's software products, which have been registered by the U.S. Copyright Office, include Microsoft Windows XP and Microsoft Vista, both of which are operating systems for desktop and computers.

Also at issue are the following trademarks and service marks belonging to Microsoft:

• "MICROSOFT," Trademark and Service Mark Registration No. 1,200,236, for computer programs and computer programming services;

• "MICROSOFT," Trademark Registration No. 1,256,083, for computer hardware and software manuals, newsletters, and computer documentation;

• WINDOWS, Trademark Registration No. 1,872,264 for computer programs and manuals sold as a unit; and

• COLORED FLAG DESIGN, Trademark Registration No. 2,744,843, for computer software.

Microsoft contends that Defendants advertised, marketed, installed, offered and distributed unauthorized copies of Microsoft software, despite Microsoft's claims that their actions infringed Microsoft's intellectual property rights. Specifically, Microsoft asserts that, in April 2013, Defendants distributed to an investigator refurbished computer systems with unauthorized copies of Windows XP installed on them. In response, in June 2013, Microsoft asked Defendants to cease and desist from making and distributing infringing copies of Microsoft software. Microsoft alleges that, in May 2014, Defendants again distributed to an investigator a refurbished computer system with an unauthorized copy of a Windows operating system - in that case, Windows Vista - on it.

Microsoft contends that these are not isolated incidents but, instead, indicate Defendants' pattern of acting in reckless disregard of Microsoft's registered copyrights, trademarks and service marks.

In this Indiana lawsuit, Microsoft's copyright and trademark attorney makes the following claims:

• Copyright Infringement - 17 U.S.C. § 501, et seq.

• Trademark Infringement - 15 U.S.C. § 1114

• False Designation Of Origin, False Description And Representation - 15 U.S.C. § 1125 et seq.

• Indiana Common Law Unfair Competition

• For Imposition Of A Constructive Trust Upon Illegal Profits

• Accounting

Microsoft asks for a judgment of copyright infringement; of trademark and service mark infringement; that Defendants have committed and are committing acts of false designation of origin, false or misleading description of fact, and false or misleading representation against Microsoft, in violation of 15 U.S.C. § 1125(a); that Defendants have engaged in unfair competition in violation of Indiana common law; and that Defendants have otherwise injured the business reputation and business of Microsoft.

Microsoft also asks for the impoundment of all counterfeit and infringing copies of purported Microsoft products; the imposition of a constructive trust upon Defendants' illegal profits; injunctive relief; damages, including enhanced damages; and costs and attorneys' fees.

The case was assigned to Judge Joseph Van Bokkelen and Magistrate Judge Susan L. Collins in the Northern District of Indiana and assigned Case No. 1:15-cv-00032-JVB-SLC.

Continue reading "Indiana Copyright Litigation: Microsoft Asserts Copyright, Trademark Infringement by Ace Recycling " »

January 26, 2015

Indiana Patent Litigation: Agri-Labs Asserts Infringement of Patented GPS-Enabled Soil-Analysis System

Fort Wayne, Indiana - An Indiana patent attorney for Agri-Labs Holdings LLC of Auburn, Indiana filed a patent infringement lawsuit in the Northern District of Indiana alleging that TapLogic, LLC of Murray, Kentucky infringed its patented "Soil Sample Tracking System and Method."

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At issue in this Indiana patent litigation is U.S. Patent No. 8,286,857 (the "`857 Patent" or the "Patent-in-Suit"), to which Agri-Labs claims ownership. The patent-in-suit, which was issued based upon an application filed by inventor Tony Wayne Covely, has been registered by the U.S. Patent Office. The `857 Patent generally relates to a system and method for performing soil analysis that uses smart phones, applications for smart phones, soil containers having unique identifiers, and global positioning ("GPS").

TapLogic is accused of selling and offering for sale in the United States its "Ag PhD Soil Test," which Agri-Labs contends infringes the patent-in-suit. To implement its soil-testing system, TapLogic provides its customers with soil containers. Customers are instructed to manually pull soil samples from a field and place them in separate containers, each of which includes a unique identifier. TapLogic's Ag PhD test obtains a GPS coordinate reading associated with a location in the field from where the soil sample is taken and associates the GPS coordinate reading with the soil container having the customer scan the barcode contained on the soil container.

In December 2014, Agri-Labs sent a letter to TapLogic "attempting to amicably resolve this matter." Agri-Labs indicates that it received no meaningful reply from TapLogic in response to the letter.

In this Indiana patent infringement complaint, the patent lawyer for Agri-Labs asserts a single count: Infringement of the '857 Patent by TapLogic. Agri-Labs asks the court to adjudge that the '857 Patent has been infringed and to enjoin TapLogic and its agents from directly and/or indirectly infringing the patent. Agri-Labs also asks for an award of compensatory damages pursuant to 35 U.S.C. § 284, as well as enhanced damages under 35 U.S.C. § 285, and for an award of its costs.

Continue reading "Indiana Patent Litigation: Agri-Labs Asserts Infringement of Patented GPS-Enabled Soil-Analysis System" »

January 23, 2015

Indiana Copyright Law: Court Orders SVT to Provide Video to EEOC Despite Copyright Concerns

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Hammond, Indiana - Magistrate Judge Paul R. Cherry of the Northern District of Indiana, Hammond Division, ordered SVT, LLC d/b/a Ultra Foods ("SVT") to produce a copyrighted training video to the Equal Employment Opportunity Commission ("EEOC") in ongoing gender-discrimination litigation.

In 2010, Tiffany Swagerty was rejected from a position as a night crew stocker at SVT's Ultra Foods operation in Merrillville, Indiana. She complained to the EEOC contending that SVT's hiring manager had told her that women that were not usually hired for night positions. The subsequent investigation by the EEOC corroborated Swagerty's assertions. The EEOC later sued SVT for violations of Title VII seeking injunctive relief and, on behalf of Swagerty and other similarly rejected female applicants, monetary damages.

In this current opinion in the matter of Equal Employment Opportunity Commission v. SVT, LLC d/b/a Ultra Foods, the court ruled on several discovery disputes between the parties. Among those issues was whether SVT must produce to the EEOC copies of a copyrighted "stocking video" or whether, in order to obtain a copy, the EEOC must bear a portion of the cost of the materials.

Specifically, as part of its discovery requests, the EEOC asked SVT to provide "all documents containing job descriptions for all stocker positions ... including hiring criteria, requirements, and responsibilities created." SVT objected to providing one piece of responsive material - a stocking DVD that was shown to overnight stockers during orientation - on copyright grounds. SVT stated that, while it had made "in-house copies" of the video, it would not be able to produce a copy of the materials to the EEOC and that it would cost $700 for the EEOC to order and purchase a set of the DVDs. Instead of providing the DVD, SVT offered to have counsel for the EEOC either share in the cost of the DVDs or, in the alternative, to view the DVDs at counsel for SVT's office during the breaks of depositions. EEOC refused this offer and filed a motion to compel the production of the video.

The court was not persuaded that either of SVT's proposals was sufficient. The court stated instead that SVT had offered an "unclear ... explanation of when and how it obtained the original and/or copies of the DVDs, the nature and extent of any copyright that might exist, and what the costs ... were expended for." Consequently, the court granted the EEOC's motion to compel, holding that SVT had "not met its burden of demonstrating that the cost of this discovery should be shifted" and ordered SVT to produce the copyrighted material to the EEOC without cost to the EEOC.

Continue reading "Indiana Copyright Law: Court Orders SVT to Provide Video to EEOC Despite Copyright Concerns" »

January 22, 2015

Trademark Law: Update of Trademark Manual of Examining Procedure

On January 17, 2015, the United States Patent and Trademark Office issued the January 2015 Trademark Manual of Examining Procedure ("TMEP"), which incorporates changes made in accordance with the following rules:

• Renaming of Express Mail® to Priority Mail Express®, published October 22, 2014 at 79 FR 63036;

• Reduction of Fees for Trademark Applications and Renewals, published December 16, 2014 at 79 FR 74633; and

• Miscellaneous Changes to Trademark Rules of Practice and the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, published January 16, 2015 at 80 FR 2303.

For a listing of all the changes, see the "Changes in the TMEP January 2015 Edition" document that is posted as part of the TMEP.

January 21, 2015

Open Wi-Fi and Copyright: DMCA Safe Harbors

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As explained in Monday's blog post, in general a network operator should not be liable for its users' activity as long as the operator merely acts as a passive conduit for Internet traffic. However, network operators who remain worried about the risk of liability for copyright infringement can consider another option: the safe harbors provided by the Digital Millennium Copyright Act ("DMCA").

In order to foster online expression and commerce, Congress crafted a set of safe harbors from copyright liability to provide "greater certainty to service providers concerning their legal exposure for infringements that may occur in the course of their activities."

Under the DMCA, "service provider" includes "an entity . . . providing [] connections for digital online communications." The definition of a service provider is broad, and includes those who do not operate communications equipment themselves. In one case, for example, a federal appeals court held that a payment processor for online content was a DMCA "service provider" even though it didn't operate the alleged infringer's Internet connection or transmit any infringing material. Congress also intended that the term cover "subcontractors" of Internet service providers. Arguably, this definition covers the providers of open Wi-Fi, such as municipalities, cafes, and libraries.

The statute also clarifies the outer limits of a service provider's obligations by, for example, making it clear that a service provider need not monitor its service or affirmatively seek facts indicating infringing activity in order to enjoy the safe harbor.

Under the DMCA, a network operator is sheltered from liability for "transmitting, routing, or providing transfers for" its users' traffic if:

1. A "person other than the service provider" initiates the transmission.

2. The transmission is "carried out through an automatic technical process without selection of the material by the service provider . . . ."

3. The service provider does not choose the recipient of the transmission, other than to route the traffic automatically.

4. The service provider does not keep copies longer than necessary to transfer the traffic, and it cannot make copies available to anyone other than the recipient.

5. The service provider does not modify the content of the message.

In short, ISPs qualify for this safe harbor if they act as passive conduits for network traffic.

In addition, there are two threshold requirements that service providers must meet in order to qualify the DMCA safe harbors. First, the provider must adopt a policy to terminate service for "subscribers and account holders" who are repeat infringers. Second, the operator must accommodate[] and not interfere with standard technical measures" that copyright owners employ to protect their works, such as a watermark in a copyrighted image.

A few final notes on the DMCA: First, falling outside the safe harbors does not make you liable for infringement. Compliance with the requirements of the safe harbors is optional for service providers, not mandatory. The increased certainty provided by the safe harbors, however, creates a strong incentive for service providers to take advantage of them, if it makes sense for their operation. Second, the DMCA safe harbors only apply to copyright infringement (not trademark or patent infringement, or other causes of action). Most service providers, however, also enjoy broad immunity from state law causes of action as well as most federal civil claims under Section 230 of the Communications Decency Act.

As a practical matter, this means that network operators have choices when, for example, they receive a complaint that someone is using their network to engage in infringing activities. Usually such complaints will identify the alleged infringer via some form of internet protocol ("IP") address. If it is possible for the network operator to terminate a user associated with that address, and the operator has a repeat infringer policy, it can follow that policy. If the operator does not track users in a way that makes it possible to terminate any particular user (e.g., a network that allows anonymous use, and/or assigns IP addresses in a highly dynamic fashion, such that it is not feasible to tie an IP address to any particular user), it can either ignore the notice or respond by explaining why it cannot comply with the request. Of course, either approach may invite further complaints but should not change the bottom line: a network operator is unlikely to be held liable for the infringing activities of its users unless it knows about and contributes to those activities, or controls and financially benefits from them. Operators must determine for themselves what legal risks they are prepared to incur.

This edited article was provided by the Electronic Frontier Foundation, a nonprofit group which advocates for innovators and users of technology. The article has been licensed under the Creative Commons Attribution License.

This should not be taken as legal advice specific to any individual network operator. If you want such advice, please consult a copyright attorney.

January 19, 2015

Open Wi-Fi and Copyright: A Primer for Network Operators

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Open networks provide Internet access to the public. Users do not need to subscribe - they simply connect their devices, often over a wireless connection. For instance, the City of San Francisco recently deployed a free, public Wi-Fi network along a three-mile stretch of Market Street. Similarly, the Open Wireless Movement encourages owners of home Wi-Fi hotspots to open their networks to the public.

Operators of open networks may worry that they could be liable if people use their networks to engage in copyright infringement. This blog post generally explains the scope and limits of secondary liability for the acts of users, and additional steps network operators may choose to take to further limit any legal risk.

This post should not be taken as legal advice specific to any individual network operator.
If you want such advice, please consult a copyright lawyer.

1. What is Copyright Infringement?

Let's begin with some basics. First, you can only be held liable for the acts of your users if they have themselves violated copyright law. To have a "secondary" violation, there must first be a "primary" or "direct" violation.

A. Direct Infringement

Copyright infringement occurs when somebody violates one of the exclusive rights of the copyright holder. For instance, if a user downloads a copy of a movie without permission from the copyright holder, she may be liable for copyright infringement.

Copyright is a "strict liability" rule, which means that it doesn't much matter whether or not the user thought she was breaking the law.

To be liable for direct infringement, a person must have committed some voluntary act that caused the infringement to occur. This is called the "volitional conduct" doctrine, and it's an important one for network operators because it distinguishes between service providers that act as passive conduits for network traffic, on the one hand, and providers that actively control the information users post and access on their networks. If you are nothing more than a conduit for information packets, you shouldn't be legally responsible if those packets happen to contain infringing material. As a federal district court in California explained back in 1995:

Where the infringing subscriber is clearly directly liable for the same act, it does not make sense to adopt a rule that could lead to the liability of countless parties whose role in the infringement is nothing more than setting up and operating a system that is necessary for the functioning of the Internet. Such a result is unnecessary as there is already a party directly liable for causing the copies to be made.

Several federal appellate courts have followed the district court's ruling.

B. Secondary Liability

So, odds are that a court would not hold a network operator directly liable for copyright infringement based on the acts of users. But that doesn't end the analysis, because a copyright holder might try to claim that a service provider is indirectly responsible for the infringing acts of its users. This is called "secondary" liability.

Copyright law recognizes two types of secondary liability: "contributory" infringement and "vicarious" infringement.

Contributory infringement occurs when the second party (1) knows of the infringement and (2) "induces, causes, or materially contributes to the infringing conduct of another. For instance, a record store that sold blank tapes and encouraged customers to use its coin-operated "Make-a-Tape" machine to copy prerecorded tapes was held liable for contributory infringement. An ISP that actively and knowingly encouraged its users to use its service to download popular movies, without authorization, might be found liable on this theory.

Liability for contributory infringement depends largely on the ISP's degree of control over the information its users transmit. In one leading case, an ISP hosted its users' Usenet messages and distributed them to other Usenet servers around the world. The court held that the ISP could be liable only if the copyright holder could prove (1) that the ISP was aware of the infringing material and (2) that the ISP nonetheless continued to store and distribute the material.

A network operator could be vicariously liable for the acts of its users if it "(1) has the right and ability to control the infringer's acts and (2) receives a direct financial benefit from the infringement." For instance, in a Second Circuit case, the owner of a dance hall was vicariously liable for copyright infringement where it hired an orchestra to play at the hall and profited from the performance, even though it did not know the orchestra didn't have permission to play some of the music it chose.

This kind of liability depends on whether the ISP has the right and ability to control its users' acts and whether the ISP received a direct financial benefit from a specific user's infringing activities. If the ISP provides equal service to all of its users, it will be difficult to establish that it is benefiting from a specific user's activities. If it is a noncommercial service, of course, the "direct financial benefit" prong will be even harder to prove.

In short, a network operator is unlikely to be held liable for the infringing activities of its users unless it knows about and assists those activities, or controls and financially benefits from them.

The safe harbors available to network operators by the Digital Millennium Copyright Act ("DMCA") will be discussed in a future blog post.

This edited article was provided by the Electronic Frontier Foundation, a nonprofit group which advocates for innovators and users of technology. The article has been licensed under the Creative Commons Attribution License.

This should not be taken as legal advice specific to any individual network operator.  If you want such advice, please consult a copyright attorney.

January 16, 2015

IU Maurer School of Law Names Norman J. Hedges to Direct Intellectual Property Clinic

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Bloomington, Indiana - The Indiana University Maurer School of Law has selected a prominent intellectual property lawyer to serve as the first full-time director of its intellectual property law clinic.

Norman J. Hedges (pictured) will join the law school today as a clinical associate professor of law. He comes to Bloomington with over 16 years of experience in patent practice in Indianapolis, including 10 years in the Indianapolis office of Faegre Baker Daniels, where he was named partner in 2007. He has been a member of the law school's adjunct faculty since 2014.

"We are delighted that Norm will be joining our faculty full-time," said Mark D. Janis,  Robert A. Lucas Chair of Law and director of the school's Center for Intellectual Property Research. "He brings a wealth of practical experience that will be invaluable in building our clinic as it expands to provide pro bono IP services to our state's most innovative start-up businesses."

"As a graduate of the law school, I am honored to be returning as a faculty member," Hedges said. "The center's IP clinic is on the forefront of providing hands-on learning opportunities to the law school's students while helping Indiana businesses grow, and I'm privileged to be a part of it."

Established in January 2014, the intellectual property clinic provides pro bono patent, trademark and intellectual property law counseling.