Indiana Intellectual Property Law News

October 30, 2015

U.S. Supreme Court to Hear Patent Infringement Litigation Involving Indiana-Based Zimmer

Washington, D.C. -The United States Supreme Court has agreed to hear appeals in two separate lawsuits, Halo Electronics, Inc. v. Pulse Electronics, Inc., et al., Case No. 14-1513, and Stryker Corp, et al. v. Zimmer, Inc., et al., Case No. 14-1520, on the issue of willfulness as a prerequisite for awarding enhanced damages in patent infringement litigation. The two cases were consolidated.

Under 35 U.S.C. § 284 of the Patent Act, a district court “may increase … damages up to three times the amount found or assessed.” Despite this language, which on its surface is permissive and discretionary, the Federal Circuit imposes a stricter test. For a district court to award enhanced damages under § 284, this test requires that a patentee prove by clear and convincing evidence that infringement was “willful.” A determination of willfulness requires a finding of both (1) an objectively high likelihood that the infringer’s actions constituted infringement, and (2) that this likelihood was either known or so obvious that it should have been known to the accused infringer.

The questions presented to the Supreme Court are:

1. Has the Federal Circuit improperly abrogated the plain meaning of 35 U.S.C. § 284 by forbidding any award of enhanced damages unless there is a finding of willfulness under a rigid, two-part test, when this Court recently rejected an analogous framework imposed on 35 U.S.C. § 285, the statute providing for attorneys’ fee awards in exceptional cases?

2. Does a district court have discretion under 35 U.S.C. § 284 to award enhanced damages where an infringer intentionally copied a direct competitor’s patented invention, knew the invention was covered by multiple patents, and made no attempt to avoid infringing the patents on that invention?

The Court granted motions by Independent Inventor Groups and Nokia Technologies OY, et al. to file briefs as amici curiae.

Practice Tip: In December 2014, the Federal Circuit overturned the decision of the Western District of Michigan to triple the damages awarded to Stryker, reducing the amount from $228 million to $70 million.

October 29, 2015

Seventh Circuit News: Judge Tinder Retires from Federal Bench

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Earlier this month, Judge John Tinder officially retired from the United States Court of Appeals for the Seventh Circuit, stepping down after more than 30 years of federal service.

Judge Tinder, a jurist who once described himself as a person with “too many hobbies” but “not enough time,” officially retired from the bench in early October. The announcement of his retirement inadvertently came not through the usual channels, but rather via a letter that he wrote in response to an unsolicited application that he received from someone seeking employment as a law clerk. In his reply, Judge Tinder wrote, “Thank you for applying for a clerkship with me. Your credentials are outstanding. However, I recently decided that I will be leaving the court in 2015 so I will not be hiring any additional clerks….” That letter was leaked to AboveTheLaw.com, which broke the news of Judge Tinder’s impending retirement.

A lifelong resident of Indiana, Judge Tinder received both his undergraduate degree and law degree from the Indiana University – Bloomington. Prior to his appointment to a federal judgeship, he served as an Assistant United States Attorney for the Southern District of Indiana and, later, as the United States Attorney for the Southern District. In addition, he had engaged in the private practice of law in Indianapolis, had served as the Chief Trial Deputy for the Marion County Prosecutor’s Office and had been a public defender for the Criminal Division of the Superior Court of Marion County. Judge Tinder also taught as an adjunct professor at the Indiana University School of Law.

October 27, 2015

Indiana Intellectual Property Litigation: Roche Seeks Declaration of Non-Infringement of Meso’s Rights to ECL Technology

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana intellectual property attorneys for Plaintiff Roche Diagnostics Corporation of Indianapolis, Indiana filed a lawsuit in the Southern District of Indiana asking for a declaration of non-infringement of rights to patented technology licensed to Defendant Meso Scale Diagnostics, LLC of Rockville, Maryland.

At issue in this patent-related lawsuit is the right to use patented Electrochemiluminescence (“ECL”) technology owned by BioVeris Corporation. ECL is a detection technology that uses electricity, chemistry and light to detect and measure the presence of specific molecules in a test sample. It is used to detect, monitor, and guide the treatment of disease and other conditions.

In 1995, BioVeris licensed its ECL technology to Defendant Meso. Under this license, Meso was granted an exclusive license to use ECL technology for certain limited purposes. BioVeris later entered licensing agreements granting Roche Diagnostics use of ECL technology. Meso contends that Roche Diagnostics’ use of BioVeris’ ECL technology constitutes a violation of the exclusive rights granted to Meso. Roche Diagnostics asserts that its use does not violate Meso’s rights under the Meso license and that, while Meso was not a party to the first agreement licensing the ECL technology to Roche Diagnostics, executed in 2003, Meso expressly consented to that entire agreement. A second agreement licensing the technology was executed between BioVeris and Roche Diagnostics in 2007.

In 2013, a related dispute between Miso and Roche Diagnostics in Delaware state court was resolved in favor of Roche Diagnostics after a five-day bench trial. That judgment was affirmed by the Delaware Supreme Court in June 2015. Roche Diagnostics claims that, this concluded lawsuit notwithstanding, Meso continues to assert that Roche Diagnostics’ activities infringe Meso’s rights and continues to threaten litigation.

Indiana patent lawyers for Roche Diagnostics filed this action for declaratory judgment seeking a judgment declaring that it has not infringed Meso’s license rights in the ECL technology. Roche also seeks an award of attorney’s fees and costs.

Practice Tip: Because the validity of the BioVeris’ patents is not in dispute, and because Roche Diagnostics concedes that some of its products include BioVeris’ patented ECL technology, BioVeris was not included as a party in this lawsuit.

October 26, 2015

Indiana Patent Litigation: German Lawyers and Law Firm Sued on Allegations of Misappropriation of Intellectual Property

By Overhauser Law Offices, LLC

South Bend, Indiana – An Indiana patent attorney for Plaintiffs Never Lost Golf, LLC of South Bend, Indiana; Michael Carnell, a domiciliary of California who resides in Berlin, Germany and who does business as The Never Lost Golf Tee Saver and The Never Lost Golf Tee Saver Mat System (“NLG”); and Teresa O’Keefe and Grant Holloway, Trustees for the N.L.G. Living Trust filed a lawsuit in the Northern District of Indiana alleging infringement of NLG’s German Patent A63B 57/100, which has been filed with the German Patent Office. Patent protection for NLG has also been sought with the U.S. Patent and Trademark Office.

Three Defendants in this litigation, Maia Steinert, Chrisoph Stephan and Ralf Menwegen, are partners and/or members of Steinert & Stephan, a German law firm. Steinert has been accused by Plaintiffs of “aggregious [sic] conduct in asserting ownership interest in the NLG German patent.” Stephan and Menwegen were accused of having been “involved in the patent process.”

Carnell contends that he retained Steinert & Stephan in 2010 to represent him in filing for a German patent for the Never Lost Golf product. He adds in his complaint that any intellectual property rights obtained by these filings were supposed to accrue to him alone. Carnell asserts that, subsequent to hiring the Steinert & Stephan and utilizing their services in pursuit of a German patent, Steinert applied for a Never Lost Golf patent with the United States Patent and Trademark Office. This filing, states Carnell, includes an assertion by Steinert that she was the sole owner of the patent rights associated with the NLG product. He states that her actions demonstrate an attempt to illegally claim rights to intellectual property that she knew was not hers, both in the United States and in Germany.

Two additional Defendants, Markus Schumann and Harribert Pamp, have been named as co-conspirators. Plaintiffs contend that they conspired with Steinert to commit fraud and perjury in support of Steinert’s assertion of ownership in NLG’s German patent.

Defendants seek equitable relief along with damages, costs and attorney fees.

October 23, 2015

International Intellectual Property Law: Intellectual Property and the Trans-Pacific Partnership Agreement

By Overhauser Law Offices, LLC

On October 4, 2015, Ministers of the 12 Trans-Pacific Partnership (“TPP”) countries – Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States, and Vietnam – announced conclusion of their negotiations. The result is an agreement that has been promoted as enhancing economic growth; supporting the creation and retention of jobs; enhancing innovation, productivity and competitiveness; raising living standards; reducing poverty; and promoting transparency, good governance, and enhanced labor and environmental protections.

TPP’s chapter regarding intellectual property (“IP”) covers patents, trademarks, copyrights, industrial designs, geographical indications, trade secrets, other forms of intellectual property, and enforcement of intellectual property rights, as well as areas in which participating countries agree to cooperate. The IP chapter will make it easier for businesses to search, register, and protect IP rights in new markets, which is particularly important for small businesses.

The chapter establishes standards for patents, based on the World Trade Organization’s (“WTO”) agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), and international best practices. On trademarks, it provides protections of brand names and other signs that businesses and individuals use to distinguish their products in the marketplace. The chapter also requires certain transparency and due process safeguards with respect to the protection of new geographical indications, including for geographical indications recognized or protected through international agreements. These include confirmation of understandings on the relationship between trademarks and geographical indications, as well as safeguards regarding the use of commonly used terms.

October 21, 2015

Northern District Transfers Copyright Infringement Litigation for Lack of Venue

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – District Judge Jon E. DeGuilio of the United States District Court for the Northern District of Indiana transferred a lawsuit alleging copyright to the Southern District of Indiana, citing a lack of venue in the Northern District.

In this litigation, Angela E. Brooks-Nwenga, acting pro se, alleges that The Mind Trust, United Way of Central Indiana, Central Indiana Education Alliance, Phalen Leadership Academies and Indianapolis Public Schools, all of Indianapolis, Indiana, infringed her copyright work, “Transitioning Into Responsible Students.” Among the wrongdoings asserted are infringement involving Defendants’ use of “Bridges To Success Education School Model” and “Phalen Leadership Academies School Model”

This copyright lawsuit was filed in the Northern District of Indiana, with Brooks-Nwenga acting as her own copyright attorney. The court ordered Plaintiff to show cause why the litigation should not be transferred to the Southern District of Indiana. Brooks-Nwenga argued to the court that she lived in Fort Wayne, Indiana, but the court was not persuaded by this, noting that the statute governing venue in a federal lawsuit, 28 U.S.C. § 1391(b), provides that:

a civil action may be brought in:

(1) a judicial district in which any defendant resides, if all defendants are residents of the State in which the district is located;

(2) a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred, or a substantial part of property that is the subject of the action is situated; or

(3) if there is no district in which an action may otherwise be brought as provided in this section, any judicial district in which any defendant is subject to the court’s personal jurisdiction with respect to such action.

None of these criteria applied to this litigation. Brooks-Nwenga also contended that her prior litigation in the Southern District of Indiana had been excessively delayed and that her lawsuit had not received a fair and unbiased hearing. The court was similarly unswayed by this argument, stating that the court would “not hear appeals from other district courts.”

Finally, the court noted that, while venue in the Northern District was improper, “a substantial part, if not all, of the events or omissions giving rise to Ms. Brooks-Ngwenya’s claim seem to have occurred in the Southern District of Indiana.” Consequently, the court ordered the litigation transferred.

October 19, 2015

Indiana Copyright Law: Court Holds That It Lacks Personal Jurisdiction Over Nebraska Copyright Defendant

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The Southern District of Indiana held that copyright Defendant Rural Media Group Inc. of Gretna, Nebraska was subject to neither general nor specific personal jurisdiction and dismissed the copyright infringement lawsuit against it.

Plaintiff Larry Philpot of Indianapolis, Indiana is a professional photographer. He photographed Willie Nelson during a music concert in St. Louis, Missouri. Plaintiff Philpot later registered the photograph with the United States Copyright Office. He also licensed the photograph to be used by others under the terms of the Creative Commons Attribution 2.0 Generic License.

This lawsuit, filed by Philpot acting as his own copyright attorney, was brought when he learned that Defendant had allegedly published the copyrighted photograph on its website, www.myruraltv.com. In the lawsuit, Philpot contended that Defendant had infringed Plaintiff’s copyright by the unlicensed publication of the Nelson photograph. Philpot argued that the court could exercise both general and personal jurisdiction over Defendant.

In contrast, Defendant asked the Southern District of Indiana to dismiss the lawsuit for lack of personal jurisdiction, asserting via a declaration of one of its corporate officers that it “does not own, lease, occupy, or use any real or personal property in Indiana[,] . . . maintain an office in Indiana, maintain a registered agent in Indiana, maintain a bank account in Indiana, or pay taxes in Indiana” and that its “website and Facebook page do not specifically target the Indiana market, but rather target a mass national audience.”

District Judge William T. Lawrence granted the motion to dismiss. On the issue of general jurisdiction, the court noted that “Defendant is a Delaware corporation with its principal place of business located in Gretna, Nebraska. Its only other office is located in Nashville, Tennessee.” The court stated that “general jurisdiction exists only when the [party’s] affiliations with the State in which suit is brought are so constant and pervasive as to render it essentially at home in the forum State”; it added that the prior standard of “substantial, continuous, and systematic course of business” was insufficient. Under the controlling jurisprudence, handed down by the U.S. Supreme Court in the 2014 case Daimler AG v. Bauman, such constant and pervasive contacts are, except in rare cases, present under only two circumstances: when the proposed forum state is the corporation’s principal place of business or its state incorporation. As neither of these conditions was met, and as this was not an exceptional case which might warrant a deviation from the standard rule, general jurisdiction was held to be improper.

The court held that an exercise of specific jurisdiction, a less stringent standard than general jurisdiction, would also be improper. While specific jurisdiction can be found where a defendant is accused of expressly aiming an intentional tort at the forum state, neither “express aiming” nor an intentional tort were in evidence.

The court denied several related motions by Plaintiff and granted Defendant’s motion to dismiss.

October 16, 2015

Indiana Trademark Law: Trademark Plaintiff Abused Legal Process; Trademark Defendant Awarded an Additional $175,000 in Attorneys’ Fees

By Overhauser Law Offices, LLC

Indianapolis, Indiana – In the trademark lawsuit between of Plaintiff Wine & Canvas Development, LLC (“WNC”) and Defendants Christopher Muylle, Theodore Weisser, YN Canvas CA, LLC and Weisser Management Group, LLC, the Southern District of Indiana found that Plaintiffs had engaged in abuse of process and awarded an additional $175,882.68 in attorneys’ fees and costs to Defendant Muylle.

Plaintiff WNC sued Defendants in 2011 on allegations of trademark infringement and false designation of origin after disputes arose regarding the parties’ franchising agreement. Defendants counterclaimed for abuse of process against WNC and its principals Anthony Scott (“Scott”), Tamara McCracken Scott (“Ms. McCracken”), and Donald McCracken (“Mr. McCracken”).

Following a November 2014 trial, the jury found in favor of Defendant Muylle, returning a verdict that there had been no trademark infringement or false designation of origin by Muylle. The jury also found for Muylle on his claim of abuse of process. It awarded him $81,000 from WNC, $81,000 from Scott, $81,000 from Ms. McCracken, and $27,000 from Mr. McCracken.

In this order, the court ruled on Muylle’s most recent petition for attorneys’ fees. These fees had been incurred after September 30, 2014 and consisted of attorneys’ fees that had been neither requested from the jury nor already paid as part of any of three prior payments of Muylle’s attorneys’ fees that had earlier been awarded by the court as sanctions against Plaintiff for failing to follow discovery or court rules.

The court evaluated both whether the fees should be awarded and, if so, whether the amount requested, $175,882.68, was reasonable. Under Seventh Circuit jurisprudence, attorneys’ fees are available when a trademark infringement lawsuit is deemed to be “exceptional.” An example of such an exceptional circumstance under the Lanham Act would be if the plaintiff lost and was also guilty of abuse of process.

The Plaintiff in this litigation lost. At trial, Muylle contended that the trademark infringement lawsuit had been brought for the purpose of causing him to incur considerable litigation costs to put on a defense and, thus, force the closing of the business. Muylle claimed that Scott had told him during a telephone conversation that Scott expected to lose the lawsuit against Muylle but that winning was not the goal of the litigation. Instead his goal was to put Defendants out of business. The jury found that Plaintiff had engaged in abuse of process.

The court also considered whether the amount of the fees was unreasonable. Judge Walton Pratt admitted that, at first blush, the fees did seem questionable for two months of legal services. Upon reviewing the detailed time records, however, the court found that neither the amount of time nor the rates charged per hour were unreasonable. The full amount of attorneys’ fees was awarded to Defendant.

October 15, 2015

DOJ Announces New Strategy to Combat Intellectual Property Crimes

By Overhauser Law Offices, LLC

Washington, D.C. – The Justice Department has announced a new approach to combat intellectual property crimes. Grants to state and local law enforcement agencies totaling more than $3.2 million were also announced.

Attorney General Loretta E. Lynch stated recently that the Justice Department will launch a new collaborative strategy to partner more closely with businesses in intellectual property enforcement efforts. Additionally, over $3.2 million will be awarded to ten jurisdictions to support state and local task forces in the training, prevention, enforcement and prosecution of intellectual property theft and infringement crimes.

“The digital age has revolutionized how we share information, store data, make purchases and develop products, requiring law enforcement to strengthen our defenses against cybercrime – one of my top priorities as Attorney General,” said Attorney General Lynch. “High-profile instances of hacking – even against large companies like Sony and Target – have demonstrated the seriousness of the threat all businesses face and have underscored the potential for sophisticated adversaries to inflict real and lasting harm.”

October 14, 2015

Indiana Patent and Trademark Litigation: Global Archery Sues Seattle-Based Company for Infringement

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – An Indiana intellectual property attorney for Global Archery Products, Inc. of Ashley, Indiana commenced litigation in the Northern District of Indiana alleging trademark and patent infringement by Jordan Gwyther d/b/a Larping.org and UpshotArrows.com of Seattle, Washington.

Two patents are at issue in this lawsuit: U.S. Patent No. 8,449,413 (the “`413 Patent”) and U.S. Patent No. 8,932,159 (the “`159 Patent”). Both are entitled “Non-Lethal Arrow.” Also at issue are U.S. Trademark Registration No. 4,208,867 and 4,208,868 for ARCHERY TAG for use in connection with non-lethal arrows. The patents and trademarks have been registered by the U.S. Patent and Trademark Office.

Global contends that Jordan Gwyther d/b/a Larping.org (“Larping”) is selling and offering for sale several products including a “Crossbow Bolt,” a “Flat Tip Larp Arrow,” a “Glow in the Dark Larp Arrow” and a “Round Tip Larp Arrow.” These arrows are marketed at www.upshotarrows.com. Global asserts that Larping is violating Global’s trademark rights by, inter alia, using the ARCHERY TAG trademark on advertising and as a paid “key word” on one or more search engines in connection with the marketing of these products. Global also claims that Larping’s products infringe upon two of Global’s patents.

In addition to patent infringement and trademark infringement, Global asserts various additional claims against Larping. The counts listed in this federal lawsuit are as follows:

• Count I: Infringement of the ‘413 Patent by Larping
• Count II: Infringement of the ‘159 Patent by Larping
• Count III: Infringement of Federal Trademarks
• Count IV: False Designation of Origin/Unfair Competition
• Count V: False Advertising
• Count VI: Tortious Interference with Contractual Relations
• Count VII: Tortious Interference with Business Relationships
• Count VIII: Criminal Mischief

• Count IX: Deception

Global seeks equitable relief along with damages, including punitive damages, costs and attorney fees.