Indianapolis, Indiana – An Indiana patent lawyer for Plaintiff Eli Lilly and Company of Indianapolis, Indiana (“Lilly”) filed a patent infringement lawsuit in the Southern District of Indiana. The allegations of infringement have been directed at Defendants Teva Pharmaceuticals USA, Inc. of North Wales, Pennsylvania and its parent company Teva Pharmaceutical Industries Ltd. of Israel.

This lawsuit was instituted in response to Abbreviated New Drug Application (“ANDA”) No. 208569, which was filed with the U.S. Food and Drug Administration by Teva USA. The ANDA seeks approval to market a generic version of Forteo®, a prescription drug offered by Lilly to treat osteoporosis.

At issue in this litigation are Lilly’s U.S. Patent Nos. 6,770,623; 7,144,861; 7,550,434; 6,977,077; 7,163,684; and 7,351,414. All have been issued by the U.S. Patent and Trademark Office. Lilly contends that the filing of the ANDA constitutes direct infringement, inducement to infringe and contributory infringement of these patents under U.S. patent law.

Lilly seeks equitable relief, costs and attorney’s fees.

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Indianapolis, Indiana – Dean Graham, founder of now-defunct Help Indiana Vets, Inc. (“HIVI”), both of Acton, Indiana, was interviewed by Indianapolis television station Fox 59 regarding recent publicity about lavish spending of Wounded Warrior Project, which Graham and HIVI had first alleged in 2010. Indianapolis intellectual property attorney Paul Overhauser, publisher of this blog, was also interviewed.


Graham, a retired veteran, founded HIVI in 2010. HIVI operated with a few thousand dollars in outside donations and over $27,000 donated by Graham and his wife from their personal savings. Of those donations, 100% was spent directly on providing assistance to veterans in need.

To help raise awareness of the needs of injured veterans, as well as to ask for charitable donations, HIVI had operated a website. That website included statements criticizing how WWP of Jacksonville, Florida was run, including that WWP was “a fraud,” that it “needs to be investigated immediately” and that it “ha[s] an army of lawyers on staff to punish all those who try to expose [it].”

In response to these statements and others, WWP in November 2013 engaged lawyers from two law firms, Barnes & Thornburg LLP, one of the largest law firms in the United States, and Kutak Rock LLP,  a 500-plus attorney firm, to jointly sue HIVI and Graham on WWP’s behalf. The complaint asserted, inter alia, defamation and false advertising under the Lanham Act.

Attorney Overhauser, whose practice of law focuses on intellectual property litigation, volunteered to provide some assistance to Graham and HIVI in defending against WWP’s allegations. Nonetheless, by June 2014, concerned for the effects that the lawsuit was having on his family, Graham acceded to WWP’s demands. He shuttered his charity and its website.

Recent Attention in the Media

Following a story first broken in January by the New York Times, titled “Wounded Warrior Project Spends Lavishly on Itself, Insiders Say,” the national media have recently covered WWP extensively. Much of the attention has been focused on WWP’s “aggressive styles of fund-raising, marketing and personnel management” as well as the millions of dollars in “lavish spending on luxury travel, fancy meals and swanky getaways that rivals the amount spent on its combat stress-recovery program.” According to Fox 59, research revealed that about 40 cents of each dollar donated went to lavish spending. After an independent review of the organization’s finances, WWP dismissed its Chief Executive Officer, Steve Nardizzi, and its Chief Operating Officer, Al Giordano.

In addition to the New York Times, the allegations against Wounded Warrior Project have been covered by many national media outlets, including:

• ABC: Wounded Warrior Project Like a ‘Frat Party,’ Former Employee Says
• CBS: Wounded Warrior Project accused of wasting donation money
• Fox News: Wounded Warrior Project’s top execs fired amid lavish spending scandal
• NBC: Wounded Warrior Project’ CEO, COO Fired Amid Lavish Spending Scandal
• New York Post: Wounded Warrior Project probed for lavish spending while vets suffer

• UPI (United Press International): Wounded Warrior Project founder, top executive fired after damning CBS report

This story was also covered on a local Indiana channel, Fox 59, in an interview featuring both Graham and Overhauser. “We knew about activities [like] large parties and expenses. It was even bigger than I imagined,” said Graham. “I hope that this really does clean up from top to bottom and [cause] some changes that will be positive for veterans.

“Dean Graham has been trying to get this information out into the public for years but he was squashed by this lawsuit and had to discontinue his efforts,” said Overhauser. “The truth has come out.”

A video of the interviews featured on Fox 59 can be viewed here: http://via.fox59.com/prxMt.

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Washington, D.C. – The Federal Circuit, sitting en banc, reaffirmed its rules of patent exhaustion in a 10-2 decision. It concluded that the Supreme Court decisions in Quanta Computer, Inc. v. LG Electronics, Inc., and Kirtsaeng v. John Wiley & Sons, Inc., did not require any change in the law of patent exhaustion. The 99-page decision was consistent with the position argued in the amicus brief filed by the American Intellectual Property Law Association.

Specifically, the Federal Circuit held that a patentee, when selling a patented article subject to a single-use/no-resale restriction that is lawful and clearly communicated to the purchaser, does not give the buyer, or downstream buyers, the resale/reuse authority that has been expressly denied. Explaining that the ruling in Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992) remains unchanged, Judge Taranto wrote the following:

Such resale or reuse, when contrary to the known, lawful limits on the authority conferred at the time of the original sale, remains unauthorized and therefore remains infringing conduct under the terms of § 271. Under Supreme Court precedent, a patentee may preserve its § 271 rights through such restrictions when licensing others to make and sell patented articles; Mallinckrodt held that there is no sound legal basis for denying the same ability to the patentee that makes and sells the articles itself. We find Mallinckrodt’s principle to remain sound after the Supreme Court’s decision in Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), in which the Court did not have before it or address a patentee sale at all, let alone one made subject to a restriction, but a sale made by a separate manufacturer under a patentee-granted license conferring unrestricted authority to sell.

The Federal Circuit also held that a U.S. patentee, by merely selling or authorizing the sale of a U.S.-patented article abroad, does not authorize the buyer to import the article and sell and use it in the United States, which are infringing acts absent authority from the patentee. Explaining that the ruling in Jazz Photo Corp. v. International Trade Comm’n, 264 F.3d 1094 (Fed. Cir. 2001), remains unchanged, Judge Taranto wrote the following:

Jazz Photo’s no exhaustion ruling recognizes that foreign markets under foreign sovereign control are not equivalent to the U.S. markets under U.S. control in which a U.S. patentee’s sale presumptively exhausts its rights in the article sold. A buyer may still rely on a foreign sale as a defense to infringement, but only by establishing an express or implied license–a defense separate from exhaustion, as Quanta holds–based on patentee communications or other circumstances of the sale. We conclude that Jazz Photo’s no-exhaustion principle remains sound after the Supreme Court’s decision in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013), in which the Court did not address patent law or whether a foreign sale should be viewed as conferring authority to engage in otherwise infringing domestic acts. Kirtsaeng is a copyright case holding that 17 U.S.C. §109(a) entitles owners of copyrighted articles to take certain acts “without the authority” of the copyright holder. There is no counterpart to that provision in the Patent Act, under which a foreign sale is properly treated as neither conclusively nor even presumptively exhausting the U.S. patentee’s rights in the United States.

Judge Dyk filed a dissenting opinion, which was joined by Judge Hughes, that generally agreed with the position argued in the government’s amicus brief.

With respect to Mallinckrodt, Judge Dyk maintained that the decision was wrong from the outset and cannot now be reconciled with the Supreme Court’s Quanta decision. “We exceed our role as a subordinate court by declining to follow the explicit domestic exhaustion rule announced by the Supreme Court,” he added. With respect to Jazz Photo, he wrote that he would retain the ruling if read to say that a foreign sale does not always exhaust U.S. patent rights, but it may if the authorized seller failed to explicitly reserve those rights.


Lexmark makes and sells patented ink cartridges for its printers. It sells cartridges under one plan that permits buyers to use them as they wish, and at a discounted price under a “Return Program” plan that limits buyers to a single use of the cartridge and requires the cartridges to be returned to Lexmark for recycling.

Lexmark brought infringement actions in the district court and the International Trade Commission against Impression Products and other makers of after-market ink cartridges for Lexmark printers. Most of the district court defendants settled the litigation with Lexmark.

As to Lexmark’s action against Impression Products, the district court entered a stipulated judgment on Impression Products motion to dismiss. It held that Lexmark’s patent rights in cartridges first sold in the United States were exhausted under Quanta, but that the rights were retained for cartridges first sold abroad under Jazz Photo.

On appeal, the Federal Circuit sua sponte granted en banc review of whether the appellate court’s ruling on conditional sales in the U.S. must be overruled in light of Supreme Court’s Quanta decision, and whether the appellate court’s Jazz Photo ruling on international exhaustion must be overruled in light of the Supreme Court’s ruling on copyright exhaustion in Kirtsaeng.

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West Lafayette, Indiana – Startups based on Purdue University patented intellectual property have raised more than $96 million in the past two years in local, state, federal and private funding and created 156 positions.

The funding was raised by the 24 members of the Purdue Startup Class of 2014 and the 25 members of the Purdue Startup Class of 2015. Both groups of startups licensed technologies from the Purdue Research Foundation Office of Technology Commercialization. In the same period, another 39 startups have originated from non-patented Purdue “know-how.”

“In the past two years we have seen an incredible increase in startup creation that is demonstrated in Purdue’s back-to-back record-breaking years,” said Dan Hasler, president and chief entrepreneurial officer of the Purdue Research Foundation. “As we have always known, even more important than the quantity of the startups is their subsequent impact on economic value and commercial execution. We are pleased with how this cohort of companies is progressing.”

The U.S. Patent Office issued the following 154 patent registrations to persons and businesses in Indiana in February 2016, based on applications filed by Indiana patent attorneys:

Patent No. Title
1 D749,991 Sheet for a patient repositioning system
2 9,269,246 Copper theft alarm for grain bin systems
3 9,267,957 Junction and system for transporting sample racks
4 9,267,953 Method for detection of specific immunoglobulin class G antibodies
5 9,267,911 Encoded biosensors and methods of manufacture and use thereof
6 9,267,773 Broadhead
7 9,267,597 System for adjusting fluid volume in a transmission and method thereof
8 9,267,582 System and method for multiplexing gear engagement control and providing fault protection in a toroidal traction drive automatic transmission

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The U.S. Trademark Office issued the following 122 trademark registrations to persons and businesses in Indiana in February 2016 based on applications filed by Indiana trademark attorneys:

Registration No.  Word Mark Click To View
4905048 SPECK’S VIEW
4905047 SPECK’S VIEW
4904930 NALC VIEW
4904903 YILO VIEW
4904582 KGSR VIEW

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Indianapolis, Indiana – An Indiana patent attorney for Plaintiff Eli Lilly & Company (“Lilly”) of Indianapolis, Indiana filed a lawsuit in the Southern District of Indiana alleging that Biocon Limited of Bangalore, India will infringe its patented chemotherapy drug, which Lilly offers under the brand name ALIMTA.

At issue in this patent litigation is U.S. Patent No. 7,772,209 (the “‘209 patent”). In February, Biocon notified Lilly that it had submitted an Abbreviated New Drug Application (“ANDA”) to the FDA. Lilly believes that the product that is the subject of the ANDA will be marketed as a generic version of ALIMTA and that such conduct will infringe the ‘209 patent.

This federal patent infringement lawsuit, filed by an Indiana lawyer on behalf of Lilly, lists a single count: Infringement of U.S. Patent No. 7,772,209.

Lilly states that it will suffer irreparable injury unless Defendant is “enjoined from infringing the ‘209 patent, actively inducing infringement of the ‘209 patent, and contributing to the infringement by others of the ‘209 patent.” It seeks a declaratory judgment, equitable relief, damages, costs and attorneys’ fees.

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Washington D. C. – The United States Senate Judiciary Committee approved S. 1890, the Defend Trade Secrets Act (“DTSA”). If enacted, the bill would create a private cause of action in the federal courts for trade secret misappropriation.

Under Indiana’s Access to Public Records Act, a trade secret is defined as:

information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

(1) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and

(2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

The proposed legislation uses a similar definition:

[T]he term “trade secret” means all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if —

(A) the owner thereof has taken reasonable measures to keep such information secret; and

(B) the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, the public.

The DTSA would be the civil counterpart to the Economic Espionage Act of 1996, a criminal statute that uses the same definition of “trade secret” as the DTSA.

This would be the first time that individuals would have a private, federal right of action for theft of trade secrets. Presently, those seeking redress in civil court for theft of trade secrets must resort to claims based on state law or seek to have a claim for injunctive relief filed by the Attorney General.

The DTSA, if enacted, would address the current patchwork of state laws protecting trade secrets. While those state statutes are similar, with many states having enacted some form of the Uniform Trade Secrets Act (“UTSA”), they are not identical.

The DTSA does not preempt any other law. Thus, where a state’s law governing trade secrets is more generous, a plaintiff retains the ability to sue under that state law also, either in state court or as a pendant claim in a federal lawsuit.

The relief offered under the DTSA contains such remedies as monetary damages, including royalty payments, reimbursement of actual losses caused by the defendant and trebling of a monetary award where punitive damages are found to be appropriate. Injunctive relief and attorneys’ fees may also be recoverable.

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Hammond, Indiana – An intellectual property attorney for Plaintiff DirecTV, LLC of California filed a signal-interception lawsuit in the Northern District of Indiana. It is alleged that Defendants Jorge Aguilera and Patricia Huerta of Delphi, Indiana and Rose Aguilera of Lafayette, Indiana acted unlawfully individually and on behalf of Defendant Pollo Feliz, Inc., which is located in Lafayette, Indiana.

Plaintiff DIRECTV offers encrypted satellite programming on a subscription basis. Customers who pay the appropriate fee are provided with special equipment to unscramble the broadcasts so that they may be viewed.

Fees charged to residential customers are lower than those charged to commercial establishments. DIRECTV states that customers “can surreptitiously gain access to DIRECTV programming without proper authorization by subscribing to DIRECTV services under a residential account and then installing/moving the equipment to their businesses and utilizing those services in a commercial environment.”

Defendant Pollo Feliz, Inc. operates a Mexican restaurant. The individual Defendants allegedly serve as officers, directors, shareholders and/or principals of Pollo Feliz. Defendants are accused of broadcasting DIRECTV content at a commercial establishment, Pollo Feliz, without the proper commercial license. Plaintiff contends that this conduct violates 18 U.S.C. §§2511 and 2512, 47 U.S.C. §605 and Indiana law.

In its complaint, filed with an Indiana federal court by an intellectual property lawyer for Plaintiff, the following counts are alleged:

• Count 1 – Damages for Violations of Cable Communications Policy Act [47 U.S.C. §605(e)(3(C)]
• Count 2 – Damages for Violations of 18 U.S.C. §2511
• Count 3 – Civil Conversion

DirecTV seeks equitable relief along with damages, including punitive damages, costs and attorney’s fees.

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Washington, D.C. – The Trade Facilitation and Trade Enforcement Act provides new tools and resources to protect American innovation.

The Office of the United States Trade Representative (“USTR”) commended Congress for passing the Trade Facilitation and Trade Enforcement Act of 2015, which will bolster trade enforcement efforts.

“This bill adds new tools that we’ll use in the work we do every day to hold America’s trading partners accountable,” said U.S. Trade Representative Michael Froman. “Coming on the heels of negotiating [the Trans-Pacific Partnership (“TPP”)], the highest-standard trade agreement in history, this bill will further boost enforcement of the groundbreaking intellectual property, labor, environment, and many other fully enforceable commitments we’ve secured.”

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