Declaratory Judgments

July 15, 2020

Trade Dress for Conveyor Belt Fastener Rejected as Functional

The U.S. Court of Appeals for the Seventh Circuit affirmed the district court’s ruling that Flexible Steel Lacing Co.’s (“Flexco”) trade dress is invalid because it is functional.

Flexco originally filed suit in the Northern District of Illinois, Eastern Division for trade dress infringement and unfair competition against Conveyor Accessories, Inc. (“CAI”). CAI counterclaimed seeking cancellation of Flexco’s trademarks and seeking declaratory judgment of invalidity, unenforceability, and noninfringement. The district court granted summary judgment in favor of CAI, finding that Flexco’s trade dress was functional because the product’s utilitarian advantages were disclosed in an expired utility patent, internal corporate documents, and advertising materials.

This case was before Chief Judge, Diane Wood, Judge Joel Flaum and Judge Kenneth Ripple assigned Appeal No. 19-2035 and was decided April 7, 2020.

June 2, 2020

Lafayette Company Seeks Damages for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Lafayette, Indiana – Lafayette Venetian Blind, Inc. (“LVB”), the Plaintiff, claims it has developed substantial goodwill in connection with its distinctive U.S. Trademark Registration No. 3537759 for the word “Allure” for use in connection with window blinds and treatements. LVB claims that Defendant, Blinds to Go (U.S.), Inc. (“Blinds to Go”), uses the term “Allure” “to sell competing goods to many of the same consumers served by LVB.” According to the Complaint, LVB has demanding Blinds to Go cease and desist from using the “Allure” mark in connection with Blinds to Go’s window treatments, but it has failed to do so.

As such, LVB is seeking declaratory relief that it has superior rights to the term “Allure” and has the right to use the term “Allure” throughout the United States for “manufacturing, designing, and selling window treatments, blinds, shades, and related products and services.” Further, LVB is seeking damages for trademark infringement and unfair competition and false designation of origin under the Lanham Act (15 U.S.C. § 1114 and 15 U.S.C.A. § 1125(a), respectively). Finally, LVB is claiming damages for common law trademark infringement and passing off/unfair competition.

The case was assigned to Judge Phillip P. Simon and Magistrate Judge John E. Martin in the Northern District and assigned Case 4:20-cv-00021-PPS-JEM.

May 7, 2020

Williamsburg Furniture Claims Lippert Patent is Invalid and/or Unenforceable

By Overhauser Law Offices, LLC

South Bend, Indiana – Attorneys for Plaintiff, Williamsburg Furniture, Inc. (“Williamsburg”) of Nappanee, Indiana originally filed suit in the District Court of Delaware seeking a declaratory judgment of non-infringement against Defendant, Lippert Components, Inc. (“Lippert”) claiming Lippert’s United States Patent No. 8,739,330 (the “‘330 Patent”) is invalid and/or unenforceable. Williamsburg is also seeking judgment for false advertising and unfair competition as it claims Lippert informed Williamsburg’s customers of the alleged patent infringement and caused Williamsburg to lose sales. Upon motion by Lippert, the case was transferred to the Northern District of Indiana.

According to the Complaint, the invention claimed in the ‘330 Patent for a tri-fold sofa was publicly disclosed, in public use, on sale, or otherwise available to the public through third parties not associated with the ‘330 invention more than one year prior to the filing of the provisional patent application. For instance, Patrick Hutmacher claims he purchased a tri-fold chair/bed in August 2010 from a furniture store in McHenry. One month later, a person from the McHenry furniture store allegedly brought a second tri-fold chair/bed to Mr. Hutmacher at his place of employment, Flair Interiors, Inc. (“Flair”), in an attempt to supply the products to the company.

February 6, 2020

Indiana Trade Secret Litigation: Eli Lilly and Company Seeks Declaratory Judgment of Non-Misappropriation of Trade Secrets

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Eli Lilly and Company (“Lilly”) of Indianapolis, Indiana, filed suit in the Southern District of Indiana seeking a declaratory judgment that Lilly did not misappropriate any trade secrets of Defendant, SensorRx, Inc. (“SensorRx”) of Charlotte, North Carolina, or breach a contract with SensorRx. Lilly is seeking declaratory judgment, costs, attorneys’ fees, litigation expenses, and any other relief the court deems proper.

According to the complaint, Lilly has developed an app to help manage migraines called Vega™ Migraine. Lilly claims it created the app over the course of two years, it released the app on the Apple App Store on November 5, 2019, and the app is currently available for a free download, on a limited basis. Previously, Lilly has allegedly developed other mobile apps including “Go Dose,” a diabetes management and insulin dosing app, which helped Lilly gain experience to create and develop Vega™ Migraine. Lilly claims there are over fifty migraine management and other migraine related apps available to the public and many other health apps directed to various health conditions.

Lilly alleges it began having non-confidential discussions regarding SensorRx’s app, MigrnX™, in mid to late 2018 during which SensorRx discussed the capabilities of the app and demonstrated the app’s usage to Lilly. During the parties’ second in-person meeting in January 2019, they allegedly entered into a Mutual Confidentiality Agreement (“MCA”). Per the complaint, the MCA noted any information already known, becomes known to the public, has been lawfully received without restriction, or has been independently developed without use of confidential information, is not confidential information. Lilly claims due diligence was performed by both parties subsequent the signing of the MCA. After being concerned throughout the process and disappointed after the due diligence was conducted in the level of quality and capability of MigrnX™, Lilly alleges it contacted a representative of SensorRx on or about May 28, 2019 to terminate the due diligence. Continue reading

January 16, 2020

Indiana Trademark Litigation: CityMoms, Incorporated in Delaware, Seek Declaratory Judgment Against theCityMoms Greater Indianapolis LLC

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, CityMoms, Inc. (“CityMoms”) incorporated in the State of Delaware, filed suit in the Southern District of Indiana seeking a declaratory judgment that its use of “CityMoms” does not infringe the rights of Defendant, theCityMoms Greater Indianapolis LLC (“theCityMoms”) of Indianapolis, Indiana, or theCityMoms’ Trademark Registration No. 4,588,132 (the “‘132 Registration”) for “theCityMoms”. In the alternative, if there is a likelihood of confusion found between the two parties’ marks, CityMoms is claiming its use of the term predates that of theCityMoms. As such, CityMoms is seeking declaratory judgment of non-infringement, and in the alternative, injunctive relief, judgment including statutory damages, and attorneys’ fees.

According to the complaint, CityMoms conducts business online and offers, among other things, a mobile app and software system “that helps local businesses book unused spots in their kids’ activities programs and family events.” TheCityMoms is alleged to provide “a sisterhood for the modern mom” that offers a support network for moms, events and activities, and an official membership. CityMoms claims that theCityMoms has threatened to take action against it for trademark infringement and unfair competition and has interfered with CityMoms’ ability to sell its app to a third party.

CityMoms’ services are alleged to have begun in 2012 with theCityMoms filing its application for the ‘132 Registration on January 2, 2014. This application was given Serial No. 86156171 (the “‘171 Application”) and was filed for the goods and services of International Class 041, which includes “Educational and entertainment services, namely, providing motivational and educational speakers; Organizing, arranging, and conducting playdates, mom-only evenings, open play times, shopping parties, fitness classes, volunteering and cultural events”. The ‘171 Application was submitted with a statement by Melissa Kondritz and Jeanine Bobenmoyer that “theCityMoms” was used in commerce and related with the company at least as early as March 1, 2013. However, CityMoms claims that the domain name http://thecitymoms.org/ was not registered until March 8, 2013 and therefore could not have existed prior to that date. CityMoms further claims it has found no evidence theCityMoms provided motivational and educational speakers on or before January 2, 2014 as part of its business and therefore, the ‘171 Application was filed with “willfully false material statements that constituted fraud” and should make the ‘132 Registration invalid and unenforceable.

August 22, 2019

Design Patents Protect Spare Parts For Vehicles

By Overhauser Law Offices, LLC

This case, originally filed in the United States District Court for the Eastern District of Michigan on claims of patent infringement, was brought on appeal in the United States Court of Appeals for the Federal Circuit. The Court of Appeals issued an opinion affirming the district court’s summary judgment in favor of Defendant-Appellee, Ford Global Technologies, LLC (“Ford”), and against Plaintiff-Appellant, Automotive Body Parts Association (“Automotive”). The originally sealed opinion was issued on July 11, 2019 but was unsealed in full on July 23, 2019.

Ford owns U.S. Patent No. D489,299 (the “D’299 Patent”) and U.S. Patent No. D501,685 (the “D’685 Patent”) for “Exterior of Vehicle Hood” and “Vehicle Head Lamp”, respectively. These design patents were invented by artists that allegedly selected part designs for the Ford F-150 truck on based on aesthetic appearance alone and not a functional purpose. Automotive is comprised of a group of companies that distribute automotive parts.

Conflict between Automotive and Ford allegedly occurred when Ford accused several Automotive members of infringing the D’299 and D’685 Patents, among others, before the International Trade Commission (“ITC”). The administrative law judge in the ITC proceedings ruled that “‘respondents’ [invalidity] defense that the asserted patents do not comply with the ornamentality requirement of 35 U.S.C. § 171 has no basis in the law’ and that ‘there is no legal basis for respondents’ assertion of [unenforceability based on] either the patent exhaustion or permissible repair doctrines’”. The ITC action settled after the administrative law judge’s ruling.

May 6, 2019

Indiana Patent Litigation: Dr. Rick C. Sasso Seeks Royalties from Warsaw Orthopedic, Inc. and its Affiliates

By Overhauser Law Offices, LLC

Kosciusko County, Indiana – Attorneys for Plaintiff, Rick C. Sasso, M.D. (“Dr. Sasso”) of Carmel, Indiana, originally filed suit in the Kosciusko County Superior Court in Indiana alleging that Defendants, Warsaw Orthopedic, Inc., Medtronic, PLC, and Medtronic Sofamor Danek, Inc., have denied him and his accounting firm access to their sales ledger per two separate agreements. Dr. Sasso is seeking an injunction ordering Defendants to provide full access to its sales ledger to determine royalties owed to Dr. Sasso under two separate agreements. As of April 12, 2019, Defendants filed a Notice of Removal to remove the case to the U.S. District Court for the Northern District of Indiana.

Per the complaint, Dr. Sasso is a board-certified orthopedic surgeon specializing in the treatment of the spine. Dr. Sasso claims the Defendants, together, are top manufacturers for spine implants. It is claimed Dr. Sasso entered into two separate agreements with Sofamor Danek Holding, Inc., which was later acquired by Warsaw Orthopedic through a merger. The first alleged agreement, is the 1999 Screw Delivery System Agreement on November 18, 1999 (the “1999 Agreement”). The second alleged agreement is the 2001 Vertex Agreement, entered into on July 26, 2001 (the “2001 Agreement”). Dr. Sasso claims that these agreements have clauses that enable him to “inspect, examine, audit, and copy [Defendants’] records” relating to the agreements once per calendar year.

In August 2013, Dr. Sasso filed a different suit against the Defendants for unpaid royalties under both the 1999 and 2001 Agreements. Dr. Sasso was granted royalties in the amount of $79,794,721.00 for the 1999 Agreement and $32,657,548.00 for the 2001 Agreement, which has been appealed by Defendants. According to the complaint, the 1999 Agreement requires the Defendants to continue paying royalties until the expiration of U.S. Patent No. 6,287,313 and U.S. Patent No. 6,562,046, on or about November 23, 2019. Dr. Sasso also claims the 2001 Agreement requires Defendants to pay royalties to him so long as “the Medical Device is covered by a valid claim of an issued patent arising out of the Intellectual Property Rights.”

December 17, 2018

Indiana Patent Litigation: Indiana Based Company, Engineered by Schildmeier, Seeks Declaratory Judgment of Patent and Trade Dress Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Engineered by Schildmeier, LLC of Anderson, Indiana, filed suit in the Southern District of Indiana alleging that Defendants, Amazing Parts Warehouse (d/b/a several different names) of Lexington, Kentucky, and Wuhn Xuelang Auto Parts Co., Ltd. of China, infringed its rights in United States Patent No. D 816,584 (“the ‘584 Patent”) for a “Pair of Bed Rail Stake Pocket Covers”. Plaintiff is seeking judgment including damages, pre and post-judgment interests and costs.

Plaintiff asserts that Defendants have been offering to sell products on Amazon, eBay, and other various sites since February 2018. Amazon has taken down the advertisements when shown the ‘584 Patent. After a bit of time, Amazing Parts Warehouse then re-advertises the same product under a different dba. Amazon removes the new advertisements as they are reported and the cycle repeats almost monthly. The advertisements on eBay have not been removed as eBay refuses to act on validity of patents without Court direction. Plaintiff continues to send Cease and Desist letters to Defendants through Amazon and eBay as well as contact with their websites and the U.S. Postal Service.

Count I of the Complaint asserts federal patent infringement as the Plaintiff’s and Defendants’ bed rail stake pocket covers are as they claim, not only identical, but substantially the same leading to customer confusion. Count II claims trade dress infringement in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The third count seeks declaratory judgment of both the design patent and trade dress validity. Next, Plaintiff seeks declaratory judgment of infringement and validity of trade dress. The final count asserts unfair competition under Indiana state law. Plaintiff claims that they have lost nearly $100,000 in lost profits since the Defendants began selling their counterfeit products in February and they continue to lose a minimum of $3,000 in profits per week.

October 15, 2018

Indiana Patent Litigation: Eli Lilly and Company Seeking Declaratory Judgment in Patent Ownership Case

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Eli Lilly and Company of Indianapolis, Indiana, filed suit in the Southern District of Indiana for a declaratory judgment against Defendant, Adocia S.A. of Lyon, France, who is claiming inventorship and ownership rights in Lilly’s United States Patent No. 9,901,623 B2 (“the ‘623 Patent”) for “Rapid-Acting Insulin Compositions”, and United States Patent No. 9,993,555 B2 (“the ‘555 Patent”) for “Rapid-Acting Insulin Compositions”. Plaintiff is seeking declaratory judgment, attorneys’ fees and costs, and further relief the Court determines to be just and proper.

Lilly began its research that led to the ‘623 and ‘555 Patents at least as early as 2011. Right around that same time, Lilly and Adocia began negotiating an agreement to develop an ultra-rapid insulin “URI” formulation using Adocia’s BioChaperone® technology. Adocia and Lilly entered into a collaborative research and license agreement on December 13, 2011. The two companies signed a confidentiality agreement on November 21, 2012. By July 2013, the original agreement was terminated.

The Parties entered into a second confidentiality agreement on December 16, 2013 and a second collaborative research and license agreement on December 18, 2014 using different BioChaperone® molecules than the first agreement. The second research collaborative continued until January 2017. While Lilly was a part of the research collaborative, they were also running a separate internal program to develop a URI with specific concentrations of citrate for a more rapid time action profile and specific excipients to maintain the stability for the composition. Unlike this research, the collaborative research focused only on URI products containing BioChaperone® molecules. The separate internal research led to the ‘623 Patent issuing on February 27, 2018 and the ‘555 Patent issuing on June 12, 2018.

October 11, 2018

Indiana Trademark Litigation: Indiana Company, Veridus Group, Inc., Seeking Declaratory Judgment of Trademark Non-Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Veridus Group, Inc. of Indianapolis, Indiana, filed suit in the Southern District of Indiana for a declaratory judgment against Defendant, Strategic IP Information Pte Ltd. (“SIP-IP”) of Irvine, California, that Veridus Group has not infringed SIP-IP’s rights in United States Trademark Registration No. 5,294,263 for the mark VERI-SITE. Plaintiff is seeking declaration and judgment, damages, attorney’s fees, costs, and any other relief the Court may deem appropriate.

This case arose after the Defendant sent the Plaintiff a cease and desist letter alleging that Veridus Group was infringing on their federal trademark. SIP-IP provides internet and brand management services, which include certification systems to “help ad networks and publishers identify website hosting content without authorization.” Veridus Group runs a site certification program designed to help professional property developers mitigate risk and to help end-users in increasing the speed to market and improving the value and marketability of a site or building. They utilize the mark VERISITE for marketing and sales purposes related to their site certification services and related goods.

Veridus Group claims that the Defendant does not have an exclusive right over the word “VERISITE” in connection with Plaintiff’s business activities as they are significantly different from those of SIP-IP. Further, Plaintiff alleges that even if Defendant did have exclusive ownership in this manner, the services and goods are marketed in such different channels of trade and with both companies working with sophisticated purchasers, there is not a likelihood of confusion for the origin of the services and/or goods. As there is an actual case and controversy as to whether Plaintiff is infringing Defendant’s mark in violation of the Lanham Act and as to whether the Plaintiff engaged in unfair competition at the federal or state common law level, Plaintiff is seeking a declaration of the rights of the parties in connection with the mark VERISITE.