Articles Posted in Declaratory Judgments

Evansville, Indiana – In the matter of Berry Plastics Corporation v. Intertape Polymer Corporation, Judge Richard L. Young of the Southern District of Indiana ruled on Defendant Intertape’s motion to reconsider the court’s conclusion of patent invalidity on the grounds of obviousness.

This Indiana patent litigation, filed in January 2010, sought a declaratory judgment of non-infringement of U.S. Patent No. 7,476,416 (the “‘416 patent”). Plaintiff Berry Plastics Corp. sued competitor Intertape Polymer Corp., which owns the ‘416 patent.

In the complaint, Berry asked the federal court to rule that it had not infringed the patent-in-suit, titled Process for Preparing Adhesive Using Planetary Extruder. In the alternative, it asked that the court rule that the patent was invalid and unenforceable. Among the reasons cited for this proposed conclusion were assertions that Intertape had engaged in improper conduct before the U.S. Patent and Trademark Office and that the patent was invalid as obvious.

The court held a jury trial in November 2014. The jury found, inter alia, that the ‘416 patent was not obvious. After the trial, the court heard additional argument on the issue of the validity of the patent and ruled for Berry, holding that the patent-in-suit was invalid as obvious.

In this recent entry, the court rules on Intertape’s motion to reconsider on the grounds that the court had ruled too broadly, inadvertently invalidating the entire patent instead of addressing only the asserted claims presented at trial. The court held that it was permitted under Fed. R. Civ. P. 54(b) to modify its previous order (“[A]ny order or other decision … that adjudicates fewer than all the claims …does not end the action as to any of the claims or parties and may be revised at any time before the entry of a judgment adjudicating all the claims …. “). It also concluded that, under Fed. R. Civ. P. 50, it had the authority to enter judgment against a party after a jury trial as long as “a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue.”

The court first held that certain dependent claims had not been challenged as invalid at trial and, consequently, the court had no jurisdiction to rule on the validity of those claims. On these claims, it granted the motion to reconsider.

Regarding those dependent claims that had been asserted at trial, the court evaluated the evidence and testimony presented and concluded that the dependent claims added no patentable subject matter but were instead simply obvious selections of prior art used in an ordinary way. Consequently, the court denied Intertape’s motion to reconsider.

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South Bend, Indiana – An Indiana trademark attorney for Plaintiff Heartland Recreational Vehicles, LLC of Elkhart, Indiana filed a declaratory judgment lawsuit in the Northern District of Indiana. Defendant is Universal Trailer Cargo Group, Inc., which also does business as Haulmark Trailers. Haulmark Trailers operates locations in Elkhart and Bristol, Indiana.

Plaintiff states that Defendant Haulmark has manufactured and sold race car trailers that are offered under the trademark THE EDGE. Recreational vehicles manufactured and sold by Plaintiff Heartland under the brand EDGE are alleged by Defendant to infringe upon Defendant’s trademark rights.

At issue in the litigation is Haulmark’s trademark, U.S. Trademark Registration No. 3,338,373 for the brand THE EDGE, which applies to “towage storage trailers.” Also at issue is Plaintiff’s pending trademark registration, Application No. 86/768,274 for the brand EDGE, as applied to “recreational vehicles, namely fifth wheels; recreational vehicles, namely toy haulers; recreational vehicles, namely travel trailers.”

While Heartland’s application was passed to publication without any objection by the U.S. Patent and Trademark Office’s trademark examining attorney, Haulmark later informed Heartland that it was opposing the registration of EDGE as applied to Heartland’s goods. A trademark lawyer for Haulmark threatened litigation for “federal claims for trademark infringement” if Heartland did not cease and desist use of the EDGE trademark.

Plaintiff Heartland seeks a declaratory judgment, stating that Haulmark’s threat of litigation has made the dispute ripe for judicial resolution. It asks the court to conclude, given “the actual use of the term EDGE by the parties, the differences between the goods and the markets for the goods of each party to which that term is applied, as well as the price of the respective goods and the channels of trade for each party’s goods,” that there is no likelihood of consumer confusion arising from Heartland’s concurrent use of EDGE as a trademark for its goods.

Heartland asks the court to declare that its use of the term EDGE, as applied to its products, is not an infringement upon any of UTC’s rights and that Haulmark’s THE EDGE trademark should not be construed so broadly as to cover recreational vehicles.

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Hammond, Indiana – Trademark lawyers for Plaintiff Family Express Corporation of Valparaiso, Indiana filed a complaint for declaratory judgment of non-infringement and trademark cancellation in the Northern District of Indiana.

The Defendant in this litigation is Square Donuts Inc., which has stores in Terre Haute, Indianapolis, Bloomington and Richmond, Indiana. Defendant owns two registered federal trademarks: SQUARE DONUTS, Trademark Reg. No.4341135 for “café services,” and “SQUARE DONUTS” & Design, Trademark Reg. No. 4341136 for “retail bakery shops.” It also holds an Indiana State trademark for the mark “Square Donuts, Inc.” Both Plaintiff and Defendant sell donuts.

The dispute arose in 2006, when a trademark attorney for Defendant Square Donuts sent a letter to Plaintiff Family Express accusing it of “making square donuts and marketing the same under the name ‘Square Donuts,'” which it asserted was a violation of Defendant’s trademark rights. Legal counsel for Family Express responded that there was no trademark infringement, as “square donuts” was merely descriptive and, thus, could not be registered as a trademark without a showing of acquired distinctiveness. Family Express’ trademark lawyer also noted that the trademark in question was not registered with the U.S. Patent and Trademark Office but rather with the State of Indiana.

Ten years later, the dispute remains unresolved. Square Donuts, Inc. has acquired two federal trademarks and continues to express its concerns about Plaintiff’s use of “square donuts” in the marketing its donut products. Plaintiff proposed a co-existence agreement but the notion of such an agreement was rejected.

In January 2016, the U.S. Patent and Trademark Office refused to register Family Express’s “SQUARE DONUTS” mark, Application No. 86779997, in Class 030 for “donuts” and in Class 035 for “retail convenience stores” on the grounds of likely confusion with Defendant’s preexisting trademark registrations for “SQUARE DONUTS.”

In this litigation, Plaintiff Family Express seeks the following from the court:

• Count I: Declaration of Non-Infringement

• Count II: Cancellation

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Indianapolis, Indiana – District Judge Tanya Walton Pratt of the Southern District of Indiana denied Plaintiff’s request for partial summary judgment for declaratory relief and injunctive relief against Defendants in a copyright dispute over the use of Plaintiff’s copyrighted photograph of Indianapolis.

This lawsuit dates back to June 7, 2011 when Plaintiff Richard N. Bell of McCordsville, Indiana sued 22 Defendants for alleged infringement of his copyrighted photo, U.S. Copyright Registration No. VA0001785115. Bell amended his complaint multiple times, with the third amended complaint becoming the operative pleading on December 6, 2012.

In May 2013, the litigation was severed into three separate cases, including the one that is the subject of this opinion. In this lawsuit, Bell, who is both an Indiana copyright attorney and a professional photographer, accused Defendants Insurance Concepts, Fred O’Brien and Shanna Cheatham of copyright infringement. Bell sought injunctive relief along with damages, costs and attorney’s fees.

A prior opinion by the court held for these Defendants on the issues of Bell’s state law claims and copyright damages claims. In this order, the court addressed the parties’ cross motions for partial summary judgment on the remaining issues – declaratory and injunctive relief.

The court first cited the four-factor test necessary to obtain an injunction, which states that a plaintiff must show:

(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.

The court noted that in a prior ruling, it had concluded that Bell had failed to establish any damages, including no damages that would rise to the level of “irreparable injury.” Consequently, the first factor was not met. The court then opined that an injunction was also unwarranted under the second factor, as Bell could again institute litigation upon finding any future copyright violations by a Defendant. Having found that at least two of the four elements required for an injunction were missing, the court declined to address the remaining factors.

The court similarly declined to exercise its discretion to grant declaratory relief on the grounds that, after having been notified, the Defendants had promptly removed the copyrighted photo and, moreover, the websites on which the photo had been published no longer existed. As such, it concluded that there was no “substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”

The court consequently denied Plaintiff Bell’s motion for partial summary judgment and his request for declaratory and injunctive relief. Defendants’ motion for partial summary judgment was granted.

Practice Tip:

Attorney/Photographer Sues Georgia Real Estate Company for Infringing Copyrighted Photo
Sovereign Immunity May Take a Toll on Bell’s Latest Copyright Lawsuit
Appellate Court Dismisses Copyright Appeal as Premature
Bell Rings in the Holiday Weekend with a New Copyright Lawsuit
Bell Files New Copyright Infringement Lawsuit
Bell Sues Georgia-Base for Copyright Infringement
Richard Bell Files Two New Copyright Infringement Lawsuits
Court Prevents Copyright Plaintiff Bell from Outmaneuvering Legal System; Orders Bell to Pay Almost $34,000 in Fees and Costs
Three Default Judgments of $2,500 Ordered for Copyright Infringement

Court Orders Severance of Misjoined Copyright Infringement Complaint 

Richard Bell Files Another Copyright Infringement Lawsuit

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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.

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Hammond, Indiana – In the matter of Biomet, Inc. v. Bonutti Skeletal Innovations, LLC, the Northern District of Indiana, Hammond Division granted Defendant Bonutti’s motion to dismiss with prejudice its counterclaim. Bonutti’s counterclaim alleged that Biomet had infringed U.S. Patent No. 7,806,897 (the “‘897 patent”). Patent attorneys for Biomet Inc. asked the court to impose attorneys’ fees as a condition of the dismissal but this motion was denied.

On March 8, 2013, patent lawyers for Plaintiff Biomet filed an action for declaratory judgment against Bonutti Skeletal Innovations LLC. At issue were contentions of patent infringement of fifteen patents. Bonutti counterclaimed against Biomet and several other counterclaim Defendants. This multi-faceted dispute had been resolved with respect to some of the patents prior to this order. Other allegations of patent infringement remained.

Among the assertions by Bonutti that had remained was a counterclaim that Biomet had infringed the ‘897 patent. In this order, the court granted Bonutti’s request under Rule 41(a)(2) to dismiss this counterclaim with prejudice. The court also addressed Biomet’s contention that it should be awarded attorneys’ fees as a “prevailing party” in this portion of the patent litigation.

The court denied attorneys’ fees to Biomet on several grounds. First, it noted that, while attorney’s fees are available as part of a Rule 41(a)(2) dismissal without prejudice, this is justified as compensation for requiring a defendant to incur unnecessary litigation expenses. That same rationale does not apply where, as in this case, the dismissal is with prejudice.

Additionally, the court noted that any request for attorneys’ fees was premature. Such fees are only available to the “prevailing party” and Biomet had not established itself as such a prevailing party. Biomet may yet be able to recover attorneys’ fees if, at the conclusion of the patent lawsuit, Biomet is held to be the prevailing party.

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Indianapolis, Indiana – An Indiana patent attorney for Eli Lilly and Company of Indianapolis, Indiana filed a patent-related lawsuit against Uropep Biotech GbR of Garbsen, Germany in the Southern District of Indiana.

Plaintiff Lilly is in the business of, among other things, the manufacture and sale of various pharmaceuticals including a drug trademarked as Cialis®. At issue in this intellectual property lawsuit is U.S. Patent No. 8,791,124, entitled “Use of Phosphordiesterase Inhibitors in the Treatment of Prostatic Diseases” (“the ‘124 patent”), which has been issued by the U.S. Patent Office.

Lilly states that the ‘124 patent was issued to Defendant Uropep Biotech. Lilly further states in this Indiana lawsuit that an entity related to Uropep Biotech, Erfindergemeinschaft UroPep GbR, sued Lilly last month in the Eastern District of Texas asserting that Lilly had infringed the ‘124 patent by manufacturing and selling Cialis.

Lilly contends that Erfindergemeinschaft does not own the patent-in-suit and that, consequently, the Texas lawsuit was improper. It further asserts that the Texas lawsuit provides evidence of an actual and justiciable controversy between Lilly and Uropep Biotech sufficient to warrant this instant Indiana lawsuit wherein the Indiana patent lawyer for Lilly asks the court for declaratory relief adjudging that it has not infringed the ‘124 patent. Lilly also asks the court for a declaration that the ‘124 patent is invalid as well as attorney’s fees and costs.

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Indianapolis, Indiana – In conjunction with non-Indiana co-counsel, an Indiana patent attorney for Eli Lilly and Company, Eli Lilly Export S.A. (collectively, “Lilly”) and Acrux DDS Pty Ltd., sued in the Southern District of Indiana alleging that Lupin Ltd. of Mubai, India and Lupin Pharmaceuticals, Inc. of Baltimore, Maryland infringed on various of Plaintiffs’ patents, including U.S. Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520. These patents have been issued by the U.S. Patent Office.

Lilly is engaged in the business of research, development, manufacture and sale of


pharmaceutical products worldwide. Acrux is engaged in the development and commercialization of pharmaceutical products. They sell their products worldwide. The Lupin Defendants are generic pharmaceutical companies that develop, manufacture, market, and distribute generic pharmaceutical products for sale.

At issue in this patent litigation are U.S. Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520. These patents are alleged to cover a testosterone metered transdermal solution used to treat males for conditions associated with a deficiency or absence of endogenous testosterone. This pharmaceutical product, trademarked as Axiron®, is marketed and sold by Lilly.

Plaintiffs contend that the Abbreviated New Drug Application No. 208061 submitted in the name of Lupin Ltd. to the U.S. Food and Drug Administration for approval to market a generic version of Lilly’s Axiron product constitutes patent infringement.

In its complaint, filed by an Indiana patent lawyer, Lilly alleges the following counts:

• Count I for Patent Infringement: Direct Infringement of U.S. Patent No. 8,419,307
• Count II for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,419,307
• Count III for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,419,307
• Count IV for Patent Infringement: Direct Infringement of U.S. Patent No. 8,177,449
• Count V for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,177,449
• Count VI for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,177,449
• Count VII for Patent Infringement: Direct Infringement of U.S. Patent No. 8,435,944
• Count VIII for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,435,944
• Count IX for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,435,944
• Count X for Patent Infringement: Direct Infringement of U.S. Patent No. 8,807,861
• Count XI for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,807,861
• Count XII for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,807,861
• Count XIII for Patent Infringement: Direct Infringement of U.S. Patent No. 8,993,520
• Count XIV for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,993,520
• Count XV for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,993,520
• Count XVI for Declaratory Judgment: Infringement of U.S. Patent No. 8,419,307
• Count XVII for Declaratory Judgment: Infringement of U.S. Patent No. 8,177,449
• Count XVIII for Declaratory Judgment: Infringement of U.S. Patent No. 8,435,944
• Count XIX for Declaratory Judgment: Infringement of U.S. Patent No. 8,807,861

• Count XX for Declaratory Judgment: Infringement of U.S. Patent No. 8,993,520


Plaintiffs ask the court for judgment in their favor as follows:


a) United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 are valid and enforceable;
b) Under 35 U.S.C. § 271(e)(2)(A), Defendants infringed United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 by submitting ANDA No. 208061 to the FDA to obtain approval to commercially manufacture, use, offer for sale, sell, or import into the United States Lupin’s Generic Product prior to expiration of said patents;
c) Defendants’ threatened acts of commercial manufacture, use, offer for sale, or sale in, or importation into, the United States of Lupin’s Generic Product prior to the expiration of United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 would constitute infringement of said patents;
d) The effective date of any FDA approval of Lupin’s Generic Product shall be no earlier than the latest of the expiration date of United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 and any additional periods of exclusivity, in accordance with 35 U.S.C. § 271(e)(4)(A)
e) Defendants, and all persons acting in concert with Defendants, shall be enjoined from commercially manufacturing, using, offering for sale, or selling Lupin’s Generic Product within the United States, or importing Lupin’s Generic Product into the United States, until the expiration of United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 in accordance with 35 U.S.C. §§ 271(e)(4)(B) and 283;) This is an exceptional case and Plaintiffs should be awarded their costs, expenses, and disbursements in this action, including reasonable attorney fees, pursuant to 35 U.S.C. §§ 285 and 271(e)(4); and

g) Plaintiffs are entitled to any further appropriate relief under 35 U.S.C.§ 271(e)(4).


The case was assigned to Judge Sarah Evans Barker and Magistrate Judge Debra McVicker Lynch in the Southern District of Indiana and assigned Case No. 1:15-cv-01047-SEB-DML.


Practice Tip: Information on Lilly’s lawsuit against the Lupin Defendants, which asserts patent infringement relating to the drug Effient, can be found here.

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Indianapolis, Indiana – An Indiana patent attorney for Eli Lilly and Company of Indianapolis, Indiana; Daiichi Sankyo Co., Ltd. of Tokyo, Japan; Daiichi Sankyo, Inc. of Parsippany, New Jersey; and Ube Industries, Ltd of Yamaguchi, Japan filed a federal lawsuit in the Southern District of Indiana alleging that HEC Pharm USA, Inc. of Princeton, New Jersey and HEC Pharm Co. Ltd. of Yichang, China, infringed Patent Nos. 8,404,703 and 8,569,325, which cover the patented pharmaceutical Effient (pictured left). These patents have been issued by the U.S. Patent Office.

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

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

In July 2014, Plaintiffs sued Defendants asserting infringement of the ‘703 patent. That complaint asserted patent infringement arising out of the filing by HEC Pharm of an Abbreviated New Drug Applications (“ANDA”) with the United States Food and Drug Administration (“FDA”) seeking approval to manufacture and sell generic versions of two pharmaceutical products – Effient 5mg and Effient 10mg tablets – prior to the expiration of the ‘703 patent. This patent covers a method of using Effient products for which Lilly claims an exclusively license. Specifically, HEC Pharm was accused of planning to infringe the patent-in-suit by including with its products instructions for use that substantially copied the instructions for Effient products, including instructions for administering HEC Pharm’s products with aspirin as claimed in the ‘703 patent.

Plaintiffs contended in this earlier lawsuit that HEC Pharm knew that the instructions that HEC Pharm intended to include with its products would induce and/or contribute to others using those products in the allegedly infringing manner set forth in the instructions. Moreover, Lilly et al. also contended that HEC Pharm specifically intended for health care providers, and/or patients to use HEC Pharm’s products in accordance with the instructions provided by HEC Pharm and that such use would directly infringe one or more claims of the ‘703 patent. Thus, stated Plaintiffs, HEC Pharm’s actions would actively induce and/or contribute to infringement of the ‘703 patent.

This prior complaint, also filed by the Indiana patent lawyer who filed this lawsuit, listed two counts:

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

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

That patent infringement lawsuit was dismissed without prejudice shortly thereafter. It has in effect been replaced with this current complaint, which includes the prior counts and adds the following:

• Count III: Infringement of U.S. Patent No. 8,569,325

• Count IV: Declaratory Judgment of Infringement of U.S. Patent No. 8,569,325

Plaintiffs ask the court for: a judgment of infringement; injunctive relief; a judgment regarding the effective date of Defendants’ ANDA; monetary damages; the case to be deemed exceptional; a judgment that the patents-in-suit remain valid and enforceable; and Plaintiffs to be awarded reasonable attorney’s fees, costs and expenses.

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Fort Wayne, Indiana – Indiana patent attorneys for Klink Trucking Inc., K-Tech Specialty Coatings, Inc., BIT MAT Products of Indiana, Inc. and BIT MAT Products of Michigan, Inc. (collectively the “Klink Group”), all of Ashley, Indiana, initiated an intellectual property lawsuit in the Northern District of Indiana alleging that Seaboard Asphalt Products Company (“Seaboard Asphalt”) of Baltimore, Maryland wrongly accused Klink Group of infringing Seaboard Asphalt’s patented “Trackless Tack Coat,” Patent No. 8,764,340, which has been issued by the U.S. Patent Office.

Seaboard Asphalt claims ownership of U.S. Patent No. 8,764,340 for a “Trackless Tack Coat” (“the ‘340 patent”). This patent protects an “asphalt emulsion available for high performing, trackless tack coat applications. The tack coat can be used with hot mix asphalt, warm mix asphalt or cold mix asphalt to provide a tack coat on an existing bituminous or concrete pavement surface. The tack coat can also be used for repair of potholes, utility cuts, and general pavement patching areas.”

On April 28, 2015, Seaboard Asphalt contacted Klink Group. According to a document filed with the Indiana court, Seaboard Asphalt stated that it believed that Klink Group’s “AE-NT Trackless Tack Coat” infringed Seaboard Asphalt’s ‘340 patent and requested that Klink Group “discontinue production and distribution for sale of your AE-NT and all versions of Trackless Tack Coat which violate our Patent” until Klink Group and Seaboard Asphalt had entered into a licensing agreement.

This Indiana litigation arises from that assertion and request by Seaboard Asphalt. Klink Group asserts that it has no liability for infringement of the ‘340 patent because none of the Klink Group entities have infringed any valid and enforceable claim of the ‘340 patent. Plaintiffs have sued under the Declaratory Judgment Act. They ask the Indiana federal court for two declarations with respect to the patent-in-suit:

• Count I – Declaration of Non-Infringement

• Count II – Declaration of Invalidity

Plaintiffs also ask the court to declare this case to be exceptional under 35 U.S.C. § 285 and, pursuant to such a declaration, to award to Plaintiffs its reasonable attorneys’ fees, expenses and costs relating to this patent litigation.

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