Litigation

March 8, 2023

“As Seen On TV” Corporation Sues Competitor for Patent Infringement

Indianapolis, Indiana –The Plaintiff, TeleBrands Corporation, filed suit against Plaintiff, Vieneci Garden, Inc. for patent infringement.

TeleBrands Corporation is a leading direct television marketing company and the original creator of the “As Seen On TV” logo and category of the trade. They are a well-known direct-response marketing company that specializes in developing and promoting innovative consumer products. TeleBrands is currently celebrating 30 years of being in business. Its products can be found in over 70 countries. One of its most successful products is the “Pocket Hose,” an expandable garden hose that is designed to be lightweight, durable, and easy to use. TeleBrands holds several patents related to the design and construction of expandable garden hoses, including US10174870 and US10890278 both titled “Expandable and Contractible Garden Hose.”

Vieneci Garden, Inc. is a competing company that also produces and sells expandable garden hoses that is based out of Franklin, Indiana. According to the Indiana Secretary of State Vieneci was created in August of 2022. Their website touts them to be a preferred gardening tools supplier for a number of garden owners and gardeners.

February 28, 2023

Indiana’s Leading Truck Equipment Supplier Sued for Alleged Patent Infringement

By Overhauser Law Offices, LLC

Evansville, Indiana –The Plaintiff, Lund Motion Products, Inc. (“Lund”) d/b/a AMP Research (“AMP”), filed suit against Defendant Meyer Distributing, Inc. a/k/a Meyer Truck Equipment (“Meyer”) for Patent Infringement.

According to the complaint, AMP is a research and manufacturing company that specializes in the design, development, and engineering of aftermarket vehicle parts. AMP developed and sold its PowerStep™ line of products that feature electric automatic vehicle steps that deploy when the vehicle doors are open and retract when the doors close. AMP developed a “plug-and-play” technology that allows the retractable step system to communicate directly with the vehicle’s existing computer system.

September 30, 2022

Oakley Sues Local Business for Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The Plaintiff, Oakley, Inc. (“Oakley”), is an American company operating as an independent subsidiary of Luxottica Group S.p.A. Oakley designs, develops and manufactures sports equipment and lifestyle pieces including, sunglasses, sports visors, ski/snowboard googles, watches, apparel, backpacks, shoes, optical frames, and other accessories. Oakley currently holds more than 600 patents for eyewear, materials and performance gear and numerous trademark registrations.

The Defendant, Batter’s Box, LLC (“Batter’s Box”) is an Indiana limited liability company having a principal place of business at 3510 S. Keystone Avenue, Indianapolis, Indiana. According to the Complaint, Shawn Lessor and Brandi Pierson are listed as principal owners, officers, managers and directors of Batter’s Box. Their website describes them as a state of art, year round, indoor facility with over 20,000 square feet of training area, and 18 multi-use indoor batting and pitching tunnels. It is also reported that Batter’s Box engages in the sale of sunglasses and related accessories at youth sports tournaments in Indiana, as well as through its own retail sporting goods store.

July 28, 2022

Lafayette Interior Fashions Sues Competitor for Trademark Infringement

By Overhauser Law Offices, LLC

Lafayette, Indiana – The Plaintiff, Lafayette Venetian Blind, Inc., (LVB) conducts business under the business name “Lafayette Interior Fashions” in West Lafayette, Indiana. LVB is in the business of designing, manufacturing and selling window treatments, blinds and shades. LVB has a federal trademark registration, with the USPTO, for the word mark GENESIS under Registration No. 3344243 in Class 20 for “window blinds, window shades, and venetian blinds.”

Defendants, Coulisse Distribution LLC and Coulisse Holding USA Inc. (“Coulisse”), are a Florida based company that sells Window Coverings and according to the Complaint sell a certain brand of window treatments and window components for their “Roller Blinds” product under the name “Genesis.” According to the Complaint, LVB has requested Coulisse cease and desist using the mark GENESIS on its products as it is likely to cause confusion with their products because the Infringing Marks are identical or nearly identical to their mark in sound, appearance and meaning.

November 25, 2020

Netflix’s Attempt to Remove Lawsuit Thwarted

By Overhauser Law Offices, LLC

Indianapolis, Indiana –Plaintiffs, City of Fishers, Indiana, City of Indianapolis, Indiana, City of Evansville, Indiana, and City of Valparaiso, Indiana, on behalf of themselves and all others similarly situated filed suit on September 4, 2020 in Marion Superior Court (Case No. 49D01-2008-PL-026436) alleging that Defendants, Netflix, Inc., Disney DTC LLC, Hulu, LLC, Directv LLC, Dish Network Corp., and Dish Network LLC, violated the Indiana Video Service Franchises Act Ind. Code. § 8-1-34-1 et seq. Plaintiffs are seeking an order declaring Defendants provide video service in Indiana and to require Defendants to perform statutory duties including compensating Plaintiffs and all other units of government for unpaid fees for past service.

Defendant, Netflix, filed a Notice of Removal on September 9, 2020 from Marion County Superior Court 1 to the United Stated District Court for the Southern District of Indiana. Netflix asserted jurisdiction in the Southern District due to diversity jurisdiction and jurisdiction under the Class Action Fairness Act of 2005 (“CAFA”). Netflix noted that since Plaintiffs filed their Complaint in this case, three more cases have been filed against Netflix and Hulu alleging similar violations of various state video franchise acts in Texas, Ohio, and Nevada.

Following the Notice of Removal, the Plaintiffs filed a Motion to Remand the case under the doctrine of comity. In the Southern District’s Order, the Court explained, “[t]he comity doctrine encourages federal courts to avoid ‘interfer[ing] . . . with the fiscal operations of the state governments . . . in all cases where the Federal rights of the persons could otherwise be preserved unimpaired.’ Levin v. Commerce Energy, Inc., 560 U.S. 413, 422 (2010).” Therefore, the case was remanded back to Marion Superior Court.

Practice Tip: Removal of a putative class action under the CAFA is proper if: 1) there is a class action; 2) there is minimal diversity between the parties, such that at least one class member is a citizen of a state different from the state of any defendant; and 3) the aggregate amount in controversy exceeds $5,000,000, exclusive of interest and costs. See 28 U.S.C. § 1332(d)(2).

October 27, 2020

Trademark Infringement Case Transferred to Northern District of Indiana

By Overhauser Law Offices, LLC

Hammond, Indiana – Modern Vascular LLC (“Modern Vascular”), the Plaintiff, originally filed suit against Defendants, Modern Vascular & Vein Center, Nazar Golewale and Jane Doe Golewale, in the U.S. District Court for the District of Arizona. In granting the Defendants’ Motion to Dismiss for lack of personal jurisdiction, the case was transferred to the Northern District of Indiana.

According to the Complaint, Modern Vascular has used its mark “MODERN VASCULAR” since 2017, which is registered under U.S. Trademark No. 5,570,334 (the “Registered Mark”). Modern Vascular claims the Defendants have advertised services, entered into agreements, and caused confusion with third parties using its Registered Mark. Due to the alleged continued use of the Registered Mark by the Defendants after being informed of the alleged infringement, Modern Vascular is seeking damages for willful trademark infringement, federal unfair competition, and false designation of origin.

March 26, 2020

Motion to Disqualify: Patent Law Firm Tries to Cap Bottle Cap Suit

By Overhauser Law Offices, LLC

This suit is over the design of two bottle caps.

Plaintiff, Closure, claims it designed the bottle cap on the left, and Defendant, Novembal, got a patent on the bottle cap on the right. But Closure claims that it, not Novembal is the actual “inventor” of the bottle cap design. Perhaps fearing that Novembal was about to file suit, Closure in its home turf of New Jersey and trying to gain a home court advantage, took the initiative and sued Novembal in Indiana. Its Complaint sought to “correct the inventorship” of Novembal’s patent and to prevent Novembal from enforcing the patent against Closure. That suit is reported here: Closure Systems International Sues Novembal USA Seeking Correction of Inventorship. Not surpisingly, Novembal asserted a counterclaim for patent infringement.

The twist is that in the infringement counterclaim, Novembal seeks a broad injunction. So broad, that it would prevent not just Closure, but some of Closure’s customers from infringing the patent. In its counterclaim, Novembal seeks:

A permanent injunction enjoining CSI and its employees, agents, successors, partners, officers, directors, owners, shareholders, principals, subsidiaries, related companies, affiliates, distributors, dealers, and all persons in active concert or participation with any of them . . . from making, importing, promoting, offering, or exposing for sale, or selling the CSI Production Closures, or any other closures with designs confusingly similar to the claimed design of Novembal’s ‘442 patent.

One company that apparently gets its bottle caps from Closure is Nestle, one of the biggest sellers of bottled water. So far, no big deal. Except, Nestle is represented by the blue chip Washington DC patent law firm, Finnegan, Henderson, Farabow, Garrett & Dunner. Finnegan happens to be the same law firm that represents Novembal in the suit with Closure. So Finnegan is attempting to get an injunction for one client (Novembal) that would apply to another client, Nestle. Continue reading

March 1, 2019

Defendant DriverReach bolsters Motion to Dismiss patent infringement suit by citing recent CAFC ruling.

By Overhauser Law Offices, LLC

Indianapolis, IN– Tenstreet’s patent infringement complaint against DriverReach was previously discussed here. In its Complaint, Tenstreet accuses DriverReach of infringing Patent No. 8,145,575 (“the ‘575 patent”) for “Peer to Peer Sharing of Job Applicant Information”. DriverReach previously moved to dismiss the suit arguing that the asserted patent was invalid. Dkt-14 Motion to Dismiss

On February 26, 2019, the Court of Appeals for the Federal Circuit issued it decision in University of Florida Research Foundation, Inc. v. General Electric Company, No. 2018-1284. In that case the Federal Circuit found that the asserted claims of U.S. Patent No. 7,062,251 (“the ’251 Patent”) were not patentable under 35 U.S.C. § 101. This was because the Federal Circuit stated that automating “‘pen and paper methodologies’ to conserve human resources and minimize errors”, is not patentable. Specifically, a patent claim using terms like “receiving” data, “converting” the data into a specific format, “performing at least one programmatic action” on the data, and “presenting results,” was just an abstract idea because it was a “quintessential ‘do it on a computer’ patent: it acknowledges that data . . . was previously collected, analyzed, manipulated, and displayed manually, and it simply proposes doing so with a computer.”

In addition, the Federal Circuit rejected the University of Florida’s argument that the “converting” limitation claimed a specific improvement to existing technology. The court said that neither “the patent, nor its claims, explains how the drivers do the conversion.”

May 31, 2017

Supreme Court Provides Relief to “Exhausted” Buyers of Printer Cartridges

By Overhauser Law Offices, LLC

The US Supreme Court has good news for people that are tired of paying high prices for printer cartridges – the fine print of the “license agreement” in the boxes that prohibits you from refilling the cartridges is no longer effective.

In Impression Products Inc. v. Lexmark International, Inc., U.S., No. 15-1189, 5/30/2017, the Court decided that when a patentee decides to sell—whether on its own or through a licensee—that sale exhausts its patent rights, regardless of any post-sale restrictions the patentee purports to impose, either directly or through a license, Chief Justice Roberts wrote for a unanimous Court. As for international exhaustion, he observed that “nothing in the text or history of the Patent Act shows that Congress intended to confine that borderless common law principle to domestic sales.” Justice Ginsburg concurred in the general exhaustion decision as to domestic sales, but dissented as to international exhaustion.

Background

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

Lexmark filed infringement suits against many makers of after-market ink cartridges for Lexmark printers, most of which settled. In the action against Impressions, the district court entered a stipulated judgment, holding that Lexmark’s patent rights in cartridges first sold in the United States were exhausted, but the rights were retained for cartridges first sold abroad.

In a 10-2 en banc decision, the Federal Circuit held that, where the patentee’s sale is subject to a single-use/no-resale restriction that is lawful and clearly communicated, the sale does not confer resale or reuse authority to a buyer or downstream buyers. It also held that the patentee’s sale or authorization to sell a U.S. patented article abroad does not authorize the buyer to import the article and sell and use it in the United States.

The Federal Circuit decision was taken for review by the Supreme Court.

U.S. Sales

The Supreme Court concluded that Lexmark exhausted its patent rights the moment it sold its patented cartridges in the United States under the Return Program. While they may be clear and enforceable under contract law, the single-use/no-resale restrictions in Lexmark’s contracts with customers do not entitle Lexmark to retain patent rights in an item that it has elected to sell, according to the Court.

May 23, 2017

Indiana’s TC Heartland Wins Patent Case in US Supreme Court

By Overhauser Law Offices, LLC

TC Heartland LLC of Carmel, Indiana won a precedent-setting victory in the US Supreme Court in its patent infringement suit with Kraft Foods. The US Supreme Court held that the term “resides” in 28 U.S.C. § 1400(b) for determining venue patent suits refers only to the State of incorporation.

Overruling the Federal Circuit’s decision in VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990), the Court concluded that 2008 and 2011 revisions to the general venue statute at 28 U.S.C. §1391 did not modify the meaning of “resides” in Section 1400(b) to include personal jurisdiction for corporate defendants. This issue was resolved by a 1957 Supreme Court decision, and nothing in the later legislation indicates that Congress intended to overturn that decision, the Court concluded.

Background