Articles Posted in New Decisions

Figure-6_903-Patent-300x283Washington, D.C. — The Federal Circuit ruled on two patent infringement decisions, Los Angeles Biomedical Research Institute v. Eli Lilly & Co. and Eli Lilly & Co. v. Los Angeles Biomedical Research Institute, that involve Indianapolis-based Eli Lilly and Company.

These companion cases pertain to a pharmaceutical patent, U.S. Patent No. 8,133,903 (“the ’903 patent”), owned by Los Angeles Biomedical.  Also at issue is one prior art reference, International Patent Application No. WO 01/80860, published Nov. 1, 2001, common to both lawsuits.

Los Angeles Biomedical Research Institute v. Eli Lilly & Co. arose as an inter partes review of a decision by the Patent Trial and Appeal Board holding all claims of the ‘903 patent to be obvious.  The Federal Circuit reviewed claims in a provisional application relating to a study involving rats in combination with a method in an uncited reference to convert those results to apply to humans.  It held that the rat study and uncited conversion method did not support the claimed dosage for humans.  It further concluded that claims directed to an underlying condition should not be construed broadly to treat symptoms of that condition, holding that the Board had not adopted the broadest reasonable interpretation of the claims but instead had adopted an overbroad interpretation. The panel remanding, stating:

The question remains whether a person of skill in the art would have had a reason to combine [the three cited references relating to the medical condition] and would have had a reasonable expectation of success from doing so.  Because the Board’s obviousness analysis was based on an erroneous construction of the claim language and an overly broad interpretation of [one of the references], and because the Board did not address the record evidence summarized above, we remand for the Board to make new findings as to whether there was an apparent reason to combine the prior art references and whether that combination would have rendered [the treatment] obvious.

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South Bend, IndianaJudge Robert L. Miller, Jr. of the Northern District of Indiana dismissed claims concerning trade dress infringement.

In this Indiana trademark lawsuit, Forest River, Inc. of Elkhart, Indiana sued Winnebago Industries, Inc. of Forest City, Iowa and its subsidiary Winnebago of Indiana, LLC alleging trademark infringement, trade dress infringement, unfair competition, false designation of origin, and false and misleading representations.

Overhauser Law Offices, LLC filed a partial motion to dismiss with the court, arguing that Forest River had neither sufficiently identified the features that constituted the claimed trade dress nor provided any factual support for its assertion that such features were non-functional.

The court noted that “to survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678.  The claim is deemed plausible if “the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id.

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In this litigation, such a showing required that Forest River define its trade dress.  It must also plead sufficient facts to show that the claimed trade dress is nonfunctional, has acquired secondary meaning and that a likelihood of confusion exists between its trade dress and Winnebago’s trade dress.

The court agreed with Winnebago, concluding that Plaintiff had relied on “conclusory and meaningless” assertions in its pleadings. Consequently, it granted Winnebago’s motion and dismissed without prejudice Forest River’s claims concerning trade dress infringement under the Lanham Act, 15 U.S.C. §1125(a) as well as similar claims made under common law.

Overhauser Law Offices represented Winnebago in obtaining this successful order dismissing the trade dress claims.

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Indianapolis, Indiana – The matter of Eli Lilly and Company, et al. v. Apotex Inc., et al. has been stayed pending a ruling by the U.S. Court of Appeals for the Federal Circuit.

This Indiana lawsuit was initiated by Lilly, an Indianapolis pharmaceutical company, in conjunction with other Plaintiffs.  Patent attorneys for Plaintiffs filed a lawsuit asserting patent infringement after Defendants filed an Abbreviated New Drug Application seeking approval to market a generic version of the drug Axiron® before various patents related to the drug expired.  Among Plaintiffs’ contentions were claims of patent infringement of seven patents pertaining to Axiron.861-Patent_Fig-2-300x219

In this motion, patent lawyers for Plaintiffs have asked the court to stay its proceedings pending a ruling in a similar case, Eli Lilly and Company, et al. v. Perrigo Company, et al.  The Perrigo case was filed in the Southern District of Indiana in 2013.  After a trial, the court issued findings including that one claim in one of the Axiron patents was invalid, while two claims pertaining to another Axiron patent were valid.  That ruling was appealed to the Federal Circuit; that appeal remains pending.

Chicago, Illinois – Arlington Specialties, Inc. of Elk Grove Village, Illinois appealed the summary judgment granted by the U.S. District Court of Northern Illinois, Eastern Division in favor of Urban Aid, Inc. of Los Angeles, California.

The plaintiff’s and defendant’s bags are shown on the last page:

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The Seventh Circuit does not issue trade dress opinions very often, but it issued one January 27, 2017.  It is especially helpful because it sums up the state of trade dress law in the Circuit.

Indianapolis, Indiana – The U.S. Court of Appeals for the Federal Circuit has upheld the district court’s decision and ruled in favor of Eli Lilly regarding validity and infringement of the vitamin regimen patent U.S. Patent No. 7,772,209 for Alimta® (pemetrexed for injection).

In the case of Eli Lilly and Company v. Teva Parenteral Medicines, Inc., et al., the court affirmed the earlier district court’s rulings that the vitamin regimen patent is valid and would be infringed by the generic challengers’ proposed products. If the patent is ultimately upheld through all remaining challenges, Alimta would maintain U.S. exclusivity until May 2022, preventing marketing of generic products for as long as the patent remains in force. The Alimta compound patent remLillyHeadquarters-300x127ains in force through January 24, 2017.

In March 2014, the U.S. Court for the Southern District of Indiana upheld the validity of the vitamin regimen patent. In August 2015, the same court ruled in Lilly’s favor regarding infringement of the vitamin regimen patent.

AmericanStructurePointIndianapolis, Indiana – The Indiana Court of Appeals affirmed the judgment of the Marion Superior Court in litigation between two civil engineering firms, Plaintiff American Structurepoint Inc. and Defendant HWC Engineering Inc.  Three former employees of ASI, also listed as Defendants in the trial court, were listed in this appeal.

This dispute arose in 2014 when ASI employee Martin Knowles left ASI to join HWC as its vice president of operations.  Jonathan Day and David Lancet also left ASI to begin employment at HWC.

These former ASI employees had entered into noncompetition and non-solicitation agreements with ASI.  Despite these agreements, ASI contended in a lawsuit filed in Indiana state court that its former employees engaged in various acts prohibited by the agreements.  ASI claimed that Day had created a list of ASI employees whom he believed might be interested in leaving to join HWC.  ASI also asserted that Day subsequently shared that list with Knowles and called various ASI employees regarding employment with HWC.  ASI alleged that a total of six job offers were made by HWC to ASI employees.  ASI further introduced evidence that Knowles engaged in prohibited business-development activities with ASI clients to ASI’s detriment.

Chicago, Illinois – The Seventh Circuit Court of Appeals has ruled against Plaintiff Reginald Hart in an intellUntitled-300x122ectual property lawsuit filed against Amazon.com.

Plaintiff Hart, filing pro se, sued Amazon.com, Inc. alleging various state and federal claims, including copyright infringement, aiding and abetting counterfeiting, and intentional infliction of emotional distress.  Hart, the author of two self-published books, Vagabond Natural and Vagabond Spiritual, claimed that Amazon had permitted six counterfeit copies of his books to be advertised for sale and/or sold on its website by third parties.  Hart further claimed that Amazon had “forcefully exploited” the books by counterfeiting them “for its own commercial use.”  He stated that the books, which detailed his experiences as a homeless man, would have generated “millions of dollars for Amazon” and allowed him “to end homelessness [and not only for himself] both in the U.S. and abroad.”

Hart asserted to the court that he was certain that the books were unauthorized reproductions of his works as they did not bear “indicia of authenticity known only to him.”  The indicator that a book was genuine, according to Plaintiff, was his fingernail indentations on the cover of the book.  Plaintiff provided photographs purporting to show both authorized copies of Plaintiff’s books and books alleged to be fake.  The court, however, concluded that the “two types of book are in all respects identical.”

Indianapolis, IndianaAlcon Research, Ltd. of Fort Worth, Texas and Alcon Pharmaceuticals Ltd. of Fribourg, Switzerland filed an intellectual property lawsuit in the Southern District of Indiana.  They assert infringement of two patents covering Pataday®, an ophthalmic pharmaceutical.  Pataday is covered by U.S. Patent Nos. 6,995,186 (the “‘186 patent”) and 7,402,609 (the “‘609 patent”).

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Defendant Akorn, Inc., a generic drugmaker based in Lake Forest, Illinois, filed an Abbreviated New Drug Application (“ANDA”) with the U.S. Food and Drug Administration seeking approval to manufacture and sell a generic version of Plaintiffs’ drug prior to the expiration of the two patents-in-suit.  Plaintiffs contend that the submission of this ANDA is an act of patent infringement.

In this Indiana complaint, patent lawyers for Alcon ask the court to adjudicate the following:

Fort Wayne, Indiana – The Northern District of Indiana has denied Defendant’s motion to dismiss for improper venue, citing the connection of the Northern District to the events underlying the litigation.

This Indiana trademark litigation, Family Express Corp. v. Square Donuts, Inc., was filed to resolve a dispute over the use of the words “Square Donuts” in connection with the sale of donuts by two different Indiana-based companies.

Defendant Square Donuts of Terre Haute, Indiana claims trademark rights to “Square Donuts” under federal and Indiana law. It currently sells its “Square Donuts” in bakeries located in southern and central Indiana, including locations in Terre Haute, Indianapolis, Bloomington, and Richmond.

Plaintiff Family Express of Valparaiso, Indiana operates convenience stores in northern Indiana and uses the term “Square Donuts” in conjunction with doughnut sales. Plaintiff states that both it and Defendant are expanding their respective businesses into new markets, with Defendant expanding to the north while Plaintiff expands to the south. Thus, territory in which both operate concurrently has become a possibility.

In 2006, Defendant sent a cease-and-desist letter to Plaintiff. Plaintiff and Defendant subsequently discussed the possibility of entering into a co-existence arrangement, but did reach an agreement.

This trademark lawsuit followed. Plaintiff asks the Indiana federal court to declare that its use of the term does not infringe on the trademark rights in “Square Donuts” asserted by Defendant. Plaintiff also asks the court to cancel Defendant’s existing Indiana and federal “Square Donuts” trademarks.

Trademark litigators for Defendant asked the court to dismiss the lawsuit, claiming that it had been filed in an improper venue. In evaluating whether venue in the Northern District was permissible, the court first noted that, while it “must resolve all factual disputes and draw all reasonable inferences in the plaintiff’s favor,” Plaintiff then bears the burden of establishing that venue is proper. It also noted that venue can be proper in more than one district.

The federal venue statute, 28 U.S.C. § 1391(b), provides that venue can exist in “(1) a judicial district in which any defendant resides, if all defendants reside [in the same state]” or “(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 the property that is the subject of the action is situated.”

Plaintiff relied on subsection (b)(2), claiming that a substantial part of the events giving rise to the lawsuit took place in the Northern District of Indiana. To establish venue, Plaintiff pointed to the fact that Defendant’s cease-and-desist letter and other communications had been relayed to Plaintiff in the Northern District. At least some rulings by districts courts located within the Seventh Circuit have held that the requirements for venue “may be satisfied by a communication transmitted to or from the district in which the cause of action was filed, given a sufficient relationship between the communication and the cause of action.”

The Northern District of Indiana concluded that such communications, which would be a typical element of litigation under the Declaratory Judgment Act, would defeat the purpose of protecting a defendant from having to litigate “in the plaintiff’s home forum, without regard to the inconvenience to the defendant at having to defend an action in that forum or whether the defendant has engaged in substantial activities in that forum.”

Instead, the Indiana court considered the underlying substance of the dispute: “whether the Defendant’s Square Donuts trademark is valid and, if it is, whether the Plaintiff nevertheless has refrained from infringing on the trademark in connection with the sale of its Square Donuts.” The court concluded that, given the extent to which the claims and events at issue in the litigation took place in both the Northern and the Southern District of Indiana, venue was not improper in the Northern District of Indiana.

Practice Tip #1: If neither subsection (b)(1) nor (b)(2) of 28 U.S.C. § 1391 applies, a third subsection may be utilized. That subsection, 28 U.S.C. § 1391(b)(3), permits venue in “any judicial district in which any defendant is subject to the court’s personal jurisdiction with respect to such action.”

Practice Tip #2: An inquiry into proper venue for a lawsuit is different from one into personal jurisdiction. Personal jurisdiction “goes to the court’s power to exercise control over a party,” while venue is “primarily a matter of choosing a convenient forum.”

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Chicago, Illinois – The Seventh Circuit Court of Appeals ruled against Plaintiffs Slep-Tone Entertainment Corp. and its successor in interest Phoenix Entertainment Partners LLC (collectively, “Slep-Tone”) in a Lanham Act lawsuit asserting trademark infringement and trade dress infringement.

Trademark attorneys for serial litigant Slep-Tone have filed more than 150 lawsuits throughout the country under the Lanham Act alleging unauthorized copying and performance of Slep-Tone’s karaoke tracks. Slep-Tone contends that such activities constitute trademark infringement and trade dress infringement.

This federal litigation springs from a technology upgrade available to Slep-Tone customers. Earlier formats on which karaoke songs were offered included CD+G compact discs (with the +G referring to the graphic component) and MP3+G media. With the advent of large-capacity hard drives, some customers opted to transfer the files contained on their lawfully purchased CD+G or MP3+G to a hard drive, a practice known as “media shifting.” Because many compact discs can be stored on one hard drive, media shifting removed the need to swap between multiple discs to access different songs. This transfer was permitted by Slep-Tone as long as the customers notified Slep-Tone, agreed to certain terms that restricted multiple copies from being made and agreed to submit to an audit to certify compliance with Slep-Tone’s media-shifting policy.

In this lawsuit, filed against Defendants Basket Case Pub, Inc. of Peoria, Illinois and Dannette Rumsey, its president and owner, Slep-Tone alleged that Defendants violated the media-shifting policy. This, it asserted, resulted in an improper “passing off” of illegitimate “bootleg” copies of tracks as genuine Slep-Tone tracks.

Slep-Tone contended that when these unauthorized copies were played by Defendants, the pub’s customers would be confused, believing that “they are seeing and hearing a legitimate, authentic Slep-Tone track, when in fact they are seeing an unauthorized copy.” This conduct, it claims, is prohibited trademark and trade dress infringement.

A district court in the Central District of Illinois concluded that Slep-Tone had not plausibly alleged that Defendants’ conduct resulted in consumer confusion as to the source of any tangible good sold in the marketplace and dismissed Plaintiffs’ complaint.

The Seventh Circuit agreed. While the appellate court granted that Slep-Tone may have had a plausible complaint of copyright infringement for “theft, piracy, and violation of Slep-Tone’s [media-shifting] policy,” consumer confusion is the touchstone of trademark infringement and such confusion was not present. It stated:

What pub patrons see and hear is the intangible content of the karaoke tracks. They will see Slep-Tone’s trademark and trade dress and believe, rightly, that Slep-Tone is the source of that intangible content. But patrons will neither see nor care about the physical medium from which the karaoke tracks are played; consequently, any confusion is not about the source of the tangible good containing the karaoke tracks.

Because Slep-Tone’s assertions did not constitute trademark infringement or trade dress infringement, the Seventh Circuit affirmed the district court’s dismissal of the lawsuit.

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