Trade Secrets

May 28, 2019

Indiana Patent Litigation: New Berry, Inc. Seeks Damages for Patent Infringement and Trade Secret Misappropriation

Hammond, Indiana – Attorneys for Plaintiff, New Berry, Inc., d/b/a Berry Metal Company (“New Berry”) of Harmony, Pennsylvania filed suit in the Northern District of Indiana alleging that Defendants, Todd G. Smith (“Smith”) of Grove City, Pennsylvania, and Allan J. MacRae (“MacRae”), and MacRae Technologies, Inc. (“MacRae Technologies”), both of Hayward, California, infringed its rights in United States Patent No. 10,222,124 (the “‘124 Patent”) for “Stave with External Manifold” and United States Patent No. 9,121,076 (the “‘076 Patent”) for “Stave and Brick Constrictions Having Refactory Wear Monitors and in Process Thermocouples.” New Berry is seeking actual, compensatory, exemplary, and punitive damages, pre and post judgment interest, and attorneys’ fees.

According to the complaint, New Berry is the owner and assignee of both the ‘124 Patent, which was filed February 1, 2013 and issued on March 5, 2019, and the ‘076 Patent, which issued on September 1, 2015. New Berry claims that Smith signed an Employment Agreement with New Berry in 1996, which among other things assigned all of Smith’s inventions during his employment to New Berry and prohibited Smith from using or disclosing any trade secrets that pertain to New Berry’s products and services. Smith is listed as the inventor of the ‘124 Patent and a co-inventor of the ‘076 Patent.

New Berry claims that Smith, who left New Berry in 2015, is collaborating with MacRae and MacRae Technologies and has shared New Berry’s trade secrets with them. MacRae filed a patent application November 16, 2017 that issued as U.S. Patent No. 9,963,754 (the “’754 Patent”) on May 8, 2018. The complaint alleges MacRae assigned the ‘754 Patent to MacRae Technologies on March 6, 2019. New Berry claims that the “‘124 Patent reads on the staves comprising center manifold technology described and claimed in the ‘754 Patent.”

May 15, 2019

Jury Awards Herff Jones Multi-Million Dollar Verdict Against Jostens for Interfering with Employment Contracts

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Herff Jones, based in Indianapolis, Indiana won a multimillion-dollar case against its largest competitor, Jostens Inc., headquartered in Minneapolis, Minnesota. Herff Jones also won significant judgments against John Wiggins and Chris Urnis, former employees of Herff Jones distributor, Brent Gilbert of GradPro Recognition Products in the same case.

Jostens began negotiating employment agreements with Wiggins and Urnis prior to their leaving GradPro, despite their having strict noncompete agreements with GradPro, according to the lawsuit. The lawsuit further claimed one of Jostens authorized representatives took at least five employees from GradPro in an effort to take away business from Herff Jones.

Jostens lost the suit as the jury found it conspired and stole confidential and trade secret information and interfered with Herff Jones’ employment contracts. The jury awarded nearly $1.9 million in compensatory damages against Jostens, Wiggins, and Urnis to Herff Jones, and another $580,000 to Brent Gilbert of GradPro. Punitive damages in the amounts of $650,000, $25,000, and $10,000 were also assessed against Jostens, Wiggins, and Urnis, respectively.

July 16, 2018

Indiana Copyright Litigation: Lafayette Based Company Sues California College for Copyright Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, National Federation of Professional Trainers, Inc. (“NFPT”) of Lafayette, Indiana, filed suit in the Northern District of Indiana alleging that Defendant, Carrington College, Inc. (“Carrington”) of Sacramento, California, infringed its rights in United States Copyright Registration No. TX 8-515-798 (“NFPT 0241 Exam”). Plaintiff further alleges misappropriation of trade secrets, breach of contract, and fraud. Plaintiff is seeking damages, profits received from unauthorized copying and distribution of the copyrighted work, attorney’s fees, costs, and injunctive relief.

NFPT creates and administers examinations for the certification of personal trainers. Their certification programs have been accredited by the National Commission for Certifying Agencies since 2005. Carrington has utilized NFPT’s examinations and educational materials as a part of its Physical Therapy Technology Program. At the end of the course, students were able to sit for the NFPT certification exam for the opportunity to become a certified personal trainer upon obtaining a “passing” score.

Carrington administered an NFPT examination December 10, 2015 via their proctor, Mr. Phillip Schauer (“Schauer”). As proctor, Schauer had to sign a confidential disclosure agreement, which included maintaining the confidentiality of the exams and not duplicating any of the testing materials. The December 10, 2015 exam produced extremely abnormal results for the students’ test scores. Of the twenty-six candidates, fifteen had identical or similar response strings while the remaining candidates response strings differed by a maximum of four responses out of 120. All of the candidates obtained a “passing” score. Due to the abnormalities in the results, NFPT voided the results and required all candidates to retake the examination with new questions on August 26, 2016. Only six candidates chose to retake the exam and of those, only two obtained a passing score.

April 6, 2018

Indiana Trademark Litigation: Arizona Bathroom Company Sues Indiana Franchisee

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Re-Bath, LLC, of Phoenix, Arizona originally filed suit in the Marion Superior Court alleging that Defendants, Alternative Construction Concepts, LTD. d/b/a Re-Bath Designs of Indianapolis, of Indianapolis, Indiana, Steven O’Reilley of Indianapolis, Indiana, and Deborah O’Reilley of Indianapolis, Indiana of infringing trademark rights. Plaintiff is seeking a temporary restraining order, preliminary and permanent injunction and all other just and proper relief.

Defendant is a franchisee of Plaintiff’s Phoenix-based business. As part of the franchise agreement, Plaintiff allowed Defendant to use its trademarks, goodwill, concepts, operating systems, confidential information, method of operation and technical expertise and know-how to operate a bathroom remodeling business.

November 25, 2016

Indiana Trademark Litigation: Dunkin’ Donuts Sued on Allegations of Deceiving Consumers with Fake Splenda

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiff Heartland Consumer Products LLC of Carmel, Indiana filed an intellectual property lawsuit in the Southern District of Indiana alleging trademark and trade dress infringement, trademark dilution and unfair competition under the Lanham Act, as well as related wrongdoing under the Indiana State Trademark Act, the common law of the State of Indiana and the Indiana Crime Victims Act. The intellectual property at issue pertains to Splenda®, a Heartland trademark under which it offers sucralose, a low-calorie sweetener.

Defendants in the litigation are Dunkin’ Brands, Inc. and Dunkin’ Donuts Franchised Restaurants LLC of Canton, Massachusetts. They are accused of “deceiving customers into believing the Dunkin’ Donuts restaurants carry Splenda® Brand Sweetener,” by both tacitly and affirmatively misrepresenting that the non-Splenda sucralose product that the Dunkin’ Defendants offer is, in fact, Heartland’s Splenda. Plaintiff contends that consumers were confused about whether the sweetener that the Dunkin’ Defendants offered was Splenda and that some have complained that adding the other sweetener to their Dunkin’ Donuts products imparted a “funny taste.”

Defendants discontinued their agreement to purchase and offer Heartland’s Splenda in April 2016. According to the Indiana complaint, following that decision, Defendants began offering sweetener in yellow packets similar to the single-serving packets in which Splenda is offered to the public. Plaintiff contends that, when asked, Defendants in a “clear majority of stores affirmatively represented, through their agents or employees, that non-Splenda® sucralose sweetener was instead Splenda® Brand Sweetener.” Plaintiff further contends that Dunkin’ Defendants are misappropriating Plaintiff’s trademarked “Sweet Swaps®” by the use of a similar term “Smart Swaps.”

May 26, 2016

Trade Secret Law: Defend Trade Secrets Act Creates Federal Right of Action for Trade Secret Misappropriation.

By Overhauser Law Offices, LLC

Earlier this month, the Defend Trade Secrets Act (“DTSA”) became federal law. The DTSA grants the owners of trade secrets the right to sue in federal court for misappropriation of a trade secret that is “related to a product or service used in, or intended for use in, interstate or foreign commerce.” Previously, protection of trade secrets was offered only under state law, with most states having adopted a version of the Uniform Trade Secrets Act (“UTSA”). The new federal law will supplement, not replace, those state laws.

The DTSA, while it mirrors the UTSA in many respects, adds several notable elements. In addition to creating original jurisdiction in federal district court over civil actions brought under the law, the DTSA also provides for the ex parte seizure of property where necessary to prevent the disclosure of the trade secret at issue in the lawsuit. This seizure is permitted only in “extraordinary circumstances,” including those situations where immediate and irreparable injury to the plaintiff will result if the seizure is not ordered. The party requesting an ex parte seizure must post security and, in cases where such a seizure is obtained wrongfully, the DTSA makes damages available to the defendant. Moreover, the Act recognizes the problem of international trade secret theft. The provision allowing for ex parte seizure of property is “expected to be used in instances in which a defendant is seeking to flee the country.”

The DTSA also includes a provision permitting the entry of an injunction prohibiting a person from accepting employment if there is a sufficient threat of misappropriation of a trade secret. In lesser cases, the individual may begin employment but will be subject to conditions enunciated by the court.

May 19, 2016

Trade Secret Law: DTSA Now Provides More Protection for Whistleblowers

By Overhauser Law Offices, LLC

Washington, D.C. – The Defend Trade Secrets Act (“DTSA”) recently became federal law. This statute creates a federal right of action for misappropriation of trade secrets.

Among the provisions of the DTSA are new protections for whistleblowers. Under the DTSA, immunity is granted to persons who disclose a trade secret to a government official or attorney for the sole purpose of reporting or investigating a suspected violation of law. This immunity covers both civil and criminal liability under either federal or state trade secret law.

The DTSA also provides that trade secret information may be used in litigation by an employee who sues an employer alleging retaliation for having reported a suspected violation of law. The law requires that certain steps be taken during litigation to prevent disclosure of the trade secret.

February 29, 2016

United States Intellectual Property Law: Senate Judiciary Committee Approves Trade Secrets Bill

By Overhauser Law Offices, LLC

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.

December 14, 2015

Indiana Copyright Litigation: Copyright Defendant Removes Lawsuit to Federal Court

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana copyright lawyer for Defendant Wrightspeed, Inc. of San Jose California filed a notice of removal in the Southern District of Indiana on the basis of both federal-question jurisdiction and diversity-of-citizenship jurisdiction.

Plaintiff Precision Rings, Inc. of Indianapolis, Indiana had filed its lawsuit in Marion County Superior Court seeking declaratory relief, injunctive relief, unspecified damages and attorney’s fees. Among Plaintiff’s contentions was the breach of a nondisclosure agreement. Included in this alleged breach was the misappropriation of Plaintiff’s trade secrets, which involved the use or disclosure by Defendant of certain copyrighted drawings that Plaintiff had registered with the U.S. Copyright Office.

Defendant Wrightspeed contended that federal-question jurisdiction was proper and asked that the federal court in the Southern District of Indiana hear and decide all further matters in the litigation. Defendant asserted that the complaint arose under copyright law because Plaintiff’s complaint included a claim that would require construction of the Copyright Act. Consequently, subject matter jurisdiction rested exclusively in federal court.

Defendant Wrightspeed also asserted that diversity-of-citizenship jurisdiction was a proper basis for the Indiana federal court to hear the litigation. The parties were completely diverse, it stated, with Plaintiff being a citizen of Indiana and Defendant being a citizen of both Delaware and California. Defendant contended further that, considering the potential damages, fees and costs, the amount at stake was well in excess of the $75,000 threshold necessary for diversity-of-citizenship jurisdiction.

September 30, 2015

Indiana Copyright Litigation: Copyright Infringement Lawsuit Removed to Federal Court

By Overhauser Law Offices, LLC

Evansville, Indiana – Responding to a complaint filed in Indiana state court by Indiana copyright attorneys, a defense lawyer filed a motion to remove the lawsuit to a federal court in the Southern District of Indiana – Evansville Division.

Plaintiff Professional Transportation, Inc. of Evansville, Indiana (“PTI”) is the former employer of Defendant Robert Warmka of Savage, Minnesota. Warmka worked for PTI from September 2012 to December 2013. PTI contends that this employment was governed in part by a trade-secrets agreement. Subsequent to leaving employment with PTI, Warmka began employment with Minnesota Coaches Inc. (“MCI”) d/b/a Crew Motion, a competitor of PTI.

PTI filed this copyright lawsuit in Vanderburgh Superior Court alleging that Warmka infringed its intellectual property by his use of Plaintiff’s copyrighted driver’s manual within MCI’s driver’s manual. PTI contends that multiple sections of PTI’s manual were reproduced nearly verbatim in MCI’s manual. PTI claims that this manual was filed with the U.S. Copyright Office “on or before 2012.” Plaintiff further contends that Defendant appropriated Plaintiff’s confidential material and trade secrets in violation of a trade secret agreement executed by both parties in 2012.

In this lawsuit, filed by Indiana copyright lawyers, the following counts are asserted:

• Count I: Indiana Trade Secret Violation
• Count II: Unfair Competition

• Count III: Copyright Infringement

Plaintiff alleges loss of business and profits and seeks injunctive relief and monetary damages.

Copyright attorneys for Warmka filed a notice of removal, stating that federal subject-matter jurisdiction was proper on the basis of both federal-question jurisdiction and diversity-of-citizenship jurisdiction.