Indiana Intellectual Property Law News

January 6, 2012

Wisconsin Court To Hear Simon Property Group Patent Infringement Claims Over Mobile Application For Mall Marketing: Case Dismissed from Indiana Court

Indianapolis, IN – A patent infringement suit filed in the Southern District of Indiana has been transferred to the Western District of Wisconsin. In April, patent lawyers for Simon Property Group of Indianapolis, Indiana filed a patent lawsuit against NorthMobileTech of Middleton, Wisconsin. In its complaint, Simon stated that NorthMobileTech has accused Simon of infringing NorthMobileTech’s patent, and Simon believed a patent infringement lawsuit against it is imminent. On April 20, 2011, the same day as Simon’s patent attorneys filed its suit, patent attorneys for NorthMobileTech filed a patent infringement lawsuit against Simon in the Western District of Wisconsin. Indiana Intellectual Property Law and News blogged about the case when it was filed.

Simon had filed requests to have the two lawsuits heard by the Southern District of Indiana, however, it has recently filed a motion to dismiss in the Indiana court, noting that the case in the Western District of Wisconsin was moving along quicker than the Indiana case.

The controversy is over Simon’s new application for mobile phones that allows users to access information about shopping malls and merchandise. NorthMobileTech is the owner of patent no. 7,805,130, which has been issued by the US Patent Office. This patented technology is a mobile phone application that allows shopping store and merchandise information to be transmitted to a wireless phone. According to an exhibit attached to Simon’s Complaint, a patent attorney for Fenwick Corporation, which has assigned its patent rights to NorthMobileTech, has sent a letter to Simon alleging that Simon’s mobile phone application infringes its patent. Simon’s application is called “Simon Malls – more choices.”

Practice Tip: This litigation has been quite contentious with both parties filing motions to compel discovery compliance and with Simon requesting sanctions. The parties have also briefed claim construction. The latest entry on PACER indicates that Magistrate Stephen L. Crocker will hear the parties discovery disputes tomorrow, January 6, 2012.
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January 4, 2012

Southern District Issues Partial Summary Judgment in Norwood Promotional Products v. Kustom Koozies Trademark Suit Over KOOZIE Mark

By Overhauser Law Offices, LLC

Indianapolis, IN – Judge Magnus-Stinson of the Southern District of Indiana has issued a partial summary judgment in a trademark infringement case. Trademark attorneys for Norwood Promotional Products, Inc. of Indianapolis, Indiana had filed a trademark infringement lawsuit in the Southern District of Indiana alleging that KustomKoozies, LLC and Steve Liddle of Raleigh, North Carolina infringed trademark registration no.3,240,989 for the KOOZIE mark registered with the US Trademark Office. Trademark attorneys for Norwood had sued Kustom in 2005 and 2006 over the use of the term “Koozie.” The parties reached a settlement of those lawsuits that included the terms that Kustom abandon its trademark application for the mark “KUSTOM KOOZIE”and accept a royalty-free license agreement regarding Norwood’s claimed mark, “Koozie.” In 2008, Norwood alleged that Kustom was not complying with terms of the license agreement, specifically it was required that KOOZIE be in all capital letter in any use and was not displaying ® after the mark. Further it was alleged that Kustom had registered internet domain names and sold products that were not allowed by the license agreement. The defendants attempted to cure the non-compliance, but in 2009 Norwood informed Kustom that it was cancelling the license agreement due to Kustom’s non-compliance and filed this lawsuit. Both parties moved for summary judgment.

One of Kustom’s counterclaims was that Norwood’s registered trademark for “KOOZIE” should be cancelled. Kustom argued that the mark was invalid. However, the Court rejected this claim finding that Kustom was estopped from challenging the legitimacy of the KOOZIE mark because it had voluntarily gave up the right to challenge this mark in the prior settlement agreement. The Court also cited the doctrine of “licensee estoppel” that a trademark licensee is barred from challenging the validity of the licensor’s mark. The Court granted summary judgment in favor of Norwood, finding that Kustom had breached the settlement and license agreements. The issue of damages was reserved for trial. The Court, however, granted summary for Kustom, finding that it had not infringed the trademark after the license agreement was cancelled. Several issues in this case remain pending for upcoming trial.

Practice Tip: In its opinion, the Court is critical of both parties’ trademark attorneys litigation strategies. The Court notes “The advocacy in this matter has been zealous if not always effective or efficient.” Later, the Court notes “the briefs have defined the issues with a preference for litigation tactics and strategy, as opposed to clarity.” The court then noted that the parties’ briefs were not well organized and noted it was structuring its opinion in a more logical organization.
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January 3, 2012

Indiana Patent Attorneys Obtain 134 Patents for Indiana Companies in December, 2011

By Overhauser Law Offices, LLC

Indiana patent attorneys obtained issuance of the following 134 patents from the US Patent Office to persons and businesses in Indiana in December, 2011:

	PAT. NO.	Title
1	D651,318	Femoral resection alignment tool
2	D651,317	Femoral prosthesis sizing tool
3	D651,316	Femoral cut guide
4	D651,315	Femoral provisional prosthesis with cut guide
5	D651,314	Extramedullary modular post

December 31, 2011

165 Trademark Registrations Issued to Indiana Companies in December, 2011

By Overhauser Law Offices, LLC

The US Trademark Office issued the following 165 trademark registrations to persons and businesses in Indiana in December, 2011, based on applications filed by Indiana Trademark Attorneys:

	Reg. Number	Mark	Click to View
1	4,077,289	SF	View
2	4,077,266	GATORADE SPORTS SCIENCE INSTITUTE	View
3	4,077,214	IBMX	View
4	4,077,149	{Design}	View
5	4,077,054	FLEXWOOD	View

December 29, 2011

Eight Circuit Affirms Judgment for Rolls Royce over Trade Secrets

By Overhauser Law Offices, LLC

St. Louis, MO – The Eighth Circuit Court of Appeals has affirmed a lower court’s summary judgment in favor of Rolls Royce Corporation of Indianapolis and a jury’s award of $350,000. Intellectual property attorneys for Avidair Helicopter Supply, Inc. of Lee Summit, Missouri had filed a lawsuit seeking a declaration that it had not violated Indiana’s Trade Secret laws relating to trade secrets of the Rolls Royce Corporation of Indianapolis, Indiana. The case was originally filed in the Southern District of Indiana in 2006 but was transferred to the Missouri Western District Court in 2007.

The Court of Appeals affirmed the district court’s judgment. One issue that the Court of Appeals looked at was the definition of a trade secret. The Uniform Trade Secret Act provides that a trade secret is: “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.”

Practice Tip: This case makes a claim under Indiana’s Trade Secrets Act, which allows a plaintiff to seek an injunction and damages when someone has misappropriated a trade secret. Indiana’s trade secret law is based upon the Uniform Trade Secret Act.
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December 27, 2011

Brightpoint Suing Former Executive Over Trade Secrets

By Overhauser Law Offices, LLC

Indianapolis, IN – Brightpoint of Indianapolis has filed a lawsuit against former executive, Mitch Black, of Miami, Florida, alleging he has breached an employment contract that included protection of Brightpoint’s trade secrets. The lawsuit also names Brightstar Corporation as a defendant, arguing that the company knew or should have known that Mr. Black had violated trade secret laws.

According to an Indianapolis Star news report, Mr. Black left Brightpoint in 2010 and has recently taken a new job at Brightstar Corporation of Miami, Florida. Mr. Black served as senior vice president and was in charge of North American division. The complaint states that Mr. Black had daily access to trade secrets including strategic planning. According to a report from the Indianapolis Business Journal, Mr. Black has admitted to removing confidential information such as business plans, spreadsheets, accounting information and customer lists from Brightpoint.

Practice Tip: This case makes a claim under Indiana’s Trade Secrets Act, which allows a plaintiff to seek an injunction and damages when someone has misappropriated a trade secret.

December 23, 2011

Northern District Grants Default Judgment and Damages of Over $113,000 in favor of Century 21 in Trademark Infringement Case

By Overhauser Law Offices, LLC

Lafayette, IN – The Northern District of Indiana granted a default judgment, damages and a permanent injunction in a trademark infringement case involving a hold-over franchisee. Century 21 Real Estate, LLC of Parsippany, New Jersey had filed a trademark infringement lawsuit in the Northern District of Indiana alleging that Destiny Real Estate Properties LLC, f/d/b/a Century 21 Destiny Real Estate and Daniel Sutton of Lowell, Indiana infringed Century 21’s trademarks and service marks. Indiana Intellectual Property Law and News blogged about the case when it was filed. The defendants failed to file any response to the Century 21’s complaint. After finding that the defendants had been properly served, the court granted Century 21’s motion for a judgment by default.

The Court analyzed a legal question that has not yet been examined by the Seventh Circuit Court of Appeals and that different federal circuit courts have reached different results: “whether a hold-over franchisee’s continued unauthorized use of a franchisor’s mark constitutes counterfeiting[?]” The court found that the defendants use to Century 21’s mark was counterfeiting in this case and noted “The Court can conceive of no reason why an ex-franchisee should escape liability for counterfeiting simply because that person had access to franchise’s original marks because of the former relationship[.]” The court then analyzed the damages claims of Century 21 and awarded $113,656 plus attorneys fees of $5,419 and costs of $595 to Century 21. The Court also granted Century’s 21’s request for a permanent restraining order that prevents the defendants from using the Century 21 marks.

Practice Tip: Since the Court found that the defendant’s trademark infringement was counterfeiting, treble damages were available to Century 21. This case explains how intellectual property rights are generally well protected in statutory damages provisions and explains how the trebling of damages, ability to recover a defendant’s “profits” and recovery of attorney fees can lead to significant recoveries, even without the intellectual property owner having to prove “actual” damages.
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December 19, 2011

International Trade Commission to Revisit Ruling in Smart Phone Patent Infringement Claim

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. International Trade Commission announced that it will revisit a ruling by an administrative law judge finding that Apple had not infringed four of HTC’s patents. In May 2010, patent attorneys for HTC filed a complaint with the ITC alleging that Apple’s IPods, IPhones and IPads infringe upon HTC’s patents. HTC asked the commission to ban all imports of IPods, IPhones and IPads. In July, the ALJ issued a 200+ page ruling finding no patent infringement. Friday’s decision by the ITC will only review one of the four patents that HTC claims has been infringed. Now a panel of six commissioners will look at whether that patent was infringed.

Reuters.com described the case as “a proxy for the larger fight for market share between Google Inc’s Android cellphones and tablets, many of which HTC makes, and Apple’s products.” Patent attorneys for Apple have filed a similar complaint with the ITC and in the U.S. District Court of Delaware alleging that HTC’s smart phones infringe Apple’s patents.

Practice Tip: As the Reuters.com’s story points out, Apple, Samsung, HTC, Microsoft and Motorola all have current patent infringement litigation pending over smart phone technology. Expect to hear more about patent infringement cases involving smart phones.
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December 17, 2011

Organic Seed Growers Bring Innovative Patent Challenge Against Monsanto

By Overhauser Law Offices, LLC

New York, NY – Earlier this year, patent attorneys for a group of 60 organizations and farmers, including the Organic Seed Growers and Trade Association, filed a patent lawsuit in the Southern District of New York against agriculture giant Monsanto Company of St. Louis, Missouri. The plaintiffs are farmers who do not want their organic seeds contaminated by the transgentic or genetically modified seeds that are produced and patented by Monsanto. The feared contamination occurs when organic seeds come into contact with genetic material from transgentic seeds through natural pollination processes, such as the wind blowing transgentic pollen to a organic farm nearby . The plaintiffs allege that, given Monsanto’s reputation for vigorously defending its patents, they have brought “this action to protect themselves from ever being accused of infringing patents on transgenic seed.” Their complaint begins: “Society stands on the precipice of forever being bound to transgenic agriculture and transgenic food. Coexistence between transgenic seed and organic seed is impossible because transgenic seed contaminates and eventually overcomes organic seed. ” The organic farmers seek a declaratory judgment that all of Monsanto’s transgentic seed patents are invalid as injurious to public health and for numerous other reasons.

Monsanto has filed a motion to dismiss arguing that the plaintiffs have not demonstrated a justiciable case or controversy and therefore the court does not have subject matter jurisdiction. Monsanto also states that it has issued a public statement declaring that its patent attorneys will not file patent infringement lawsuits against farmers who’s crops are inadvertently contaminated by its patented seeds. Monsanto is being represented by former U.S. Solicitor General Seth Waxman.

Briefing on the motion to dismiss was completed in late August so a decision could be expected at any time. An amicus curiae brief in support of plaintiffs has also been filed.

Practice Tip: Monsanto is an aggressive litigant in defending its intellectual property rights and has sued numerous Indiana farmers. Monsanto recently won the appeal of the Southern District of Indiana‘s decision against an Indiana farmer in patent infringement lawsuit, which Indiana Intellectual Property Law and News blogged about here: US Court of Appeals for the Federal Circuit Affirms the Southern District Court of Indiana’s Decision Holding Indiana Farmer Infringed Soybean Seed Patents.
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December 16, 2011

Now Pending: Appeal of Southern District’s Dismissal of False Patent Marking Suit and Award of Costs to Roche Diagnostics

By Overhauser Law Offices, LLC

Indianapolis, IN – An appeal is now pending of Judge Tanya Walton Pratt of the Southern District of Indiana‘s grant of a motion to dismiss in a qui tam patent false marking case. Intellectual property attorneys for David O’Neill, Promote Innovation LLC of Clarendon Hills, Illinois had filed a patent infringement lawsuit alleging that Roche Diagnostics of Indianapolis, Indiana, was marking its ACCU-CHEK® product packages with patents that were expired. The case was filed qui tam. The ACCU-CHEK® product line is diabetes blood glucose monitoring kits. The following expired patents alleged to wrongfully appear on the packaging of various products: 4,891,319 Protection of proteins and the like, 4,924,879 Blood lancet device and 4,999,582 Biosensor electrode excitation circuit, which have been issued by the US Patent Office. This was originally filed in the Northern District of Illinois and was transferred to the Southern District of Indiana in July of 2010. Indiana Intellectual Property Law and News blogged about the case here: O’Neill Sues Roche Diagnostics for False Patent Marking.

In June, Judge Pratt granted Roche’s motion to dismiss. Judge Pratt found that the complaint failed to allege patent false marking as a matter of law. The court found that the plaintiff failed to allege intent to deceive, which must be specifically plead and supported by factual allegations. The Court found the allegations of deceptive intent were similar to those in the Federal Circuit Court recent opinion, In re BPLubricants USA Inc., – F.3d -, 2011 WL 873147 (Fed. Cir. March 15, 2011) which had failed as a matter of law in that case. Therefore, the Court dismissed the case with prejudice.

The plaintiffs have filed an appeal. In addition, Roche had requested an award of costs of defending the action. In August, Judge Pratt awarded Roche $10,040.09 in costs. The plaintiffs have filed challenges to this award in the district court, and Magistrate Baker is currently reviewing this award.

Practice Tip: This appeal may present one of the first opportunities for the Federal Circuit Court of Appeals to invoke the patent reform legislation that was passed and signed earlier this year. The new law is expected to result in the immediate dismissal of most patent false marking cases.
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