Indiana Intellectual Property Law News

November 10, 2011

Eli Lilly & Company Sues Yanchep Veterinary Clinic, Proprietary Limited Company, for Trademark Infringement

Indianapolis IN – Trademark lawyers for Eli Lilly and Company of Indianapolis, Indiana filed a trademark infringement suit in the Southern District of Indiana alleging Yanchep Veterinary Clinic, Proprietary Limited Company, Petsvetshop, Proprietary Limited Company,, Paul Sorensen and Dr. Cymantha Sorensen, all of Yanchep, Australia infringed trademark registration no. 3,370,168 for the mark COMFORTIS, which has been registered in the US Trademark Office.

The COMFORTIS mark is used by Lilly’s Elanco Animal Health Division in connection with the manufacturing and sales of flea-control products Thumbnail image for Thumbnail image for lilly.jpg for dogs available only through a veterinarian’s prescription. Lilly maintains a website that instructs on the safe use of the product, but does not sell the product online. Lilly sells the product worldwide, including in Australia. The complaint alleges that the defendants are directly selling Comfortis in the United States through their websites. The complaint alleges that the defendants are selling the Australian version of Comfortis, which does not comply with various FDA requirements including that it only be sold by a licensed veterinarian. The complaint states that Lilly sent the defendants a letter in March 2010 demanding that they cease their sales of Comfortis. The defendants stopped selling Comfortis to United States customers for a brief period, but then resumed. The complaint makes claims of trademark infringement, unfair competition, cybersquatting, and Indiana state law unfair competition. Lilly is seeking an injunction, damages, the transfer of domain names, and for the defendants to send a letter to all U.S. customers who bought Comfortis from the defendants instructing that the product should not be used.

Practice Tip: All of the defendants here are Australian citizens or companies. Expect them, if they file an appearance at all in the case, to raise issues of jurisdiction.

November 9, 2011

Update: Coach Trademark Infringement Suit against Novelty Inc. Has Settled

By Overhauser Law Offices, LLC

Indianapolis, Indiana – A trademark infringement case in the Southern District of Indiana has recently settled. In May 2010, intellectual property counsel for Coach, Inc. and Coach Services, Inc., both of New York, NY, had filed an infringement suit alleging Novelty, Inc. of Greenfield, IN, has infringed numerous COACH trademarks which have been registered with the U.S. Trademark Office, as well as infringed copyrighted design elements and product trade dress. The case was blogged about by Indiana Intellectual Property Law and News. The case has recently been dismissed from the court’s docket with a notice that an undisclosed settlement had been reached.

Coach’s trademark attorneys had accused Novelty of offering products bearing source-identifying indicia and design elements which are “studied imitations” of the plaintiffs’ intellectual property. Novelty failed to file an answer to the complaint on time, and Coach obtained a default judgment in August 2010. Novelty then successfully petitioned the court to set aside the default judgment, arguing that it had not answered the complaint because settlement discussions were ongoing. The parties apparently had a discovery dispute relating to the extent to which a protective order concerning confidential information should be in place and whether certain disclosures should be limited to “attorney eyes only.” In July, Magistrate Baker sided with Coach in the discovery dispute noting “The Defendant has not shown sufficient cause for an “attorney’s eyes only” provision, and Defendant’s other objections, while not unreasonable, are not more compelling than Plaintiffs’ proposal.” The case has now been settled.

Practice Tip: In this case, Novelty argued that the default judgment should be set aside because settlement negotiations were ongoing at the time. Although Novelty successfully had the default set aside, other courts have not allowed this excuse for failing to file an answer or seek an extension of time. See U.S. v. Topeka Livestock Auction, Inc., 392 F.Supp. 944 (D.C. Ind. 1975). This illustrates the importance of complying with the deadline for answering a complaint, even if settlement seems likely.

This case was assigned to Chief Judge Richard L. Young and Magistrate Judge Tim A. Baker in the Southern District of Indiana, and assigned case no. 1:10-cv-00615-RLY-TAB.

November 8, 2011

Northern District of Indiana Rolls Out Proposed Changes to Local Rules

By Overhauser Law Offices, LLC

Fort Wayne, IN – The Northern District of Indiana has published proposed changes to the local rules. The proposed changes would affect many rules, however, are not intended to change the substance of the local rules. Rather, the changes are proposed in order to simplify and clarify the language of the rules. The court has released “Guiding Principles” to the revisions, stating the goals of the revisions include: conforming to the style, organization, format and terminology of the Federal Rules of Civil Procedure and to follow generally accepted American-English sentence construction. The numbering system of the local rules will also be changed slightly under new proposal.

The public and bar are invited to comment on the proposed local rule changes through a link provided on the Court’s website.

November 7, 2011

Eli Lilly & Co. Loses Appeal in British Supreme Court Over Patent Dispute Over Gene Sequence

By Overhauser Law Offices, LLC

London, U.K. – The Supreme Court of the United Kingdom has ruled against Indianapolis-based Eli Lilly & Company in a patent dispute. Lilly had challenged the validity of the patent of Human Genome Sciences, Inc., of Rockville, Maryland that covers the gene sequence of a protein called Neutrokine-α. Lilly had challenged the patent based on the fact that there is no known use of the protein. Thus, Lilly argued, the gene sequence was not patentable due to a lack of industrial application.

According to the Indianapolis Business Journal, Lilly continues to maintain the patent is invalid. The IBJ quoted a Lilly statement as stating “Human Genome Sciences seek to foreclose a whole area of research in a way that is not only harmful to the industry, but would ultimately and unjustifiably hinder the future development of new medicines.”

Practice Tip: The Court’s decision was based upon the European Patent Convention and United Kingdom patent doctrine requiring a patentable invention be susceptible to industrial application, which is similar to the U.S. patent doctrine of utility. The Court’s decision here holds that the U.S. doctrine of utility creates a higher bar to patentability that the E.U. and U.K. doctrine. The opinion explicitly rejected U.S. cases on the doctrine, including Brenner v Manson, 383 U.S. 519 (1966) and in re Fisher, 421 F.3d 1365 (2005).

November 4, 2011

Patent Lawsuit Filed Over Playground “Curved Rail Panels”

By Overhauser Law Offices, LLC

Evansville, IN – Parents try to protect their children from playground hazards. Now there is a new threat to watch out for – patent infringement.

Patent lawyers for Plaintiff, INDIAN INDUSTRIES, INC. d/b/a Escalade Sports of Evansville, IN, have sued Defendant RAINBOW PLAYSYSTEMS, INC. of Brookings, South Dakota alleging it has infringed patent no. 8,002,642, PLAYSET SYSTEM COMPONENTS, which has been issued by the US Patent Office.

The Complaint alleges that Rainbow’s “Turbo Sunshine Castle, Turbo Sunshine Clubhouse, Rainbow Castle Supersized, and King Kong Quarter Turned Club Playsets” infringe Indian’s “curved rail panels” feature. Although parents seek to protect their children from “playground injuries,” Indian alleges that the accused playsets cause it “irreparable injury.”

November 3, 2011

Update to Third Degree Films V. John Doe: Purdue Releases Student’s Name Who Is Accused of Copyright Infringement of Adult Film

By Overhauser Law Offices, LLC

Lafayette, IN – According to a report from the Associated Press, Purdue University has released the name of a student who is accused of illegally downloading an adult film from a dorm room internet connection. Last month, Indiana Intellectual Property Law and News reported on Magistrate Judge Andrew Rodovich of the Northern District of Indiana ruling that denied a motion to quash the subpoena that sought Purdue’s disclosure of the student’s name and address.

This Purdue student is one of 2,000 internet subscribers that Third Degree Films, Inc. of California alleges have committed copyright infringement by illegally downloading adult videos. Third Degree did not know the identities of the persons who allegedly illegally downloaded the copyrighted work, but did have the internet protocol (I.P.) address. Third Degree has served subpoenas on internet services providers attempting to uncover the identities of the subscribers with the specified I.P. addresses. The underlying copyright infringement lawsuit was filed by copyright attorneys for Third Degree in the Northern District of California. Several similar copyright infringement cases are currently pending in Indiana district courts.

The Purdue student had filed a motion to quash the subpoena issued on Purdue, arguing that the subpoena sought confidential information and was burdensome.

Practice Tip: Typically in a case like this, once the identity of the I.P. subscriber is learned, the copyright attorneys for the film company will send a letter to the person seeking a settlement and threatening to sue the person if a settlement is not reached.
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November 2, 2011

Borg Warner Sues Cummins for Patent Infringement of Turbocharger Wheel Design and Methods

By Overhauser Law Offices, LLC

Asheville, NC – Patent attorneys for Borg Warner, Inc. of Auburn Hills, Michigan and Borgwarner Turbo Systems, Inc. of Arden, North Carolina have filed a patent infringement suit in the Western District of North Carolina alleging Cummins, Inc. of Columbus, Indiana, Cummins Turbo Technologies Limited of the United Kingdom, and Cummins Turbo Technologies of North Charleston, South Carolina BW Turbochargers.jpg infringed patent no. 6,904,949, Method of making turbocharger including cast titanium compressor wheel; along with patent no’s. 6,629,556 and 6,663,347, Cast titanium compressor wheel, which have been issued by the US Patent Office. These patents are known collectively as “the Borg Warner Compressor Wheel Patents”.

The patents at issue are designs for and methods of manufacturing titanium compressor wheels for use in turbocharger applications. Bloomberg.com described the technology “directing air into an engine’s manifold.” The complaint alleges that Cummins infringes the Borg Warner patents by importing, making, selling, and offering for sale devices created by the patented methods. Borg accuses Cummins of directing its foundries to use the patented methods. The complaint makes three claims of patent infringement and seeks an injunction, damages and attorney fees.

Practice Tip: According to Reuters.com, patent lawyers for Borg Warner filed a similar patent infringement lawsuit against Honeywell, which resulted in a $32.5 million settlement in favor of Borg Warner.
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October 31, 2011

Preview of U.S. Supreme Court Patent Infringement Case Mayo Collaborative Services v. Prometheus Labs

By Overhauser Law Offices, LLC

Washington, D.C. – The United States Supreme Court will hear an important patent infringement case this term that will determine the scope of patent rights in certain medical methods. Patent lawyers for Prometheus Laboratories, Inc. of San Diego, California filed a patent infringement suit against Mayo Collaborative Services, doing business as Mayo Medical Laboratories of Rochester, Minnesota, alleging that Mayo infringed patent no. 6,355,623, Method of treating IBD/Crohn’s disease and related conditions wherein drug metabolite levels in host blood cells determine subsequent dosage and patent no. 6,680,302, Methods of optimizing drug therapeutic efficacy for treatment of immune-mediated gastrointestinal disorders which have been issued by the US Patent Office.

The patents at issue involve claims over an observed correlation between certain blood tests and patient health, specifically the correlation between the level of certain drug metabolites in the patient’s blood and the patient’s symptoms of gastrointestinal disease. As characterized by Mayo in its brief to the Supreme Court, the inventors did not “invent” these correlations; rather, they simply observed the correlations in a patient population. Based on the patents, Prometheus brought a blood test product called Pro-Predict to the market. The level of metabolite in the patient’s blood can give the treating physician information relevant to adjusting the patient’s dose of certain medications. Mayo improved upon Prometheus’s blood test product and later released its own competing product. Patent attorneys for Prometheus then initiated this lawsuit, alleging that Mayo had infringed its patents. Mayo has attempted to defend the suit by arguing that Prometheus’s patent claims were not patent-eligible under 35 U.S.C. § 101. The Court of Appeals for the Federal Circuit has twice ruled in Prometheus’s favor.

The oral argument is scheduled for December 7, 2011 at the United States Supreme Court. The briefs can be found on the American Bar Association’s preview page for the case. A number of amicus curiae briefs have been filed as well. Notably, the American Medical Association filed an amicus brief in support of Mayo.

October 28, 2011

Southern District Court Grants Partial Summary Judgment for Eli Lilly and Company in Dispute With Parkinson’s Disease Drug Licensee Over Products Liability Lawsuit

By Overhauser Law Offices, LLC

Indianapolis. IN – Judge Tanya Walton Pratt of the Southern District of Indiana has granted a Partial Summary Judgment for Eli Lilly and Company of Indianapolis, Indiana in a dispute with licensee Valeant Pharmaceuticals International of Irvine, California involving the costs associated with product liability lawsuits over Lilly’s Parkinson’s disease drug.

Lilly began selling a product called Permax, which is used to treat Parkinson’s disease, in 1989. In March 2002, Lilly entered an exclusive licensing agreement with Amarin Corporation allowing Amarin to market, use and sell Permax in the United States, including the licensed use of Permax trademarks. The parties’ license agreement prohibited either party from assigning rights or obligations under the contract to any third party absent written consent of the other party. In 2004, Valeant purchased the assets of Amarin, including the rights under the Permax license. Lilly provided written consent to this assignment in a letter agreement that also addressed costs and indemnification relating to defending a pending products liability lawsuit involving Permax. The present lawsuit was filed when a dispute arose between Lilly and Valeant over the costs and indemnification relating to the products liability lawsuit. After settlement of one of the products liability cases, Valeant refused to indemnify Lilly. Lilly sought a declaratory judgment requiring Valeant to pay certain litigation and settlement costs relating to the products liability suit.

In the court’s decision, Judge Pratt found that the parties’ contract was clear and unambiguous in providing a schedule for sharing costs associated with the product liability suit. Thus Valeant must pay Lilly pursuant the schedule in the contract.

Practice Tip: This case illustrates that license agreements, which grant the licensee limited rights to use the intellectual property, owned by the licensor, can come with additional responsibilities and obligations. It is important to have an intellectual property attorney draft and review license agreements to ensure that the parties understand what is included.
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October 27, 2011

Minka Lighting Sues Fanim Industries, Fanimaton, Inc, and Lowe’s for Patent Infringement of Ceiling Fans

By Overhauser Law Offices, LLC

Indianapolis, IN – Patent lawyers for Minka Lighting, Inc. of Corona, California filed a patent suit in the Southern District of Indianaalleging Fanim Industries, Inc. of Zionsville, Indiana, Fanimation, Inc. of Indianapolis, Indiana and Lowes Companies, Inc. of Mooresville, North Carolina infringed Patent no. 7,481,626 Ceiling fan with integrated fan blades and Housing, Patent no. D535,387 Ceiling fan blade assembly, and Patent no. D535,388 Ceiling fan blade which have been issued by the US Patent Office.

Minka manufactures, markets and sells home products including ceiling fans, and Fanim is a competitor in the ceiling fan industry. Lowe’s distributes and markets ceiling fans and is also a competitor of Minka. The complaint alleges that Fanim and Lowe’s sell a line of ceiling fans called the “Goldey” that infringes the ‘626, ‘387 and ‘388 patents. The complaint makes three claims of patent infringement and seeks damages, an injunction, attorney fees and costs.

Practice Tip: According to PACER, Minka sued Fanimation in the Southern District of Indiana in 2009 also alleging that Fanimation infringed the ‘626 patent. In the 2009 case, the parties agreed to dismiss the case with prejudice. The stipulation of dismissal referenced that Minka was in the process of applying for re-issue of the ‘626 patent.
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