Indiana Intellectual Property Law News

June 6, 2011

U.S. Supreme Court Sides with Roche in Patent Ownership Controversy

Washington, D.C. – The United States Supreme Court has issued its opinion in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, a patent ownership case. The Court held that the Bayh-Dole Act,35 U.S.C. §§ 200-212, “does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.” The decision affirmed the Federal Circuit Court‘s decision below. Justice Roberts delivered the opinion, which Justices Scalia, Thomas, Kennedy, Alito, Sotomayor, and Kagen joined. Justices Breyer and Ginsberg dissented.

In this case, an inventor performed some research while he worked for Stanford University and had signed a patent ownership assignment agreement with Stanford. The inventor later left this employment and performed further research, culminating in an invention, while employed by Roche. He had also signed a patent assignment agreement with Roche. Essentially, controversy was over whether Stanford or Roche had a valid assignment of the patent rights. The Supreme Court’s decision sided with Roche.

An analysis by the SCOTUS blog noted “Of particular interest to Court watchers, the Court paid no heed in either case to the views of the Solicitor General, which usually has a high degree of success in pressing government views on the Court, especially in statutory cases, and has led much of the charge criticizing Federal Circuit doctrines in the past.”

June 6, 2011

Federal Circuit Applies Analogous Art Test to Exclude Prior Art References from Obviousness Analysis

By Overhauser Law Offices, LLC

Washington, DC – In a decision that may impact both patent prosecutors and litigators, the United States Court of Appeals for the Federal Circuit applied the analogous-art test to exclude certain prior art references from the consideration of whether a claimed invention was obvious in light of the prior art.In this case, patent applicant Arnold Klein appealed the rejection of certain claims in U.S. Patent Application No. 10/200,747 as obvious under 35 U.S.C. § 103. The relatively simple technology at issue is “a mixing device for use in preparation of sugar-water nectar for certain bird and butterfly feeders,” with sugar and water compartments separated by a removable divider. The placement of the divider can vary, depending on the species of bird to be fed. The device maintains a proper nectar ratio so long as water and sugar are at the same “line of sight” level.Citing prior art patents, the examiner at the USPTO made five rejections, each based on the notion that Mr. Klein’s invention would be obvious to one of ordinary skill in the art, and these rejections were each affirmed by the Board of Patent Appeals and Interferences (“the Board”).

Noting that a reference qualifies as prior art for an obviousness determination under § 103 only when it is “analogous” to the claimed invention, the Federal Circuit initially focused on the particular problem being solved by Mr. Klein and narrowly stated it as: “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.” The court found that the three cited prior art references (respectively disclosing a type of drawer, a particular tray, and an “apparatus for keeping accounts”) which feature solid item separators are not pertinent to this problem “since none of these three references shows a partitioned container that is adapted to receive water or contain it long enough to be able to prepare different ratios in the different compartments.”

As for the two remaining prior art references (disclosing a type of “blood plasma bottle” and a certain fluid container), they are directed at dividing liquids which are mixed later; the Federal Circuit concluded that neither of these references are pertinent to Mr. Klein’s invention “because they do not address multiple ratios or have a ‘movable divider’.” Because none of the cited references were completely analogous to the stated problem, no grounds remained to support the obviousness rejections, and the Board’s decision was reversed.

June 3, 2011

Saeilo Enterprises, Inc. Sues Buzz Bee Toys, Inc. for Trademark Infringement of Tommy Gun Registered Trademark in Hamilton County, But Case Removed to Federal Court

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark lawyers for Saeilo Enterprises, Inc. of Pearl River, New York filed a trademark infringement suit alleging Buzz Bee Toys, Inc. of Mt. Laurel, New Jersey infringed the following trademarks: Trademark Registration No. 2,885,628 for the mark TOMMY GUN filed with the US Trademark Office and Indiana State Registration No. 20090707-13956, Registration No. 20090707-13957, and Registration No. 20090707-13958 for the TOMMY GUN design marks filed with the Indiana Secretary of State.

Saeilo originally filed the lawsuit in Hamilton County Superior Court. Trademark attorneys for Buzz Bee, however, successfully moved to remove the case to federal district court, noting that federal court has jurisdiction due to the federal trademark claim and the diversity of the parties. According to the complaint filed by Saeilo, Buzz Bee offers for sale toy guns using the words “Tommy” on the packaging.

The complaint states that the infringing conduct occurred in Hamilton County, Indiana, but does not specify when or where. Saeilo has attached pictures of the toy guns and packaging that appear to be in store and being offered for sale. Pictures of the allegedly infringing toy guns are also online, but the complaint does not make reference to Buzz Bee’s website. Saeilo’s complaint asserts claims of federal trademark infringement, federal trademark dilution, false designation of origin, false advertising, trade dress infringement, common law trademark infringement, unfair competition, conversion, forgery, counterfeiting, and deception. The complaint seeks a permanent injunction, damages, treble damages, profits, attorney’s fees and costs.

Practice Tip: The complaint was signed by a lawyer at Continental Enterprises, which is an Indianapolis corporation that claims to “non-traditional strategies to combat infringers domestically and around the globe and provide effective solutions for seemingly intractable IP problems.” Continental Enterprises, however, has recently been the subject of highly critical press coverage. For example, one website accused the company of “using untrained staff to troll the internet for victims.”

June 3, 2011

Lisa Angle Sues Math-U-See, Inc. et al. for Copyright Infringement of Home Schooling Curriculum Materials

By Overhauser Law Offices, LLC

South Bend, IN – Copyright lawyers for Susan Lynch, of Indiana, Math-U-See Indiana, Inc. of Indiana, and Lisa and Jim Angle, of Idaho, filed a breach of contract and copyright infringement suit alleging Math-U-See, Inc. of Lancaster, Pennsylvania, and Steve and Ethan Demme infringed the works CALCULUS WORKS, RECORDED CALCULUS LESSONS, HONORS BOOKS, PRE-CALCULUS WORKS, ALGEBRA 2 AND QUIZ WORKS, and TEST BOOKLETS.

The complaint alleges that Steve Demme owns Math-U-See, Inc. and invented the Math-U-See curriculum for home schooling parents in the early 1990s. Steve Demme used a business model of having individual representatives and distributors to sell the Math-U-See curriculum. The plaintiffs were “Reps,” and Plaintiff Lisa Angle also wrote additional material for Math-U-See, which are the copyrighted works that the copyright infringement claim is based upon. The complaint alleges that Sue Lynch was the Rep for Indiana and Illinois beginning in 1996 and built sales to hundreds of thousands of dollars by 2009. Lisa and Jim Angle were Reps for Montana, North Dakota, Alabama, and Tennessee. The complaint alleges that in 2010 Steve Demme, with help of Ethan Demme, ended the representative business model and cut the plaintiffs out of selling the Math-U-See curriculum. Ms. Angle claims that the Defendants continued to use the copyrighted materials she created after the agreement was terminated and without Ms. Angle’s permission. The complaint makes claims of breach of contract, breach of good faith, breach of fiduciary duty, violation of Indiana Franchise Act, violation of Illinois Franchise Act, violation of the Idaho Unfair Trade Practices Act, violation of Illinois Unfair Trade Practices Act, violation of Tennessee Unfair Trade Practices Act, Violation of Law 75 of Puerto Rico, tortuous interference with contract, tortuous interference with prospective business relations, wrongful conversion of customer list, promissory estoppel, unjust enrichment/quantum meruit, accounting and six counts of copyright infringement. The plaintiffs seek actual and punitive damages, an injunction prohibiting further distribution of the copyrighted works, costs and attorney fees.

Practice Tip: In this case, Ms. Angle claims she is the author and rightful owner of the copyrights to the works described in the complaint. She claims the defendants violated 17 U.S.C. 106 of the Copyright Act. Ms. Angle has not formally registered her copyrights with the US Copyright Office, however, this is not a necessity for her infringement claims to succeed. Rather, the Copyright Act provides that “Copyright in a work protected under this title vests initially in the author or authors of the work.”

June 1, 2011

KZRV, L.P. Sues RV Wholesalers, LLC for Trademark Infringement of Travel Trailers

By Overhauser Law Offices, LLC

Fort Wayne, IN – Trademark lawyers for KZRV, L.P. of Shipshewana, Indiana filed a trademark infringement suit alleging RV Wholesalers, LLC of Lakeview, Ohio infringed Trademark Registration No. 3,183,731 for the mark SPREE registered with the US Trademark Office.

The complaint states that KZRV is a leading manufacturer of travel trailers and uses the SPREE trademark on some of the travel trailers it manufactures. KZRV alleges that on May 10, 2011, RV Wholesalers offered for sale on its website a travel trailer with the SPREE trademark without authorization from KZRV. KZRV asked RV Wholesalers to remove the item from their website, and RV Wholesalers refused. KZRV has made claims of trademark infringement, unfair competition, trademark dilution, common law unfair competition, and interference with business relationships. KZRV is seeking a preliminary injunction, a declaratory judgment, damages and costs.

Practice Tip: Accordingly KZRV’s website it uses a stylized form of SPREE with a large S and an arc in the upper right corner. According to the complaint, RV Wholesalers’ use of Spree is virtually identical. While it is possible that this is a case of a blatant infringement, it seems more likely that RV Wholesalers is simply selling authentic “Spree” RVs manufactured by KZRV. If this is the case, this may not be infringement, as the owner of a legitimate product generally has a right to refer to under its original trademark. Otherwise, if the person placing a classified ad to sell, for example, a used car, would be infringing the trademark of the car manufacturer if they identified the car by make and model.

This case has been assigned to Judge Joseph Van Bokkelen and Magistrate Judge Roger Cosbey in the Northern District of Indiana, and assigned Case No. 1:11-cv-00188-JVB-RBC.

May 31, 2011

U.S. Supreme Court Holds “Willful Blindness” Suffices for Induced Infringement Knowledge Requirement

By Overhauser Law Offices, LLC

Washington, D.C. – While unanimously agreeing that induced patent infringement liability requires knowledge that the induced acts will infringe one or more patents, the United States Supreme Court, in an 8-1 decision in the Global-Tech Appliances, Inc., v. SEB S.A. case, held that the knowledge requirement is met by “willful blindness.”

SEB S.A. is a French company specializing in home-cooking appliances. The inventor of a home-use deep fryer with external surfaces that remain cool during the frying process, SEB holds Patent No. 4,995,312, as issued by the U.S. Patent Office, for a Cooking Appliance with Electric Heating. Global-Tech Appliances, Inc. (now known as Global-Tech Advanced Innovations Inc.) is a British Virgin Islands corporation. Global-Tech subsidiary Pentalpha Enterprises, Ltd. supplied Sunbeam Products, Inc. (a U. S. competitor of SEB) with certain deep fryers having all but the cosmetic features of the patented SEB fryer. Shortly after agreeing to supply Sunbeam, Pentalpha retained an attorney to conduct a right-to-use analysis, but did not inform him that their product was based on the SEB product, and the attorney did not locate the ‘312 patent during prior art searching.

Previously in this case, a jury found that Pentalpha directly infringed the ‘312 patent and willfully induced others to infringe the patent. On an appellate challenge to the induced infringement judgment, the U.S. Court of Appeals for the Federal Circuit held that “deliberate indifference” of known risks is a form of actual knowledge and the evidence supported the conclusion that Pentalpha deliberately disregarded a known risk that SEB held a patent covering its deep fryer.
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May 31, 2011

Boston Scientific Corporation and Guidant Seeks Noninfringement Declaration of Heart Arrhythmia Treatment Patent

By Overhauser Law Offices, LLC

Indianapolis, IN – Patent lawyers for Boston Scientific Corporation of Natick, Massachusetts and its wholly-owned subsidiaries, Guidant LLC of Indianapolis, Indiana and Cardiac Pacemakers LLC of St. Paul, Minnesota, filed a lawsuit seeking a declaratory judgment that they have not infringed Patent No. 4,407,288, IMPLANTABLE HEART STIMULATOR AND STIMULATION METHOD, which has been issued by the US Patent Office. The patent lawsuit has been filed against Mirowski Family Ventures, LLC of the State of Maryland.
The patent in question is described as “a method of treating heart arrhythmia with a therapy referred to as ‘cardioversion’ administered by Implantable Cardioverter Defibrillator devices.” According to the complaint, Guidant obtained an exclusive license of the patent in question from Mirowski in 1973, which was renewed 2004. Pursuant the license agreement, Guidant was to pay a percentage of sales made based on the patented technology. In 2002, the Southern District of Indiana declared the ‘288 patent invalid in Cardiac Pacemaker, Inc. v. St. Jude Medical, Inc., No. IP 96-1718-C H/G (S.D. Ind.). This patent invalidity determination, however, was overturned by the Federal Circuit Court and then subject to further litigation, which concluded in 2010. Guidant and Mirowski had agreed to suspend payments on the license agreement while during this litigation, and Guidant, in its complaint, states that it has now paid what is due under the license agreement. According to the complaint, Mirowski has sent letters to Guidant accusing Guidant of breaching the license agreement and patent infringement. Boston Scientific and Guidant seek a declaratory judgment of noninfringement, a declaratory judgment of satisfaction of royalty obligation, and a declaratory judgment of no breach of contract.
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May 31, 2011

Indiana Patent Attorneys Obtain 107 Patents for Indiana Companies in May, 2011

By Overhauser Law Offices, LLC

Indiana patent attorneys obtained issuance of the following 107 patents from the US Patent Office to persons and businesses in Indiana in May, 2011:

	PAT. NO.	Title
1	D638,942	Bone plate fixation device
2	D638,940	Hood-blade assembly for a surgical instrument
3	D638,926	Fan assembly
4	D638,834	Tablet computer
5	D638,735	Bead
6	7,953,537	Algorithm for power drive speed control

May 31, 2011

156 Trademark Registrations Issued to Indiana Companies in May, 2011

By Overhauser Law Offices, LLC

The US Trademark Office issued the following 156 trademark registrations to persons and businesses in Indiana in May, 2011, based on applications filed by Indiana Trademark Attorneys:

	Reg. Number	Mark	Click to View
1	3,968,143	EDUCATION IN INSULATION	View
2	3,966,502	EASY LOCK	View
3	3,966,300	SKYPAVER	View
4	3,966,216	{Design}	View
5	3,966,089	LACES FOR LEARNING	View

May 24, 2011

Denise K. LaRue Sworn as New Magistrate for the Southern District of Indiana

By Overhauser Law Offices, LLC

Indianapolis – Denise K. LaRue, an Indianapolis attorney, was sworn in as the new magistrate judge for the Southern District of Indiana. Chief Judge Richard L. Young administered the oath of office to Ms. LaRue at the Birch Bayh federal building and courthouse in Indianapolis. A more formal ceremony will take place at a later date. Ms. LaRue takes office as the first to fill a newly created magistrate judgeship in the Southern District of Indiana.

Ms. LaRue formerly practiced at Haskins LaRue, an Indianapolis law firm specializing in employment issues. She was born in Indianapolis and graduated cum laude from Indiana University School of Law – Indianapolis. According to the court’s press release, most of her professional experience has been in the area of labor and employment litigation.