The United States Patent Office sent a November 2, 2016, Memorandum to the Patent Examining Corps discussing two recent Federal Circuit decisions and the rules on patent eligibility for computer software. The decisions are McRO, Inc. v. Bandai Namco Games America Inc. and BASCOM Global Internet Services v. AT&T mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). McRO is significant because it reminds patent examiners when examining a patent claim, that they must not be overgeneralize or simplify it into its “gist, and that an improvement in computer technology is not limited to improving the operation of a computer. BASCOM is significant because the considerations of elements showing an inventive feature should look for additional elements in combination as well as individually. It also notes that the absence of preemption may indicate the claim is not directed to a judicial exception.
Indiana Franchise Litigation: Federal Trademark Issue Pushes Franchise Dispute into Federal Court
Indianapolis, Indiana – A trademark lawyer for Defendants A3 Media, LLC; Collective Publishing, LLC; Yelena Lucas and Neil Lucas, all of Fishers, Indiana, and Janelle Morrison of Zionsville, Indiana removed a federal trademark lawsuit to the Southern District of Indiana. The litigation was initially filed by franchise law attorneys in Hamilton County Superior Court under Cause No. 29D03-1609-PL-008343 on behalf of Plaintiffs Britt Interactive, LLC and TownePost Network, Inc. of Fishers, Indiana. Tom and Jeanne Britt have been added as third party Defendants.
Britt Interactive runs a monthly newsletter and magazine. That entity, and later its successor TownePost Network, licensed its “techniques, intellectual property, and system” to others in the Indianapolis area for the purpose of producing “monthly hyper-local publications” in nearby territories. TownePost later ceased offering such licenses and moved to a franchise model.
In December 2012, Britt Interactive entered into a licensing agreement with Defendant A3 Media for the geographical area of Zionsville, Indiana. Plaintiffs contend, however, that A3 Media and related Defendants abandoned that license and, instead, began to engage with Plaintiffs’ advertising customers in a manner that confused the customers and interfered with Plaintiffs’ business relationships.
Plaintiffs’ complaint lists the following causes of action:
• Count I: Tortious Interference with Contracts
• Count II: Tortious Interference with Business Relationships
• Count III: Conversion
• Count IV: Trademark Infringement under Section 32(A) of the Lanham Act, 15 U.S.C. § 1114(A)
• Count V: Trademark Infringement, False Designation of Origin and Unfair Competition under Section 43(A) of the Lanham Act, 15 U.S.C. § 1125(A)
• Count VI: Violations of Indiana Trademark Act• Count VII: Breach of Contract
Plaintiffs asked the Hamilton County Court for injunctive relief, damages, costs and attorneys’ fees. Defendants counterclaimed against Plaintiff and, invoking federal jurisdiction on the basis of the federal questions raised in the complaint, removed the lawsuit to the Southern District of Indiana.
US Supreme Court Considers Adult Incontinence Products in Patent Case
The United State Supreme Court held oral argument on whether the equitable defense of laches (an unreasonable delay in filing suit) may be raised against a claim for damages based on patent infringement occurring within the six-year limitations period of 35 U.S.C. 286. SCA Hygiene Products Aktiebolag (SCA) produces adult incontinence products, as does First Quality Baby Products, LLC (First Quality). In 2003, SCA notified First Quality that First Quality was infringing on one of its patents, and First Quality responded by arguing that, because the SCA patent in question was essentially the same as a prior-filed patent, it was invalid so First Quality did not infringe. The two companies ceased communication on the issue, but in 2004, SCA requested that the U.S. Patent and Trademark Office (PTO) reexamine its patent in light of the prior-filed one, and in 2007, the PTO determined that the patent in question was valid.
Indiana Trademark Litigation: Maker of Gnarly Head Wine Alleges Infringement by Gnarly Grove Hard Cider
Indianapolis, Indiana – Plaintiff Delicato Vineyards of Manteca, California filed a lawsuit in the Southern District of Indiana alleging trademark infringement and other wrongdoing. Defendant is Gnarly Grove Cider Co. of Columbus, Indiana.
Plaintiff Delicato claims ownership to two trademarks, U.S. Trademark Registration No. 3165707 for GNARLY HEAD, and U.S. Trademark Registration No. 4777145 for a design trademark. It offers Gnarly Head wine products for sale using these trademarks.
Defendant Gnarly Grove recently launched Gnarly Grove hard cider. Plaintiff contends that both the name and the trade dress of this product are confusingly similar to its Gnarly Head wine. It asserts that the similarities appear to be an intentional effort on the part of Defendant to capitalize on the reputation of the GNARLY HEAD brand.
In this lawsuit, filed by Indiana trademark attorneys for Delicato, the following causes of action are alleged:
• Registered Trademark and Trade Dress Infringement -15 U.S.C. § 1114(1)
• False Designation of Origin -15 U.S.C. § 1125(a)• Common Law Unfair Competition
Plaintiff is seeking equitable relief, damages, costs and attorneys’ fees.
Indiana Patent Litigation: Lilly Sues Alleging Infringement of Testosterone Product
Indianapolis, Indiana – Patent lawyers for Plaintiffs Eli Lilly and Company of Indianapolis, Indiana, its subsidiary Eli Lilly Export S.A. of Geneva, Switzerland and Acrux DDS Pty Ltd of West Melbourne, Australia filed a lawsuit alleging patent infringement. This federal lawsuit, commenced in the Southern District of Indiana, lists two Defendants, Cipla Limited of Mumbai, India and its wholly owned subsidiary Cipla USA, Inc. of Miami, Florida.
The parties in this litigation are engaged in the development and sale of pharmaceuticals. At issue is Plaintiffs’ transdermal testosterone solution, which is marketed under the trade name “Axiron®.” Lilly holds New Drug Application No. 022504 for this drug, which was approved by the U.S. Food and Drug Administration (“FDA”).
Defendants submitted an Abbreviated New Drug Application (“ANDA”) to the FDA seeking approval to market a generic version of Lilly’s Axiron product. In this ANDA, Defendants certified to the FDA that they believed that the patents-in-suit were invalid, unenforceable and/or would not be infringed by the commercial manufacture, use or sale of the generic version of Axiron described in the ANDA.
According to Plaintiffs, the filing of this ANDA by Defendants constitutes patent infringement. Plaintiffs also contend that other threatened activities, such as commercial manufacture, importation and sale of a generic version of Axiron, would also infringe Plaintiffs’ patents.
Plaintiffs list three disputed patents in this lawsuit: U.S. Patent Nos. 8,435,944; 8,993,520 and 9,180,194. These patents have been issued by the U.S. Patent and Trademark Office. Indiana attorneys for Plaintiffs ask the court for relief with respect to the following claims of patent infringement:
• Count I: Direct Infringement of U.S. Patent No. 8,435,944
• Count II: Inducement To Infringe U.S. Patent No. 8,435,944
• Count III: Contributory Infringement of U.S. Patent No. 8,435,944
• Count IV: Direct Infringement of U.S. Patent No. 8,993,520
• Count V: Inducement To Infringe U.S. Patent No. 8,993,520
• Count VI: Contributory Infringement of U.S. Patent No. 8,993,520
• Count IV [sic]: Direct Infringement of U.S. Patent No. 9,180,194
• Count V [sic]: Inducement To Infringe U.S. Patent No. 9,180,194• Count VI [sic]: Contributory Infringement of U.S. Patent No. 9,180,194
The complaint also lists three counts seeking declaratory judgment.
Plaintiffs aver that this case is “exceptional” and ask the court for an award of their costs, including attorneys’ fees, pursuant to 35 U.S.C. §§ 285 and 271(e)(4).
Indiana Trademark Litigation: AAA Sues AAA Automotive Parts
Indianapolis, Indiana – Trademark attorneys for Plaintiff The American Automobile Association, Inc. (“AAA”) filed a trademark lawsuit in the Southern District of Indiana. Two Bloomington Defendants are named, AAA Automotive Parts and the company’s owner. Defendants also do business as AAA Automotive & Truck Parts, and d/b/a AAA Automotive Parts.
AAA, a not-for-profit corporation, offers “travel and automobile products and services (including automobile repair services at its AAA Car Care Centers and through AAA Approved automobile repair businesses), financial advice, insurance and warranty coverage, and discounts.”
Defendants own and run a website, TRIPLEAPARTS.COM, on which they advertise automobile-related goods and services. Defendants also have brick-and-mortar shops in Indianapolis and Griffith, Indiana as well as locations in Missouri and Florida.
In this Indiana trademark lawsuit, lawyers for AAA listed the following causes of action:
• Count I: Federal Trademark Infringement in Violation of Section 32 of the Lanham Act
• Count II: Federal False Designation of Origin and Unfair Competition in Violation of Section 43(a) of the Lanham Act
• Count III: Federal Trademark Dilution in Violation of Section 43(c) of the Lanham Act
• Count IV: Cybersquatting Under Section 43(d) of the Lanham Act
• Count V: Trademark Dilution Under Ind. Code § 24-2-1-13.5
• Count VI: Trademark Infringement Under Ind. Code § 24-2-1-13• Count VII: Unfair Competition and Trademark Infringement Under Common Law
AAA, which claims ownership to over 100 trademarks, contends that the following trademarks are at issue in this lawsuit:
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Reg. No. 829,265 |
AAA Mark, used in connection with a |
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Reg. No. 2,158,654 |
AAA & Design Mark, used in |
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Reg. No. 3,316,227 |
AAA & Design Mark, used in |
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Reg. No. 1,168,790 |
TRIPLE A Mark, used in connection |
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Reg. No. 3,046,904 |
AAA Mark, used in connection with |
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Reg. No. 3,046,905 |
AAA & Design Mark, used in |
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Reg. No. 3,102,319 |
AAA & Design Mark, used in |
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Reg. No. 5,036,379 |
AAA Mark & Design, used in |
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Reg. No. 1,449,079 |
AAA APPROVED AUTO REPAIR & Design |
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Reg. No. 3,604,164 |
AAA TOTAL REPAIR CARE Mark, used in connection |
AAA seeks damages and asks that those damages be trebled pursuant to 15 U.S.C. § 1117 and Indiana law. It also seeks equitable relief, costs and attorneys’ fees.
Indiana Intellectual Property Litigation: Defendant in California Patent Lawsuit Sues Plaintiff in Indiana Court Alleging Unfair Competition
South Bend, Indiana – Patent lawyers for Plaintiff Swagway, LLC of South Bend, Indiana sued Defendants Hangzhou Chic Intelligent Technology Co., Ltd. (“Chic”) of Hangzhou, People’s Republic of China, Jansco Marketing, Inc. of Pembroke, Massachusetts and COKeM International, Ltd. of Shakopee, Minnesota.
Swagway and Chic both sell self-balancing two-wheeled boards, also known as “hoverboards,” in the U.S. market. The two companies had an intellectual property dispute, with Chic alleging that Swagway infringed two of its patents. This dispute allegedly included letters sent by Chic that appeared to threaten Swagway’s business partners with litigation if they sold Swagway products that Chic alleged were infringing. Swagway also contends that Chic delayed Swagway’s goods by falsely alleging infringement to Chinese customs officials. It also states that Chic later issued a press release falsely stating that Swagway’s goods had been seized as infringing. When the dispute persisted, Chic sued Swagway in the Northern District of California on allegations that Swagway had infringed U.S. Patent No. 9,376,155 and U.S. Design Patent No. D737,723.
Swagway responded in part by filing a second federal lawsuit in the Northern District of Indiana. In its Indiana complaint, it accuses Chic and its agents, including Jansco and COKeM, of having made “numerous false and misleading statements” to Swagway’s retailers and customers regarding Swagway, its hoverboards, as well as the patent rights that Chic alleged in the California litigation. Plaintiff contends that “Defendants made these statements for the sole purpose of causing harm to Swagway’s business and preventing fair competition.” Swagway also contends that Chic withheld material information from the U.S. Patent and Trademark Office and that, consequently, the registration of several patents was improper.
In its Indiana lawsuit, patent attorneys for Plaintiff assert the following claims:
• Count I: Unfair Competition under the Lanham Act
• Count II: Unfair Competition under Indiana State Law
• Count III: Tortious Interference with Business Relationships• Count IV: Defamation
Plaintiff has requested damages of no less than $30 million and also includes a prayer for punitive damages. Plaintiff further seeks equitable relief as well as reimbursement of costs and attorneys’ fees.
Indiana Copyright Litigation: Two Lawsuits Allege Illegal Sharing of Movie via Internet
Indianapolis, Indiana – A copyright lawyer for Plaintiff ME2 Productions, Inc. of Carson City, Nevada filed two new lawsuits in Indiana federal court alleging copyright infringement.
As with two prior Indiana lawsuits, filed by Plaintiff’s copyright lawyer last week in the Northern District of Indiana, these complaints allege infringement by multiple unknown “Doe” Defendants. Specifically, these lawsuits assert that a “screener copy” of the movie “Mechanic: Resurrection” was leaked and distributed illegally using BitTorrent, a file-sharing protocol. These latest lawsuits were filed in the Southern District of Indiana,
Defendants in each of the two lawsuits have been sued as a group, as Plaintiff contends that the Doe Defendants participated “in a collective and interdependent manner with other Defendants via the Internet for the unlawful purpose of reproducing, exchanging, and distributing copyrighted material” that was unique to their BitTorrent swarm.
The movie, which stars Jason Statham, Jessica Alba and Tommy Lee Jones, has been registered with the U.S. Copyright Office under Registration No. PA-1-998-057.
Plaintiff seeks injunctive relief, statutory damages, costs and attorneys’ fees.
Indiana Copyright Litigation: Bell Alleges Infringement by Carmel Private Equity Firm
Indianapolis, Indiana – Copyright lawyer and professional photographer Richard Bell of McCordsville, Indiana filed the latest in a string of lawsuits alleging infringement of a copyrighted photo of the Indianapolis skyline.
This lawsuit, filed by Bell on his own behalf in the Southern District of Indiana, lists Honey Creek Capital, LLC of Carmel, Indiana as Defendant. Bell asserts that Honey Creek infringed a copyrighted work titled “Indianapolis Nighttime Photo” by publishing the photo on Honey Creek’s website without having purchased a license. The photo has been registered with the U.S. Copyright Office under Registration No. VA0001785115.
Bell asks the court for the maximum statutory damages allowable, contending that Honey Creek is willfully infringing “with oppression, fraud, and malice.” In addition to damages, Bell seeks injunctive relief, costs and attorneys’ fees.
Practice Tip: Bell has filed many lawsuits on his own behalf asserting copyright infringement in Indiana federal courts. See:
• Indianapolis Real Estate Agent Sued for Infringing Copyright of Photo
• Limousine Service Sued for Copyright Infringement
• Bell’s Copyright Litigation Expands to Include IU, Purdue and Others
• Copyright Attorney Shifts to Alleging Infringement of Different Photo
• Attorney/Plaintiff Accuses Wisconsin Analytics Firm of Copyright Infringement
• Bell Names Aramark in Latest Copyright Infringement Lawsuit
• Attorney/Photographer Sues North Carolina Hotel Operator
• Attorney/Plaintiff Bell Files Three New Lawsuits Over Photo of Indianapolis Skyline
• Eight New Infringement Lawsuits Filed by Attorney/Plaintiff
• Attorney/Photographer Files Two New Infringement Lawsuits
• Lawsuit by Frequent Copyright Litigant Dismissed for Lack of Jurisdiction
• District Court Terminates Copyright Suit Over Photo; Plaintiff Appeals
• Remaining Copyright Defendants in Bell Lawsuit to be Dismissed
• Attorney/Photographer Sues Georgia Real Estate Company for Infringing Copyrighted Photo
• Sovereign Immunity May Take a Toll on Bell’s Latest Copyright Lawsuit
• Appellate Court Dismisses Copyright Appeal as Premature
• Bell Rings in the Holiday Weekend with a New Copyright Lawsuit
• Bell Files New Copyright Infringement Lawsuit
• Bell Sues Georgia-Based FindTicketsFast.com for Copyright Infringement
• Richard Bell Files Two New Copyright Infringement Lawsuits
• Court Prevents Copyright Plaintiff Bell from Outmaneuvering Legal System; Orders Bell to Pay Almost $34,000 in Fees and Costs
• Three Default Judgments of $2,500 Ordered for Copyright Infringement
• Court Orders Severance of Misjoined Copyright Infringement Complaint
Supreme Court Hears Argument on Profit Awards for Design Patent Infringement
The Supreme Court on October 11, 2016, heard oral argument on whether an award of profits for design patent infringement of Apple’s iPhone should be limited to those profits attributable components bearing the claimed design features or should include profits from the entire iPhone. Samsung Electronics Co. Ltd. v. Apple, Inc., U.S., No. 15-777, oral argument 10/11/2016. The design patent statute provides for liability “to the extent of the [infringer’s] total profit” for applying the patented design “to any article of manufacture.” The parties agreed that the “article of manufacture” may be a component rather than the entire product, and agreed with the government’s proposed factors for determining the profit attributable to the infringing component. Apple maintained, however, that there is no basis for overturning the jury award of nearly $400 million since in this case Samsung never identified any article of manufacture other than the phones themselves.