Indiana Intellectual Property Law News

August 31, 2015

Indiana Patent Law: Court Orders TapLogic to Provide Additional Detail Regarding Non-Infringement Contentions

Fort Wayne, Indiana – Magistrate Judge Susan Collins ordered TapLogic, LLC to serve Agri-Labs with more-detailed preliminary non-infringement contentions (“PNICs”) in the ongoing patent litigation between TapLogic and Agri-Labs Holdings, LLC over TapLogic’s smart phone application “Ag PhD Soil Test.”

At issue in this patent litigation is U.S. Patent No. 8,286,857 (the “`857 Patent” or the “patent-in-Suit”), to which Agri-Labs claims ownership. The patent-in-suit, which was issued based upon an application filed by inventor Tony Wayne Covely, has been registered by the U.S. Patent Office. The `857 Patent generally relates to a system and method for performing soil analysis that uses smart phones, applications for smart phones, soil containers having unique identifiers, and global positioning (“GPS”).

In January, an Indiana patent attorney for Agri-Labs filed an intellectual property complaint in the Northern District of Indiana Fort Wayne Division alleging that TapLogic infringed on the ‘857 Patent. TapLogic counterclaimed. It asked the court for a declaratory judgment that it has not infringed Agri-Labs’ patent and that the claims of the patent are invalid. On July 1, 2015, the parties exchanged their respective contentions regarding infringement.

The instant order addresses Agri-Labs’ request that the court order TapLogic to provide a more detailed PNIC. Agri-Labs asserts that the PNICs it received were deficient, providing “nothing more than vague, conclusory language that simply mimics the language of the claims when identifying its theories of non-infringement.”

As is true for a party serving preliminary infringement contentions (“PICs”), a party serving PNICs must provide an infringement-claim chart for each accused product or process (the “accused instrumentality”). Each claim chart must contain the following contentions: (1) “each claim of each patent in suit that is allegedly infringed by the accused instrumentality;” (2) “[a] specific identification of where each limitation of the claim is found within each accused instrumentality, including . . . the identity of the structures, acts, or materials in the accused instrumentality that performs the claimed function”; and (3) “[w]hether each limitation of each asserted claim is literally present in the accused instrumentality or present under the doctrine of equivalents.”

The court noted that TapLogic’s PNICs merely recite the language of each claim and then deny that its Ag PhD Soil Test performs that function or includes that feature. As an example, one portion of Claim 1 was described as “scanning said unique identifier associated with said soil sample container containing said at least one soil sample with a handheld remote terminal, wherein said handheld remote terminal includes a handheld remote terminal sampling application.” In reply, Agri-Labs stated that its application “does NOT scan said unique identifier associated with said soil sample container containing said at least one soil sample with a handheld remote terminal, wherein said handheld remote terminal includes a handheld remote terminal sampling application.”

Consequently, the court agreed that TapLogic’s PNICs were inadequate because they lacked sufficient detail. It ordered TapLogic to serve Agri-Labs with detailed PNICs.

August 27, 2015

Indiana Trademark Litigation: New Zealand Stroller Company Sued for Use of Navigator Trademark

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana trademark attorneys for Baby Trend, Inc. of California filed an intellectual property lawsuit in the Southern District of Indiana alleging trademark infringement. The company claims that Phil and Teds Most Excellent Buggy Company Limited (“Phil and Teds”), a New Zealand-based enterprise, infringed U.S. Trademark Registration No. 4,514,646, which has been registered by Baby Trend in the U.S. Trademark Office.

Plaintiff Baby Trend is in the business of designing, manufacturing and marketing juvenile products. It claims that it has made extensive use of the mark NAVIGATOR in connection with its strollers and related products for over 15 years.

Baby Trend has sued Defendant Phil & Teds contending that Defendant uses a mark that infringes Baby Trend’s NAVIGATOR trademark in connection with its stroller and stroller-related goods. This use is alleged to have taken place online at Phil & Teds’ online marketplace, www.philandteds.com, as well as on third-party websites that offer Defendant Phil & Teds’ stroller products, such as Toys R Us/Babies R Us and the BuyBuyBaby website. Baby Trend further states that products bearing an infringing NAVIGATOR mark are also sold in brick-and-mortar stores, directly by Phil & Teds and/or through others. According to Baby Trend, offers for the sale of products bearing an infringing mark have taken place in Indianapolis, Indiana.

The complaint states that Baby Trend asked Phil & Teds “at least as early as June 30, 2015” to discontinue use of the NAVIGATOR mark but that Phil & Teds refused. The complaint subsequently contends that Phil & Teds’ conduct was done willfully, intentionally, knowingly, and in reckless disregard of the consequences to Baby Trend.

In this federal intellectual property litigation, Indiana trademark lawyers for Baby Trend make the following claims:

• Count I: Federal Trademark Infringement 15 U.S.C. § 1114
• Count II: Federal Unfair Competition and False Designation of Origin 15 .S.C. [sic] § 1125(a)

• Count III: Common Law Unfair Competition and Trademark Infringement

Baby Trend seeks preliminary and permanent injunctive relief; a declaration that Phil & Teds infringed Baby Trend’s rights in its intellectual property in a deliberate, willful, and/or reckless manner; damages, including treble damages; and costs, litigation expenses and attorneys’ fees.

August 26, 2015

Indiana Patent Litigation: Court Permits Bonutti to Withdraw Counterclaim, Denies Attorneys’ Fees to Biomet

By Overhauser Law Offices, LLC

Hammond, Indiana – In the matter of Biomet, Inc. v. Bonutti Skeletal Innovations, LLC, the Northern District of Indiana, Hammond Division granted Defendant Bonutti’s motion to dismiss with prejudice its counterclaim. Bonutti’s counterclaim alleged that Biomet had infringed U.S. Patent No. 7,806,897 (the “‘897 patent”). Patent attorneys for Biomet Inc. asked the court to impose attorneys’ fees as a condition of the dismissal but this motion was denied.

On March 8, 2013, patent lawyers for Plaintiff Biomet filed an action for declaratory judgment against Bonutti Skeletal Innovations LLC. At issue were contentions of patent infringement of fifteen patents. Bonutti counterclaimed against Biomet and several other counterclaim Defendants. This multi-faceted dispute had been resolved with respect to some of the patents prior to this order. Other allegations of patent infringement remained.

Among the assertions by Bonutti that had remained was a counterclaim that Biomet had infringed the ‘897 patent. In this order, the court granted Bonutti’s request under Rule 41(a)(2) to dismiss this counterclaim with prejudice. The court also addressed Biomet’s contention that it should be awarded attorneys’ fees as a “prevailing party” in this portion of the patent litigation.

The court denied attorneys’ fees to Biomet on several grounds. First, it noted that, while attorney’s fees are available as part of a Rule 41(a)(2) dismissal without prejudice, this is justified as compensation for requiring a defendant to incur unnecessary litigation expenses. That same rationale does not apply where, as in this case, the dismissal is with prejudice.

Additionally, the court noted that any request for attorneys’ fees was premature. Such fees are only available to the “prevailing party” and Biomet had not established itself as such a prevailing party. Biomet may yet be able to recover attorneys’ fees if, at the conclusion of the patent lawsuit, Biomet is held to be the prevailing party.

August 24, 2015

Introduction to Criminal Copyright Infringement – Fourth Element: Commercial Advantage or Private Financial Gain

By Overhauser Law Offices, LLC

The fourth element of a criminal prosecution for copyright infringement requires that the

government prove that the defendant engaged in an act of copyright infringement “for purposes of commercial advantage or private financial gain.” It is unnecessary that a profit be made as a result of the infringing activities. This interpretation was intended to exclude from criminal liability those individuals who willfully infringe copyrights solely for their own personal use, although those individuals may still be pursued by the copyright holder in civil court.

It is a common misconception that if infringers do not charge subscribers a monetary fee for infringing copies, they cannot be found guilty of criminal copyright infringement. While evidence of discrete monetary transactions (i.e., the selling of infringing goods for a particular price) provides the clearest evidence of financial gain, such direct evidence is not a prerequisite for the government to prosecute.

August 17, 2015

Introduction to Criminal Copyright Infringement – Third Element: Willfulness

By Overhauser Law Offices, LLC

The third element of a criminal prosecution for copyright infringement requires that the

government establish that the defendant possessed criminal intent to infringe the holder’s copyrighted work. Courts generally agree that a “willful” act must be “an act intentionally done in violation of the law.”

However, in defining willfulness when it comes to copyright infringement, courts differ in their interpretations of which of the two acts – copying or infringing – requires willful intent. The minority view, endorsed by the Second and Ninth Circuits, holds that “willful” means only intent to copy, not intent to infringe. The majority view, however, looks for intent to infringe rather than merely intent to copy, thus, requiring the government to demonstrate a voluntary, intentional violation of a known legal duty.

August 14, 2015

Introduction to Criminal Copyright Infringement – Second Element: Infringement

By Overhauser Law Offices, LLC

The second element of a criminal prosecution for copyright infringement requires that the government prove that the defendant infringed upon the holder’s rights in its copyrighted intellectual property. Although the term “infringement” itself is not specifically defined in the copyright statute, 17 U.S.C. § 501(a) provides that: “[a]nyone who violates any of the exclusive rights of the copyright owner as provided by [17 U.S.C. §§ 106 to 118] . . . is an infringer of the copyright.” Thus, the concept of infringement is defined by reference to the exclusive rights conferred on a copyright owner by 17 U.S.C. § 106. Those exclusive rights include the right to display or perform the work publicly, as set forth in 17 U.S.C. § 106(4)-(5), along with the right to reproduce and distribute copies of the work, as set forth in 17 U.S.C. § 106(1) and (3). The unauthorized exercise of these rights will constitute an act of infringement and will give rise to a civil infringement claim by the copyright holder and perhaps prosecution by the government.

Generally, infringement is established by evidence of copying. However, because copying often cannot be directly attributed to the defendant, copying can be established indirectly through evidence that the defendant had access to the original copyrighted work, and that the defendant’s work is substantially similar to it.

With regard to prosecution for alleged infringement of copyrighted computer programs, a court must also decide separately whether or not the copies at issue were lawfully made under 17 U.S.C. § 117, which authorizes such duplication in certain circumstances. Thus, unlike copies of other types of copyrighted works, copies of computer programs are not automatically presumed to be unauthorized.

August 11, 2015

Indiana Copyright Litigation: Sovereign Immunity May Take a Toll on Bell’s Latest Copyright Lawsuit

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Richard N. Bell of McCordsville, Indiana, who is both an Indiana copyright attorney and a professional photographer, filed a lawsuit alleging copyright infringement in the Southern District of Indiana. Bell claims that Indiana Procurement Technical Assistance Center of Indianapolis, Indiana infringed his copyrighted “Indianapolis Skyline” photo, U.S. Copyright Registration No. VA0001785115, which has been registered with the U.S. Copyright Office.

In 2000, Plaintiff Bell photographed the downtown Indianapolis skyline. Indiana Procurement Technical Assistance Center, a governmental unit of the state of Indiana, is accused of creating “a website to promote and advertise its own business” and displaying Bell’s copyrighted photo on that website. Bell further claims that this government entity “willfully and recklessly falsely claimed that it owned the copyrights of all images and photos” contained on its website, http://www.indianaptac.com/, including Bell’s photo of Indianapolis.

In this single-defendant lawsuit, Bell contends that “as a direct and proximate result of their wrongful conduct, Defendants have [sic] realized and continue to realize profits and other benefits rightfully belonging to Plaintiff.” The acts in question are alleged to have been committed willfully and deliberately and with oppression, fraud, and malice.

In this federal complaint, which copyright lawyer Bell filed on his own behalf, counts of copyright infringement and unfair competition are asserted. Bell asks for an accounting of all “gains, profits and advantages derived by Defendants [sic]” as a result of the alleged infringement and for statutory and/or actual damages. He also seeks reimbursement of costs and reasonable attorneys’ fees.

Practice Tip #1:

Bell will have to contend with the doctrine of sovereign immunity as an initial hurdle to proceeding with this copyright litigation. Sovereign immunity, as a general rule, bars lawsuits such as this one against states. Sovereign immunity may be waived by a state for a particular type of lawsuit. The federal government may also abrogate states’ sovereign immunity with respect to certain types of claims.

In 1990, Congress passed the Copyright Remedy Clarification Act. Under 17 U.S.C. § 511(a), “[a]ny State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity, shall not be immune, under the… doctrine of sovereign immunity, from suit in Federal court…for a violation of any of the exclusive rights of a copyright owner….”

On the surface, this language appears to constitute an abrogation of states’ sovereign immunity regarding copyright infringement. However, the U.S. Supreme Court has held that “Congress may not abrogate state sovereign immunity pursuant to its Article I powers.” Florida Prepaid Postsecondary Educ. Expense Bd. v. College Sav. Bank, 527 U.S 627, 636 (1999).

However, it appears that the Copyright Remedy Clarification Act has attempted to do just that. According to at least one recent decision out of a federal district court in Lexington, Kentucky, Article I is indeed what Congress relied upon to authorize the passage of the Act purporting to abrogate states’ rights with respect to copyright infringement lawsuits. This, the court held, rendered the attempted abrogation invalid. That litigation was consequently dismissed by the court as barred by the doctrine of sovereign immunity.

Practice Tip #2: Richard Bell has sued hundreds of defendants for copyright infringement in Indiana’s federal courts. Previous blog posts regarding his litigation include:

• 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-Base 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

• Richard Bell Files Another Copyright Infringement Lawsuit

August 10, 2015

Indiana Patent Litigation: Lilly Files New Lawsuit Alleging Patent Infringement of Alimta

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana patent attorney for Eli Lilly and Company of Indianapolis,

Indiana, in conjunction with Washington, D.C. co-counsel, sued for patent infringement in the Southern District of Indiana. Lilly claims that Emcure Pharmaceuticals Ltd. of Pune, India; Heritage Pharma Labs, Inc. of East Brunswick, New Jersey; and Heritage Pharmaceuticals, Inc. of Eatontown, New Jersey, will infringe and/or have infringed Lilly’s patented “Novel Antifolate Combination Therapies,” U.S. Patent Number 7,772,209 (the “‘209 patent”), which has been issued by the U.S. Patent Office.

Plaintiff Lilly is in the business of, among other things, the manufacture and sale of various pharmaceuticals. Emcure Pharmaceuticals Ltd. is a generic pharmaceutical company engaged in developing, manufacturing and marketing a broad range of pharmaceutical products. Heritage Labs is believed to perform functions relating to Emcure’s active pharmaceutical ingredient as well as formulation research and development. Heritage Pharmaceuticals is thought to be engaged in the acquisition, licensing, development, marketing, sale, and distribution of generic pharmaceutical products for the U.S. prescription drug market on behalf of Emcure.

Alimta®, which is licensed to Lilly, is a chemotherapy agent used for the treatment of various types of cancer. The drug is composed of the pharmaceutical chemical pemetrexed disodium. It is indicated, in combination with cisplatin, (a) for the treatment of patients with malignant pleural mesothelioma, or (b) for the initial treatment of locally advanced or metastatic nonsquamous non-small cell lung cancer.

Alimta is also indicated as a single-agent treatment for patients with locally advanced or metastatic nonsquamous non-small cell lung cancer after prior chemotherapy. Additionally, Alimta is used for maintenance treatment of patients with locally advanced or metastatic nonsquamous non-small cell lung cancer whose disease has not progressed after four cycles of platinum-based first-line chemotherapy. One or more claims of the ‘209 patent cover a method of administering pemetrexed disodium to a patient in need thereof that also involves administration of folic acid and vitamin B12.

This Indiana lawsuit for patent infringement, submitted to the court by an Indiana patent lawyer, was triggered by the filing by defendant Emcure Pharmaceuticals of an Abbreviated New Drug Application (“ANDA”) with the U.S. Food and Drug Administration. In that ANDA, Emcure Pharmaceuticals seeks approval to manufacture and sell its pemetrexed for injection, 500 mg/vial product prior to the expiration of the ‘209 patent.

This patent litigation asserts a single count: infringement of U.S. Patent No. 7,772,209. Lilly asks for a judgment that Emcure has infringed the ‘209 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of the ‘209 patent; a judgment that use of the intellectual property currently covered by the ‘209 patent shall be protected until its expiration date; injunctive relief; attorneys’ fees and expenses; as well as other relief.

August 7, 2015

Introduction to Criminal Copyright Infringement – First Element: Existence of a Valid Copyright

By Overhauser Law Offices, LLC

The first element of a criminal prosecution for copyright infringement under 17 U.S.C. § 506(a) requires proof that the copyright at issue is a valid copyright. This may be established by demonstrating that the formal requirements of copyright registration have been satisfied. Although registration of a copyrighted work is not necessary to obtain copyright protection, it is usually required before prosecuting a copyright defendant in criminal court.

Registration of a copyright is typically proven by obtaining a certificate of registration from the Register of Copyrights. Under 17 U.S.C. § 410(c), a certificate of registration “made before or within five years after the first publication of the work shall constitute prima facie evidence of the validity of the copyright. . . .” If the defendant contests the validity of the copyright at issue as a defense in a criminal prosecution, the government would need to make an independent evidentiary showing that the copyright is valid. This would involve showing that the copyright was not obtained by fraud and the registration certificate is genuine.

August 6, 2015

Indiana Patent Litigation: Lilly Asks Indiana Court to Rule That It Has Not Infringed Patent

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana patent attorney for Eli Lilly and Company of Indianapolis, Indiana filed a patent-related lawsuit against Uropep Biotech GbR of Garbsen, Germany in the Southern District of Indiana.

Plaintiff Lilly is in the business of, among other things, the manufacture and sale of various pharmaceuticals including a drug trademarked as Cialis®. At issue in this intellectual property lawsuit is U.S. Patent No. 8,791,124, entitled “Use of Phosphordiesterase Inhibitors in the Treatment of Prostatic Diseases” (“the ‘124 patent”), which has been issued by the U.S. Patent Office.

Lilly states that the ‘124 patent was issued to Defendant Uropep Biotech. Lilly further states in this Indiana lawsuit that an entity related to Uropep Biotech, Erfindergemeinschaft UroPep GbR, sued Lilly last month in the Eastern District of Texas asserting that Lilly had infringed the ‘124 patent by manufacturing and selling Cialis.

Lilly contends that Erfindergemeinschaft does not own the patent-in-suit and that, consequently, the Texas lawsuit was improper. It further asserts that the Texas lawsuit provides evidence of an actual and justiciable controversy between Lilly and Uropep Biotech sufficient to warrant this instant Indiana lawsuit wherein the Indiana patent lawyer for Lilly asks the court for declaratory relief adjudging that it has not infringed the ‘124 patent. Lilly also asks the court for a declaration that the ‘124 patent is invalid as well as attorney’s fees and costs.