Indianapolis, IN – Patent lawyers for Mid-West Metal Products Company, Inc. d/b/a Midwest Homes for Pets of Muncie, IN sued Yuntek International, Inc. of Hayward, CA seeking a declaratory judgment of noninfringement and intervening rights regarding Yuntek’s “Pet Tent,” Patent No. 6,715,446, issued by the U.S. Patent and Trademark Office.

Defendant Yuntek alleged that Midwest had infringed its patented Pet Tent and had sent multiple “cease and desist” letters to Midwest.  In its complaint, Midwest asserts that there exists an actual and continuing justiciable controversy between the parties, as contemplated under the Declaratory Judgment Act 28 U.S.C. §§2201 et seq., and has brought the matter to the Southern District of Indiana for resolution.

The patent for the Pet Tent, issued in 2004, was reexamined by the U.S. Patent and Trademark Office (“USPTO”).  In this reexamination, certain claims were canceled and others were substantively amended.   New claims were also added.

At issue is the alleged infringement of the patent-in-suit prior to the issuance by the USPTO of the Ex Parte Reexamination Certificate as well as the Inter Partes Reexamination Certificate.  Midwest asks the court to declare that it does not infringe and did not infringe any valid claim of the patent prior to the issuance of the Ex Parte Reexamination Certificate, at least on the basis of intervening rights.  It claims similar noninfringement prior to the issuance of the Inter Partes Reexamination Certificate.

Midwest also asks the court for a judgment that it is entitled to absolute and equitable intervening rights under each of the Reexamination Certificates pursuant to 35 U.S.C. §252.  Finally, Midwest asks the court to enjoin Yuntek from pursuing or threatening litigation related to the Pet Tent patent for the time period prior to the issuance of the two Reexamination Certificates, for a declaration that the case is exceptional and for attorneys’ fees pursuant to that declaration.

Practice Tip: The Federal Circuit recently considered whether intervening rights apply where claims were neither amended nor added during reexamination.  (See, Marine Polymer Technologies, Inc. v. HemCon, Inc.)  It held that the doctrine of intervening rights applied only where claims had been amended or added.

This case has been assigned to The Honorable Judge William T. Lawrence and Magistrate Judge Debra McVicker Lynch in the Southern District of Indiana, and assigned Case No. 1:13-cv-0396.

Complaint – Midwest Metal v Yuntek Intl

MID-WEST METAL PRODUCTS COMPANY, INC. v. YUNTEK INTERNATIONAL, INC.

Filed: March 8, 2013 as 1:2013cv00396 Updated: March 22, 2013 20:00:20

Plaintiff: MID-WEST METAL PRODUCTS COMPANY, INC.

Defendant: YUNTEK INTERNATIONAL, INC.

Cause Of Action: Constitutionality of State Statute(s)

Court: Seventh Circuit > Indiana > Southern District Court

Type: Intellectual Property > Patent