Articles Posted in Federal Jurisdiction

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Indianapolis, IN- Patent attorneys for Fostech Outdoors, LLC of Paris Crossing, Indiana filed a patent infringement suit in the Southern District of Indiana alleging Slide Fire Solutions, Inc. of Moran, Texas infringed patent no. 6101918, METHOD AND APPARATUS FOR ACCELERATING THE CYCLIC FIRING RATE OF A SEMI-AUTOMATIC FIREARM, which has been issued by the US Patent Office.

The patented technology is described as “bump fire stocks” which are a device that, when attached to certain firearms, allows the firearm to rapidly fire multiple shots. The complaint alleges that Slide makes, imports, and/or sells a product called “SSAR-15 stock” that infringes the ‘918 patent “when used in conjunction with certain firearms assemblies.” The complaint alleges that Slide actively induces other to infringe the Fostech’s patent and thatFostech.JPG Slide should be liable for contributory infringement because it knows there are no non-infringing uses for its product. The complaint makes one claim of patent infringement and seeks an injunction, damages, costs and attorney fees.

Practice Tip: The plaintiff here has made a claim of contributory patent infringement, which governed by 35 U.S.C. § 271(b) and is defined as selling or importing a device “for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use”

Personal jurisdiction may be an issue in this case. The plaintiff alleges Slide regularly conducts business in Indiana and the events giving rise to the suit occurred in Indiana. However, none of the specific acts of infringement seem to have occurred in Indiana.
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Indianapolis, IN – The Southern District of Indiana has granted Draper, Inc’s of Spiceland, Indiana, motion for limited jurisdictional discovery in a patent infringement case. In November 2010, patent attorneys for Draper, Inc’s of Spiceland, Indiana filed a patent infringement lawsuit in the Southern District of Indiana alleging that MechoShade Systems, Inc and Joel Berman Associates, Inc. of Long Island City, New York infringed patent no. 6,164,428, Wrap spring shade operator, which has been issued by the US Patent Office.

Joel Berman Associates has been dismissed from the suit at this point. MechoShade has filed a motion to dismiss for lack of personal jurisdiction. In response, Draper requested the Court stay ruling on the motion to dismiss and allow Draper.jpgDraper to conduct jurisdictional discovery. Although MechoShade appropriately responded to Draper’s initial discovery requests, it refused to comply with subsequent requests. The court, in this ruling, addressed whether Draper’s requests were appropriate for the limited purpose of the personal jurisdiction inquiry. The court ordered MechoShade to produce the following: documents showing sales communications contacts in Indiana, information showing all warranty and repair work performed in Indiana, summary of presentations given in Indiana, sales lead lists. However, the court determined that MechoShade did not have to produce Commission Reports and Booking Reports, general marketing material, and access to its intranet. The court gave MechoShade until February 24, 2012 to produce the documents it ordered. Further the court ordered that all briefing on the motion to dismiss should be complete by March 24, 2012.

Practice Tip: The court has ordered that MechoShade produce a number of these items as summaries with the accuracy of the summaries to be verified by oath or declaration.
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Fort Wayne, IN – Patent attorneys for Group Dekko, Inc. of Garrett, Indiana filed a patent infringement suit in the Northern District of Indiana alleging Byrne Electrical of Rockford, Michigan infringed patent no. 7,075,769, NEXT CONNECT ELECTRICAL RECEPTABLE ASSEMBLY, which has been issued by the US Patent Office.

The complaint alleges that Byrne is infringing the patent by making, using, offering for sale or selling a product called Interlink iQ that embodies that patented technology.GroupDekkoPicture.jpg Group Dekko sells competitive products called Next Connect and Perimeter. These products appear to be electrical configurations for office furniture. Dekko’s patent attorneys are seeking a declaration that its patent is valid and enforceable, an injunction, damages, attorney fees and costs.

Practice Tip: The complaint filed does not contain any details about where the allegedly infringing products have been sold or offered for sale, particularly whether any sales or marketing occurred in Indiana. In order to establish personal jurisdiction over the defendant, the plaintiff must demonstrate certain minimum contacts with the jurisdiction. The plaintiff here may need to show more to obtain personal jurisdiction. The Southern District of Indiana, for example, recently dismissed a patent infringement case where all the plaintiff alleged was that the defendant had a website offering the allegedly infringing product that was accessible in Indiana.
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New York, NY – Earlier this year, patent attorneys for a group of 60 organizations and farmers, including the Organic Seed Growers and Trade Association, filed a patent lawsuit in the Southern District of New York against agriculture giant Monsanto Company of St. Louis, Missouri. Monsanto.jpgThe plaintiffs are farmers who do not want their organic seeds contaminated by the transgentic or genetically modified seeds that are produced and patented by Monsanto. The feared contamination occurs when organic seeds come into contact with genetic material from transgentic seeds through natural pollination processes, such as the wind blowing transgentic pollen to a organic farm nearby . The plaintiffs allege that, given Monsanto’s reputation for vigorously defending its patents, they have brought “this action to protect themselves from ever being accused of infringing patents on transgenic seed.” Their complaint begins: “Society stands on the precipice of forever being bound to transgenic agriculture and transgenic food. Coexistence between transgenic seed and organic seed is impossible because transgenic seed contaminates and eventually overcomes organic seed. ” The organic farmers seek a declaratory judgment that all of Monsanto’s transgentic seed patents are invalid as injurious to public health and for numerous other reasons.

Monsanto has filed a motion to dismiss arguing that the plaintiffs have not demonstrated a justiciable case or controversy and therefore the court does not have subject matter jurisdiction. Monsanto also states that it has issued a public statement declaring that its patent attorneys will not file patent infringement lawsuits against farmers who’s crops are inadvertently contaminated by its patented seeds. Monsanto is being represented by former U.S. Solicitor General Seth Waxman.

Briefing on the motion to dismiss was completed in late August so a decision could be expected at any time. An amicus curiae brief in support of plaintiffs has also been filed.

Practice Tip: Monsanto is an aggressive litigant in defending its intellectual property rights and has sued numerous Indiana farmers. Monsanto recently won the appeal of the Southern District of Indiana‘s decision against an Indiana farmer in patent infringement lawsuit, which Indiana Intellectual Property Law and News blogged about here: US Court of Appeals for the Federal Circuit Affirms the Southern District Court of Indiana’s Decision Holding Indiana Farmer Infringed Soybean Seed Patents.
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Washington, DC – A recent decision in the Federal Circuit Court of Appeals in a legal malpractice claim involving a patent issue may have an impact on a recently filed Indiana case alleging patent attorneys committed legal malpractice, which was filed by Purdue Research Foundation late last month.

In Byrne v. Wood, Herron & Evans LLP, the Federal Circuit Court of Appeals CAFC Logo.jpgvacated a summary judgment in favor of the law firm Wood, Herron & Evans, and remanded to the lower court for further proceedings. The plaintiff sued the law firm for legal malpractice for failing to secure a patent that was broad enough to secure his invention of a grass and weed trimmer. The plaintiff claimed that due to the law firm’s failure, he later lost a patent infringement lawsuit against Black & Decker. The court below granted summary judgment for the law firm, based in part on its decision that Mr. Byre was not an expert witness.

The appellate court also briefly took on the question of whether the federal courts have jurisdiction to hear legal malpractice claims, typically arising out of state law, when a patent issue is intertwined. The Court, citing Davis v. Brouse McDowell, L.P.A., 596 F.3d 1355 (Fed. Cir. 2010), confirmed that it did have jurisdiction over this case. However, the court acknowledged that other courts had disagreed.

The opinion is designated “non-precedential.” This was an appeal from the Eastern District of Kentucky.

Practice Tip: The basis of the legal malpractice claims in the Purdue case are substantially different that here, however, this case confirms that in most situations involving a patent issue is appropriate for the federal courts to hear legal malpractice cases.
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Indianapolis, IN – A trademark infringement lawsuit filed in Hamilton County Circuit Court has been removed to the Southern District of Indiana. Trademark lawyers for Wine & Canvas Development, LLC of Indianapolis, Indianawine&Canvas.jpg filed a recent trademark infringement suit in Hamilton County, Indiana in alleging Theodore Weisser and Christopher Muylle of Indiana, YN Canvas CA, LLC of Nevada, Art Uncorked and www.ArtUncorked.com, infringed trademarks WINE & CANVAS, COOKIES & CANVAS, PAINTING WITH A COCKTAIL TWIST, LIFE IS TOO SHORT FOR BLANK WALLS, UNLEASE YOUR INNER PICASSO, and CRUISE AND CANVAS that are registered with US Trademark Office. This case was removed to the Southern District of Indiana on December 2, 2011.

The trademarks at issue here, known as the WC Marks, are associated with Wine & Canvas’s business model. The complaint states that Weisser was an employee of Wine & Canvass and that Wiesser, on behalf of Wine & Canvas, entered a licensing and franchise negotiation with Muylle. The complaint states that Wiesser and Muylle, however, then entered certain agreements without Wine & Canvas’s knowledge and misled Wine & Canvas about the agreements. When Wine & Canvas discovered the issue, it demanded the defendants cease using the WC Marks. However, the defendants continued to sell products and services using the WC marks. The complaint further states that the defendants have threatened to “expose” the Plaintiff “to hatred, contempt, disgrace and/or ridicule or otherwise unlawfully injure” Wine & Canvas. The complaint makes claims of trademark infringement, false designation of origin, trademark dilution, sale of counterfeit items, unfair competition, breach of contract, fraud, and damages under the Indiana crime victims act. The complaint seeks a declaratory judgment, temporary and permanent injunction, damages, costs, attorney fees and for a writ of attachment.

Practice Tip: The complaint appears to largely make state law claims that come out of a failed attempt to create a California franchise of Wine & Canvas. The complaint paints a picture of the defendants essentially stealing the business ideas of Wine & Canvas and opening their own entity, rather than operating the California business as a franchise. While these contract-type disputes are typically appropriately filed in state court, the fact that the plaintiff also makes trademark infringement claims resulted in the case being removed to federal court. Under the supplemental federal jurisdiction doctrine, the district court will be able to hear both the state law and federal law claims since it would clearly have subject matter jurisdiction over the trademark claim.
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Indianapolis, IN – Trademark attorneys for Wheaton Van Lines, Inc. of Indianapolis, Indiana filed trademark infringement suit in the Southern District of Indiana alleging Unigroup, Inc. and Mayflower Container Services, LLC of Fenton, Missouri infringed trademark registration no. 2,607,246 for the mark, WE MOVE YOUR LIFE, which is registered with the US Trademark Office.

The complaint WheatonVanLines.jpgalleges that since 1997 Wheaton has used the phrase “We Move Your Life” as an advertising slogan and obtained a federally registered trademark of the phrase in 2002. The complaint states that the defendants are using a confusingly similar slogan “Your Life on the Move” and have created an internet site at www.yourlifeonthemove.com. Wheaton alleges that “Your Life on the Move” is confusing similar to “We Move Your Life” and that customers are likely to confuse the two. Wheaton states that the defendants are benefiting from the goodwill Wheaton has established as connected to its trademarked slogan. The complaint notes that Wheaton contacted the defendants and asked them to discontinue use of “Your Life on the Move.” The defendants failed to discontinue. The complaint makes claims of trademark infringement, unfair competition, and trademark dilution. Trademark lawyers for Wheaton are seeking preliminary and permanent injunctions, an award of profits, damages, costs and attorney fees.

Practice Tip: The Plaintiff alleges that personal jurisdiction over the Defendants exists because “Defendants have advertised and continues (sic) to advertise moving service on the Internet to inform residence of this State that it will take orders or bookings for such services from residence of this State.” This seems unlikely to obtain personal jurisdiction. Overhauser Law Offices, the publisher of this website, has repeatedly obtained dismissal of trademark infringement cases where the only basis for personal jurisdiction was maintaining a website. (See for example the Mice Direct and Joy Honeymoon cases.)
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Indianapolis, IN – The Southern District of Indiana has dismissed a patent infringement lawsuit finding a lack of personal jurisdiction over a California company accusing of patent infringement. Patent lawyers for AirFx LLC of Indianapolis, Indiana filed a patent infringement lawsuit in the Southern District of Indiana alleging J.D. Braun, of Los Angeles, California, doing business as Goldenstate Custom Cycles, Dr. V-Twin, Inc. of Sherman Oaks, California, infringed Patent No. 7,559,396 B2,AirFXPicture.jpg Motorcycle air suspension system, which has been issued by the US Patent Office. Indiana Intellectual Property Law and News blogged about the case when it was filed in July.

The California defendant moved to dismiss the complaint, arguing that the court lacked personal jurisdiction. Patent attorneys for AirFX had argued that the Indiana district court had personal jurisdiction because the company had a website that was accessible in Indiana and listed an Indiana store where its products could be purchased. Judge William T. Lawrence, writing for the court, held that “the mere existence of nationally-accessible websites is a poor foundation on which to base personal jurisdiction.” Thus the court dismissed the case with prejudice.

Practice Tip: This case reiterates that simply having a website that is accessible within a district does not create personal jurisdiction. In order to achieve personal jurisdiction, the plaintiff must establish “minimum contacts” with the district.
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Newark, NJ – Patent attorneys for Howmedica Osteonics Corp. Mahwah, New Jersey Stryker.jpgand Stryker Ireland Limited of Cork, Ireland filed a patent infringement suit in the District of New Jerseyalleging DePuy Orthopaedics Inc. of Warsaw, Indiana infringed patent no. 6,475,243, Acetabular cup assembly with selected bearing; which has been issued by the US Patent Office.

The complaint states that Howmedica and Stryker are joint assignees of the ‘243 patent. The complaint alleges that DePuyDepuy.jpg is currently marketing two products that infringe the ‘243, specifically the Pinnacle® and Duraloc® Acetabular Cup Systems. The complaint also alleges that by offering these products for sale, DePuy causes or encourages others to infringe the ‘243 patent by creating medical literature and providing training to healthcare providers about its infringing products and methods. The complaint seeks a finding that DePuy’s products infringe the ‘243 patent, an injunction, and damages.

Practice Tip: The plaintiffs have brought this case in New Jersey District Court against an Indiana company. The complaint states that personal jurisdiction over the Defendant is based upon the “Defendant has infringed Plaintiff’s patent in this district, regularly conducts business within this district, and its activities have targeted this district.” These are fairly generic and non-specific allegations to give rise to personal jurisdiction. If DePuy challenges jurisdiction, the plaintiffs may have to demonstrate more specific facts to successfully establish personal jurisdiction.
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Indianapolis, IN – The Honorable William T. Lawrence of the Southern District of Indiana has granted a Motion to Remand to the Marion County Superior Court in a case that had been removed to federal court due to Lanham Act trademark infringement claims in the original complaint. The complaint originally filed by intellectual property attorneys for the Jackson Group LLC of Indianapolis, Indiana in the Marion County Superior Court made claims of breach of fiduciary duty, fraudulent inducement, civil conspiracy, misappropriation of trade secrets and confidential and proprietary information, tortuous interference with existing and prospective business relationships, breach of contract and trademark infringement claims under the Lanham Act against defendants Touch Point One, LLC of Indianapolis, Indiana, Convergent Resources, Inc. and Dean Weathers.

After the defendants indicated to the plaintiff that they would seek removal to federal court due to the federal Lanham Act claims, the plaintiff amended its complaint to drop the trademark infringement claim. The plaintiff’s trademark infringement claim was the Marion County court’s basis for removing the case to federal court. After filing its amended complaint, the Jackson Group sought to have the case remanded back to the Marion County Superior Court since there were no longer any federal claims. While the other defendants consented to remand, Convergent opposed remand arguing that the breach of contract claim required a determination of whether trademarks or copyrights were infringed. The court, however, found that Convergent did not demonstrate that there were any actual disputed and substantial federal issues involved in the case. Therefore, the court remanded the case to the Marion County Superior Court.

Practice Tip: As the Court wrote in its order, pursuant to 28 U.S.C. § 1441(a), removal from state court to federal court “is appropriate if the Plaintiff properly could have filed the amended complaint in federal court “as a civil action ‘arising under the Constitution, laws, or treaties of the United States.” Grable & Sons Metal Products, Inc. v. Darue Engineering & Manuf., 545 U.S. 308, 312 (2005) (quoting 28 U.S.C. § 1331).” When a an intellectual property attorney makes a federal trademark, copyright or patent infringement claim in a state court case, removal to federal court is generally appropriate.
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Indiana Intellectual Property: IP Litigation, Patents, Trademarks, Copyrights
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Paul B. Overhauser
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