Inducement

April 27, 2016

Indiana Trademark Litigation: Trademark Dispute Between Kimball and Coaster Heads to Federal Court

Evansville, Indiana – An Indiana trademark attorney for Plaintiff Kimball International, Inc. (“Kimball”) of Jasper, Indiana filed an intellectual property lawsuit in the Southern District of Indiana.

Defendant COA, Inc. d/b/a Coaster Company of America (“Coaster”) of Santa Fe Springs, California is accused of infringing Kimball’s Trademark KIMBALL, Reg. No. 1,180,193, which has been registered with the U.S. Patent and Trademark Office, by using the trademark without authorization.

In addition to direct trademark infringement, Kimball asserts counts of contributory trademark infringement, false designation of origin, unfair competition arising under the Lanham Act as well as violations of the statutes and common law of the State of Indiana.

In particular, Kimball asserts that some of Coaster’s retail partners have infringed the KIMBALL trademark at Coaster’s behest, including retail giant Sears. As an example of this alleged contributory infringement, Kimball cites Bradley Home Furnishings’ website, which Kimball states features an unauthorized “Kimball Bedroom Collection” that originated from Defendant Coaster:

Kimball indicates in the complaint that it first informed Defendant less than a month before this lawsuit was filed that it believed it held superior rights to the KIMBALL trademark but states that Coaster “continues its unlawful use of the KIMBALL Mark and continues to encourage, induce, and materially contribute to its retail partners’ unlawful use of the KIMBALL Mark.”

In this litigation, filed by an Indiana trademark lawyer for Kimball, the following counts are alleged:

• Count I: Infringement of Federally Registered Marks – 15 U.S.C. § 1114
• Count II: False Designation of Origin – 15 U.S.C. § 1125(a)
• Count III: Contributory Trademark Infringement
• Count IV: Common Law Unfair Competition
• Count V: Deception – Indiana Code § 35-43-5-3(a)(6)
• Count VI: Conversion – Indiana Code § 35-43-4-3

• Count VII: Indiana Crime Victim’s Relief Act – Indiana Code § 35-24-3-1

Among other remedies, Kimball seeks equitable relief, actual and treble damages, costs and attorneys’ fees.

April 14, 2016

Indiana Patent Litigation: Infringement of Collision Warning Patent Alleged in Indiana Lawsuit

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Patent lawyers for Plaintiff Gary D. Pignato of Illinois filed an infringement lawsuit in the Southern District of Indiana against Defendants Mobileye, Inc. of Jericho, New York and its parent company Mobileye N.V. of Jerusalem, Israel.

Defendants have been sued on allegations of infringing U.S. Patent No. 6,240,346 (“the ‘346 patent”), titled “System with Light Display and Data Recorder for Monitoring Vehicle in Relation to Adjacent Vehicle.” The ‘346 patent is directed to a system for mounting in a vehicle for monitoring leading and trailing vehicles as well as generating and storing data relating to these vehicles, such as speed and proximity to the vehicle containing the technology. This patent has been issued by the U.S. Patent and Trademark Office.

Plaintiff alleges that Defendants’ Mobileye 5-Series line of driver-assistance systems, and in particular the Mobileye 560 System, include Forward Collision Warning technology that infringes the ‘346 patent. Plaintiff asserts that, although it offered to license to Defendants the technology protected by the ‘346 patent, Defendants instead chose to manufacture the accused products without such a license and, in doing so, infringe multiple claims of Plaintiff’s patent.

In this lawsuit, filed by Indiana patent attorneys for Plaintiff, the following claims are alleged:

• Count I: Direct Infringement of the ‘346 Patent
• Count II: Inducement to Infringe the ‘346 Patent

• Count III: Contributory Infringement of the ‘346 Patent

Plaintiff Pignato seeks injunctive relief; damages, including treble damages if infringement is found and determined to be willful; costs and attorneys’ fees.

January 27, 2016

Indiana Patent Litigation: Cummins Sues ADP Distributors for Infringement of Turbocharger Patents

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Patent attorneys for Plaintiffs Cummins Ltd., headquartered in the United Kingdom, and Cummins Inc. of Columbus, Indiana commenced patent infringement litigation in the Southern District of Indiana. The Defendants are ADP Distributors USA, Inc. of Tempe, Arizona and ADP Distributors, Inc., headquartered in British Columbia, Canada. They are accused of infringing two of Plaintiffs’ U.S. patents, both of which have been filed with the U.S. Patent and Trademark Office.

Defendants are accused of infringing U.S. Patent No. 6,401,563 (“the ‘563 patent”), entitled “Actuating Mechanism For A Slidable Nozzle Ring” and U.S. Patent No. 5,941,684 (“the ‘684 patent”), entitled “Variable Geometry Turbine.” The ‘563 patent is directed to certain components of a turbocharger or turbomachine and to a linkage assembly for linking together certain components within a turbocharger or turbomachine, while the claims of the ‘684 patent “are generally directed to a turbine, such as one used in connection with a turbocharger, having one or more springs which provide non-linear length to spring force characteristics on a displaceable sidewall.”

Plaintiff Cummins Ltd. claims to own all right, title and interest in both patents. Plaintiff Cummins Inc. states that it is an exclusive licensee of the ‘563 and ‘684 patents for sales of turbochargers and turbocharger components.

Defendants’ accused products include the Rotomaster Turbocharger, offered under model number H1550112N, and a Rotomaster replacement part. Defendants are accused of acting individually or in concert with others or each other to advertise for sale, offer for sale, import, sell and/or use these products in the U.S.

This federal lawsuit, filed with the trial court by patent lawyers for the Plaintiffs, alleges the following claims:

• Count I: Direct Infringement of U.S. Patent No. 6,401,563
• Count II: Direct Infringement of U.S. Patent No. 5,941,684
• Count III: Inducement to Infringe the ‘563 Patent
• Count IV: Contributory Infringement of the ‘563 Patent

Plaintiffs seek equitable relief; damages, including treble damages; interest; costs and attorneys’ fees.

October 1, 2015

Indiana Patent Litigation: Additional Complaint Asserting Patent Infringement Filed Against Lippert

By Overhauser Law Offices, LLC

Elkhart, Indiana – Indiana patent attorneys for Lifetime Industries, Inc. and LTI Flexible Products, Inc. of Modesto, California have filed another complaint asserting patent infringement against Lippert Components Manufacturing, Inc. of Elkhart, Indiana. This lawsuit alleges that Defendant infringed Patent Nos. 6,966,590 for a “Two-Part Seal for a Slide-Out Room,” 7,614,676 for a “Resilient Seal for Mobile Living Quarters,” and 7,614,677 for a “Seal Assembly for Mobile Living Quarters.” These patents have been issued by the U.S. Patent and Trademark Office.

Lippert, a subsidiary of Drew Industries, is a supplier serving the recreational vehicle, manufactured housing, trailer, and bus industries. It offers a line of products intended to improve the mobile lifestyle. Although Plaintiffs have a principal place of business in California, both operate a manufacturing facility in Elkhart, Indiana.

Three patents – Patent Nos. 6,966,590 (“the ‘590 patent”), 7,614,676 (“the ‘676 patent”) and 7,614,677 (“the ‘677 patent”) – are at issue in this intellectual property litigation. Defendant Lippert has been accused of making, offering for sale and/or selling products that infringe upon one or more of these patents. Some of these activities purportedly occurred on two or more recreational vehicles manufactured by facilities in Indiana.

The first accused product is a two-part seal that allegedly infringes one or more claims of the ‘590 patent. The second and third accused products, both “Slide Armor” seals, purportedly infringe as many as all of the patents-in-suit.

A cease-and-desist letter was sent to Jason Lippert, the CEO of Defendant, in March 2015. Plaintiff contends that, despite this letter and the communications that followed, Defendant’s manufacture, offer for sale, and sale of each of the accused products has continued.

In this Indiana complaint, patent lawyers for Plaintiffs assert the following claims:

• Count 1: Direct Infringement of the ‘590 Patent
• Count 2: Direct Infringement of the ‘676 Patent
• Count 3: Direct Infringement of the ‘677 Patent
• Count 4: Induced Infringement of the ‘590 Patent

• Count 5: Contributory Infringement of the ‘590 Patent

Plaintiffs ask the court to enter a declaration of direct, induced and contributory infringement as well as a declaration that infringement has been willful. Plaintiffs also ask for injunctive relief; damages, including treble damages; and costs and attorneys’ fees.

July 7, 2015

Indiana Patent Litigation: Lilly and Lupin in Federal Court Anew, Patent Infringement of Axiron Now Alleged

By Overhauser Law Offices, LLC

Indianapolis, Indiana – In conjunction with non-Indiana co-counsel, an Indiana patent attorney for Eli Lilly and Company, Eli Lilly Export S.A. (collectively, “Lilly”) and Acrux DDS Pty Ltd., sued in the Southern District of Indiana alleging that Lupin Ltd. of Mubai, India and Lupin Pharmaceuticals, Inc. of Baltimore, Maryland infringed on various of Plaintiffs’ patents, including U.S. Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520. These patents have been issued by the U.S. Patent Office.

Lilly is engaged in the business of research, development, manufacture and sale of

pharmaceutical products worldwide. Acrux is engaged in the development and commercialization of pharmaceutical products. They sell their products worldwide. The Lupin Defendants are generic pharmaceutical companies that develop, manufacture, market, and distribute generic pharmaceutical products for sale.

At issue in this patent litigation are U.S. Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520. These patents are alleged to cover a testosterone metered transdermal solution used to treat males for conditions associated with a deficiency or absence of endogenous testosterone. This pharmaceutical product, trademarked as Axiron®, is marketed and sold by Lilly.

Plaintiffs contend that the Abbreviated New Drug Application No. 208061 submitted in the name of Lupin Ltd. to the U.S. Food and Drug Administration for approval to market a generic version of Lilly’s Axiron product constitutes patent infringement.

In its complaint, filed by an Indiana patent lawyer, Lilly alleges the following counts:

• Count I for Patent Infringement: Direct Infringement of U.S. Patent No. 8,419,307
• Count II for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,419,307
• Count III for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,419,307
• Count IV for Patent Infringement: Direct Infringement of U.S. Patent No. 8,177,449
• Count V for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,177,449
• Count VI for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,177,449
• Count VII for Patent Infringement: Direct Infringement of U.S. Patent No. 8,435,944
• Count VIII for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,435,944
• Count IX for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,435,944
• Count X for Patent Infringement: Direct Infringement of U.S. Patent No. 8,807,861
• Count XI for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,807,861
• Count XII for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,807,861
• Count XIII for Patent Infringement: Direct Infringement of U.S. Patent No. 8,993,520
• Count XIV for Patent Infringement: Inducement To Infringe U.S. Patent No. 8,993,520
• Count XV for Patent Infringement: Contributory Infringement of U.S. Patent No. 8,993,520
• Count XVI for Declaratory Judgment: Infringement of U.S. Patent No. 8,419,307
• Count XVII for Declaratory Judgment: Infringement of U.S. Patent No. 8,177,449
• Count XVIII for Declaratory Judgment: Infringement of U.S. Patent No. 8,435,944
• Count XIX for Declaratory Judgment: Infringement of U.S. Patent No. 8,807,861

• Count XX for Declaratory Judgment: Infringement of U.S. Patent No. 8,993,520

Plaintiffs ask the court for judgment in their favor as follows:

a) United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 are valid and enforceable;
b) Under 35 U.S.C. § 271(e)(2)(A), Defendants infringed United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 by submitting ANDA No. 208061 to the FDA to obtain approval to commercially manufacture, use, offer for sale, sell, or import into the United States Lupin’s Generic Product prior to expiration of said patents;
c) Defendants’ threatened acts of commercial manufacture, use, offer for sale, or sale in, or importation into, the United States of Lupin’s Generic Product prior to the expiration of United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 would constitute infringement of said patents;
d) The effective date of any FDA approval of Lupin’s Generic Product shall be no earlier than the latest of the expiration date of United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 and any additional periods of exclusivity, in accordance with 35 U.S.C. § 271(e)(4)(A)
e) Defendants, and all persons acting in concert with Defendants, shall be enjoined from commercially manufacturing, using, offering for sale, or selling Lupin’s Generic Product within the United States, or importing Lupin’s Generic Product into the United States, until the expiration of United States Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; and 8,993,520 in accordance with 35 U.S.C. §§ 271(e)(4)(B) and 283;) This is an exceptional case and Plaintiffs should be awarded their costs, expenses, and disbursements in this action, including reasonable attorney fees, pursuant to 35 U.S.C. §§ 285 and 271(e)(4); and

g) Plaintiffs are entitled to any further appropriate relief under 35 U.S.C.§ 271(e)(4).

The case was assigned to Judge Sarah Evans Barker and Magistrate Judge Debra McVicker Lynch in the Southern District of Indiana and assigned Case No. 1:15-cv-01047-SEB-DML.

Practice Tip: Information on Lilly’s lawsuit against the Lupin Defendants, which asserts patent infringement relating to the drug Effient, can be found here.

June 3, 2015

Indiana Patent Litigation: Lippert Components Sued on Allegations of Patent Infringement

By Overhauser Law Offices, LLC

Elkhart, Indiana – Indiana patent lawyers for LTI Holdings, Inc. of Modesto, California (“LTI”) filed a patent-infringement complaint in the Northern District of Indiana alleging that Lippert Components, Inc. of Elkhart, Indiana (“Lippert”) infringed Patent Nos. 6,966,590 for a “Two-Part Seal for a Slide-Out Room,” 7,614,676 for a “Resilient Seal for Mobile Living Quarters,” and 7,614,677 for a “Seal Assembly for Mobile Living Quarters.” These patents have been issued by the U.S. Patent and Trademark Office.

Indiana-based Lippert, a subsidiary of Drew Industries, is a large supplier serving the recreational vehicle, manufactured housing, trailer, and bus industries. It offers a line of products dedicated to improving the mobile lifestyle.

Three patents – Patent Nos. 6,966,590 (“the ‘590 patent”), 7,614,676 (“the ‘676 patent”) and 7,614,677 (“the ‘677 patent”) – are at issue in this federal intellectual property lawsuit. Defendant Lippert has been accused of making, offering for sale and/or selling products that infringe upon one or more of these patents. Some of these activities purportedly occurred on two or more recreational vehicles manufactured by facilities in Indiana.

The first accused product is a two-part seal that allegedly infringes one or more claims of the ‘590 patent. The second and third accused products, both “Slide Armor” seals, purportedly infringe as many as all of the patents-in-suit.

A cease-and-desist letter was sent to Jason Lippert, the CEO of Defendant, in March 2015. Plaintiff contends that, despite this letter and the communications that followed, Defendant’s manufacture, offer for sale, and sale of each of the accused products has continued.

In this Indiana complaint, patent attorneys for LTI assert the following claims:

• Count 1: Direct Infringement of the ‘590 Patent
• Count 2: Direct Infringement of the ‘676 Patent
• Count 3: Direct Infringement of the ‘677 Patent
• Count 4: Induced Infringement of the ‘590 Patent

• Count 5: Contributory Infringement of the ‘590 Patent

Plaintiff asks the court to enter a judgment:

a) declaring the ‘590 patent is directly infringed by Defendant;
b) declaring the Defendant induced infringement of the ‘590 patent;
c) declaring the Defendant has contributorily infringed the ‘590 patent;
d) declaring Defendant’s infringement of the ‘590 patent has been willful;
e) declaring Defendant be preliminarily and permanently enjoined from manufacturing, using, selling, and offering to sell the infringing products in the United States prior to the expiration of the ‘590 patent;
f) awarding damages adequate to compensate Plaintiff for Defendant’s infringement of the ‘590 patent including lost profits, but in an amount no less than a reasonable royalty, and that such damages be trebled according to 35 U.S.C. § 284;
g) declaring the ‘676 patent is directly infringed by Defendant;
h) declaring Defendant’s infringement of the ‘676 patent has been willful;
i) declaring Defendant be preliminarily and permanently enjoined from manufacturing, using, selling and offering to sell the infringing products in the United States prior to the expiration of the ‘676 patent;
j) awarding damages adequate to compensate Plaintiff for Defendant’s infringement of the ‘676 patent including lost profits, but in an amount no less than a reasonable royalty, and that such damages be trebled according to 35 U.S.C. § 284;
k) declaring the ‘677 patent is directly infringed by Defendant;
l) declaring Defendant’s infringement of the ‘677 patent has been willful;
m) declaring Defendant be preliminarily and permanently enjoined from manufacturing, using, selling, and offering to sell the infringing products in the United States prior to the expiration of the ‘677 patent;
n) awarding damages adequate to compensate Plaintiff for Defendant’s infringement of the ‘677 patent including lost profits, but in an amount no less than a reasonable royalty, and that such damages be trebled according to 35 U.S.C. § 284; and

o) awarding all costs and expenses of this action, including reasonable attorneys’ fees.

May 29, 2015

Indiana Patent Litigation: Starmark Funeral Products Sues Matthews International Alleging Patent Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana patent attorneys for Vandor Corporation d/b/a Starmark Funeral Products of Richmond, Indiana filed a patent-infringement complaint in the Southern District of Indiana alleging that Matthews International Corporation of Pittsburgh, Pennsylvania and Matthews International – Cremation Division of Apopka, Florida (collectively, “Matthews”) infringed Patent No. 8,104,151, entitled “Lightweight Casket Having Foldable Features,” which has been issued by the U.S. Patent and Trademark Office.

Plaintiff Vandor claims ownership of United States Patent No. 8,104,151 (“the ‘151 Patent”). Vandor indicates in this intellectual property complaint that it has sold a cremation-insert product that embodies claims of the ‘151 Patent since at least 2009.

Defendants are accused of the manufacture, use, offer for sale, and/or sale of the “Matthews Cremation Fold-Down Rental Insert,” which Vandor contends directly infringes at least claim 1 of the ‘151 Patent under 35 U.S.C. § 271(a) literally and/or under the doctrine of equivalents.

Plaintiff also claims that Matthews intended to induce patent infringement by others as well as has contributorily infringed the ‘151 Patent under 35 U.S.C. § 271(c) literally and/or under the doctrine of equivalents. Finally, Vandor contends that Matthews been aware that it has been infringing since approximately January 2015. Consequently, Matthews’ alleged infringement has been labeled as “willful and deliberate” by Plaintiff.

The Indiana patent lawyers for Plaintiff ask the Southern District of Indiana to:

• Declare that United States Letters Patent 8,104,151 was duly and legally issued, is valid and is enforceable;
• Enter judgment that Defendants have infringed at least claim 1 of the ‘151 Patent;
• Enter judgment that Defendants have induced infringement of at least claim 1 of the ‘151 Patent;
• Enter judgment that Defendants have contributed to infringement of at least claim 1 of the ‘151 Patent;
• Enter a preliminary and permanent injunction enjoining Defendants and their agents, from any further sales or use of their infringing products and any other infringement of claims of the ‘151 Patent, whether direct or indirect, pursuant to 35 U.S.C. § 283;
• Award damages to compensate Vandor for Defendants’ infringement of the claims of the ‘151 Patent pursuant to 35 U.S.C. § 284;
• Award enhanced damages pursuant to 35 U.S.C. § 284;
• Award pre-judgment and post-judgment interest and costs to Vandor in accordance with 35 U.S.C. § 284; and

• Deem this to be an “exceptional” case within the meaning of 35 U.S.C. § 285, entitling Vandor to an award of its reasonable attorney fees, expenses and costs in this action.

May 26, 2015

Indiana Patent Litigation: Lilly Files a New Complaint Against HEC Pharm for Infringement of Effient Patents

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana patent attorney for Eli Lilly and Company of Indianapolis, Indiana; Daiichi Sankyo Co., Ltd. of Tokyo, Japan; Daiichi Sankyo, Inc. of Parsippany, New Jersey; and Ube Industries, Ltd of Yamaguchi, Japan filed a federal lawsuit in the Southern District of Indiana alleging that HEC Pharm USA, Inc. of Princeton, New Jersey and HEC Pharm Co. Ltd. of Yichang, China, infringed Patent Nos. 8,404,703 and 8,569,325, which cover the patented pharmaceutical Effient (pictured left). These patents have been issued by the U.S. Patent Office.

Effient products were approved by the FDA for the reduction of thrombotic cardiovascular events in certain patients with acute coronary syndrome (ACS) who are to be managed with percutaneous coronary intervention (PCI, or angioplasty). Effient products contain prasugrel hydrochloride, which is also known as 5-[(1RS)-2-cyclopropyl-1-(2-fluorophenyl)-2-oxoethyl]-4,5,6,7-tetrahydrothieno[3,2-c]pyridin-2-yl acetate hydrochloride.

The instructions accompanying Effient products state that patients taking Effient products should also take aspirin. The use of Effient products in combination with aspirin for the reduction of thrombotic cardiovascular events in patients with ACS who are to be managed with PCI is allegedly covered by the claims of the ‘703 and ‘325 patents.

In July 2014, Plaintiffs sued Defendants asserting infringement of the ‘703 patent. That complaint asserted patent infringement arising out of the filing by HEC Pharm of an Abbreviated New Drug Applications (“ANDA”) with the United States Food and Drug Administration (“FDA”) seeking approval to manufacture and sell generic versions of two pharmaceutical products – Effient 5mg and Effient 10mg tablets – prior to the expiration of the ‘703 patent. This patent covers a method of using Effient products for which Lilly claims an exclusively license. Specifically, HEC Pharm was accused of planning to infringe the patent-in-suit by including with its products instructions for use that substantially copied the instructions for Effient products, including instructions for administering HEC Pharm’s products with aspirin as claimed in the ‘703 patent.

Plaintiffs contended in this earlier lawsuit that HEC Pharm knew that the instructions that HEC Pharm intended to include with its products would induce and/or contribute to others using those products in the allegedly infringing manner set forth in the instructions. Moreover, Lilly et al. also contended that HEC Pharm specifically intended for health care providers, and/or patients to use HEC Pharm’s products in accordance with the instructions provided by HEC Pharm and that such use would directly infringe one or more claims of the ‘703 patent. Thus, stated Plaintiffs, HEC Pharm’s actions would actively induce and/or contribute to infringement of the ‘703 patent.

This prior complaint, also filed by the Indiana patent lawyer who filed this lawsuit, listed two counts:

• Count I: Infringement of U.S. Patent No. 8,404,703

• Count II: Declaratory Judgment of Infringement of U.S. Patent No. 8,404,703

That patent infringement lawsuit was dismissed without prejudice shortly thereafter. It has in effect been replaced with this current complaint, which includes the prior counts and adds the following:

• Count III: Infringement of U.S. Patent No. 8,569,325

• Count IV: Declaratory Judgment of Infringement of U.S. Patent No. 8,569,325

Plaintiffs ask the court for: a judgment of infringement; injunctive relief; a judgment regarding the effective date of Defendants’ ANDA; monetary damages; the case to be deemed exceptional; a judgment that the patents-in-suit remain valid and enforceable; and Plaintiffs to be awarded reasonable attorney’s fees, costs and expenses.

April 29, 2015

Indiana Patent Litigation: Eli Lilly Again in Federal Court Asserting Patent Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana patent lawyer for Eli Lilly and Company of Indianapolis, Indiana; Daiichi Sankyo Co., Ltd. of Tokyo, Japan; Daiichi Sankyo, Inc. of Parsippany, New Jersey; and Ube Industries, Ltd of Yamaguchi, Japan (collectively “Lilly”) sued in the Southern District of Indiana alleging that Lupin Ltd. of Mumbai, India and Lupin Pharmaceuticals, Inc. of Baltimore, Maryland infringed Patent Nos. 8,569,325, titled Method of Treatment with Coadministration of Aspirin and Prasugrel and 8,404,703, titled Medicinal Compositions Containing Aspirin, which have been issued by the U.S. Patent Office.

This lawsuit adds another two new Defendants, Lupin Ltd. and Lupin Pharmaceuticals, Inc. (collectively “Lupin”), to Lilly’s Indiana patent litigation efforts. In these “Effient” patent-infringement lawsuits, the Lilly group of Plaintiffs alleges infringement of its pharmaceutical product Effient. The patents at issue in the Lupin litigation are Effient-related patents 8,404,703 “Medicinal Compositions Containing Aspirin,” (the “‘703 patent”) and 8,569,325 “Method of Treatment with Coadministration of Aspirin and Prasugrel” (the “‘325 patent”).

This complaint asserts patent infringement arising out of the filing by Lupin of an Abbreviated New Drug Applications (“ANDA”) with the United States Food and Drug Administration (“FDA”) seeking approval to manufacture and sell generic versions of two pharmaceutical products – Effient 5mg and Effient 10mg tablets – prior to the expiration of the ‘703 patent and the ‘325 patent. These patents cover two Effient products and/or methods of using Effient products and for which Lilly claims an exclusively license.

Effient products were approved by the FDA for the reduction of thrombotic cardiovascular events in certain patients with acute coronary syndrome (ACS) who are to be managed with percutaneous coronary intervention (PCI, or angioplasty). Effient products contain prasugrel hydrochloride, which is also known as 5-[(1RS)-2-cyclopropyl-1-(2-fluorophenyl)-2-oxoethyl]-4,5,6,7-tetrahydrothieno[3,2-c]pyridin-2-yl acetate hydrochloride or 2-acetoxy-5-(alpha-cyclopropylcarbonyl-2-fluorobenzy1)-4,5,6,7-tetrahydrothieno[3,2-c]pyridine hydrochloride, and is covered by the ‘726 patent.

The instructions accompanying Effient products state that patients taking Effient products should also take aspirin. The use of Effient products in combination with aspirin for the reduction of thrombotic cardiovascular events in patients with ACS who are to be managed with PCI is allegedly covered by the claims of the ‘703 and ‘325 patents.

Lupin is accused of planning to infringe the patents-in-suit by including with its products instructions for use that substantially copy the instructions for Effient products, including instructions for administering Lupin’s products with aspirin as claimed in the ‘703 and ‘325 patents.

Plaintiffs contend that Lupin knows that the instructions that Lupin intends to include with its products will induce and/or contribute to others using those products in the allegedly infringing manner set forth in the instructions. Moreover, the Lilly Plaintiffs also contend that Lupin specifically intends for health care providers, and/or patients to use Lupin’s products in accordance with the instructions provided by Lupin and that such use will directly infringe one or more claims of the ‘703 and ‘325 patents. Thus, state Plaintiffs, Lupin’s actions will actively induce and/or contribute to infringement of the ‘703 and ‘325 patents.

The complaint, filed by an Indiana patent attorney, lists four counts:

• Count I: Infringement of U.S. Patent No. 8,404,703
• Count II: Declaratory Judgment of Infringement of U.S. Patent No. 8,404,703
• Count III: Infringement of U.S. Patent No. 8,569,325

• Count IV: Declaratory Judgment of Infringement of U.S. Patent No. 8,569,325

Plaintiffs ask the court for judgment:

• That Lupin has infringed the ‘703 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of one or more claims of the ‘703 patent;

• That Lupin has infringed the ‘325 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of one or more claims of the ‘325 patent;

• That, pursuant to 35 U.S.C. § 271(e)(4)(B), Lupin be permanently enjoined from making, using, selling or offering to sell any of its accused products within the United States, or, where applicable, importing accused products into the United States prior to the expiration of the ‘703 and ‘325 patents;

• That, pursuant to 35 U.S.C. § 271(e)(4)(A), the effective date of any approval of the Lupin ANDA under § 505(j) of the Federal Food, Drug and Cosmetic Act (21 U.S.C. § 355(j)) shall not be earlier than the later of the expiration dates of the ‘703 and ‘325 patents, including any extensions;

• If Lupin commercially makes, uses, sells or offers to sell any accused product within the United States, or, where applicable, imports any accused product into the United States, prior to the expiration of either of the ‘703 and ‘325 patents, including any extensions, that Plaintiffs be awarded monetary damages for those infringing acts to the fullest extent allowed by law and be awarded prejudgment interest based on those monetary damages;

• That the case be deemed exceptional under 35 U.S.C. § 285;

• That the ‘703 patent remains valid and enforceable;

• That the ‘325 patent remains valid and enforceable; and

• That Plaintiffs be awarded reasonable attorney’s fees, costs and expenses.

March 4, 2015

Indiana Patent Litigation: TreeStuff Sued for Patent Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana patent attorney for Sherrill, Inc. of Greensboro, North Carolina (“Sherrill”) filed a patent infringement complaint in the Southern District of Indiana alleging that TreeStuff, Inc. of Indianapolis, Indiana infringed Patent No. 5,887,577 entitled “Apparatus for Propelling a Projectile,” which has been registered by the U.S. Patent Office.

Plaintiff Sherrill asserts ownership by assignment to United States Patent No. 5,887,577 (“the ‘577 Patent”), which was issued to William T. Sherrill in 1999. It claims that TreeStuff manufactures, uses, offers for sale, and/or sells a product that infringes upon that patent, namely TreeStuff’s Stein Tekichu Throw Weight Launcher.

In November 2014, Sherrill sent a cease-and-desist letter to TreeStuff. In that letter, it identified the ‘577 Patent, stated that the Stein Tekichu Throw Weight Launcher infringed upon certain claims of the ‘577 Patent and demanded that TreeStuff cease all infringing activities.

Sherrill claims that TreeStuff did not respond to this letter but instead continued to use, offer to sell, and/or sell the accused product. Sherrill contends that, by engaging in these activities, TreeStuff has directly infringed, and will continue to directly infringe, at least claim 8 of the ‘577 Patent under 35 U.S.C. § 271(a) literally and/or under the doctrine of equivalents. Sherrill also suggests in its complaint that it is “reasonable to infer” that TreeStuff also intended to induce infringement. TreeStuff has also been accused of contributory infringement. Sherrill asserts that TreeStuff’s infringement has been and continues to be willful and deliberate.

In its complaint, filed by an Indiana patent attorney, Sherrill asks that the court:

• Declare that the ‘577 Patent was duly and legally issued, is valid and is enforceable;

• Enter judgment that defendant TreeStuff has infringed at least claim 8 of the ‘577 Patent;

• Enter judgment that defendant TreeStuff has induced infringement of at least claim 8 of the ‘577 Patent;

• Enter judgment that defendant TreeStuff has contributed to infringement of at least claim 8 of the ‘577 Patent;

• Enter a preliminary and permanent injunction enjoining defendant TreeStuff and its agents from any further sales or use of their infringing products and any other infringement of claims of the ‘577 Patent, whether direct or indirect, pursuant to 35 U.S.C. § 283;

• Award damages to compensate Sherrill for defendant TreeStuff’s infringement of the claims of the ‘577 Patent pursuant to 35 U.S.C. § 284;

• Award enhanced damages pursuant to 35 U.S.C. § 284;

• Award pre-judgment and post-judgment interest and costs to plaintiff Sherrill in accordance with 35 U.S.C. § 284; and

• Deem the case to be “exceptional” within the meaning of 35 U.S.C. § 285, entitling plaintiff Sherrill to an award of its reasonable attorney fees, expenses and costs in this action.