Intellectual Property Law

November 7, 2011

Eli Lilly & Co. Loses Appeal in British Supreme Court Over Patent Dispute Over Gene Sequence

London, U.K. – The Supreme Court of the United Kingdom has ruled against Indianapolis-based Eli Lilly & Company in a patent dispute. Lilly had challenged the validity of the patent of Human Genome Sciences, Inc., of Rockville, Maryland that covers the gene sequence of a protein called Neutrokine-α. Lilly had challenged the patent based on the fact that there is no known use of the protein. Thus, Lilly argued, the gene sequence was not patentable due to a lack of industrial application.

According to the Indianapolis Business Journal, Lilly continues to maintain the patent is invalid. The IBJ quoted a Lilly statement as stating “Human Genome Sciences seek to foreclose a whole area of research in a way that is not only harmful to the industry, but would ultimately and unjustifiably hinder the future development of new medicines.”

Practice Tip: The Court’s decision was based upon the European Patent Convention and United Kingdom patent doctrine requiring a patentable invention be susceptible to industrial application, which is similar to the U.S. patent doctrine of utility. The Court’s decision here holds that the U.S. doctrine of utility creates a higher bar to patentability that the E.U. and U.K. doctrine. The opinion explicitly rejected U.S. cases on the doctrine, including Brenner v Manson, 383 U.S. 519 (1966) and in re Fisher, 421 F.3d 1365 (2005).

September 15, 2011

Obama Poised to Sign America Invents Act, Patent Reform Bill Now Passed Both House and Senate

By Overhauser Law Offices, LLC

Washington, D.C. – The America Invents Act, also called the Leahy-Smith Patent Reform Act, was passed by the U.S. Senate last week. The bill was sent to President Obama’s desk, ready for his signature before it can become law. The President is expected to sign the bill.

President Obama repeatedly has mentioned the patent reform legislation in recent speeches on the economy. The America Invents Act has been touted as a job creating bill and as an economic stimulus. Proponents argue that the reforms will streamline the patent process and allow companies to more quickly realize profits from technology and thereby employ more workers. Senator Leahy, one of the bill’s sponsors, also commented that the reform will improve the quality of patents. He told the New York Times, “For years, low-quality patents have been a drain on our patent system, and in turn our economy, by undermining the value of what it means to hold a patent. Higher-quality patents will infuse greater certainty into the patent system, which will better incentivize investment in American businesses, create jobs and grow our economy.” These claims, however, are complicated and controversial among intellectual property attorney experts on patent policy.

The biggest change brought on by the reform will give patent protection to the “first to file” for the patent, rather than the “first to invent” under the current system. Indiana Intellectual Property Law News blogged on the specifics of the legislation last month.

August 31, 2011

ASSET PURCHASE AGREEMENT TRANSFERRING TRADEMARK CANNOT BE WITHHELD IN TRADEMARK INFRINGEMENT SUIT

By Overhauser Law Offices, LLC

This case involves companies who each use the trademark BRANDT for selling agricultural equipment, but in different geographic areas. Trademark attorneys for Pitonyak Machinery Corporation claimed it acquired rights to the trademark BRANDT when it purchased several businesses in 2002 from a Brandt family in Carlisle, Arkansas. During discovery, Pitonyak produced to lawyers for Brandt Industries, Ltd (the opposite party), the Asset Purchase Agreement but redacted (or blocked out) the purchase price, arguing it was not relevant. Brandt Industries filed a Motion to Compel Production of a non-redacted Version.

July 28, 2011

Indiana’s Unique Right to Publicity Law Examined

By Overhauser Law Offices, LLC

Indianapolis, IN – Indiana, like eighteen other states, has a right to publicity law that can be described as the right to control the commercial use of one’s identity. The right to publicity, sometimes called personality rights, are state law rights, unlike most intellectual property rights, which are federal rights. According to Wikipedia, Indiana’s right to publicity is considered to be the most far reaching right to publicity law in the world. Indiana’s current right of publicity law, I.C. 32-36-1 et seq., was enacted in 1994. Indiana’s law grants a proprietary interest to a personality’s name, voice, signature, photograph, image, likeness, distinctive appearance, gesture or mannerisms where the personality has commercial value. The law requires permission before another uses one’s personality for commercial purposes and provides for damages if the personality is used without consent. Rightofpublicity.com has an interesting blog entry on the history of the right to publicity.

Indiana Intellectual Property Law News blogged last month about the recent decision of the Southern District Court of Indiana in the Dillinger case. The Indiana Court of Appeals has also examined a case involving the right of publicity and coincidentally also concerning the John Dillinger personality. In that case, Phillips v. Scalf, 778 N.E.2d 480 (Ind. Ct. App. 2002), Scalf alleged he owned the Dillinger right to publicity and that Phillips was operating a restaurant in Steuben County that utilized the Dillinger personality without permission. This decision, however, involved the question of venue and did not substantively examine the right to publicity statute. Indeed, it appears that neither the Indiana Supreme Court nor the Indiana Court of Appeals have issued substantive decisions on the Indiana Right to Publicity.

June 27, 2011

Williams Industries Inc. Sues Trevis Tumbler Company to Invalidate Trademark on Tumblers

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark lawyers for Williams Industries Inc. of Shelbyville, Indiana filed a trademark lawsuit in the Southern District of Indiana seeking to invalidate trademark registration no. 3,081,577 and trademark registration no. 2,862,871 for the mark TRITAN DOUBLE WALL TRUMBLER, which have been registered with the US Trademark Office and are owned by Trevis Tumbler Company of Venice, Florida.

The complaint states that Williams manufactures a line of plastic drinking tumbler, and that Williams has a business relationship with Hit Promotions, Inc. whereby Hit purchases and sells the Williams tumbler. Hit received a cease and desist letter from Tervis in June 2011, stating that Tervis owned the trademarks at issue and claiming that the Williams tumblers infringe the trademarks. In response, Hit stopped selling Williams’ tumbers. Williams claims the trademarked design is simply a “horizontal line” and similar designs have been used on plastic tumblers from various manufacturers for many years. Williams alleges that another company, Signature USA of Minnesota, has sold tumblers with the trademarked design for over 25 years. Williams is seeking a judgment invalidating and rendering unenforceable the ‘577 and ‘871 trademarks, claiming that Tervis made false statements in its trademark application regarding Tervis’s exclusive use of the “horizontal line” design and that the design is generic. Williams’ trademark attorneys have also made claims of tortuous interference with business relationship and common law unfair competition.

According to the Indianapolis Business Journal, Tervis’s tumbler business has grown to $75 million.

Practice Tip: The Lanham Act, 15 U.S.C. § 1119, does provide the federal courts with the power “to order the cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.”

May 31, 2011

Boston Scientific Corporation and Guidant Seeks Noninfringement Declaration of Heart Arrhythmia Treatment Patent

By Overhauser Law Offices, LLC

Indianapolis, IN – Patent lawyers for Boston Scientific Corporation of Natick, Massachusetts and its wholly-owned subsidiaries, Guidant LLC of Indianapolis, Indiana and Cardiac Pacemakers LLC of St. Paul, Minnesota, filed a lawsuit seeking a declaratory judgment that they have not infringed Patent No. 4,407,288, IMPLANTABLE HEART STIMULATOR AND STIMULATION METHOD, which has been issued by the US Patent Office. The patent lawsuit has been filed against Mirowski Family Ventures, LLC of the State of Maryland.
The patent in question is described as “a method of treating heart arrhythmia with a therapy referred to as ‘cardioversion’ administered by Implantable Cardioverter Defibrillator devices.” According to the complaint, Guidant obtained an exclusive license of the patent in question from Mirowski in 1973, which was renewed 2004. Pursuant the license agreement, Guidant was to pay a percentage of sales made based on the patented technology. In 2002, the Southern District of Indiana declared the ‘288 patent invalid in Cardiac Pacemaker, Inc. v. St. Jude Medical, Inc., No. IP 96-1718-C H/G (S.D. Ind.). This patent invalidity determination, however, was overturned by the Federal Circuit Court and then subject to further litigation, which concluded in 2010. Guidant and Mirowski had agreed to suspend payments on the license agreement while during this litigation, and Guidant, in its complaint, states that it has now paid what is due under the license agreement. According to the complaint, Mirowski has sent letters to Guidant accusing Guidant of breaching the license agreement and patent infringement. Boston Scientific and Guidant seek a declaratory judgment of noninfringement, a declaratory judgment of satisfaction of royalty obligation, and a declaratory judgment of no breach of contract.
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March 16, 2011

Obama Administration Proposes Increased Criminal Penalties for Intellectual Property Violations

By Overhauser Law Offices, LLC

The White House has published a White Paper proposing criminalization of many actions associated with intellectual property. It suggests greater rights and more severe penalties “so as to more effectively address the substantial harm caused by intellectual property crimes.”

In summary, the revisions include:

Longer prison sentences for theft of trade secrets, distributing counterfeit drugs, and intellectual property offences that “risk serious bodily injury.”
Stating that unlicensed streaming of copyrighted material is a felony;
Allowing wiretaps to pursue criminal copyright and trademark infringements;

Creating a right of public performance for copyright owners for sound recordings transmitted by over-the-air broadcast stations
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