Jurisdiction and Venue

October 11, 2011

Court Dismisses Suit Seeking Declaration of Non-Infringment Bio-Waste Disposal Patents Owned by Biosafe Engineering of Brownsburg, Indiana

Pittsburg, PA – Judge Nora Barry Fischer of the U S District Court for Western District of Pennsylvania has dismissed a suit seeking a declaration a non-infringement of patents owned by a Brownsburg, Indiana company. Patent attorneys for Matthews International Corporation of Pittsburg, Pennsylvannia had filed a lawsuit seeking a declaration of non-infringement of patents owned by Biosafe Engineering, LLC, and Digestor, LLC of Brownsburg, Indiana. The patents at issue are patent nos. 5,332,532, Method for disposing of radioactively labeled animal carcasses, 6,437,211, and 6,472,580 Methods for treatment and disposal of regulated medical waste, 7,829,755, System and method for treating infectious waste matter, and 7,910,788, System for treating infectious waste matter, which have been issued by the US Patent Office. Patent attorneys for Matthews also made state law claims of trade libel, defamation, and tortuous interference with prospective contracts.

According to the court’s opinion, Matthews is in the cremation industry and provides “environmentally-friendly alternative to flame-based cremations” through an alkaline hydrolysis process. Biosafe is a competitor and owns patent rights to similar process of disposing various types of bio-waste, however none of its patents reference cremation of human remains. In 2008, Biosafe accused Matthews of infringing its patents. Matthews also alleges that Biosafe told prospective customers that Matthews committing patent infringement. In February 2011, Matthews filed this suit seeking a declaration of non-infringement. Biosafe had filed a motion to dismiss, which the court addresses in its memorandum opinion. The court stated the issue before it as “the patent portion of this motion challenges whether this Court has jurisdiction over a declaratory judgment action where the declaratory plaintiff cannot possibly be liable for direct infringement and no direct infringement has occurred such that the declaratory plaintiff could be found liable for indirect infringement.”

The court found that it did not have jurisdiction to issue a declaration of non-infringement because it found that Matthews had taken no steps towards direct infringement of the patents. The court also found it did not have jurisdiction over the state law defamation, libel and tortuous interference claims. The court dismissed the suit with prejudice.

Practice Tip: In its motion to dismiss, Biosafe argued that the court did not have jurisdiction because there was no “case or controversy” regarding a patent infringement claim, citing Federal Rule of Civil Procedure 12(b)(1). The legal standard for jurisdiction over a suit seeking a declaration of non-infringement of a patent has been significantly revised in recent years following the U.S. Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 132 n. 11 (2007) and its progeny. The court here noted “It is, thus, insufficient in a patent case simply to plead that a declaratory defendant‘s actions have caused economic harm. Instead, under MedImmune, the Federal Circuit has found that an “adverse legal interest” requires a dispute pertaining to a legal right. Arris, 639 F.3d at 1374 (“An adverse legal interest‟ requires a dispute as to a legal right-for example, an underlying legal cause of action that the declaratory defendant could have brought or threatened to bring.”).”
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September 1, 2011

Allison Transmission Inc. Sues Defeo Manufacturing Inc. for Trademark Infringement Over Transmission Speed Sensors and Parts

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark lawyers for Allison Transmission Inc. of Indianapolis, Indiana filed a trademark infringement suit in alleging Defeo Manufacturing, Inc. of Brookfield, Connecticut infringed various ALLISON TRANSMISSION trademarks, including registration nos. 2,866,798, 2,625,008, 1,666,977, 1,624,473 , 3,821,442and 2,678,354; along with registration no. 2,615,428 for the ALLISON ELECTRIC DRIVES, all registered with US Trademark Office.

According to the complaint, Defeo manufactures and supplies replacement parts for Allison transmissions, including aftermarket, refurbished, and used parts. The complaint states that Allison is not associated with Defeo in any way. Allison alleges that Defeo “has a history of deceiving the public as to sponsorship, affiliation, or endorsement of its products by Allison.” In 2009, Allison became aware that Defeo’s website falsely claimed its products met all Allison’s quality standards. After Allison demanded the false advertising be removed, the website claims were taken down. Subsequently, however, Allison became aware that Defeo was responsible for the unauthorized manufacturing of transmission turbine speed sensors that bore the Allison trademarks without authorization. Allison alleges these speed sensors are counterfeit products, and though the products are not authorized by Allison, are advertised as “genuine Allison” products. The complaint makes claims of counterfeiting, federal trademark infringement, false designation of origin, false advertising, Indiana common law unfair competition, common law trademark infringement and seeks seizure of all “counterfeit” products and advertising, an injunction, profits, actual damages, punitive damages, costs and attorney fees.

This is at least the fifth suit filed by Allison since 2009 against a seller of replacement parts for Allison’s products.

Practice Tip: Allison Transmission’s trademark attorneys do not allege any specific infringing sales in Indiana by Defeo Manufacturing. Instead they only said that Defeo “does business in . . . has caused harm in . . and the conduct . . . complained of . . . has occurred in this judicial district.” However, the Complaint only identifies a website maintained by Defeo used to offer allegedly infringing products. This case has been assigned to Judge Sarah Evans Barker, who in similar cases, has refused to find specific personal jurisdiction based on merely maintaining an interactive website not “specifically directed” toward Indiana. To improve the chances of obtaining personal jurisdiction, it is advisable to make at least one purchase of an allegedly infringing product and have it shipped to the jurisdiction where the suit is to be filed.It is also curious that Allison alleges infringement of Federal Registration No. 2,615,428, since this registration was cancelled long ago.
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August 30, 2011

Hill-Rom Services, Inc. Sues Stryker Corporation for Patent Infringement of Hospital Bed Systems, Case Transferred to Southern District of Indiana

By Overhauser Law Offices, LLC

Indianapolis, IN – A patent infringement case originally filed in the Western District of Wisconsin has been transferred to the Southern District of Indiana. Patent lawyers for Hill-Rom Services, Inc of Batesville, Indiana filed a patent infringement suit alleging Stryker Corporation doing business as Stryker Medical and Stryker Sales Corporation of Kalamazoo, Michigan infringed patent numbers 5,771,511, Thumbnail image for Patent Picture.jpg Communication network for a hospital bed, 7,237,287, Patient care bed with network, and seven other hospital bed communication patents which has been issued by the US Patent Office.

The nine patents at issue are communications systems and adjustment systems for hospital beds. The complaint alleges that Stryker manufactures and offers for sale three lines of hospital beds, InTouch, S3, and GoBed II, which infringe Hill-Rom’s patents. Stryker filed a motion to transfer the case to the Southern District of Indiana, which was granted on August 15.

Practice Tip: 28 U.S.C. 1404 allows transfer of a case from one district court to another by order of the court or by stipulation and consent of the parties. It appears that Stryker argued that the Southern District of Indiana was a more convenient and a less expensive jurisdiction to litigate this case. One of Stryker’s attorneys filed declaration with the estimated travel expenses to the Western District of Wisconsin. Since the Southern District of Indiana is the plaintiff’s home district in this case, it is hard to argue that transfer would cause prejudice to the plaintiff.

July 28, 2011

Another Update to Hard Drive v. 21 Indiana John Does: Attorney Files Motion to Dismiss, Court May Strike Anonymous Letters

By Overhauser Law Offices, LLC

Indianapolis, IN – There have been further updates to the Hard Drive Productions case in the Southern District of Indianathat Intellectual Property Law News has been closely following. The Hard Drive case is one of three similar copyright infringement lawsuits in the Southern District of Indiana all involving file sharing of adult entertainment videos via BitTorrent. The other two are the Boy Racer case and the First Time Videos case.

In one development, an attorney has filed a motion to dismiss and motion to quash subpoena on behalf of one of the John Does, who remains unnamed but has his or her I.P. address listed on the motion. The motion to dismiss argues that the Court does not have personal jurisdiction since the John Doe does not live in or have sufficient contacts with Indiana and that the defendants have been misjoined since none of the controversies arise out of the same facts or occurrences. The motion also argues that a subpoena that has been served on internet service provider Comcast requesting the name and identifying information for this John Doe is unduly burdensome.

In another development, the Court has ordered the authors of the anonymous letters, subject of an Intellectual Property Law News blog last month, to appear before the court and show cause why their letters should not be stricken from the record. If the authors do not appear by September 9, the Court will strike their letters from the case docket.

June 30, 2011

Update to Hard Drive Productions BitTorrent Copyright Infringement Case: John Doe Letters Ask Court Not to Allow Discovery

By Overhauser Law Offices, LLC

Indianapolis, IN – Several anonymous letters have been sent to the Southern District of Indiana regarding the Hard Drive Productions Copyright infringement case, all opposing any discovery attempts in the case that might reveal the identities of persons alleged to have illegally downloaded pornographic videos. Intellectual Property Law News has reported recently on three copyright infringement lawsuits filed in the Southern District of Indiana involving file sharing of adult entertainment videos via BitTorrent: the Hard Drive Productions case, the Boy Racer case and the First Time Videos case.

In an unusual procedural move, three anonymous letters, signed “John Doe,” were sent to the Court to protest the lawsuit and pre-emptively attack potential discovery efforts by the plaintiff that might reveal the identities of the “John Does,” who are accused of illegally sharing adult videos using BitTorrent. The first letter calls the case “wrongful harassment of internet subscribers” and states “Mr. Steele and lawyers attempting to the same scheme of intimidation will eventually be in contact with me to demand several thousand dollars not to sue ME for downloading this pornography file if Your court permits subpoena[.]” It points out the ease at which I.P. addresses could be forged and that wireless internet service can be used by a person other than the owner of the I.P. address, a concern that has been reported in Time Magazine.

A second letter points out to the court that in another similar case, discovery requests were denied by the Central District Court of Illinois and the Northern District of California. One court order attached to the letter says “The infringer might be the subscriber, someone in the subscriber’s household, a visitor with her laptop, a neighbor, or someone parked on the street at any given moment.”

Hard Drive filed a response to one of the letters, stating: “The Court is fully capable of protecting each defendant’s due process rights and ascertaining the quality of evidence presented at this proceeding. The anonymous letter expresses fear to the contrary, but these fears are not a good justification for curtailing discovery of the identities of those who have conspired to pirate copyrighted material.”

Practice Tips: We note the letters were sent from anonymous “John Does.” Had the writers identified themselves, they would have opened themselves to service of process and risked giving up several defenses including personal jurisdiction, which is an issue raised by one letter.

February 21, 2011

Indiana’s Southern District Court, Not Arkansas District Court, Will Hear Brandt Grain Cart Trademark Infringement Suit

By Overhauser Law Offices, LLC

Indianapolis, IN – Rulings by district courts in Indiana and Arkansas have ensured that the Southern District Court of Indiana will decide a longstanding trademark dispute over a mark used in agricultural machinery. Last week, the Southern District Court declined to transfer Brandt Industries Limited (BIL) v. Pitonyak Machinery Corporation (PMC) to the Eastern District of Arkansas, and the Eastern District Court of Arkansas has transferred its version of the case to Indiana’s Southern District Court.

On July 6, 2010, attorneys for BIL filed a trademark infringement suit in the Southern District of Indiana seeking a declaratory judgment regarding rights to the trademark.

The next day, July 7, trademark attorneys for PMC filed suit in the Eastern District of Arkansas, making a nearly identical trademark infringement claims. Indiana Intellectual Property Lawyer Blog previously wrote about the case here: https://www.iniplaw.org/2010/07/brandt-industries-sues-for-a-d.html#more. PMC then sought transfer of the Indiana case to Arkansas federal court, arguing that all the witnesses were in Arkansas and therefore Arkansas would be a more convenient location for the trial. PMC, based in Carlisle, Arkansas, also argued that Indiana did not have a significant connection to the litigation. BIL is a Canadian company. BIL, however, listed numerous Indiana locations where products with the disputed trademark are sold. The rulings by the two district courts last week settle this dispute over which court will hear the case.

Practice Tip: This case illustrates the importance of being the first party to file a lawsuit when there is a trademark dispute about a product sold in multiple jurisdictions. Certainly, PMC’s argument that it will be inconvenient for it to litigate in Indiana since it is located in Arkansas is well taken. However, inconvenience to PMC was not a sufficient reason for the district courts to transfer the case to Arkansas. Had attorneys for PMC filed the trademark dispute in their preferred court before BIL filed the Indiana case, PMC may have been able to avoid litigating in an inconvenient location.

November 10, 2010

Zimmer, Inc. Obtains Transfer of MedIdea Patent Infringement Complaint to Indiana

By Overhauser Law Offices, LLC

A patent infringement suit filed in Illinois by MedIdea LLC against Zimmer, Inc. of Warsaw, Indiana has been transferred to the Northern District of Indiana. The suit alleges infringement of the following patents issued by the U.S. Patent Office: 6,200,350 and 6,383,225, which relate to Hips, and Nos. 6,267,785, 6,379,391, 6,398,812, 6,821,300, and 7,229,478 which relate to shoulders.

February 13, 2007

Indiana Court Exterminates RodentPro Trademark Infringement Due to Lack of Jurisdiction From Website Advertising

By Overhauser Law Offices, LLC

Evansville, IN – Mice Direct, a Georgia seller for rodents, has achieved dismissal of a trademark infringement suit brought against it in Indiana by its competitor, RodentPro.com, for lack of personal jurisdiction.

Mice Direct and RodentPro.com each sell via the Internet dead / frozen mice and rats, primarily as food, to owners of snakes, reptiles and birds of prey that prefer eating whole carasses. As a result of RodentPro’s lower prices, Mice Direct stated on its website that “We’re Real Rodent Pros!” and that it its mice and rats were “farm raised” and not cheap “laboratory surplus.” In response, RodentPro sued Mice Direct for trademark infringement, unfair competition and trade dress infringement.

Mice Direct moved to dismiss the suit for lack of jurisdiction, because it did not sell its rodents in Indiana. RodentPro responded by arguing that jurisdiction was proper per Indianapolis Colts,Inc. v. Metro. Baltimore Football Club Ltd., 34 F.3d 410 (7th Cir. 1994) because Mice Direct “directed” its trademark infringing activities at Indiana, the location of the trademark owner. RodentPro also cited Panavision Int’l L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998). In that case, Panavision, a California corporation, sued Toeppen, an Illinois resident, for trademark dilution. Toeppen had acquired a domain name in Panavision’s trademark, “Panavision.” Toeppen offered to “settle” the matter if Panavision paid him $13,000. After Panavision refused, Toeppen registered Panavision’s other trademark, “Panaflex,” as a domain name. Panavision later filed suit against Toeppen in California for dilution of its trademarks. The district court held that Toeppen was subject to suit in California under the “effects doctrine.”