New Decisions

May 17, 2012

Southern District Lifts Stay on Patent Infringement Suit Against Google and Grants One Number Corporation’s Motion To Amend Complaint

Indianapolis, IN – The Southern District of Indiana has lifted a stay on a patent infringement case against Google and allowed the plaintiff, One Number Corp. Motion to amend its complaint. Patent attorneys for One Number Corp. of Anderson, Indiana had filed a patent infringement lawsuit in the Southern District of Indiana alleging that Google of Mountain View, California infringed patent no. 7,680,256 and 8,107,603, CONTACT NUMBER ENCAPSULATION SYSTEM, which has been issued by the US Patent Office.

The litigation was stayed while the US Patent Office re-examined the patents at issue. One Number had motioned the court to remove the stay because a substantial portion of the re-examination process has concluded. Google opposed lifting the stay because there was chance that the Federal Circuit Court would reverse the Board of Patent Appeals and Interferences’ conclusions. The court concluded that the stay should be lifted and granted One Number’s motion to amend their compliant. The parties were ordered to submit a case management plan within 14 days.

Practice Tip: It is common for patent infringement litigation to be stayed when the US Patent Office is re-examining the patent, although the district court is not required to stay the litigation. Each claim of a patent is presumed to be valid and enforceable, even if the patent is being re-examined. The US Patent Office offers this FAQ sheet that explains the re-examination process.

May 10, 2012

Southern District Grants Preliminary Injunction for American Petroleum Institute in Trademark Infringement Suit Over API Logo

By Overhauser Law Offices, LLC

Indianapolis; IN – Judge Tanya Walton Pratt of the Southern District of Indiana has issued a preliminary injunction enjoining Tailor Made Oil Company of Cambridge City, Indiana, TM Oil, LLC of Fishers, Indiana, Circle Town Oil of Fishers, Indiana, et al from infringing trade names API and AMERICAN PETROLEUM INSTITUTE and trademark registration nos. 1,864,428, 1,868,779 and 1,872,999, which have been registered with the US Trademark Office by the American Petroleum Institute (API) of Washington, DC.

Trademark lawyers for American Petroleum Institute (“API”) of Washington, D.C. filed a trademark infringement suit in alleging Tailor Made Oil Co., LLC of Cambridge City, Indiana, TMO Oil, LLC of Fishers, Indiana, Circle Town Oil of Fishers, Indiana, William R. Selkirk and Rebecca Selkirk of Cambridge City, Indiana, Lincoln R. Schneider of Fishers, Indiana and Jafarikal Corporation of Rosedale, New York infringed trademark. The complaint alleges that the individual defendants own and operate the corporate defendants as an interrelated business that offers low quality engine oil for sale. In March 2010, Tailor Made obtained certification for its engine oil, and a one year license to use the starburst mark on its products. In order to renew the one year license, Tailor Made was required to report its sales and to pay a renewal fee to API. Tailor Made failed to comply with these requirements and has continued to sell products bearing the trademarked starburst without authorization. We blogged about the case when it was filed.

The court’s order states that the defendants did not contest API’s motion for preliminary injunction. The parties submitted a joint proposed order, but did not agree on all aspects of the proposed order. The injunction ordered by the court prevents the defendants from registering or using any infringing marks. It also requires that the Jafarikal Corporation must notify API of its intent to distribute engine oil bearing the API marks and allow API to test any engine oil it distributes bearing the API marks.

Practice Tip: The order ordered that the defendants submit an affidavit of compliance within 10 business days of the injunction.

May 3, 2012

Southern District Grants Partial Summary Judgment Dismissing Some Copyright Claims In Dispute Over Virgin Mary Images

By Overhauser Law Offices, LLC

Indianapolis; IN – The Southern District of Indiana has granted partial summary judgment that dismisses many of Patricia Fuller a/k/a Sister Joseph Therese’s claims in a lawsuit over the physical and intellectual property rights to certain images and statues of the Virgin Mary, which are titled Our Lady of America. Intellectual property attorneys for Kevin B. McCarthy of Indianapolis, Indiana, Albert H. Langsenkamp, Carmel, Indiana and BVM Foundation, Inc. of Batesville, Indiana had filed a lawsuit in the Southern District of Indiana making several claims against Patricia Ann Fuller, also known as Sister Joseph Therese of Fostoria, Ohio and John Doe of Ohio. Ms. Fuller apparently has counterclaimed claiming trademark and copyright ownership of the copyrighted work OUR LADY OF AMERICA.

The court’s partial judgment dismisses Fuller’s defamation, RICO and trade dress claims as well as her copyright claims that do not relate to the copyrighted works VAu000297438, VA0000643362 and TXu000366731, which have been registered by the US Copyright Office. The court also stayed the litigation, pending a resolution from the Catholic Church of “the status/ownership of ecclesiastical property and property rights arising while Sister Ephrem was a nun[.]”

This case has convoluted facts and procedural issues. We have previously blogged about the case here.

Practice Tip: It looks like the copyright claims are going to turn on whether Ms. Fuller or the Catholic Church is the owner of the copyrights. The records of the US Copyright Office indicate that “Sister Mildred Mary Neuzil” is the copyright claimant.

April 17, 2012

Southern District Grants Motion to Transfer Venue for Combined Public Communications in Patent Case Over Phone Service To Jails

By Overhauser Law Offices, LLC

Indianapolis; IN – [Note – Overhauser Law Offices, LLC, publisher of this site, represented Combined Public Communications, who prevailed in this matter]

Judge Jane E. Magnus-Stinson of the Southern District of Indiana has granted a motion to change venue in a patent infringement suit. Patent attorneys for Securus Technologies of Dallas, Texas, had filed a patent infringement lawsuit in the Southern District of Indiana alleging that Combined Public Communications (“CPC”), based in Kentucky, infringed Securus’s March 1, 2011 patent no 7,899,167 for “CENTRALIZED CALL PROCESSING.” The patent claims to provide “a centralized architecture for call processing” including voice over internet protocols (VOIP).

Securus’s patent lawyers alleged in the complaint that the litigants are competitors because they each provide “specialized call-processing and billing equipment and services for correctional institutions, direct local and long distance call processing for correctional facilities,” and other technologies relating to “Inmate Management Systems.”

The court’s order transferring venue notes that T-Netix, Inc., a company that is part of the Securus corporate family, filed a patent infringement suit against CPC in the Western District of Kentucky making similar patent infringement claims. Weighing the relevant factors, the court concluded that the interests of justice and convenience to the parties and witnesses favored a transfer of venue to the Western District of Kentucky.

Practice Tip: 28 U.S.C. § 1404(a) sets the standard for transfer of venue: “For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.”

April 4, 2012

Continued Use of Trademark By Successor Company Relevant to “Piercing the Corporate Veil” and Successor Liability for Breach of Contract

By Overhauser Law Offices, LLC

Indianapolis, IN – The Indiana Court of Appeals has held that a successor company’s continued use of a trademark created a genuine issue of fact as to whether the successor should be liable for a breach of contract by its predecessor. Attorneys for Zeise & Sons Excavating, Inc. of Crown Point,Indiana had sued Boyer Construction Group Corporation (“Group”) of Highland, Indiana in the Lake County Superior Court for breach of contract and had argued that Group should be liable for the breach by its predecessor company, Boyer Construction Corporation (“Corporation”), under theories of breaching the corporate veil of an alter ego corporation. Zeise also argued that Group should be liable under a theory of successor liability. The contract in question involved construction of a retail development. It was undisputed that Zeise had performed all of its obligations under the contract and that Corporation had failed to pay as provided by the contract. The Lake County Superior court had granted Group a partial summary judgment in favor of Group, finding neither of Zeise’s theories created liability for Group.

The Court of Appeals reversed the summary judgment. The court noted that a decision to pierce to corporate veil requires a fact-sensitive inquiry. The court noted that Zeise had presented numerous facts to support piercing the corporate veil, including continued use of trademarks, logos and website address. In addition, the Court of Appeals found that continued use of trademarks, logos and website address created issues of material fact regarding Ziese’s successor liability claim. The court, however, declined to issue a summary judgment in favor of Ziese. Rather, the court found that Ziese raised a genuine question of a material fact and therefore summary judgment was not appropriate. The case has been remanded for trial.

Practice Tip: When a company sells its assets to another company, it is important to remember intellectual property such as trademarks, patents and copyrights. Failure to document an assignment or license can result the “piercing the corporate veil,” and personal liability of the business owners.

March 29, 2012

Supreme Court Of The United States Reversed The Federal Circuit On Method Claim For Treating Autoimmune Diseases Are Not Eligible For Patent Protection

By Overhauser Law Offices, LLC

Washington, D.C. – The United States Supreme Court has unanimously reversed a patent decision by the Court of Appeals for the Federal Circuit and has held that patent claims that are a “law of nature” are not patent eligible under 35 U.S.C. § 101. The decision built upon the Court’s 2010 decision in Bilski v. Kappos.

Patent lawyers for Prometheus Laboratories, Inc. of San Diego, California filed a patent infringement suit against Mayo Collaborative Services, doing business as Mayo Medical Laboratories of Rochester, Minnesota, alleging that Mayo infringed patent no. 6,355,623, Method of treating IBD/Crohn’s disease and related conditions wherein drug metabolite levels in host blood cells determine subsequent dosage and patent no. 6,680,302, Methods of optimizing drug therapeutic efficacy for treatment of immune-mediated gastrointestinal disorders which have been issued by the US Patent Office.

The patents at issue involve claims over an observed correlation between certain blood tests and patient health, specifically the correlation between the level of certain drug metabolites in the patient’s blood and the patient’s symptoms of gastrointestinal disease. The Court of Appeals for the Federal Circuit had twice ruled in Prometheus’s favor. Oral arguments were held December 7, 2011 at the United States Supreme Court. The Court decision essentially held that Prometheus’s “invention” was not patentable because it was effectively a law of nature. In other words, the relationship between the dosages and the effect on patient health was a natural phenomenon and therefore, unpatentable.

We blogged a preview of this case in October. This ruling is being criticized by the patent bar as making the law less clear. In particular, Robert S. Sachs of Fenwick & West LLP is examining the decision in a series of blogs on Patently-O in which he examines “just some of the logical and legal errors in the Court’s decision.” Sachs commentary also suggests that numerous patents should now be found invalid.

Practice Tip: The Court’s decision has immediately changed protocol at the patent examination office. The US Patent Office has issued new guidelines to patent examiners which are available here.
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March 28, 2012

Southern District Denies Certainteed’s Motion to Dismiss Patent Infringement Suit Brought By Knauf Insulation

By Overhauser Law Offices, LLC

Indianapolis; IN – The Southern District of Indiana has denied a motion to dismiss filed by CertainTeed Corporation in a patent infringement lawsuit. Knauf Insulation Limited of St. Helens, Merseyside, United Kingdom and Knauf Insulation GMBH of Shelbyville, Indiana, filed a patent infringement suit alleging that Certainteed Corporation had infringed patent 7,854,980, FORMALDEHYDE-FREE MINERAL FIBRE INSULATION PRODUCT, which was issued by the US Patent Office. We previously blogged about this case on January 16, 2012 and May 19, 2011.

Patent attorneys for Certainteed had filed the motion to dismiss arguing that Knauf did not have standing because it did not own the rights to the patent at issue and that a first-filed action by Certainteed in the District of Columbia should resolve this dispute, not the case filed with the Southern District of Indiana. The claim that Knauf did not own the patent in question was based upon Certaineed’s interpretation of an exclusive license agreement between the inventors and various divisions of Knauf. Specifically, the Knauf parties had entered a “quitclaim and assignment” agreement that was governed by the laws of the Belgium. Certainteed argued that the transfer of patent rights was not valid.

The court found no merit in Certainteed’s argument. The court found “The Quitclaim and Assignment executed [by Knauf] clearly contains what is referred to in common parlance as a ‘typo.'” The court found that the typo did not negate the parties intentions in entering the contracts. The court also declined to dismiss under the first filed rule, noting that the District of Columbia court had yet to determine whether it had jurisdiction.

Practice Tip: The case management plan had been suspended while this motion to dismiss was pending. This controversy has been slow to progress. It was first filed in February 2011 and was refilled in its current form in May 2011 so it has been nearly a year at this point. The court has quickly scheduled a conference for later this week, likely attempting to move it along.
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March 23, 2012

Northern District Denies Motion to Strike Expert’s Survey Regarding Likelihood of Confusion in Trademark Infringement Case of Dwyer Instruments v. Sensocon Inc

By Overhauser Law Offices, LLC

South Bend, IN – Judge Theresa Springmann of the Northern District of Indiana has denied a motion to strike the report of an expert who conducted an internet survey regarding the likelihood of confusion created by a trademark infringement defendant.

In January 2009, trademark attorneys for Dwyer Instruments of Michigan City, Indiana had filed a trademark infringement lawsuit in the Northern District of Indiana alleging that Sensocon, Inc. and Tony E. Kohl of Highland City, Florida infringed Dwyer’s federally registered trademarks that are placed on Dwyer’s pressure gauge lens covers by placing confusingly similar marks on Sensocon’s own products. The complaint also made claims of trade dress infringement, unfair competition, false designation of origin, counterfeiting, false designation of origin and copyright infringement.

The parties filed cross-motions for summary judgment, and Sensocon filed a motion to strike the report of Dwyer’s expert who had performed a survey on the likelihood of confusing that is created by the alleged trademark infringement. The Court denied the motion to strike, applying the standards for admission of expert evidence under Federal Rule 702 and Daubert v. Merrell Dow Pharmaceutical, Inc., 509 U.S. 579 (1993) and its progeny. The Court noted that similar surveys are routinely admitted into evidence in trademark infringement cases. The court quoted a Seventh Circuit case, stating “[w]hile there will be occasions when the proffered survey is so flawed as to be completely unhelpful to the trier of fact and therefore inadmissible, . . . such situations will be rare.” AHP Subsidiary Holding Co. v. Stuart Hale Co., 1 F.3d 611, 618 (7th Cir. 1993).

Practice Tip: The Court noted that Sensocon could still attack the expert’s report by calling its methods into question and asking the court to grant little weight to the report. The court also granted Sensocon permission to file a report of its own expert to rebut Dwyer’s expert.

March 21, 2012

Southern District Grants Motion to Dismiss for Pacific Coast Breaker, Inc. in Trademark Infringement Suit Over Circuit Breakers with the ZINSCO Mark

By Overhauser Law Offices, LLC

Indianapolis, IN – The Southern District of Indiana has granted a Motion to Dismiss in a trademark infringement lawsuit filed by Connecticut Electric, Inc. of Anderson, Indiana alleging that Pacific Coast Breaker, Inc. of McClellan, California and and PC Systems, Inc., also of California, infringed trademark registration no. 975,845 for the mark ZINSCO registered with the US Trademark Office.

The suit involves circuit breakers sold by Pacific Coast that are manufactured in China by PC and sold only to Pacific Coast. The plaintiff claimed that Pacific previously purchased its breakers from Connecticut, but stopped purchasing circuit breakers from plaintiff and began selling circuit breakers that look “identical in appearance to the ZINSCO circuit breakers.” We previously blogged about the case here.

The court granted this motion to dismiss finding a lack of personal jurisdiction because neither of the California defendants had sufficient contact with Indiana. Connecticut had argued that there were sufficient contacts with Indiana because Pacific Coast had sold 648 circuit breakers to Indiana residents over the last five years. However, the court could not distinguish whether these Indiana sales were of the allegedly infringing product or of the authentic product. At most, the court believe only $3,780 worth of sales were allegedly infringing products, which the court concluded was not substantial enough to create personal jurisdiction.

Practice Tip: The court also rejected Connecticut’s argument for personal jurisdiction because Pacific committed intentional torts of trademark infringement, trade dress infringement, unfair competition, forgery, and counterfeiting which were directed into Indiana.

March 12, 2012

Organic Seed Growers’ Patent Infringement Suit Against Monsanto Has Been Dismissed For Lack of Jurisdiction

By Overhauser Law Offices, LLC

New York, NY – The Southern District of New York has dismissed an innovative patent infringement lawsuit brought by a group of organic farmers against agriculture giant Monsanto Company for lack of jurisdiction. 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 because there was no current case or controversy.

We previously blogged about the case here. 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. The plaintiffs are farmers who do not want their organic seeds contaminated by the transgenic or genetically modified seeds that are produced and patented by Monsanto. They feared contamination occurs when organic seeds come into contact with genetic material from transgenic seeds through natural pollination processes, such as the wind blowing transgenic pollen to a organic farm nearby. The plaintiffs alleged 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 sought a declaratory judgment that all of Monsanto’s transgenic seed patents are invalid as injurious to public health and for numerous other reasons. “

The Organic Seed Farmers have not yet indicated whether they will appeal this decision.

Practice Tip: As the court noted in finding it did not have jurisdiction: “The Declaratory Judgment Act provides, “In a case of actual controversy within its jurisdiction, . . . any court of the United States . . . may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.” 28 U.S.C.§ 2201(a).” A plaintiffs belief that a lawsuit may be threatened, even if somewhat realistic, must typically allege some affirmative facts to support the threat in order for the court to find an actual case or controversy exists.