New Decisions

March 5, 2012

Northern District of Indiana Consolidates Cases, Discovery in Dispute Between Elkhart RV Manufacturers, Includes Patent and Copyright Infringement Claims

South Bend, IN – The Northern District of Indiana has issued an order consolidating related trade secret, copyright infringement and patent infringement lawsuits a dispute between RV manufacturers, Heartland Recreational Vehicles, LLC of Elkhart, Indiana and Forest River, Inc. of Elkhart, Indiana. This order address five cases currently pending in Northern District of Indiana: 3:08-CV-490-JD-CAN, 3:09-CV-302-JD-CAN, 3:10-CV-011-JD-CAN, 3:10-CV-409-JD-CAN, and 3:11-cv-250-JD-CAN. In addition to Heartland and Forest River, Brian Brady, Catteron Partners and Thor Industries are also named in the suits.
The court found that three of the cases, 3:08-CV-490-JD-CAN, 3:09-CV-302-JD-CAN, and 3:10-CV-409-JD-CAN, involve Heartland’s acquisition of Forest River’s Master List. Since they involve similar questions, the court consolidated these three cases.
The court did not consolidate two of the cases. The court noted that 3:10-CV-011-JD-CAN is a copyright infringement case, where Forest River claims that Heartland infringed its “r.Pod” floor plan. The fifth case, 3:11-cv-250-JD-CAN, is a patent infringement case. In June. Patent lawyers for Heartland Recreational Vehicles, LLC of Elkhart, Indiana filed a patent infringement lawsuit alleging Forest River, Inc. of Elkhart, Indiana infringed Patent No. 7,878,545, Travel trailer having improved turning radius, which has been issued by the US Patent Office.
Indiana Intellectual Property Law and News blogged about the case here: Heartland Recreational Vehicles LLC Sues Forest River Inc. for Patent Infringement of Travel Trailer Turning Radius. The court found that the patent infringement case should not be consolidated because it would likely create confusion and make the litigation more complex.
The court, however, ordered that discovery in all five of the cases be consolidated.

Practice Tip: Under Federal Rule of Civil Procedure 42(a), common questions of law and fact are a prerequisite to the consolidation of cases

February 27, 2012

Audio Products Corporation Sues Monster, Inc. for Trademark Infringement of Speaker Technology

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark attorneys for Audio Products Corporation of Indianapolis, Indiana filed a trademark infringement suit in the Southern District of Indiana alleging Monster, Inc. of Brisbane, California infringed trademark registration no.1.807.139 for the ENERGY Design and 2,777,234 for the mark ENERGY registered with the US Trademark Office.

The complaint states that Audio designs and manufactures speakers, which are sold in major retail outlets. Audio alleges it has used the ENERGY marks in connection with its products since at least 1984. The complaint states that Monster has adopted the marks NERGY and N-ERGY to market speakers. The complaint alleges that NERGY and N-ERGY are confusingly similar to Audio’s ENERGY marks and/or a colorable imitation. The complaint characterizes Monster’s marks as attempts to misrepresent its products. The complaint further states that Monster had filed a trademark application with the US Trademark Office seeking to register the NERGY and N-ERGY. The US Trademark Office rejected the application, stating that it was confusingly similar to Audio’s marks. The complaint makes claims of trademark infringement, false designation of origin, common law trademark infringement. Trademark attorneys are seeking a declaration of infringement, an injunction, the destruction of all products and/or NERGY and N-ERGY marks, actual damages, treble damages, costs and attorney fees.

Practice Tip: The complaint alleges that Monster is selling products in the district to establish personal jurisdiction. No specific sales in Indiana are listed; however, the complaint states that limited jurisdictional discovery is expected to uncover Indiana sales.
Continue reading

February 23, 2012

Southern District of Indiana Grants order over Draper, Inc. Motion to Compel to MechoShade Systems, Inc in Patent Infringement Suit Over Spring Shades

By Overhauser Law Offices, LLC

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 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.
Continue reading

February 22, 2012

Chief Judge Young Affirms Magistrate’s Discovery Order Refusing Inspection of Production Facilities in Patent Infringement Case

By Overhauser Law Offices, LLC

Evansville, IN – Chief Judge Richard L. Young has affirmed Magistrate Judge William G. Hussmann‘s discovery ruling that denied a request to inspect production facilities by Intertape Polymer Corp. of Bradenton, Florida, in a patent infringement lawsuit case. In May 2010, patent attorneys for Berry Plastics Corporation of Evansville, Indiana filed a patent infringement lawsuit in the Southern District of Indiana alleged that Intertape infringed patent no.7,476,416, Process for preparing adhesive using planetary extruder, which has been issued by the US Patent Office.

The patented technology is described as “a manufacturing process for preparing an adhesive using specifically modified planetary roller extruder.” Intertape had filed a motion to compel inspection of Berry’s production facilities, to observe the facilities in use and to perform tests on the goods produced during the inspection. Berry objected, and the issue was put before Magistrate Hussmann. The Magistrate denied Intertape’s request, finding that Intertape could use less intrusive methods to uncover the information it was seeking. Specifically, the Magistrate suggested that Intertape depose a Berry representative and pointed to video and photographs that Intertape already had.

Intertape filed objections to the Magistrate’s ruling, but Chief Judge Young affirmed, concluding “The Magistrate Judge balanced the interest of both parties, and came up with a fair and logical resolution for obtaining the information Intertape seeks.”

Practice Tip: This ruling addresses a discovery dispute. Pursuant to Federal Rule of Civil Procedure 37, a party must make a good faith attempt to resolve a discovery dispute before seeking a court order to compel.

February 16, 2012

Southern District Allows CleanTech to Amend Complaint to Add Patent to Ethanol Patent Litigation

By Overhauser Law Offices, LLC

Indianapolis, IN –Senior Judge Larry J. McKinney of the Southern District of Indiana has allowed an additional patent to be added to a complex patent infringement suit over Ethanol byproducts. The plaintiff in this case, GS CleanTech Corporation of New York, New York had requested to amend its complaint to add infringement claim regarding patent no. 8,008,516, which has been issued by the US Patent Office, to the lawsuit. As orgininally filed, CleanTech had filed a patent infringement lawsuit alleging that twenty-two defendants had infringed patent no. 7,601,858, Method of processing ethanol byproducts and related subsystemsTITLE.

The court describes the ‘516 patent as a continuation of the ‘858 patent and directed to the same technology. The ‘516 patent was issued by the US Patent Office on August 30, 2011. Court found that Cleantech’s motion to amend did not involve undue delay, bad faith or a dilatory motive. The court found that adding the ‘516 patent “serves the goal of furthering the efficient adjudication of the case because the ‘516 and ‘858 patents are directed to similar technology and involve similar claim terms.” Three defendants objected to the amendment of the complaint, however, the court did not find any of the objections sufficient to prevent the amendment of the complaint.

As we blogged in October 2011, Judge McKinney has already held a Markman hearing: Indiana Court issues Markman Ruling in GS Cleantech v. Big River for Ethanol Processing Patents.

Practice Tip: The litigation over the ‘858 patent has been pending for several years and involves many parties. This is a very complex case from a procedural standpoint. While the Markman ruling has already been issued, the court’s order pointed out that the discovery process has not been started.
Continue reading

February 6, 2012

U.S. Supreme Court Issues Copyright Opinion in Golan v. Holder, Protecting Foreign Copyrights in the United States

By Overhauser Law Offices, LLC

Washington, DC – The U.S. Supreme Court has affirmed the constitutionality of the Uruguay Round Agreements regarding copyright protection for foreign parties. In 1994, Congress enacted Uruguay Round Agreements Act, which implemented negotiations in the World Trade Organization’s Marrakech Agreement. The law in question restored foreign copyrighted works that had previously been in the public domain back to the private domain and granted U.S. copyright protection for those works. Copyright attorneys for Golan and a group of musicians who had used foreign works while the works were in the public domain had filed this lawsuit against United States Attorney General Eric Holder, arguing that the Act violated the U.S. Constitution’s Copyright Clause and violated the First Amendment Rights of those who had free access to the works that were restored to private domain.

The Supreme Court rejected these challenges and affirmed the constitutionality of the Act. The Court’s opinion emphasized that the Act brought the United States’ law into harmony with that of other nations. The SCOTUSblog has links to all the parties’ and amicus briefs as well comprehensive coverage of this case.

The Court’s opinion affirmed the Tenth Circuit Court of Appeals decision and the decision of Judge Babcock of the United States District Court of Colorado.

Practice Tip: The U.S. Supreme Court has a long trend of strenuously protecting the rights of intellectual property owners. This case is yet another example.
Continue reading

February 1, 2012

Southern District Dismisses AirFX’s Patent Infringement Suit Against Custom Cycle Control Systems Over Motorcycle Suspension

By Overhauser Law Offices, LLC

Indianapolis, IN – The Southern District of Indiana has dismissed a patent infringement lawsuit, finding that the complaint failed to give fair notice of the patent infringement claim. Patent attorneys for AirFX, LLC of Indianapolis, Indiana had filed a lawsuit against Custom Cycle Control Systems, Inc. of Las Vegas, Nevada, alleging Custom had infringed patent no. 7,559,396 Motorcycle air suspension System.

AirFX’s complaint alleged that AirFX received a defective product made by Custom Cycle Control Systems from a customer, who believed he had purchased a genuine AirFX product that utilized the patented technology. AirFX claims that Custom Cycle has been manufacturing and selling products that infringe its patent and that the inferior products of Custom Cycle have damaged the reputation of AirFX. Patent attorneys filed an amended complaint in September.

In this entry by Chief Judge Richard L. Young, the court noted several “deficiencies that concern the court” in the amended complaint. The court pointed out that the Plaintiff failed to identify the means or theory of infringement and simply alleged the defendant infringed the patent. Further, the complaint included a period before the patent was assigned to AirFX. Finally, the court noted that the Plaintiff’s patent attorney failed to attach a copy of the patent to complaint. The Plaintiff did attach a copy of a patent, however, it was not the patent at issue in this case. In sum, the court found the complaint failed to give the defendants sufficient notice of the claims against it. The court gave AirFX only 15 days to file a second amended complaint.

Practice Tip: As we blogged about last June, AirFX filed this patent infringement case at the same time as a second patent infringement case against J.D. Braun and other out-of-state defendants. The patent infringement case against J.D. Braun was dismissed in November for lack of personal jurisdiction. See our blog on the dismissal. Unless AirFX is able to amend their complaint sufficiently within the short 15 day deadline, AirFX’s patent infringement attorneys will have struck out in the Southern District.
Continue reading

January 30, 2012

Trademark Trial and Appeal Board Issues Opinion for Rolex in Trademark Dispute Suit Over Dilution

By Overhauser Law Offices, LLC

Alexandria, VA – The Trademark Trial and Appeal Board of the US Trademark Office has reached a decision regarding the opposition of trademark registration filed by Rolex Watch U.S.A., Inc. of New York, New York against AFP Imaging Corporation of Elmsford, New York on trademark serial no. 77/492,131 for the mark ROLL-X registered with the US Trademark Office.

In 2008, AFP filed a trademark application with the US Trademark Office for the mark ROLL-X, with the product category of “x-ray tables for medical and dental use.” Rolex Watch filed an opposition to that registration, arguing that there was a likelihood of confusion between AFP’s products and the Rolex trademark that Rolex has used for many years and that the Rolex marks would likely be diluted by tarnishing or blurring of the marks. The opinion notes that Rolex’s trademarks state that their products are “watches, clocks, parts of watches and clocks, and their cases.” After considering all the statutory factors, the Board determined that Rolex had not demonstrated that AFP’s proposed trademark registration would result in dilution of Rolex’s trademarks.

Practice Tip: In considering whether a trademark application dilutes a prior mark by blurring, there are six factors to consider pursuant 15 U.S.C. § 1125(c)(2)(B)(i-vi). These are: the degree of similarity between the two marks, the degree of distinctness, the extent to which the owner of the famous mark is engaging in exclusive use, the degree of recognition of the famous mark, intent to create association with the famous mark, and finally, actual association with the famous mark.
Continue reading

January 19, 2012

Appeal Court Grants Decision for Epocal, Inc. in Patent Infringement Suit Over Point of Care Blood Testing.

By Overhauser Law Offices, LLC

Washington, D.C. – The Court of Appeals for the Federal Circuit has affirmed the dismissal of a patent infringement case. Patent attorneys for Abbott Point of Care of Princeton, New Jersey had filed a patent infringement lawsuit in the Northern District of Alabama alleging that Abbott should have legal title to patent no. 6,845,327, Point-of-care in-vitro blood analysis system, and 6,896,778, Electrode module which has been issued by the US Patent Office. The patents are owned by Epocal, Inc. of Ottawa, Ontario, Canada, who was named as defendant in this suit. The Northern District of Alabama had granted Epocal’s motion to dismiss and dismissed Abbott’s complaint. Abbott appealed, and the Court of Appeals for the Federal Circuit affirmed.

According to the opinion, Dr. Imants Lauks was once an employee of Abbott’s predessor company, but went on to start Epocal after he left that employment. Dr. Lauks has assigned all his patent rights to Epocal. Pursuant a series of employment and consulting contracts with Abbott, Dr. Lauks agreed to assign to Abbott all patent rights to any inventions he conceived while employed with Abbott. Abbott claims that the patents in questions cover inventions that were conceived while Dr. Lauks was employed with Abbott and therefore Abbott should have the patent rights. Epocal filed a motion to dismiss for lack of subject matter jurisdiction and failure to state a claim. Epocal claimed the patents in question were conceived after Dr. Lauks’s employment terminated, therefore Abbott has no ownership.

Chief Judge Rader, writing the opinion of the court, agreed with the district court that Abbott did not have any rights to the patents and therefore, lacked standing to bring a patent infringement lawsuit. The opinion noted that the district court had concluded the terms of the most recent agreement did not cover the invention in question. Justice Bryson wrote a dissenting opinion, noting he found that contracts to be ambiguous and would have remanded for further discovery of extrinsic evidence of the intention of the parties in entering the employment contract.

Practice Tip: Employment and consultancy contracts routinely require assignment of intellectual property rights. In this case, the language of the clause in the employment/consultancy agreement changed over time. The court discussed that if the language in the first contract would have been identical to the language in the latest contract, Abbott would have had rights to the patents in question. This illustrates the importance of having an intellectual property attorney draft these clauses carefully.
Continue reading

January 16, 2012

Several 2011 Indiana Patent Infringement Cases Dismissed or Near Settlement

By Overhauser Law Offices, LLC

Indianapolis, IN — Indiana Intellectual Property Law and News has followed up on patent infringement cases filed in the Northern District of Indiana and the Southern District of Indiana by patent attorneys in 2011. The following updates are now available:

As we blogged in March 2011, the U.S. District Court of South Carolina transferred FC Patents v. Ford Meter Box Company of Wabash, Indiana, a patent infringement case involving fire prevention fixtures, to Northern District Court of Indiana. Following the transfer, plaintiff FC Patents voluntarily dismissed the case. This case was assigned to Judge Theresa Springmann and Magistrate Judge Christopher A. Nuechterlein in the Northern District of Indiana, and assigned case no. 3:11-cv-00116-TLS -CAN.

As we blogged in May 2011,Brandon S. Judkins of Indianapolis, Indiana filed a patent infringement suit alleging Polo Ralph Lauren Corporation of New York, New York infringed Patent No. D591,090, FURNITURE ARTICLE, which has been issued by the US Patent Office. In August 2011, Mr. Judkins voluntarily dismissed the case. This case was assigned to Chief Judge Richard L. Young and Magistrate Judge Debra McVicker Lynch in the Southern District of Indiana, and assigned Case No. 1:11-cv-00661-RLY-DML.