New Decisions

May 3, 2011

Eli Lilly & Co. Wins Court Ruling to Prevent Release of Generic Cymbalta Until Patent Expiration

Indianapolis, Indiana – Patent attorneys for Eli Lilly & Company of Indianapolis successfully blocked the release of generic versions of the anti-depression drug Cymbalta until the expiration of Lilly’s patent for the drug. Last week, Judge Tonya Walton Pratt of the Southern District of Indiana entered an order blocking eight competitor drug companies from releasing their generic versions of Cymbalta until Lilly’s patent expires. Lilly had been involved in this patent infringement lawsuit since 2008. The competitor drugs companies must also agree to notify the Food and Drug Administration (FDA) that they will not seek approval for their generic drugs until Lilly’s patent expires. The patent at issue, Patent No. 5,023,269, which has been issued by the US Patent Office, is due to expire in June 2013, but may be extended.

According to the Indianapolis Business Journal, Lilly reported $2.77 billion in U.S. sales of Cymbalta in 2010. Lilly faces the expiration of several important revenue-generating patents in the next few years, including Cymbalta, Zyprexia, and Humalog.

The case was Eli Lilly & Company v. Wockhardt Limited et al., case number 1:08-cv-1547-TWP-TAB in the Southern District of Indiana before Judge Tanya Walton Pratt

May 2, 2011

Court Refuses to Strike Expert’s Report in Patent Infringement Case

By Overhauser Law Offices, LLC

Indianapolis, Indiana – In a patent infringement case, Judge Jane Magnus-Stinson of the Southern District of Indiana has denied defendants’ request to strike the report of an expert that the plaintiff had attached to a brief. The expert’s report contained a “readily-available summary of the infringement allegations.” The defendants had cited Federal Rule of Civil Procedure 12(f) as grounds to strike the expert’s report. The court in its order, however, noted that the Rule cited only applied to pleadings, not briefs, and therefore, was inapplicable. Furthermore, the court noted that the plaintiff had submitted the report for a limited purpose and “The Court will, therefore, only consider the report for that limited purpose, and only to the extent authorized by Federal Circuit precedent.”

This is a patent infringement case involving industrial wood veneer technology. The patent litigation attorneys of Overhauser Law Offices, the publisher of this site, represent Capital Machine Company in this litigation. The Indiana Intellectual Property Law and News Blog has previously blogged about the case. There are six patents at issue, all of which have been issued by the US Patent Office:

5,562,137 Method and Apparatus for Retaining a Flitch for Cutting

5,694,995 Method and Apparatus for Preparing a Flitch for Cutting

5,701,938 Method and Apparatus for Retaining a Flitch for Cutting

5,819,828 Method and Apparatus for Preparing a Flitch for Cutting

5,678,619 Method and Apparatus for Cutting Veneer from a Tapered Flitch

7,395,843 Method and Apparatus for Retaining a Flitch for Cutting

The Case No. is 1:09-cv-00702-JMS-DML, and the Order is below.
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April 29, 2011

Southern District Court of Indiana Dismisses Trademark Infringement Lawsuit Against California Company for Lack of Personal Jurisdiction

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The Southern District Court of Indiana has dismissed a trademark infringement lawsuit against Haycco LLC, a California limited liability company, finding a lack of personal jurisdiction. Traveler’s Joy, a Delaware Corporation, Haycco had been sued for trademark infringement, unfair competition, and dilution of trademark. Both companies provide a gift registry service that allows wedding guests to make monetary contributions to the bride and groom’s honeymoon. The complaint alleged infringement of US trademark registration nos. 3,560,502 and 3,718,357, which are for stylized logos of the word TRAVELER’S JOY for gift registration services. The plaintiff operates the website www.travelersjoy.com and defendant runs http://joyhoneymoon.com. Traveler’s Joy alleged that the marks were sufficiently confusing to cause economic harm to Traveler’s Joy. Indiana Intellectual Property Blog has previously blogged about this case.

Traveler’s Joy had claimed that Indiana’s Southern District Court should have personal jurisdiction over Haycco because the website operated by Haycco would allow customers in Indiana to complete transactions. The court, however, noted that no Indiana customers had never had any customers from Indiana and had blocked web transactions from Indiana. The court also noted that Haycco had no employees, property, or bank accounts in Indiana and had not directly targeted Indiana in its marketing efforts. The court, therefore, concluded that Haycco does not have the “minimum contacts” necessary to establish personal jurisdiction. The court dismissed the lawsuit with prejudice.

The publisher of this blog represented Haycco, who prevailed in the motion to dismiss.

February 14, 2011

Appeals Court Overturns Southern District Court of Indiana Decision in Centillion v. Qwest Communications

By Overhauser Law Offices, LLC

Washington, D.C. — The Court of Appeals for the Federal Circuit recently overturned a patent infringement decision by the Southern District of Indiana. Attorneys for Centillion Data Systems, of Indianapolis, Indiana, brought a patent infringement lawsuit against Qwest Communications, a Denver, Colorado company. Centillion, which has merged with CTI Group, owns U.S. Patent Number 5,287,270, a system for collecting, processing, and delivering information from a service provider, such as a telephone company. According to Centillion’s patent attorneys, several of Qwest Communication’s billing systems infringe upon Centillion’s patent. Qwest’s systems performed backend tracking automatically, but also allowed customers to download an application to their home computers to track their usage “on-demand.” Patent attorneys for Qwest argue that it did not infringe upon the patent because home users, not Qwest, performed some of the functions of the patented system.

Judge Tinder of the Southern District of Indiana heard the case and granted summary judgment in favor of Qwest. Centillion appealed to the Court of Appeals for the Federal Circuit, which reversed the decision below. The Court of Appeals examined the definition of “use” in § 271(a) of the patent infringement statute and held “that to “use” a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.” The court found that it does not matter that “the user did not have physical control over the relays, the user made them work for their patented purpose, and thus “used” every element of the system by putting every element collectively into service.” The court sent the case back to the district court to resolve the disputed factual issues.

Practice Note: This type of situation is sometimes referred to as joint or divided infringement. In this case, for example, it seemed that Qwest invited its customers to infringe Centillion’s patent. This case illustrates the importance of carefully drafting patent infringement claims when joint infringement may be an issue.

February 9, 2011

U.S. Supreme Court Won’t Hear Cialis Patent Suit Against Indiana’s Eli Lilly

By Overhauser Law Offices, LLC

Washington, D.C. – The United States Supreme Court denied certiorari in an appeal from three Vanderbilt University scientists who claimed that they should share ownership of the patent rights to Cialis. The Cialis patents in question, U.S. Patent numbers 5,859,006 and 6,140,329, were filed by Icos Corporation, which was acquired by Indiana-based Eli Lilly in 2007. According to coverage by the Indianapolis Star, Cialis sales exceeded $400 million in the third quarter of 2010.

The three scientists researched phosphodiesterase enzyme (“PDE5”), the active ingredient in Cialis, and claimed that they were joint inventors of Cialis. The scientists performed initial identification of and research on PDE5. This initial research was funded by Glaxo Inc., which later sold the rights to Icos Corporation. Patent attorneys for the scientists filed a lawsuit in the U.S. District Court of Delaware alleging that the scientists should be added to the patents as joint inventors. The district court, however, granted judgment in favor of Icos. Attorneys for the scientists appealed. The Court of Appeals for the Federal Circuit affirmed and clarified the statutory standard for joint ownership of a patent in their written opinion. The court stated “a group of co-inventors must collaborate and work together to collectively have a definitive and permanent idea of the complete invention.” The court concluded that the scientist had failed to show this. Patent attorneys for the scientists sought review by the U.S. Supreme Court, which has now declined to hear the case.

January 27, 2011

Seventh Circuit Affirms Dismissal of Non-Exclusive Licensee’s Copyright Infringement Suit and Award of Attorney’s Fees

By Overhauser Law Offices, LLC

Chicago, IL – The Seventh Circuit Court of Appeals affirmed the dismissal of a copyright infringement suit. Lawyers for HyperQuest, Inc., of Buffalo Grove, Illinois, filed a suit against N’Site, Inc. and Unitrin Direct Insurance Company alleging copyright infringement of copyrighted software used to process insurance claims. The software, eDoc, had been registered by the US Copyright Office. Although the license agreement used the phrase “exclusive licenses,” the trial court concluded that the specific words in the license granted only a non-exclusive license. Thus, the trial court determined that HyperQuest did not have standing to bring the lawsuit and dismissed the case. The district court also ordered HyperQuest to pay N’Site and Unitrin’s attorney’s fees of $134,958.42 for defending the copyright infringement suit. The plaintiff appealed, but the Court of Appeals, decided that the Copyright Act limits who can sue for infringement of a copyright to “the legal or beneficial owner of an exclusive right under a copyright” and affirmed the district court’s dismissal. The Court of Appeals also affirmed the award of attorney’s fees to N’Site and Unitrin.

Practice Tips: When making a license agreement for the use copyrighted material, attorneys should carefully review whether the terms of the agreement reflect the parties’ intentions. Even if an agreement uses the phrase “exclusive license,” the terms of the agreement must reflect actually exclusivity for the licensee to bring a copyright infringement suit.

Plaintiffs should carefully consider whether to file a Copyright infringement suit. The Copyright Act is one of the few laws that allows a prevailing defendant to collect attorneys fees from the plaintiff if the suit is unsuccessful.

The Court’s Opinion is below.
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January 5, 2011

Hillenbrand, Batesville Casket Company win ban of knockoff coffins from Mexico from the U.S. International Trade Commission

By Overhauser Law Offices, LLC

Batesville, IN – Patent attorneys for Batesville-based Hillenbrand Inc., and its subsidiary Batesville Casket Company, the largest U.S. maker of coffins, have won an order to ban imports of knockoff caskets from Mexico in a patent infringement decision.

The U.S. International Trade Commission (USITC) in Washington said Monday that Ataudes Aguilares, a Mexican company, will be barred from importing caskets with patented memorabilia compartments and ornamental corner pieces. Batesville has patented caskets with memorabilia compartments, which is a drawer where family members can put personal mementos, Batesville said in its complaint. The patented ornamental corner pieces allow funeral directors to easily change the pieces quickly and easily. The four patents for the caskets with memorabilia compartments, U.S. Patent Numbers 5,611,124; 5,727,291; 6,836,936; 6,976,294; and, and the parent for the quick change corner attachment, Number 7,340,810, are registered with the US Patent Office. Batesville has also patented the specialty coffins in Canada and Mexico.
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