Articles Posted in New Litigation

February 10, 2014

Swag Merchandising and Musical Group Devo Sue for Trademark Infringement

Indianapolis, Indiana – An Indiana trademark attorney for Swag Merchandising, Inc. and Devo Inc., both of California, sued in Hamilton Superior Court alleging that Your Fantasy Warehouse, Inc. d/b/a T.V. Store Online and Fred Hajjar, both of Commerce Township, Michigan, infringed Devo’s Trademarks, Registration Nos. 3161662 and 3167516, which have been registered by the U.S. Trademark Office. The case has been removed from Indiana state court to the Southern District of Indiana.

Swag claims that it owns the exclusive right to license the various trademarks, copyrights and individual and collective rights of publicity of the musical group Devo. The group is best known for the song “Whip It,” which hit number 14 on the Billboard chart in 1980. Swag indicates that it licenses the Devo intellectual property to third parties around the globe.

T.V. Store Online is in the business of manufacturing, marketing and distributing apparel and memorabilia featuring classic and current television programming, movies and/or music. T.V. Store Online and Hajjar have been accused of manufacturing, producing, marketing, advertising and/or retailing a product known as “Energy Dome Hats.” Plaintiffs assert that these Energy Dome Hats are commonly associated with Devo but have not been licensed by Plaintiffs to Defendants. Plaintiffs further claim that consumers coming into contact with Defendants’ product would “immediately recognize the same as being associated with, sponsored by and/or endorsed by” the ’80s group.

In the complaint, filed by an Indiana trademark attorney, Plaintiffs assert the following:

• I: Violation of 15 U.S.C. §1125(a) of the Lanham Act
• II: Trademark Infringement – 15 U.S.C. §1114 and Common Law
• III: Counterfeiting
• IV: Dilution – 15 U.S.C. §1125(c) and New York General Business Law §360-1
• V: Common Law Unfair Competition
• VI: Statutory Right of Publicity [NB: under Indiana law]
• VII: Right of Publicity Infringement Under California Civil Code §3344
• VIII: Common Law Right of Publicity
• IX: Conversion [NB: under Indiana law]
• X: Deception [NB: under Indiana law]
• XI: Indiana Crime Victims Act

Plaintiffs ask for an injunction; the surrender of infringing materials; damages, including treble damages; costs and fees. An Indiana intellectual property lawyer for Defendants removed the case to federal court, although he noted that the removal was not a concession that the Southern District of Indiana was the proper venue for the California Plaintiffs or the Michigan Defendants.

Practice Tip:

This is at least the third case filed by Theodore Minch about which we have blogged. In at least two prior cases, LeeWay Media Group, LLC v. Laurence Joachim et al. and Leon Isaac Kennedy v. GoDaddy et al., Mr. Minch has filed in an Indiana court despite none of the parties having any connection to Indiana.

It can be surmised that perhaps the choice of Indiana as a forum might have been driven by an attempt to increase damages. I.C. §§ 35-43-4-3 and 35-43-5-3(a)(6) are criminal statutes, claimed in the complaint in conjunction with an attempt to parlay the accusation into an award for damages, costs and attorneys’ fees. The Indiana Court of Appeals has discussed “theft” and “conversion” as they pertain to takings of intellectual property in several recent cases (see, for example, here and here) and has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property.

February 7, 2014

Licensor of “Tiki Tan” Mark Alleges Infringing Use by Solarium and Solarium Bittersweet

By Overhauser Law Offices, LLC

South Bend, Indiana – An Indiana trademark attorney for Al Reasonover of Elkhart, Indiana sued in the Northern District of Indiana alleging that Solarium LLC of South Bend, Indiana (“Solarium”) and Solarium Bittersweet LLC of Elkhart, Indiana (“Solarium Bittersweet”) committed trademark infringement of “Tiki Tan”, Trademark Reg. No. 2602388, which has been registered by the U.S. Patent and Trademark Office.

In this complaint for trademark infringement and unfair competition, Plaintiff Reasonover states that he operates tanning salons under the Tiki Tan Mark and that he also develops tanning salons operated by others to whom he licenses the use of the Mark for a fee. Among these licensees, claims Plaintiff, is Solarium.

Reasonover asserts that, instead of displaying the Tiki Tan Mark as licensed, Solarium displays a service mark at its website reading “Tiki Tan by Solarium”. Reasonover also claims that, while he and Solarium entered into a licensing agreement that permitted Solarium to use the Mark only within a five mile territory around 4542 Elkhart Road, Elkhart, Indiana, Defendants Solarium and/or Solarium Bittersweet are operating additional tanning salons under the name “Tiki Tan” at 306 N. Bittersweet Road, Mishawaka, Indiana; 1290 E. Ireland Road, South Bend, Indiana and 215 E. University Drive, Granger, Indiana.

Plaintiff indicates that the licensing agreement neither permits Solarium to alter the Mark nor to use the Mark outside of the five mile territory around 4542 Elkhart Road, Elkhart, Indiana. He also claims that Solarium’s modification of the Mark to include its own name in connection with the promotion, sale and distribution of tanning salon services infringes on Plaintiff’s rights in his federally registered trademark, in violation of 15 U.S.C. Sec. 1114. Reasonover further alleges that Defendants’ actions are intended to cause, have caused, and are likely to continue to cause, confusion, mistake, deception among consumers, the public, and the industry as to whether Defendants’ services originate from, are affiliated with, sponsored by or endorsed by Plaintiff.

Finally, Defendants are accused of infringing the Mark intentionally, deliberately and willfully. The complaint, filed by an Indiana trademark lawyer, lists the following counts:

• Count I – Trademark Infringement – Injunctive Relief
• Count II – Trademark Infringement – Damages
• Count III – Common Law Trademark Infringement
• Count IV – Common Law Unfair Competition

Reasonover asks the court for:

• a finding that Defendants have violated 15 U.S.C. Sec. 1114; that Defendants have engaged in trademark infringement and unfair competition under the common law of Indiana; and that such conduct has damaged Plaintiff monetarily and in ways not adequately remedied by monetary damages alone;
• an injunction, preliminarily and permanently restraining Defendants from altering the registered Mark, “Tiki Tan,” in any way including but not limited to including the words “by Solarium” with the Mark; operating tanning salons at 306 N. Bittersweet Road, Mishawaka, Indiana; 1290 E. Ireland Road, South Bend, Indiana; or 215 E. University Drive, Granger, Indiana under the name “Tiki Tan”; engaging in any other activity constituting unfair competition with Plaintiff; and engaging in any other activity constituting trademark infringement or which deceives consumers or the public about the origin of services associated with Plaintiff;
• an order for corrective advertising;
• statutory damages or, alternatively, the disgorgement of all profits realized as a result of Defendants’ wrongful acts and also awarding Plaintiff its actual damages;
• a trebling of damages under 15 U.S.C. Sec. 1117;
• Plaintiff’s costs, attorney fees, investigatory fees, and expenses under 15 U.S.C. Sec. 1117; and
• pre-judgment interest on any monetary award.

Practice Tip: A trademark license may be granted by a licensor to a licensee to permit the licensee to use a trademark in a way that would otherwise infringe upon the licensor’s intellectual property rights. A license to use a trademark typically includes various restrictions. Those restrictions may include, among other things, limits on territory, term and manner of use.

January 30, 2014

Lilly Sues Glenmark Generics for Over Proposed Manufacture and Sale of Generic Version of ALIMTA®

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana patent attorneys for Eli Lilly and Company of Indianapolis, Indiana (“Lilly”) filed a lawsuit in the Southern District of Indiana alleging that Glenmark Generics, Inc., USA of Mahwah, New Jersey (“Glenmark”) infringed Antifolate Combination Therapies, Patent No. 7,772,209, which has been issued by the U.S. Patent Office.

Lilly is engaged in the business of research, development, manufacture and sale of pharmaceutical products worldwide. Glenmark is in the business of distributing, selling, and offering to sell drug products throughout the United States.

ALIMTA®, which is allegedly licensed to Lilly, is a chemotherapy agent used for the treatment of various types of cancer. ALIMTA® is composed of the pharmaceutical chemical pemetrexed disodium. It is indicated, in combination with cisplatin, (a) for the treatment of patients with malignant pleural mesothelioma, or (b) for the initial treatment of locally advanced or metastatic nonsquamous non-small cell lung cancer. ALIMTA® also is indicated as a single agent for the treatment of patients with locally advanced or metastatic nonsquamous non-small cell lung cancer after prior chemotherapy. Additionally, ALIMTA® is indicated for maintenance treatment of patients with locally advanced or metastatic nonsquamous non-small cell lung cancer whose disease has not progressed after four cycles of platinum-based first-line chemotherapy. One or more claims of U.S. Patent No. 7,772,209 (“the ‘209 patent”) cover a method of administering pemetrexed disodium to a patient in need thereof that also involves administration of folic acid and vitamin B12.

This Indiana patent infringement lawsuit arises out of the filing by Defendant Glenmark of an Abbreviated New Drug Application (“ANDA”) with the U.S. Food and Drug Administration (“FDA”) seeking approval to manufacture and sell generic versions of ALIMTA® prior to the expiration of the ‘209 patent. Glenmark filed as a part of ANDA No. 205526 a certification of the type described in Section 505(j)(2)(A)(vii)(IV) of the Food, Drug and Cosmetic Act, 21 U.S.C. § 55(j)(2)(A)(vii)(IV), with respect to the ‘209 patent, asserting that the claims of the ‘209 patent are invalid, unenforceable, and/or not infringed by the manufacture, use, offer for sale, or sale of Glenmark’s ANDA products.

In its complaint, filed by an Indiana patent lawyer, Lilly states that Glenmark intends to engage in the manufacture, use, offer for sale, sale, marketing, distribution, and/or importation of Glenmark’s ANDA Products and the proposed labeling therefor immediately and imminently upon approval of ANDA No. 205526, i.e., prior to the expiration of the ‘209 patent. Lilly asserts that Glenmark’s actions constitute and/or will constitute infringement of the ‘209 patent, active inducement of infringement of the ‘209 patent, and contribution to the infringement by others of the ‘209 patent.

Lilly asks for:

• A judgment that Glenmark has infringed the ‘209 patent and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of the ‘209 patent;
• A judgment ordering that the effective date of any FDA approval for Glenmark to make, use, offer for sale, sell, market, distribute, or import Glenmark’s ANDA Products, or any product the use of which infringes the ‘209 patent, be not earlier than the expiration date of the ‘209 patent, inclusive of any extension(s) and additional period(s) of exclusivity;
• A preliminary and permanent injunction enjoining Glenmark, and all persons acting in concert with Glenmark, from making, using, selling, offering for sale, marketing, distributing, or importing Glenmark’s ANDA Products, or any product the use of which infringes the ‘209 patent, or the inducement of or contribution to any of the foregoing, prior to the expiration date of the ‘209 patent, inclusive of any extension(s) and additional period(s) of exclusivity;
• A judgment declaring that making, using, selling, offering for sale, marketing, distributing, or importing of Glenmark’s ANDA Products, or any product the use of which infringes the ‘209 patent, prior to the expiration date of the ‘209 patent, infringes, will infringe, will actively induce infringement of, and/or will contribute to the infringement by others of the ‘209 patent;
• A declaration that this is an exceptional case and an award of attorneys’ fees pursuant to 35 U.S.C. § 285; and
• An award of Lilly’s costs and expenses in this action.

Practice Tip: The FDA’s ANDA process for generic drugs has been abbreviated such that, in general, the generic drug seeking approval does not require pre-clinical (animal and in vitro) testing. Instead, the process focuses on establishing that the product is bioequivalent to the “innovator” drug that has already undergone the full approval process. The statute that created the abbreviated process, however, had also created some interesting issues with respect to the period of exclusivity. For a look at some of these issues, see here.

January 29, 2014

Sixteen Doe Defendants Alleged to Have Infringed “Charlie Countryman”

By Overhauser Law Offices, LLC

South Bend, Indiana – Michigan copyright attorney Paul Nicoletti, on behalf of Countryman Nevada, LLC (“Countryman”), sued in the Northern District of Indiana alleging that 16 unidentified John Does infringed the copyright of the motion picture “Charlie Countryman,” which has been registered by the U.S. Copyright Office. The movie stars Shia LaBeouf, Evan Rachel Wood and Mads Mikkelsen. It was directed by Fredrick Bond.

Countryman alleges that the infringing transfer and copying of this movie, which was released on DVD in January 2014, was accomplished by Defendants using BitTorrent, a peer-to-peer file-sharing protocol. Plaintiff states that the BitTorrent protocol makes even small computers with low bandwidth capable of participating in large data transfers for copying large files such as movies.

In this Indiana lawsuit, the Doe Defendants are accused of deliberately participating in a peer-to-peer “swarm” and illegally reproducing and/or distributing portions of the movie “Countryman” in digital form with other Defendants. Countryman indicates in its complaint that it used geolocation technology to determine that the Doe Defendants were located in Indiana.

The complaint lists a single count: copyright infringement. The copyright lawyer for Plaintiff Countryman asks the court for permanent injunctions prohibiting infringement of Plaintiff’s movie by all Doe Defendants; the destruction of all copies of infringing works in any Defendant’s control; judgment that Defendants have willfully infringed Plaintiff’s copyrighted work; judgment that Defendants have otherwise injured the business reputation and business of Plaintiffs; actual damages or statutory damages; an order impounding all infringing copies of Plaintiff’s movie; attorneys’ fees and litigation expenses.

Practice Tip: This is at least the second movie starring Shia LaBeouf which is the subject of copyright litigation in Indiana. In October 2013, a similar Indiana lawsuit regarding “The Company You Keep,” also starring LaBeouf, was filed in the Southern District of Indiana. That lawsuit was also filed by copyright lawyer Nicoletti. In addition to these lawsuits filed by the owners of the copyrighted movies, LaBeouf seems to have intellectual property concerns of his own, most recently having been served with another cease and desist letter for posts to his Twitter feed.

January 27, 2014

Eli Lilly Sues Par Pharmaceutical Asserting Patent Infringement of Effient®

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana patent attorney sued in the Southern District of Indiana on behalf of Eli Lilly and Company of Indianapolis, Indiana; Daiichi Sankyo Co., Ltd. of Tokyo, Japan (“Daiichi Sankyo”); Daiichi Sankyo, Inc. of Parsippany, New Jersey (“DSI”); and Ube Industries, Ltd. of Yamaguchi, Japan alleging that Par Pharmaceutical Companies, Inc. (“Par Pharmaceutical Companies”) and Par Pharmaceutical, Inc. (“Par”), both of Woodcliff Lake, New Jersey, (collectively “Par Pharmaceutical”) infringed Medicinal Compositions Containing Aspirin, Patent No. 8,404,703 (the “‘703 patent”) and Method of Treatment and Coadministration of Aspirin and Prasugrel, Patent No. 8,569,325 (the “‘325 patent”), which have been issued by the U.S. Patent Office.

This is a civil action for patent infringement. It arises out of the filing by Defendant Par of an Abbreviated New Drug Application (“ANDA”) with the United States Food and Drug Administration (“FDA”) seeking approval to manufacture and sell generic versions of two of Lilly’s pharmaceutical products, Effient® 5mg and Effient® 10mg tablets, prior to the expiration of Daiichi Sankyo’s and Ube’s U.S. patents, which purportedly cover methods of using Effient® products. Lilly asserts that it holds an exclusive license to these products. DSI currently co-promotes Effient® products in the United States with Lilly.

Effient® products were approved by the FDA for the reduction of thrombotic cardiovascular events in certain patients with acute coronary syndrome (ACS) who are to be managed with percutaneous coronary intervention (PCI, or angioplasty). The instructions accompanying Effient® products state that patients taking Effient® products should also take aspirin. The use of Effient® products in combination with aspirin for the reduction of thrombotic cardiovascular events in patients with ACS who are to be managed with PCI is covered by the claims of the ‘703 and ‘325 patents.

Par has submitted an Abbreviated New Drug Application (the “Par ANDA”) to the FDA pursuant to 21 U.S.C. § 355(j), seeking approval to market a generic version of Lilly’s product for oral administration (the “Par Products”) in the United States.

Plaintiffs assert that Par will knowingly include with the Par Products instructions for use that substantially copy the instructions for Effient® products, including instructions for administering the Par Products with aspirin as claimed in the ‘703 and ‘325 patents. Moreover, Plaintiffs contend that Par knows that the instructions that will accompany the Par Products will induce and/or contribute to others using the Par Products in the manner set forth in the instructions. Plaintiffs also contend that Par specifically intends that health care providers, and/or patients will use the Par Products in accordance with the instructions provided by Par to directly infringe one or more claims of the ‘703 and ‘325 patents. Par therefore will actively induce and/or contribute to infringement of the ‘703 and ‘325 patents, state Plaintiffs.

In the complaint, the Indiana patent lawyer for Plaintiffs listed the following counts:

• Count I: Infringement of U.S. Patent No. 8,404,703
• Count II: Declaratory Judgment of Infringement of U.S. Patent No. 8,404,703
• Count III: Infringement of U.S. Patent No. 8,569,325
• Count IV: Declaratory Judgment of Infringement of U.S. Patent No. 8,569,325

Plaintiffs ask the court for judgment:

A. That Defendants, either individually or collectively, have infringed or will infringe, after the Par ANDA is approved, one or more claims of the ‘703 patent;
B. That Defendants, either individually or collectively, have infringed or will infringe, after the Par ANDA is approved, one or more claims of the ‘325 patent;
C. That, pursuant to 35 U.S.C. § 271(e)(4)(B), Par and Par Pharmaceutical Companies be permanently enjoined from making, using, selling or offering to sell either or both of the Par Products within the United States, or importing either or both of the Par Products into the United States prior to the expiration of the ‘703 and ‘325 patents;
D. That, pursuant to 35 U.S.C. § 271(e)(4)(A), the effective date of any approval of the Par ANDA under § 505(j) of the Federal Food, Drug and Cosmetic Act (21 U.S.C. § 355(j)) shall not be earlier than the latest of the expiration dates of the ‘703 and ‘325 patents, including any extensions;
E. A judgment declaring that the ‘703 patent remains valid and enforceable;
F. A judgment declaring that the ‘325 patent remains valid and enforceable;
G. If either Par or Par Pharmaceutical Companies commercially makes, uses, sells or offers to sell either or both of the Par Products within the United States, or imports either or both of the Par Products into the United States, prior to the expiration of either of the ‘703 and ‘325 patents, including any extensions, that Plaintiffs will be awarded monetary damages for those infringing acts to the fullest extent allowed by law and be awarded prejudgment interest based on those monetary damages;
H. That this case be deemed exceptional under 35 U.S.C. § 285; and
I. That Plaintiffs be awarded reasonable attorney’s fees, costs and expenses.

Practice Tip: Lilly is not an infrequent litigant. This may be in part due to the fact that the company is facing a significant patent cliff. Its patent for a former top product, the antipsychotic Zyprexa – which once generated $5 billion in annual revenues – expired in 2011. Its top-selling drug of 2013, the antidepressant Cymbalta, lost patent protection last year. The patent on blockbuster Evista, a drug for breast cancer and osteoporosis, will expire this March.

January 13, 2014

Contour Hardening Sues Vanair for Patent and Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana patent and trademark attorneys for Contour Hardening, Inc. of Indianapolis, Indiana sued seeking injunctive and monetary relief in the Southern District of Indiana. Contour Hardening alleges that Vanair Manufacturing, Inc. of Michigan City, Indiana has infringed the trademark “REAL POWER”, Trademark Registration No. 3,124,014, as well as Contour Hardening’s patented “Vehicle Mounted Electrical Generator System.” The invention is covered by Patent Nos. 6,979,913 and 7,057,303, which have been issued by the U.S. Patent Office.

In this lawsuit, Plaintiff Contour Hardening contends that Defendant Vanair has violated, and continues to violate, inter alia, the patent laws of the United States, 35 U.S.C. §§271 and 281- 285, as well as the Federal Trademark Act by infringing Contour Hardening’s two patents, U.S. Patent Nos. 6,979,913 and 7,057,303 (collectively, the “Contour Patents”), and infringing Contour Hardening’s REAL POWER trademark by using Vanair’s allegedly similar ROAD POWER trademark.

Contour Hardening is a developer and provider of Power Take-Off (“PTO”) driven generator systems for vehicles ranging from Class 2 pickup trucks (e.g., full-size trucks) to larger Class 8 Heavy Duty trucks (e.g., tractor trailer trucks). It states that these systems have been utilized in municipal, fire-rescue, construction, healthcare, mining, farming and other applications.

Plaintiff asserts that, sometime around 2007, Vanair first began offering vehicle-mounted AC-generator systems that infringe one or more of the claims of the Contour Patents. Vanair is accused of having received actual knowledge that it was infringing the Contour Patents at least as early December 17, 2012, when an Indiana patent and trademark lawyer for Contour Hardening sent to Vanair a letter providing it with actual notice of the Contour Patents and expressing “concerns regarding possible infringement.” The letter requested that Vanair “evaluate [its] activities relative to these two (2) patents and provide a written response as to when any infringing activities will cease.” According to Contour Hardening, Vanair did not respond this letter.

In addition to its allegations of patent infringement, Contour Hardening asserts trademark infringement. Contour Hardening indicates that it is the owner of United States Registration No. 3,124,014 for the trademark REAL POWER for providing AC generators. It claims that, since at least 2004 and continuously to date, it has adopted and used in interstate commerce the trademark REAL POWER in connection with its PTO-driven AC-generator systems and related operations and that the trademark has become distinctive to consumers in the vehicle-mounted AC-generator industry.

Contour Hardening contends that Vanair offers the allegedly infringing products under the trademark ROAD POWER with knowledge of Contour Hardening’s REAL POWER trademark. It further asserts that the nameplates, labels or other graphic displays that Vanair uses are confusingly similar to Contour Hardening’s trademark and that Vanair’s use of the ROAD POWER trademark is likely to cause confusion or mistake or deception of consumers as to the source of origin of Vanair’s goods or services. Contour Hardening further claims that Vanair’s activities have been willful, deliberate and intentional, have caused a likelihood of confusion, and have been done with the intent to trade upon Contour Hardening’s goodwill in the trademark REAL POWER.

In the complaint, Indiana patent and trademark attorneys assert the following on Contour Hardening’s behalf:

• Count I – Infringement of U.S. Patent 6,979,913
• Count II – Infringement of U.S. Patent 7,057,303
• Count III – Trademark Infringement
• Count IV – False Designation of Origin

Contour Hardening asks the court for a judgment of infringement of the Contour Patents; a judgment of infringement of Contour Hardening’s REAL POWER trademark; a permanent injunction prohibiting further infringement; an order that all infringing devices be delivered and destroyed; damages, including treble damages; costs and expenses; an order declaring that the case is exceptional and an award of attorney’s fees pursuant to such a finding.

Practice Tip: A 2006 opinion from the Federal Circuit, AERO Products International, Inc., et al. v. INTEX Recreation Corp., et al., addressed double recovery in cases where both patent infringement and trademark infringement are found. The Federal Circuit held that the trial court’s award of both $2.95 million for patent infringement – which was doubled to $5.9 million pursuant to a finding of willful patent infringement – and $1 million for trademark infringement was impermissible as a double recovery for the “same injury.” The court vacated the $1 million award for trademark damages stating, “even though damages are claimed based upon separate statutes or causes of action, when the claims arise out of the same set of operative facts, as is the case here, there may be only one recovery.”

January 6, 2014

Joe Hand Promotions Sues for Unlawful Interception of Championship Fight

By Overhauser Law Offices, LLC

South Bend, Indiana – Joe Hand Promotions, Inc. of Feasterville, Pennsylvania, via a Kentucky intellectual property lawyer, has sued in the Northern District of Indiana alleging that Lee H. Holmes, individually and d/b/a Homer’s Restaurant, both of Peru, Indiana, unlawfully intercepted and televised the Ultimate Fighting Championship 141:Brock Lesnar v. Alistar Overeem (“the Program”).

Joe Hand Promotions, a commercial distributor of sporting events, states that it was granted exclusive rights to distribute via closed-circuit telecast the Ultimate Fighting Championship (“UFC”) fight between Brock Lesnar and Alistar Overeem, which Joe Hand Promotions asserts was broadcast nationwide on December 30, 2011.

In the complaint against Holmes and Homer’s Restaurant, Joe Hand Promotions has alleged such wrongful acts as interception, reception, publication, divulgence, display, exhibition, and “tortuously” [sic] converting the Program.

In addition to naming the restaurant, which was not listed as a separate legal entity, Joe Hand Promotions has also sued Holmes as an individual, claiming that he had the right and ability to supervise the activities of Homer’s Restaurant. Joe Hand Promotions asserts that those activities included the unlawful interception of its UFC Program.

Holmes and Homer’s Restaurant have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553. The complaint, filed by a Kentucky intellectual property attorney, also lists a count of conversion. Joe Hand Promotions seeks statutory damages of $110,000 for each willful violation of 47 U.S.C. § 605; $60,000 for each willful violation of 47 U.S.C. § 553; compensatory and punitive damages on the claim of conversion; costs, including costs incurred for the service of process and the investigation of potential wrongdoing; and attorney’s fees.

Practice Tip #1: While on the surface this appears to be a copyright case, an allegation of interception under 47 U.S.C. § 605 is a different cause of action from copyright infringement. However, a suit alleging interception does not preclude an additional lawsuit asserting different causes of action. For example, the copyright holder can also sue for copyright infringement, which could increase damages by as much as $150,000.

Practice Tip #2: Most satellite signal providers employ encryption to limit receiption to certain groups, such as paying subscribers. However, not all licenses grant equal rights. for example, if an individual as a “residential” agreement with a satellite provider, that agreement does not also give that individual the right to display the performance in a public setting like a bar or restaurant..

December 31, 2013

Vehicle Service Group Sues Mohawk Resources for Patent Infringement

By Overhauser Law Offices, LLC

New Albany, Indiana – Vehicle Services Group, LLC of Madison, Indiana(“VSG”), via an Indiana patent lawyer, has sued Mohawk Resources, LTD of Amsterdam, New York(“Mohawk”) alleging patent infringement of VSG’s “Electronically Controlled Vehicle Lift and Vehicle Service System,” Patent No. 6,983,196 (the “‘196 patent”), which has been registered by the U.S. Patent Office.

VSG is a designer and manufacturer of vehicle lifts, such as those one might see lifting a car in an auto mechanic’s shop. VSG’s ‘196 patent relates to a vehicle lift that has an electronic control which is functional to control the raising and lowering of the lift and to enable the display of a variety of information.

Mohawk also makes vehicle lifts, and is a direct competitor of VSG in the marketplace. The lifts that are at issue in this case (the “Accused Lifts”) include various Mohawk products. The complaint cites infringement by the Mobile Column Lifts identified as model numbers MP-18, MP-24 and MP-30. Those particular lifts purportedly incorporate the technology covered by VSG’s ‘196 patent, and thus infringe that patent.

In addition to levying allegations of patent infringement, VSG also claims that Mohawk is actively and knowingly inducing infringement of at least claim 145 of the ‘196 patent by instructing third parties, such as customers, to network together the Accused Lifts. Finally, Mohawk is accused of knowingly contributing to the infringement by others of the ‘196 patent by making, using, offering for sale, and selling the Accused Lifts.

An Indiana patent attorney alleged the following on behalf of VSG in a civil action for patent infringement:

• Count I: Patent Infringement
• Count II: Inducing Infringement
• Count III: Contributory Infringement

VSG asserts that Mohawk’s acts of infringement of the ‘196 patent have caused and will continue to cause VSG substantial and irreparable injury. It also contends that the infringing activities have been willful and asks the court for judgment as follows:

A. That Mohawk be found to infringe the ‘196 patent;
B. That Mohawk, its officers, agents, servants, employees and attorneys, and all persons in active concert with them, or any of them, be preliminarily and permanently enjoined from infringing the ‘196 patent;
C. That VSG be awarded damages adequate to compensate for Mohawk’s infringement of the ‘196 patent;
D. That the Court deem this case to be exceptional; and
E. That VSG be awarded its attorneys’ fees, expenses, and costs of this action.

Practice Tip: This is at least the second complaint filed by VSG in the Southern District of Indiana and assigned to Judge Sarah Evans Barker. A previous lawsuit, Vehicle Service Group, LLC v. Stertil-Koni USA, Inc., makes similar allegations of patent infringement.

December 23, 2013

CleanTech Adds Three Additional Defendants to Multidistrict Litigation

By Overhauser Law Offices, LLC

Indianapolis, Indiana – GS CleanTech Corporation of Alpharetta, Georgia (“CleanTech”) has filed complaints against three new Defendants in its ongoing multidistrict litigation in which it asserts infringement of its patented corn-oil-extraction technology. Patent lawyers for CleanTech sued Homeland Energy Solutions, LLC of Lawler, Iowa (“Homeland”) in the Northern District of Iowa. Pacific Ethanol, Inc. of Sacramento, California (“Pacific”) was sued in the Eastern District of California. Guardian Energy, LLC of Janesville, Minnesota (“Guardian”) was sued in the District of Minnesota. At issue in this litigation are the following: Patent Nos. 7,601,858, Method of Processing Ethanol Byproducts and Related Subsystems; 8,008,516, Method of Processing Ethanol Byproducts and Related Subsystems; 8,008,517, Method of Recovering Oil from Thin Stillage; 8,283,484, Method of Processing Ethanol Byproducts and Related Subsystems; and 8,168,037, Method and Systems for Enhancing Oil Recovery from Ethanol Production Byproducts, which have been issued by the U.S. Patent Office. The cases were transferred to Southern District of Indiana as part of Multidistrict Litigation No. 2181.

This Multidistrict Litigation (“MDL”) began with an assertion of patent infringement by CleanTech of Patent No. 7,601,858 (the “‘858 patent”), which was issued on October 13, 2009. CleanTech sued numerous Defendants alleging infringement of that patent shortly after its issuance. The Defendants accused of patent infringement in prior litigation include: Big River Resources Galva, LLC; Big River Resources West Burlington, LLC; Cardinal Ethanol, LLC; ICM, Inc.; LincolnLand Agri-Energy, LLC; David J. Vander Griend; Iroquois Bio-Energy Co., LLC; Al-Corn Clean Fuel; Blue Flint Ethanol, LLC; ACE Ethanol, LLC; Lincolnway Energy, LLC; United Wisconsin Grain Producers, LLC; Bushmills Ethanol, Inc.; Chippewa Valley Ethanol Co.; Heartland Corn Products; Adkins Energy, LLC; Little Sioux Corn Processors, LLLP; Little Sioux Corn Processors, LLLP and Western New York Energy, LLC.

Since September 29, 2011, when the court overseeing the MDL issued its order on claim construction with respect to the disputed claims of the ‘858 patent, patentee CleanTech has further asserted infringement by some of the allegedly infringing Defendants of four additional patents in the ‘858 patent family: U.S. Patent Nos. 8,008,516 (the “‘516 patent”), 8,008,517 (the “‘517 patent”), 8,283,484 (the “‘484 patent”) and, the newest addition, 8,168,037 (“the ‘037 patent”), (the ‘858, ‘516, ‘517, ‘484, ‘037 patents are, collectively, the “‘858 patent family” or “the patents-in-suit”).

CleanTech claims that the method claimed increases the efficiency and economy of recovering corn oil. CleanTech’s patented methods recover corn oil by evaporating, concentrating and mechanically separating thin stillage (“stillage”), a byproduct of ethanol produced from corn, into two components: corn oil and a post-recovery syrup (“syrup”) with most of its corn oil removed.

In one embodiment, the patented method comprises initially processing the whole stillage by mechanically separating (such as by using a centrifugal decanter) the whole stillage into distillers wet grains and thin stillage, and then introducing the thin stillage into an evaporator to form a concentrated syrup byproduct. Prior to recombining the then-concentrated syrup with the distillers wet grains, the syrup is introduced into a second mechanical separator, such as a second centrifuge, which is different from the centrifuge that mechanically separated the whole stillage into distillers wet grains and thin stillage. This second centrifuge separates corn oil from the syrup thereby allowing for the recovery of usable corn oil. The syrup that exits the centrifuge is then recombined with the distillers wet grain and dried in a dryer. The corn oil that is extracted from the syrup can be used for various purposes such as feedstock for producing biodiesel.

Patent attorneys for CleanTech have made different claims against the three new Defendants. All of the patents-in-suit – the ‘858 patent, the ‘516 patent, the ‘517 patent, the ‘484 patent, and the ‘037 patent – have purportedly been infringed by Homeland. Guardian has been accused of having infringed four of the five patents-in-suit: the ‘858 patent, the ‘516 patent, the ‘517 patent and the ‘484 patent. One claim of patent infringement, regarding the ‘858 patent, has been asserted against Pacific.

Practice Tip: Multi-district litigation affords consistency and judicial economy, as well as allowing plaintiffs and defendants to concentrate their efforts in one forum. However, lawsuits that are not settled before trial must later be remanded to the transferring court and to a judge who has had little opportunity to become familiar with the issues.

December 20, 2013

Indiana University Sues AngioDynamics for Patent Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Patent attorneys for Indiana University Research and Technology Corporation (“IURTC”) of Indianapolis, Indiana sued in the Southern District of Indiana alleging that AngioDynamics, Inc. of Latham, New York infringed Patent No. 6,719,717, which has been registered with the United States Patent and Trademark Office (“USPTO”). This Indiana patent has a publication date of April 13, 2004.

IURTC is a not-for-profit corporation that fosters collaboration between Indiana University faculty and researchers and private industry through the licensing of technology. IURTC states that its goals include acting as a resource for researchers, for industry and for Indiana.

AngioDynamics was founded in 1988. It seeks to provide benefits to patients through the designing, developing, manufacturing and marketing of innovative therapeutic devices used by interventionalists and surgeons for the minimally invasive treatment of peripheral vascular disease, tumor therapy and other, non-vascular disease.

IURTC, via its patent attorneys, is suing AngioDynamics for patent infringement under 35 U.S.C. § 101, et seq. The patent at issue is Patent No. 6,719,717 (the “‘717 Patent”), which relates to thrombectomy treatment systems and methods. IURTC states that, by assignment, it is the current owner of all rights, title, and interests in the ‘717 Patent, including the right to enforce the patent.

The products accused of infringing IURTC’s patent (the “Accused Products”) are allegedly manufactured by Vortex Medical, Inc., a wholly owned subsidiary of AngioDynamics. IURTC contends that AngioDynamics has made and/or currently imports, sells, offers to sell, and/or uses the Accused Products. It also asserts that AngioDynamics provides instructions and directions on how to use the Accused Products to doctors, and other medical personnel.

IURTC further claims that AngioDynamics has known of the ‘717 Patent since at least the date of its issuance by the USPTO. It contends that, as a result, AngioDynamics’ infringement of the ‘717 Patent has been and continues to be willful and deliberate.

Patent lawyers for IURTC filed a complaint alleging a single count of patent infringement. The complaint contends that AngioDynamics is currently infringing and has infringed the ‘717 Patent directly by, without authority, having made and/or currently importing into the United States, and/or using, selling, and/or offering for sale the Accused Products, which embody the inventions claimed in the ‘717 Patent. It also claims that AngioDynamics is actively, intentionally, and/or knowingly inducing infringement of the ‘717 Patent by others, including doctors,and other medical professionals, and is thus liable to IURTC pursuant to 35 U.S.C. § 271(b).

IURTC has asked that the court enter judgment:

A. Finding that U.S. Patent No. 6,719,717 is valid, enforceable, and infringed by AngioDynamics, and that AngioDynamics is liable for inducement of infringement and contributory infringement of the ‘717 Patent;
B. Entering a permanent injunction against AngioDynamics, enjoining it, its respective directors, officers, agents, employees, successors, subsidiaries, assigns, and all persons acting in privity or in concert or participation with AngioDynamics from making, using, selling, or offering for sale in the United States, or importing into the United States, any and all products and/or services embodying the patented inventions claimed in the ‘717 Patent;
C. Holding that AngioDynamics acted willfully in causing damage to IURTC;
D. Awarding IURTC such damages to which it is entitled, pursuant to 35 U.S.C. § 284;
E. Awarding IURTC enhanced damages, pursuant to 35 U.S.C. § 284;
F. Awarding IURTC pre-judgment and post-judgment interest as allowed by law; and
G. Awarding IURTC its costs, expenses, and fees, including reasonable attorneys’ fees, pursuant to 35 U.S.C. § 285.

Practice Tip:

Universities today often own sizeable portfolios of patents and can earn substantial royalties from licensing those patents. To maintain that revenue, most universities seek ownership of the inventions created by their employees, typically by having the employee assign the intellectual property rights to the university. Moreover, if federal funds were used to pursue the research leading to the invention, universities are required under the Bayh-Dole Act to obtain ownership of the resulting patent.

Substantial legal difficulty can arise when the ownership of a patent is unclear. Such a problem can arise when the duty of an inventor to convey ownership of his or her invention has not been established in advance of the creation of new intellectual property. An Indiana patent attorney can help Indiana inventors determine what rights they have with respect to their inventions.