New Litigation

March 25, 2013

Novelty Sues Margaret Rothschild for Declaratory Judgment of Non-Infringement and Unenforceability of “Mohawk Monkey”

Indianapolis, Ind. – Patent attorneys for Novelty, Inc. of Greenfield, Ind. filed a declaratory judgment suit against Margaret Rothschild of Sherman Oaks, Calif. seeking a judgment that Novelty’s “Mohawk Monkey” does not infringe Rothschild’s Design Patent No. D501,897 (the “‘897 Patent”) which has been issued by the U.S. Patent Office.

Novelty specializes in the distribution and sale of toys and novelty items. One of its products is a plush toy sold under the name “Mohawk Monkey.” Rothschild, via a patent attorney, contacted Novelty in March 2013 and asserted that the Mohawk Monkey infringed her patent. She insisted that Novelty cease all sales of its Mohawk Monkey and demanded payment for damages caused by the alleged infringement. Rothschild indicated that a refusal to comply would be met with vigorous litigation.

In its declaratory judgment action, filed in the Southern District of Indiana, Novelty asserts that its Mohawk Monkey is significantly different from the design claimed in Rothschild’s ‘897 Patent and that an ordinary observer would not be deceived. Novelty asks for a declaration that its Mohawk Monkey does not infringe the ‘897 Patent, a declaration that the Patent is unenforceable and/or invalid, a finding that the case is exceptional and, pursuant to that finding, an award to Novelty of its reasonable attorneys’ fees.

Practice Tip: Design-patent litigation seems to be increasingly “fashionable.” The expected players, such as technology innovators, are seeking protection for their goods under design-patent protection as they traditionally have. (See, e.g., Apple Inc. v. Samsung Electronics Co., Ltd.) However, other less-traditional users of design patents are also beginning to see the value of a design patent in protecting their intellectual property. For example, the fashion industry has historically found little use for design patents, as the time needed to obtain such a patent usually exceeds the relatively short lifespan of various fashions, which typically change season to season. However, that is changing. (See, for example, the dispute between Spanx and Yummie Tummie.) In addition, as a result of the recent America Invents Act, individuals with grievances are no longer limited to filing suit; they can now also ask the Patent Office whether patents in dispute are valid. The central provisions of the Act went into effect on March 16, 2013.

March 22, 2013

Royal Purple Sues Liqui Moly GmbH for Trademark Infringement for Selling Purple Lubricants

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark lawyers for Royal Purple, LLC of Indianapolis, Indiana sued Liqui Moly GmbH of Ulm, Germany in the Southern District of Indiana alleging trademark infringement for selling purple automotive lubricants.

At the center of this litigation is the right to use the color purple. Royal Purple claims it has sold lubricants for more than 20 years and has trademarked the color purple. It owns several federal trademark registrations for the color purple as applied to lubricating oils for automotive, industrial and household uses. Among the trademarks are U.S. Registration Nos. 2,691,774; 2,953,996 and 3,819,988 which cover the following:

It also owns multiple trademarks incorporating the word “purple” as applied to various goods. These trademarks are registered with the US Trademark Office. Purple was chosen for its association with royalty. (Historically, purple dye was so expensive to produce that it was used only by royalty.) Royal Purple’s purple-identified lubricant products are sold in over 20,000 retailers in the United States and Royal Purple claims a strong secondary meaning and substantial goodwill in its trademark as a result of this use.

Liqui Moly sells Liqui Moly and Lubra Moly brand motor oil, both of which have packaging that is supposedly purple prior to sale. Royal Purple alleges that Liqui Moly’s use of the color purple in conjunction with the sale of motor oil is likely confuse consumers. According to Liqui Moly’s website, its products are sold in a variety of different containers:

Royal Purple also alleges that Liqui Moly’s use is a purposeful attempt to trade upon Royal Purple’s trademark and that Liqui Moly’s use will dilute the “distinctive quality” Royal Purple’s trademarks. Finally, it alleges that Liqui Moly’s use removes from Royal Purple its ability to control the quality of products and services provided under Royal Purple’s trademark, by placing them partially under the control of Liqui Moly, an unrelated third party.

The federal claims include trademark infringement, unfair competition and dilution under the Lanham Act; Royal Purple has also alleged dilution, trademark infringement, unfair competition and unjust enrichment under Indiana common law. Royal Purple seeks a preliminary and permanent injunction, the destruction of all allegedly infringing inventory, treble damages, costs and attorneys’ fees.

Practice Tip: Color can serve as a useful identifier of the source of goods to consumers. The courts, however, have had to draw some narrow lines to balance the various interests. On the one hand, companies often invest significant amounts of money in promoting their brands and color is frequently a component of that promotion. On the other hand, there are a limited number of colors – and an even more limited number of colors that are pleasing and appropriate for any given type of product – and courts are wary of providing a monopoly on any given color to any one company. After all, if such a monopoly is first provided to one company, all too soon the entire spectrum may be spoken for.
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March 15, 2013

Klipsch and Audio Products International Sue Monoprice for Patent, Trade-Dress and Copyright Infringement

By Overhauser Law Offices, LLC

Indianapolis, Ind. – Klipsch Group, Inc. (“Klipsch”) and Audio Products International Corp. (“API”), both of Indianapolis, Ind., have sued Monoprice, Inc. (“Monoprice”) of Rancho Cucamonga, Calif. alleging patent infringement, trade dress infringement, unfair competition and copyright infringement.

In an eight-count complaint, intellectual property attorneys for Klipsch and its subsidiary API allege that Monoprice has been engaged in manufacturing, importing, selling and/or offering to sell a system entitled “5.1 Hi-Fi Home Theatre Satellite Speakers & Subwoofer” which is a less expensive “knock-off” of plaintiffs’ “ENERGY® TAKE CLASSIC™ 5.1” (“Energy Take Classic 5.1”) home theater system.

Count I of the complaint alleges the infringement of API’s Patent No. 6,725,967 (“Low distortion loudspeaker cone suspension“; also called the “‘967 Patent”) which was issued by the U.S. Patent Office in 2004.

The system has apparently been well received, garnering positive reviews and selling well. In Count II, “Trade Dress Infringement and Unfair Competition,” it is alleged that API has continuously promoted the Energy Take Classic 5.1 system and its predecessors and that, as a result of the commercial success of the systems, the systems’ trade dress has acquired secondary meaning among relevant consumers as an identifier of the source of the Energy Take Classic 5.1 system. The complaint further alleges that Monoprice’s conduct is causing confusion among consumers as to the affiliation of Monoprice with API and as to the origin of Monoprice’s goods.

Counts III through VII [NB: this should have been “III through VIII”; “Count III” was enumerated as a separate count twice in the complaint], all pertain to copyright infringement. More specifically, it is alleged that Monoprice has violated the copyrights of:

· the Energy Take Classic 5.1 Home Theatre System as a whole

· the Energy Take Classic 5.1 Satellite Speaker

· the Energy Take Classic 5.1 Center Channel Speaker

· the Energy Take Classic 5.1 Subwoofer Speaker

· the Energy Take Classic 5.1 Subwoofer Backplate

· the Energy Take Classic 5.1 Owner’s Manual

The complaint lists 14 separate requests for relief [NB: these appear, upon first count, as 13; however “request for relief” letter “k” is listed twice]. Among these are requests for judgments against Monoprice for infringement of the ‘967 Patent, trade-dress infringement, unfair competition and copyright infringement. API seeks compensatory damages and, for willful and deliberate wrongdoing by Monoprice, statutory damages up to treble the actual amount found or assessed by the court. API also asks the court to enjoin infringing behavior by Monoprice. Finally, it asks for attorneys’ fees, costs and expenses.

Practice Tip: There is certainly some overlap between design-patent infringement and copyright infringement. However, the multiple counts of copyright infringement for speakers and similar “original work[s] of authorship” – all of the applications for which were filed on February 22, 2013 – attempt to proceed under copyright law against alleged infringements that seem more appropriately considered to be a matter of design-patent law. Proceeding under copyright law, however, does have two significant advantages: a liberal filing period and a substantially longer period of protection. Many products are brought to market without having filed for a design patent. If the application for such a patent is not filed within one year of the public offering or sale of the products, the statutory bar under 35 U.S.C. § 102 will prevent the design patent from being issued. Copyright has no such strict application deadline. Additionally, the 14-year life of design-patent protection is in stark contrast to the protection available under copyright law to a corporation for a work-for-hire, which can extend over 100 years.

March 12, 2013

Ladder Manufacturer Ameriwood et al. Sue Wing Enterprises Alleging Infringement

By Overhauser Law Offices, LLC

Indianapolis, Ind. – Plaintiffs Cosco Management, Inc. (“Cosco”) and Dorel Juvenile Group, Inc. (“Dorel”) of Columbus, Ind. along with Ameriwood Industries, Inc. (“Ameriwood”) of Wright City, Mo. filed a patent infringement suit alleging Wing Enterprises, Inc. (“Wing”) and Wing Enterprises, Inc. d/b/a Little Giant Ladders (“Little Giant”) of Springville, Utah have been infringing and continue to infringe certain claims of Patent No. 6,427,805 (the “‘805 Patent”), entitled “Folding step stool,” which has been issued by the U.S. Patent Office.

The plaintiffs assert that the defendants’ Flip-N-Lite step ladder infringes upon various claims of its ‘805 patent. That patent was issued in 2002 and was initially assigned to Cosco. Cosco licensed the patent exclusively to Dorel which, in turn, assigned those exclusive rights to Ameriwood.

Plaintiffs state that both Wing and Little Giant, by their allegedly infringing activities, have caused Cosco, Dorel and Ameriwood irreparable harm for which there is no adequate remedy at law. Plaintiffs assert that this conduct has been willful.

Plaintiffs ask for a permanent injunction against activity found to infringe the ‘805 patent, an order directing the destruction of all equipment used in the alleged infringement, damages up to triple the amount of the actual damages, costs and reasonable attorneys’ fees.

Practice Tip: It is unclear why Wing Enterprises, Inc. is listed as a defendant twice – once as Wing Enterprises, Inc. and again as Little Giant Ladders, an assumed business name. Various jurisdictions have held that it is acceptable to sue under an assumed name. For example, under Texas case law, one can sue an individual under his real or assumed name if he has filed an assumed name certificate and conducts business under that assumed name. See Employees Loan Co. v. Templeton, 109 S.W.2d 774, 778 (Tex. Civ. App. 1937). However, listing one party twice, whether as a plaintiff or a defendant, is traditionally viewed as unnecessarily duplicative.

March 8, 2013

Biomet Sues Bonutti Skeletal Innovations Seeking Declaratory Judgment of Non-Infringement and Invalidity of Patents

By Overhauser Law Offices, LLC

South Bend, IN – Biomet, Inc. of Warsaw, Indiana has filed a declaratory judgment suit against Bonutti Skeletal Innovations LLC of Frisco, Texas in the Northern District of Indiana, asking the court to enter a judgment of non-infringement and invalidity of fifteen Bonutti patents.

Biomet is a privately held company that designs, manufactures and markets products used primarily by musculoskeletal medical specialists in surgical and non-surgical therapy. Dr. Peter Bonutti is an orthopedic surgeon listed as an inventor or co-inventor on over 150 U.S. patents, including the patents-in-suit. Biomet entered into a licensing agreement with Dr. Bonutti, via his research and/or patent-holding company MarcTec, LLC, in 2006.

Since September 2012, Bonutti Skeletal has initiated a series of patent-infringement lawsuits against medical-device manufacturers, including Depuy, Inc.; Zimmer, Inc.; Smith & Nephew, Inc.; Wright Medical Group, Inc.; ConforMIS, Inc.; Arthrex, Inc.; Linvatec Corporation and ConMed Corporation. In each of these suits, Bonutti Skeletal has asserted infringement of Bonutti patents against products similar to those produced by Biomet.

In January 2013, Bonutti informed Biomet that it believed that Biomet was infringing upon Bonutti patents; it demanded a settlement to license these patents shortly thereafter. On that basis, Biomet seeks a judgment under the Declaratory Judgment Act, stating that an actual and justiciable controversy exists.

Patent attorneys for Biomet listed fifteen Bonutti patents in their complaint. Biomet asks for declarations that there was no infringement by Biomet of any of the fifteen Bonutti patents and of invalidity of all of the patents, a finding that the case is exceptional and an award of attorneys’ fees and costs pursuant to that finding.

The patents-in-suit, all issued by the U.S. Patent and Trademark Office are:

• 5,921,986: “Bone suture”

• 6,638,279: “Method of positioning body tissue relative to a bone”

• 8,147,514: “Apparatus and method for securing a portion of a body”

• 7,087,073: “Method of securing body tissue”

• 6,702,821: “Instrumentation for minimally invasive joint replacement and methods for using same”

• 7,806,896: “Knee arthroplasty method”

• 7,708,740: “Method for total knee arthroplasty and resecting bone in situ”

• 7,806,897: “Knee arthroplasty and preservation of the quadriceps mechanism”

• 8,133,229: “Knee arthroplasty method”

• 7,828,852: “Inlaid articular implant”

• 7,931,690: “Method of resurfacing an articular surface of a bone”

• 7,070,557: “Tissue graft material and method of making”

• 6,423,063: “Changing relationship between bones”

• 6,099,531: “Changing relationship between bones”

• 7,104,996: “Method of performing surgery”

Practice Tip #1: It is common for those who consider themselves likely to become defendants in patent-infringement litigation to proactively seek a declaratory judgment of non-infringement. Such a suit allows the potential defendant not only to choose their own forum, to the extent that it is consistent with jurisdictional restrictions, but also to remove an ever-present cloud of potential litigation and potential damages that may be continuing to accrue.

Practice Tip #2: The standard for an actual controversy under the Declaratory Judgment Act was most recently addressed by the Supreme Court in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). We blogged recently about another action for declaratory judgment involving Genentech here.

March 8, 2013

Mid-West Metal Products Sues Yuntek International for Declaratory Judgment of Patent Noninfringement and Intervening Rights

By Overhauser Law Offices, LLC

Indianapolis, IN – Patent lawyers for Mid-West Metal Products Company, Inc. d/b/a Midwest Homes for Pets of Muncie, IN sued Yuntek International, Inc. of Hayward, CA seeking a declaratory judgment of noninfringement and intervening rights regarding Yuntek’s “Pet Tent,” Patent No. 6,715,446, issued by the U.S. Patent and Trademark Office.

Defendant Yuntek alleged that Midwest had infringed its patented Pet Tent and had sent multiple “cease and desist” letters to Midwest. In its complaint, Midwest asserts that there exists an actual and continuing justiciable controversy between the parties, as contemplated under the Declaratory Judgment Act 28 U.S.C. §§2201 et seq., and has brought the matter to the Southern District of Indiana for resolution.

The patent for the Pet Tent, issued in 2004, was reexamined by the U.S. Patent and Trademark Office (“USPTO”). In this reexamination, certain claims were canceled and others were substantively amended. New claims were also added.

At issue is the alleged infringement of the patent-in-suit prior to the issuance by the USPTO of the Ex Parte Reexamination Certificate as well as the Inter Partes Reexamination Certificate. Midwest asks the court to declare that it does not infringe and did not infringe any valid claim of the patent prior to the issuance of the Ex Parte Reexamination Certificate, at least on the basis of intervening rights. It claims similar noninfringement prior to the issuance of the Inter Partes Reexamination Certificate.

Midwest also asks the court for a judgment that it is entitled to absolute and equitable intervening rights under each of the Reexamination Certificates pursuant to 35 U.S.C. §252. Finally, Midwest asks the court to enjoin Yuntek from pursuing or threatening litigation related to the Pet Tent patent for the time period prior to the issuance of the two Reexamination Certificates, for a declaration that the case is exceptional and for attorneys’ fees pursuant to that declaration.

Practice Tip: The Federal Circuit recently considered whether intervening rights apply where claims were neither amended nor added during reexamination. (See, Marine Polymer Technologies, Inc. v. HemCon, Inc.) It held that the doctrine of intervening rights applied only where claims had been amended or added.

March 7, 2013

DirecTV Sues Roger York, Dianna York and Marty’s Pub for Use of Residential Satellite Service in a Commercial Establishment

By Overhauser Law Offices, LLC

Indianapolis, IN – Intellectual property lawyers for DirecTV, LLC sued Roger York, Dianna York and D.L.Y., Inc. d/b/a Marty’s Pub of Converse, IN alleging the commercial use of satellite programming sold at the residential rate.

This suit was brought under the Cable Communications Policy Act of 1984, 47 U.S.C. §521, et seq., and 47 U.S.C. §605. It alleges that Roger York and Dianna York, in their capacity as owners, and individuals with close control over internal operating procedures, of Marty’s Pub willfully and unlawfully used a residential subscription to DirecTV in a commercial establishment.

The three-count complaint cites three causes of action. Count One: Damages for Violations of Cable Communications Policy Act under 47 U.S.C. §605(e)(3)(c); Count Two: Damages for Violations of 18 U.S.C. §2511; and Count Three: Civil Conversion.

DirecTV asks for the following: a declaration that the defendants’ use of DirecTV was a violation of §2511, that such violations were willful and for the purpose of commercial advantage; an injunction against further violations; statutory damages under 18 U.S.C. §2511; statutory damages under 47 U.S.C. §605; punitive damages and costs and interest.

Practice Tip: As part of its complaint, DirecTV claims that its goodwill and reputation have been usurped. It will be interesting to see what evidence it offers as proof that, as a result of allegedly receiving a lower monthly fee for the programming provided to the defendants – a circumstance presumably known to few other than the Yorks – its goodwill or reputation have been impacted.

March 5, 2013

Malibu Media Sues Seventeen “John Doe” Defendants for Copyright Infringement

By Overhauser Law Offices, LLC

Indianapolis, IN – Plaintiff Malibu Media, LLC of Los Angeles, CA has sued seventeen “John Does” for copyright infringement in separate complaints filed in both the Southern District of Indiana and the Northern District of Indiana.

Paul Nicoletti, a copyright attorney, has filed seventeen nearly identical suits in Indiana federal court on behalf of Malibu Media. The “John Does” allegedly used the BitTorrent file-sharing protocol to illegally download, copy and distribute elements of various works of copyrighted material.

We have previously blogged about Malibu Media here. We have also blogged about some of the other copyright-infringement litigation filed by Paul Nicoletti here.

Malibu Media seeks a permanent injunction against infringing activities; an order by the court to remove infringing materials from all computers of each defendant; an award of statutory damages of $150,000 per infringed work – which would total over $1 million for many defendants – and reasonable attorneys’ fees and costs.

Practice Tip: The BitTorrent protocol is a decentralized method that allows users to distribute data via the Internet, and has become an extremely popular method for unlawful copying, reproducing and distributing files in violation of the copyright laws. While the copyright infringements committed with BitTorrent once consisted mostly of music copyright violations, the adult entertainment industry has increasingly been filing suit against infringers who have used BitTorrent-based technology.

February 28, 2013

Eli Lilly Sues Accord Healthcare Again for Infringement of Patented ALIMTA

By Overhauser Law Offices, LLC

Indianapolis, IN – Eli Lilly and Company of Indianapolis, Indiana filed an additional patent infringement suit in the Southern District of Indiana alleging that Accord Healthcare, Inc., USA of Durham, North Carolina will infringe U.S. Patent No. 7,772,209 (the “‘209 patent”) which has been issued by the U.S. Patent Office if relief is not afforded by the court.

In a complaint that was almost identical to a previous complaint filed in January 2012, patent attorneys for Eli Lilly and Company (“Lilly”) initiated an additional lawsuit against Accord Healthcare, Inc., USA (“Accord”) for attempting to gain FDA approval to manufacture and sell a generic version of Lilly’s ALIMTA, a drug that is used in the treatment in certain types of lung cancer. ALIMTA is protected by the ‘209 patent.

This is the second suit by Lilly against Accord involving the ‘209 patent. This suit was initiated after Accord filed an Abbreviated New Drug Application (“ANDA”) with the FDA for a product that competes with Lilly’s ALIMTA, which is an “Antifolate Combination Therapies” product. The complaint from 2012 alleged intent to infringe by, among other activities, the production and sale of Accord’s “Pemetrexed Disodium for Injection,” a generic version of ALIMTA, in 100 mg/vial and 500 mg/vial products. The current complaint alleged intent to infringe with a “Pemetrexed Disodium for Injection” product in a 1000 mg/vial strength. As part of its ANDA filing, Accord alleged that the claims of the ‘209 patent are invalid and/or not infringed by Accord’s product.

Eli Lilly has sued alleging infringement of the patented ALIMTA before:

· Eli Lilly Sues Apotex Inc. for Patent Infringement of ALIMTA

· Eli Lilly and Company Sues Accord Healthcare for Patent Infringement of Lung Cancer Drug ALIMTA

· Lilly Wins Patent Infringement Suit Regarding Chemotherapy Drug

· Eli Lilly Company Sues APP Pharmaceuticals LLC for Patent Infringement of Chemotherapy Drug

Lilly seeks a judgment that Accord has infringed and/or will infringe, actively induce infringement of, and/or contribute to infringement by others of the ‘209 patent; a judgment ordering that Accord delay virtually all activities pertaining to its ANDA product until after the ‘209 patent has expired; a preliminary and permanent injunction against activity that infringes upon the ‘209 patent; a declaratory judgment of infringement; a declaration that the case is exceptional and an award of attorneys’ fees pursuant to such a declaration; and Lilly’s costs and expenses.

Practice Tip #1: 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 jurisdictional issues with respect to declaratory judgments. For an interesting look at some of the issues, see here.

February 28, 2013

Lilly Sues Genentech to Invalidate Cabilly Patents

By Overhauser Law Offices, LLC

San Jose, CA – Lilly of Indianapolis, Indiana filed a declaratory judgment suit against Genentech asking the U.S. District Court, Northern District of California to invalidate Genentech’s recombinant-antibody patents.

This suit, filed by patent attorneys for Eli Lilly & Company (“Lilly”) and its subsidiary ImClone Systems LLC, of Delaware, included as defendants both Genentech, Inc. (“Genentech”) and City of Hope National Medical Center (“City of Hope”).

Genentech, also known as “Genetic Engineering Technology, Inc.” is a wholly owned subsidiary of F. Hoffmann-La Roche Holding AG engaged in biotechnology research.

It has won numerous awards as an employer and corporate citizen, including earning the number-one spot on Fortune Magazine’s “100 Best Companies To Work For” in 2006.

City of Hope is a private, not-for-profit clinical research center, hospital and graduate medical school located in Duarte, California.

The suit involves two patents held by Genentech: 6,331,415: “Methods of producing immunoglobulins, vectors and transformed host cells for use therein” (“Cabilly II”) and 7,923,221: “Methods of making antibody heavy and light chains having specificity for a desired antigen,” (“Cabilly III”), together known as the “Cabilly patents” after one of the inventors. They have been issued by the U.S. Patent Office.

At issue is the drug Erbitux (cetuximab), made by Lilly’s ImClone unit. Genentech claims that the drug, approved in the U.S. to treat colon cancer and tumors of the head and neck, infringes the Cabilly patents through the unlicensed use of a patented process and various patented starting materials.

Despite that Lilly already has a non-exclusive license to the Cabilly patents, it filed a declaratory judgment action. It asserts that it has no obligation to pay royalties on the sale of Erbitux, arguing that the Cabilly patents are invalid and unenforceable, and, further, not infringed by Lilly. It alleges that Cabilly patents are invalid for, among other reasons, lack of inventorship, inequitable conduct and violation of 35 U.S.C. § 135(c) (which relates to the filing of settlement agreements with the PTO in interference actions). Lilly also alleges that Genentech deceived the U.S. Patent Office into issuing the Cabilly patents.

Lilly seeks a declaratory judgment that the Cabilly patents are invalid and unenforceable, and are not implicated in the manufacture of Erbitux.

Practice Tip: The Cabilly patents have a potentially broad scope and could confront any manufacturer of recombinant antibodies. Genentech has been quoted as stating that the patents broadly cover the co-expression of immunoglobulin heavy and light genes in a single host cell, and are not limited by the type of antibody or host cell. Genentech has also been quoted as stating that the Cabilly II patent is “the backbone of recombinant antibody production in the biotech industry.” Given Genentech’s history of actively litigating this family of patents (see, e.g., MedImmune, Inc. v. Genentech, Inc, et al., which was litigated to the U.S. Supreme Court), and the purported broad scope of the Cabilly patents, it seems that litigation regarding these patents may continue for quite some time.