Articles Posted in New Litigation

Indianapolis, IN – Patent lawyers for plaintiff Schwindt, claim the defendants Miller and Mark omitted Schwindt as an inventor on a patent application, that turned out to be worth millions. All three were early founders and investors in Suros Sugical Systems, an Indianapolis medical device manufacturer founded in 2000. Suros grew quickly, and was acquired for $240 million by Hologic in 2006.

Plaintiff Schwindt did some outside engineering consulting for Suros. He claims his contributions (suggesting a pneumatic control, a pressure switch and a pneumatic circuit manifold for a biopsy device) elevate him to the status of an “inventor” of the system on which he worked. Suros applied for and was issued several patents, including 6,758,824, although Schwindt was not named an “inventor” on the applications filed by Suros.

Schwindt later started his own company, Tissue Extraction Devices, and filed for his own patent applications for the same invention. This led to an interference proceeding, which remains pending. According to the complaint, in that proceeding, “the USPTO suggested that it is the district court and not the Office that is in the best position to fashion an equitable remedy to fit the facts in cases [such as this one] where inequitable conduct is established.” In contrast, Suros claims in the interference that Schwindt simply followed instructions to fabricate a circuit board and console for Suros’s device using off-the-shelf components and had no involvement in the biopsy device’s development.

Notwithstanding the ongoing interference proceeding, in the present suit, Schwindt asks the Court to declare him a co-inventor of the patents issued to Suros.

Practice Tip: This case highlights the importance of having clear intellectual property rights agreements when utilizing outside consultants. Even though a company may pay an outside firm to assist with developing a product, unless the agreement specifically calls for the assignment of inventions, the consultant will own the right to any resulting inventions, not the company commissioning the work.

It will be interesting to see how the Court addresses jurisdictional issues. The Complaint asserts claims for fraud/deception, unjust enrichment, and “accounting,” which are all state law claims that do not appear to invoke Federal jurisdiction. The only claim alleged to justify federal jurisdiction is that for declaratory judgment that the plaintiff is a co-inventor of the patents. However, patent ownership issues usually arise under state law. Jim Arnold Corp. v. Hydrotech Systems, Inc., 109 F.3d 1567 (Fed. Cir. 1197), cert. denied sum nom., 118 S. Ct. 338 (1997).

The complaint and more information about this suit is below.

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Indianapolis, IN – Patent lawyers for Bald Spot Racing, LLC of Indianapolis, IN have filed a patent infringement suit alleging BSCI, Inc. of Mooresville, NC infringed patent no. 6,733,710 VEHICLE PASSENGER RESTRAINT AND METHOD OF PRODUCING SAME, which has been issued by the US Patent Office. Despite the title of the patent, its single claim is limited to a method for making a car seat that is custom formed to a specific driver.

The single independent claim of the patent is:

1. A method of producing a restraint for a passenger of a vehicle comprising the steps of:
placing an enclosure of flexible plastic within a vehicle;

• placing a passenger of the vehicle atop and adjacent said enclosure while in said vehicle;
• allowing said flexible plastic to form around the passenger forming a plastic restraint;
• removing the passenger from the vehicle;
• causing the plastic restraint to harden;
• removing the plastic restraint from the vehicle; scanning said plastic restraint to profile said plastic restraint; and, shaping solid plastic in accordance with the profile of the plastic restraint producing a passenger restraint.

This case has been assigned to Judge Jane E. Magnus-Stinson and Magistrate Judge Tim A. Baker in the Southern District of Indiana, and assigned case no. 1:11-CV-00095-JMS-TAB.

Practice Tip: The complaint alleges upon “information and belief” that the defendant “sold or offered for sale seat inserts for a racecar within this judicial district that were made by the defendant using a process protected by the patent . . .” An intriguing issue in this case is likely to be whether the defendant is subject to personal jurisdiction in Indiana if it did not actually practice the method in Indiana, and has no other contacts with Indiana. Personal jurisdiction could be more likely if there was an actual sale of a product of a seat insert to a customer in Indiana that was made using the patented method. It is not unusual for a patent owner to purchase one of the defendant’s products in the State where the patent owner plans to file suit, and then to reference that sale in the complaint to improve the odds so of acquiring personal jurisdiction over the defendant. The complaint here does not reference such a purchase.

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South Bend, Indiana – Patent lawyers for NIBCO, Inc., of Elkhart, IN, have filed a patent infringement suit alleging ERICO International Corporation of Solon, OH, has infringed the following patents issued by the U.S. Patent Office: Patent Nos. 6,517,030,. 6,953,174, 7,191,987, and. 7,441,730. All four patents have the same title, SWAY BRACE FITTING, which is a device for “bracing pipes and other loads, suspended below ceilings and beams, against sway and seismic disturbances.”

The plaintiff is a manufacturer of support system products. Citing photographs and an advertisement, the complaint states that the defendant is making, using, selling, offering for sale, or importing sway brace products which infringe these patents. As is usually the case in intellectual property litigation, the plaintiff seeks both damages and injunctive relief.
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