Patent Infringement

December 22, 2016

Indiana Patent Litigation: South Bend Auto Finance Company Sued for Patent Infringement

South Bend, Indiana – Plaintiff Hawk Technology Systems, LLC of Miami, Florida filed a lawsuit in the Northern District of Indiana alleging patent infringement.

Hawk accuses Defendant Instant Auto Finance Inc. of South Bend, Indiana of infringing U.S. Patent No. RE43,462 (the “‘462 patent”), which is a reissue of U.S. Patent No. 5,265,410. Claim 12 of the ‘462 patent, and possibly others, is at issue in this litigation. That claim covers a method of simultaneously displaying and storing multiple video images.

In this complaint, filed by an Indiana patent attorney in conjunction with a lawyer from Minnesota, Hawk contends that Instant Auto Finance infringed the ‘462 patent by using a video storage and display system and/or methods that infringe one or more of the claims in the ‘462 patent. Plaintiff seeks damages as well as reimbursement of costs and attorneys’ fees.

December 21, 2016

Indiana Patent Litigation: Safe Manufacturers Clash over Smart Safe Technology

By Overhauser Law Offices, LLC

New Albany, Indiana – FireKing Security Products, LLC of New Albany, Indiana sued in the Southern District of Indiana alleging infringement of a patent related to smart safes.

Defendant in this litigation is American Security Products Company of Fontana, California. Both Plaintiff and Defendant are in the business of manufacturing smart safes, which feature technology designed to count and log each deposit as it is made into the safe as well as generating and transmitting daily reports of the amount of cash stored in the safe.

American Security makes a line of smart safes offered under the name “CashWizard.” FireKing asserts that these products infringe its patent for “Electronic Transmission and Tracking of Deposit Information,” which has been registered by the U.S. Patent and Trademark Office as Patent No. 7,216,098 (the “’098 patent”). FireKing asserts that it has multiple patents associated with its smart-safe products, including the ‘098 patent, which is the only patent at issue in this Indiana lawsuit.

December 16, 2016

Indiana Patent Litigation: Taiwan Plaintiffs Allege Infringement of Bike Rack

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiffs King Sheng Co., Ltd., which does business as Seiki, and David Tsai, both of Taiwan, initiated a patent infringement lawsuit in the Southern District of Indiana.

Defendant in this Indiana litigation is Hollywood Engineering, Inc. d/b/a Hollywood Racks of Los Angeles, California. It is accused of having infringed U.S. Patent No. 7,240,816 (“the ‘816 patent”), which relates to a bike rack for use on vehicles. Plaintiffs contend that Defendant“has made, imports, sells, offers to sell, and/or uses” numerous infringing products. The products at issue include items offered under model numbers HR200, HRT220, HR1000, HR1000R, HR1400, HR1450, HR1450E, HR1450R, HR1475, and Sunlite models 45815 and 45816.

Defendant is accused of having infringed the ‘816 patent directly and/or jointly with other entities, with the alleged infringement occuring literally and/or under the doctrine of equivalents. Plaintiff further contends that Defendant is liable under 35 U.S.C. § 271(b) for inducing infringement of the patent-in-suit and under 35 U.S.C. § 271(c) for contributory infringement. Stating that Defendant has had actual notice of the ‘816 patent since no later than 2009, Plaintiff also asserts that infringement of the ‘816 patent has been willful and deliberate.

November 30, 2016

Indiana Patent Litigation: Alcon Alleges Infringement of Eye Drug by Generic Drugmaker

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Alcon Research, Ltd. of Fort Worth, Texas and Alcon Pharmaceuticals Ltd. of Fribourg, Switzerland filed an intellectual property lawsuit in the Southern District of Indiana. They assert infringement of two patents covering Pataday®, an ophthalmic pharmaceutical. Pataday is covered by U.S. Patent Nos. 6,995,186 (the “‘186 patent”) and 7,402,609 (the “‘609 patent”).

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Defendant Akorn, Inc., a generic drugmaker based in Lake Forest, Illinois, filed an Abbreviated New Drug Application (“ANDA”) with the U.S. Food and Drug Administration seeking approval to manufacture and sell a generic version of Plaintiffs’ drug prior to the expiration of the two patents-in-suit. Plaintiffs contend that the submission of this ANDA is an act of patent infringement.

In this Indiana complaint, patent lawyers for Alcon ask the court to adjudicate the following:

November 23, 2016

Indiana Patent Litigation: Lilly Sues Generic Drugmaker for Third Time Regarding ALIMTA

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Patent attorneys for Plaintiff Eli Lilly and Company filed a lawsuit in the Southern District of Indiana alleging infringement. Defendant is Fresenius Kabi USA, LLC of Lake Zurich, Illinois.

Lilly, an Indianapolis-based company, is a developer and seller of pharmaceutical drugs. One of its drugs, ALIMTA®, is marketed as a chemotherapy agent used for the treatment of various types of cancer.

Fresenius, formerly known as APP Pharmaceuticals, LLC, manufactures and sells generic drugs. Earlier this year, Fresenius amended its Abbreviated New Drug Application (“ANDA”), which was previously filed to seek U.S. Food and Drug Administration (“FDA”) approval to manufacture three different concentrations of ALIMTA. Through its recent amendment, Fresenius now asks for approval to manufacture and sell a fourth generic version of ALIMTA. Lilly filed this litigation in response.

October 31, 2016

Indiana Patent Litigation: Lilly Sues Alleging Infringement of Testosterone Product

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Patent lawyers for Plaintiffs Eli Lilly and Company of Indianapolis, Indiana, its subsidiary Eli Lilly Export S.A. of Geneva, Switzerland and Acrux DDS Pty Ltd of West Melbourne, Australia filed a lawsuit alleging patent infringement. This federal lawsuit, commenced in the Southern District of Indiana, lists two Defendants, Cipla Limited of Mumbai, India and its wholly owned subsidiary Cipla USA, Inc. of Miami, Florida.

The parties in this litigation are engaged in the development and sale of pharmaceuticals. At issue is Plaintiffs’ transdermal testosterone solution, which is marketed under the trade name “Axiron®.” Lilly holds New Drug Application No. 022504 for this drug, which was approved by the U.S. Food and Drug Administration (“FDA”).

Defendants submitted an Abbreviated New Drug Application (“ANDA”) to the FDA seeking approval to market a generic version of Lilly’s Axiron product. In this ANDA, Defendants certified to the FDA that they believed that the patents-in-suit were invalid, unenforceable and/or would not be infringed by the commercial manufacture, use or sale of the generic version of Axiron described in the ANDA.

According to Plaintiffs, the filing of this ANDA by Defendants constitutes patent infringement. Plaintiffs also contend that other threatened activities, such as commercial manufacture, importation and sale of a generic version of Axiron, would also infringe Plaintiffs’ patents.

Plaintiffs list three disputed patents in this lawsuit: U.S. Patent Nos. 8,435,944; 8,993,520 and 9,180,194. These patents have been issued by the U.S. Patent and Trademark Office. Indiana attorneys for Plaintiffs ask the court for relief with respect to the following claims of patent infringement:

• Count I: Direct Infringement of U.S. Patent No. 8,435,944
• Count II: Inducement To Infringe U.S. Patent No. 8,435,944
• Count III: Contributory Infringement of U.S. Patent No. 8,435,944
• Count IV: Direct Infringement of U.S. Patent No. 8,993,520
• Count V: Inducement To Infringe U.S. Patent No. 8,993,520
• Count VI: Contributory Infringement of U.S. Patent No. 8,993,520
• Count IV [sic]: Direct Infringement of U.S. Patent No. 9,180,194
• Count V [sic]: Inducement To Infringe U.S. Patent No. 9,180,194

• Count VI [sic]: Contributory Infringement of U.S. Patent No. 9,180,194

The complaint also lists three counts seeking declaratory judgment.

Plaintiffs aver that this case is “exceptional” and ask the court for an award of their costs, including attorneys’ fees, pursuant to 35 U.S.C. §§ 285 and 271(e)(4).

October 21, 2016

Indiana Intellectual Property Litigation: Defendant in California Patent Lawsuit Sues Plaintiff in Indiana Court Alleging Unfair Competition

By Overhauser Law Offices, LLC

South Bend, Indiana – Patent lawyers for Plaintiff Swagway, LLC of South Bend, Indiana sued Defendants Hangzhou Chic Intelligent Technology Co., Ltd. (“Chic”) of Hangzhou, People’s Republic of China, Jansco Marketing, Inc. of Pembroke, Massachusetts and COKeM International, Ltd. of Shakopee, Minnesota.

Swagway and Chic both sell self-balancing two-wheeled boards, also known as “hoverboards,” in the U.S. market. The two companies had an intellectual property dispute, with Chic alleging that Swagway infringed two of its patents. This dispute allegedly included letters sent by Chic that appeared to threaten Swagway’s business partners with litigation if they sold Swagway products that Chic alleged were infringing. Swagway also contends that Chic delayed Swagway’s goods by falsely alleging infringement to Chinese customs officials. It also states that Chic later issued a press release falsely stating that Swagway’s goods had been seized as infringing. When the dispute persisted, Chic sued Swagway in the Northern District of California on allegations that Swagway had infringed U.S. Patent No. 9,376,155 and U.S. Design Patent No. D737,723.

Swagway responded in part by filing a second federal lawsuit in the Northern District of Indiana. In its Indiana complaint, it accuses Chic and its agents, including Jansco and COKeM, of having made “numerous false and misleading statements” to Swagway’s retailers and customers regarding Swagway, its hoverboards, as well as the patent rights that Chic alleged in the California litigation. Plaintiff contends that “Defendants made these statements for the sole purpose of causing harm to Swagway’s business and preventing fair competition.” Swagway also contends that Chic withheld material information from the U.S. Patent and Trademark Office and that, consequently, the registration of several patents was improper.

In its Indiana lawsuit, patent attorneys for Plaintiff assert the following claims:

• Count I: Unfair Competition under the Lanham Act
• Count II: Unfair Competition under Indiana State Law
• Count III: Tortious Interference with Business Relationships

• Count IV: Defamation

Plaintiff has requested damages of no less than $30 million and also includes a prayer for punitive damages. Plaintiff further seeks equitable relief as well as reimbursement of costs and attorneys’ fees.

October 10, 2016

Indiana Patent Litigation: Rotating Curling Iron at Center of Patent Infringement Lawsuit

By Overhauser Law Offices, LLC

South Bend, Indiana – Patent lawyers for Plaintiff The Beachwaver Co. of Libertyville, Illinois sued in Indiana federal court on allegations of patent infringement.

Defendant Farouk Systems, Inc. of Houston, Texas has been accused of infringing U.S. Patent No. 9,398,796 (“the ‘796 patent”), which covers claims pertaining to a rotating curling iron. This patent, titled “Hair Styling Device,” was issued by the U.S. Patent and Trademark Office on July 26, 2016.

Plaintiff contends that “Defendant has committed acts of patent infringement, including making, offering for sale, and selling infringing products” and lists the following causes of action in this lawsuit, filed Friday in the Northern District of Indiana:

• Count I: Direct Infringement of the ‘796 Patent

• Count II: Induced Infringement of the ‘796 Patent

Plaintiff seeks damages, including treble damages, as well as injunctive relief, costs and attorneys’ fees.

August 23, 2016

Indiana Patent Litigation: RV Components Makers in Court Again Over Patent Covering Room Seal

By Overhauser Law Offices, LLC

South Bend, Indiana – Plaintiff Lifetime Industries, Inc. (“LTI”) of Elkhart, Indiana filed a patent infringement lawsuit in the Northern District of Indiana alleging that Defendant Trim-Lok, Inc. of Buena Park, California infringed Plaintiff’s patent for a “Two-Part Seal for a Slide-Out Room.”

The patent-in-suit, U. S. Patent No. 6,966,590 (the “‘590 patent”), has been issued by the U.S. Patent and Trademark Office. Plaintiff states that it “currently produces, sells, and distributes two-part seals covered by the ‘590 patent” (collectively, “LTI Seals”), which are directed towards the addition of a slide-out room to a recreational vehicle. The LTI Seals include “a mounting portion and a separate bulb portion that slidably connects to the mounting portion.”

Plaintiff asserts that Defendant makes, uses, sells, and offers for sale a seal that, once installed on a recreational vehicle, infringes one or more claims of the ‘590 patent. Plaintiff indicates that it discovered this alleged wrongdoing by Defendant during a visit to Forest River, Inc., a manufacturer of recreational vehicles and mobile living quarters.

Plaintiff also contends that Defendant’s infringing behavior was knowing and intentional, citing in part two former LTI engineers who began work for Trim-Lok. These two engineers purportedly had knowledge of the ‘590 patent and LTI asserts that they “contributed to or designed” Defendant’s accused product.

In this lawsuit, filed by Indiana patent attorneys, the following counts are listed:

• Direct Infringement of the ‘590 Patent
• Induced Infringement of the ‘590 Patent

• Contributory Infringement of the ‘590 Patent

Plaintiff seeks damages, including treble damages, along with equitable relief, costs and attorneys’ fees.

Practice Tip: This is not the first instance of patent litigation between these parties. LTI sued Trim-Lok in 2013 alleging that Trim-Lok had infringed the same patent by offering another product.

August 4, 2016

Indiana Patent Litigation: Interactive Alleges Patent Misuse, Sues Patent Licensor

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Patent attorneys for Plaintiff Interactive Intelligence, Inc. of Indianapolis, Indiana filed a lawsuit for declaratory judgment in the Southern District of Indiana against Defendant Avaya, Inc. of Santa Clara, California. At issue in this litigation is the proper scope of a patent licensing agreement between Plaintiff and Defendant.

In 2002, Interactive and Avaya agreed to license patents covering Avaya’s “call center” products. In exchange for this license, Interactive agreed to pay Avaya a royalty based upon Interactive’s sales. The patents-in-suit, which have been issued by the U.S. Patent and Trademark Office are as follows: U.S. Patent Nos. 5,802,058; 5,982,873; 6,009,386; 6,052,460; 6,173,399; 6,192,050; 6,208,970; 6,389,132; 6,392,666; 6,535,601; 6,560,330; 6,636,598; 6,665,395; 6,754,331; 6,850,602; 6,925,166; 7,023,980; 7,215,760; 7,542,558; 7,685,102; 7,702,083; 7,990,899; 8,107,401; 8,379,819; 8,897,428; 9,049,291; and 9,154,629.

In this federal complaint, filed by Indiana patent lawyers, Interactive states that, since 2002, its revenue has expanded to include many sources other than call center software, including “hardware resales, software maintenance and support, training, [and] subscription services for cloud based hosting.” It also contends that a “sizeable portion” of its revenue now comes from business outside of the United States.

Interactive claims that Avaya has misused its patents and misconstrued the agreement to require Interactive to pay royalties based on Interactive’s “global sales.” It argues that sales that are outside of the scope of Avaya’s patents, as well as at least some of its foreign sales, should not be subject to a royalty under the agreement. Interactive further asserts that Avaya’s “threats of potential patent infringement litigation resulted in Interactive paying significantly more than $1,000,000 in excess payments” under the agreement.

This lawsuit seeks a declaration of patent misuse by Avaya, as well as a declaration that Interactive does not infringe any of the patents asserted by Avaya. Interactive also seeks restitution and/or damages, costs and attorneys’ fees.