Patent Infringement

July 8, 2016

Indiana Patent Litigation: Lilly Alleges Infringement, Sues Generic Drugmakers

Indianapolis, Indiana – Patent lawyers for Plaintiffs Eli Lilly and Company of Indianapolis, Indiana, Eli Lilly Export S.A. of Geneva, Switzerland and Acrux DDS Pty Ltd. of West Melbourne, Australia initiated patent infringement litigation in the Southern District of Indiana.

Defendants are Apotex Corp. of Weston, Florida and Apotex Inc. of Ontario, Canada. Both companies manufacture, market and distribute generic pharmaceutical products. This lawsuit was initiated in response to an Abbreviated New Drug Application submitted to the U.S. Food and Drug Administration for approval to market a generic version of Lilly’s Axiron®, a prescription testosterone product used to treat males for conditions associated with a deficiency or absence of endogenous testosterone.

Defendants are accused of infringing Plaintiffs’ intellectual property rights in seven patents: U.S. Patent Nos. 8,419,307; 8,177,449; 8,435,944; 8,807,861; 8,993,520; 9,180,194 and 9,289,586.

In a 28-count complaint, filed by Indiana patent attorneys for Plaintiffs, 21 counts of patent infringement are listed, including a count of direct infringement, a count of inducement to infringe and a count of contributory infringement for each of the seven patents-in-suit. The remaining seven counts seek declaratory judgment of infringement of each of the seven patents.

In addition to relief for the wrongdoings alleged in the 28 counts, Plaintiffs seek reimbursement of the costs and attorneys’ fees associated with this lawsuit.

June 22, 2016

Indiana Patent Litigation: Folding Tricycle Alleged to Infringe Patent

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiff Newton Enterprises Ltd. of Kowloon, Hong Kong filed a lawsuit in the Southern District of Indiana alleging that Defendant Singleton Trading Inc. of Brooklyn, New York committed patent infringement.

In this Indiana litigation, Singleton Trading, which does business as Elama and Blue Spotlight, is accused of infringing U.S. Patent No. 7,568,720 (the “‘720 Patent”) for a “wheeled vehicle.” The patent covers a wheeled vehicle, such as a tricycle, that can be folded from an in-use position to a storage position for ease of carrying.

Newton Enterprises claims that Singleton Trading has infringed and/or induced others to infringe the ‘720 Patent by “making, using, offering to sell, and/or selling in the United States, and/or importing into the United States, a foldable tricycle that practices at least one invention claimed in the ‘720 Patent.” It lists as an example of such infringement Defendant’s “Zoom Bike.”

In a complaint filed by an Indiana patent lawyer, a single claim is made: “Infringement of ‘720 Patent.” Plaintiff further claims that Defendant’s infringement has been willful and deliberate, entitling Plaintiff to enhanced damages in addition to compensatory damages. Plaintiff also asks that the court award attorney fees and costs.

June 17, 2016

Patent Law: Supreme Court Discards Rigid Test for Awarding Enhanced Damages for Patent Infringement

By Overhauser Law Offices, LLC

Washington, D.C. – A unanimous decision by the U.S. Supreme Court this week gave district courts more flexibility to award enhanced damage in cases of willful patent infringement.

This decision consolidated two patent infringement lawsuits, Halo Electronics, Inc. v. Pulse Electronics, Inc., et al. and Stryker Corp. et al. v. Zimmer, Inc., et al, in which Indiana-based Zimmer, Inc. was sued. In each lawsuit, the proper interpretation of the statutory language of 35 U.S.C. §284, which permits district courts the discretion to award enhanced damages in cases of patent infringement, was at issue.

The exercise of that discretion is guided by the principle that enhanced damages are to be limited to cases of egregious misconduct. Prior to this week’s decision, it was also guided by a test elucidated by the Federal Circuit, as set forth in In re Seagate Technology, LLC. This test requires a patent owner to show two things by clear and convincing evidence: first, “that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and, second, that the risk of infringement “was either known or so obvious that it should have been known to the accused infringer.”

In a unanimous opinion written by Chief Justice John Roberts, the Court held that while the Seagate standard reflected an appropriate recognition that enhanced damages were to be awarded only in egregious cases, the test set forth by the Federal Circuit “is unduly rigid” and “impermissibly encumbers the statutory grant of discretion to district courts.”

The Court primarily took issue with the requirement that objective recklessness be found, holding that such a threshold “excludes from discretionary punishment many of the most culpable offenders, such as the ‘wanton and malicious pirate’ who intentionally infringes another’s patent–with no doubts about its validity or any notion of a defense–for no purpose other than to steal the patentee’s business.”

The Court also noted that the Seagate test improperly allowed ex post facto defenses in considering culpability. Specifically, under the Seagate test, an infringer could rely on a defense at trial, even if he had been unaware of that defense at the time he had acted. This, the Court held, ignored the general rule that culpability is to be determined by an actor’s knowledge at the time of the conduct in question.

Finally, the Court rejected the requirement that recklessness be proved by clear and convincing evidence, finding it to be inconsistent with §284. Instead, it stated that enhanced damages are no different from patent infringement litigation in general, which “has always been governed by a preponderance of the evidence standard.”

The Court vacated the judgments of the Federal Circuit in both cases and remanded them for further proceedings consistent with the Court’s opinion.

Although this was a unanimous opinion, Justice Breyer authored a concurring opinion, in which Justices Alito and Kennedy joined.

May 17, 2016

Indiana Patent Litigation: Infringement of Patented Bottle Caps Alleged in Indiana Lawsuit

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiff Novembal USA, Inc. of Edison, New Jersey filed a patent infringement lawsuit in the Southern District of Indiana. Defendant is Closure Systems International, Inc., of Indianapolis, Indiana.

Novembal is in the business of development, production and sale of products associated with the production, processing, packaging and distribution of food. In this recent federal lawsuit, it has accused Closure Systems of infringing a patent covering bottle-cap products, which is entitled “Cap For A Container Neck.” This patent is protected by Patent No. 9,199,769 (the “‘769 patent”), which has been issued by the U.S. Patent and Trademark Office.

Novembal contends that Closure Systems has infringed and continues to infringe, has contributed to the infringement of, or induced infringement of at least claims 1, 3, 10, 11, 12, 14, 16 of the ‘769 patent. Novembal further claims that Closure Systems’ infringement has been willful.

In this lawsuit, the Indiana patent attorney for Novembal lists a single count: “Patent Infringement of U.S. Patent No. 9,199,769 Pursuant to 35 U.S.C. § 271.”

Novembal seeks damages, including punitive damages, as well as injunctive relief, costs and attorneys’ fees.

May 16, 2016

Indiana Patent Litigation: Second Lawsuit by Lippert Against MORryde and MOR/ryde Filed

By Overhauser Law Offices, LLC

South Bend, Indiana – Plaintiffs Lippert Components Manufacturing, Inc. of Elkhart, Indiana and Backsaver International, Inc. d/b/a Gorilla-Lift of Somerset, Kentucky filed a patent infringement lawsuit in the Northern District of Indiana. Defendants are MORryde International, Inc. and MOR/ryde Inc.

This lawsuit alleging patent infringement follows another recent lawsuit, also alleging patent infringement, that Lippert filed against Defendants recently. That lawsuit, filed by Lippert as sole Plaintiff, asserted infringement of three patents: U.S. Patent Nos. 6,182,401; 6,176,045 and 6,598,354.

This second lawsuit adds Backsaver as a second Plaintiff and asserts infringement of different intellectual property, namely U.S. Patent No. 6,550,840, entitled “Tailgate Lift Assembly.”

Indiana patent lawyers for Plaintiffs contend that infringement by Defendants was willful and deliberate in a complaint listing a single count, “Infringement of U.S. Patent No. 6,550,840.” Plaintiffs ask the Indiana federal court for damages, including treble damages, as well as injunctive relief, costs and attorneys’ fees.

May 10, 2016

Indiana Patent Litigation: Lippert Sues Alleging Infringement of Patented RV Components

By Overhauser Law Offices, LLC

South Bend, Indiana – Patent attorneys for Plaintiff Lippert Components Manufacturing, Inc. filed an infringement lawsuit against Defendants MORryde International, Inc. and MOR/ryde Inc. All parties are based in Elkhart, Indiana.

Plaintiff, a vendor of recreational vehicle components, alleges that Defendants have infringed U.S. Patent Nos. 6,182,401 (“‘401 Patent”), 6,176,045 (“‘045 Patent”), and 6,598,354 (“‘354 Patent”). These patents, all entitled “Retractable Room Support Mechanism,” have been issued by the U.S. Patent and Trademark Office.

Plaintiff specifically accuses Defendants of infringing the patents-in-suit directly, jointly, contributorily, and/or by inducement by making, using, selling, offering for sale, and/or importing Defendants’ “Angled Slide-Out Tube Frame” and “Forest River Slide-Out Frame.” Plaintiff contends that Defendants’ infringement has been willful and deliberate.

In this litigation, the following claims have been made:

• Count I: Infringement of U.S. Patent No. 6,182,401
• Count II: Infringement of U.S. Patent No. 6,176,045

• Count III: Infringement of U.S. Patent No. 6,598,354

Plaintiff seeks injunctive relief, damages and attorneys’ fees.

April 21, 2016

Indiana Patent Litigation: Bloomington-Based Cook Medical Sued for Patent Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Patent attorneys for Plaintiff Stone Basket Innovations LLC (“SBI”) of Austin, Texas filed a lawsuit in the Eastern District of Texas asserting patent infringement. The case was transferred to the Southern District of Indiana.

Plaintiff SBI alleges that Defendant Cook Medical LLC (“Cook”) of Bloomington, Indiana infringed U.S. Patent No. 6,551,327 (the “‘327 patent”) entitled “Endoscopic Stone Extraction Device with Improved Basket.” This litigation lists that assertion, “infringement of U.S. Patent No. 6,551,327,” as its sole count.

SBI seeks a judgment that Cook has infringed one or more of the claims of the ‘327 patent literally and/or under the doctrine of equivalents. Further, SBI asks the court to determine that Cook’s infringement was willful and that the case is exceptional.

Plaintiff asks the court for injunctive relief and compensatory damages. It also seeks an award of enhanced damages under 35 U.S.C. § 284 and attorney fees and costs under 35 U.S.C. § 285.

April 14, 2016

Indiana Patent Litigation: Infringement of Collision Warning Patent Alleged in Indiana Lawsuit

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Patent lawyers for Plaintiff Gary D. Pignato of Illinois filed an infringement lawsuit in the Southern District of Indiana against Defendants Mobileye, Inc. of Jericho, New York and its parent company Mobileye N.V. of Jerusalem, Israel.

Defendants have been sued on allegations of infringing U.S. Patent No. 6,240,346 (“the ‘346 patent”), titled “System with Light Display and Data Recorder for Monitoring Vehicle in Relation to Adjacent Vehicle.” The ‘346 patent is directed to a system for mounting in a vehicle for monitoring leading and trailing vehicles as well as generating and storing data relating to these vehicles, such as speed and proximity to the vehicle containing the technology. This patent has been issued by the U.S. Patent and Trademark Office.

Plaintiff alleges that Defendants’ Mobileye 5-Series line of driver-assistance systems, and in particular the Mobileye 560 System, include Forward Collision Warning technology that infringes the ‘346 patent. Plaintiff asserts that, although it offered to license to Defendants the technology protected by the ‘346 patent, Defendants instead chose to manufacture the accused products without such a license and, in doing so, infringe multiple claims of Plaintiff’s patent.

In this lawsuit, filed by Indiana patent attorneys for Plaintiff, the following claims are alleged:

• Count I: Direct Infringement of the ‘346 Patent
• Count II: Inducement to Infringe the ‘346 Patent

• Count III: Contributory Infringement of the ‘346 Patent

Plaintiff Pignato seeks injunctive relief; damages, including treble damages if infringement is found and determined to be willful; costs and attorneys’ fees.

March 17, 2016

Indiana Patent Litigation: Lilly Sues Alleging Infringement of Patented Osteoporosis Drug

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana patent lawyer for Plaintiff Eli Lilly and Company of Indianapolis, Indiana (“Lilly”) filed a patent infringement lawsuit in the Southern District of Indiana. The allegations of infringement have been directed at Defendants Teva Pharmaceuticals USA, Inc. of North Wales, Pennsylvania and its parent company Teva Pharmaceutical Industries Ltd. of Israel.

This lawsuit was instituted in response to Abbreviated New Drug Application (“ANDA”) No. 208569, which was filed with the U.S. Food and Drug Administration by Teva USA. The ANDA seeks approval to market a generic version of Forteo®, a prescription drug offered by Lilly to treat osteoporosis.

At issue in this litigation are Lilly’s U.S. Patent Nos. 6,770,623; 7,144,861; 7,550,434; 6,977,077; 7,163,684; and 7,351,414. All have been issued by the U.S. Patent and Trademark Office. Lilly contends that the filing of the ANDA constitutes direct infringement, inducement to infringe and contributory infringement of these patents under U.S. patent law.

Lilly seeks equitable relief, costs and attorney’s fees.

March 10, 2016

Federal Circuit Patent Litigation: En Banc Federal Circuit Retains Its Rules of Patent Exhaustion

By Overhauser Law Offices, LLC

Washington, D.C. – The Federal Circuit, sitting en banc, reaffirmed its rules of patent exhaustion in a 10-2 decision. It concluded that the Supreme Court decisions in Quanta Computer, Inc. v. LG Electronics, Inc., and Kirtsaeng v. John Wiley & Sons, Inc., did not require any change in the law of patent exhaustion. The 99-page decision was consistent with the position argued in the amicus brief filed by the American Intellectual Property Law Association.

Specifically, the Federal Circuit held that a patentee, when selling a patented article subject to a single-use/no-resale restriction that is lawful and clearly communicated to the purchaser, does not give the buyer, or downstream buyers, the resale/reuse authority that has been expressly denied. Explaining that the ruling in Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992) remains unchanged, Judge Taranto wrote the following:

Such resale or reuse, when contrary to the known, lawful limits on the authority conferred at the time of the original sale, remains unauthorized and therefore remains infringing conduct under the terms of § 271. Under Supreme Court precedent, a patentee may preserve its § 271 rights through such restrictions when licensing others to make and sell patented articles; Mallinckrodt held that there is no sound legal basis for denying the same ability to the patentee that makes and sells the articles itself. We find Mallinckrodt’s principle to remain sound after the Supreme Court’s decision in Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), in which the Court did not have before it or address a patentee sale at all, let alone one made subject to a restriction, but a sale made by a separate manufacturer under a patentee-granted license conferring unrestricted authority to sell.

The Federal Circuit also held that a U.S. patentee, by merely selling or authorizing the sale of a U.S.-patented article abroad, does not authorize the buyer to import the article and sell and use it in the United States, which are infringing acts absent authority from the patentee. Explaining that the ruling in Jazz Photo Corp. v. International Trade Comm’n, 264 F.3d 1094 (Fed. Cir. 2001), remains unchanged, Judge Taranto wrote the following:

Jazz Photo’s no exhaustion ruling recognizes that foreign markets under foreign sovereign control are not equivalent to the U.S. markets under U.S. control in which a U.S. patentee’s sale presumptively exhausts its rights in the article sold. A buyer may still rely on a foreign sale as a defense to infringement, but only by establishing an express or implied license–a defense separate from exhaustion, as Quanta holds–based on patentee communications or other circumstances of the sale. We conclude that Jazz Photo’s no-exhaustion principle remains sound after the Supreme Court’s decision in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013), in which the Court did not address patent law or whether a foreign sale should be viewed as conferring authority to engage in otherwise infringing domestic acts. Kirtsaeng is a copyright case holding that 17 U.S.C. §109(a) entitles owners of copyrighted articles to take certain acts “without the authority” of the copyright holder. There is no counterpart to that provision in the Patent Act, under which a foreign sale is properly treated as neither conclusively nor even presumptively exhausting the U.S. patentee’s rights in the United States.

Judge Dyk filed a dissenting opinion, which was joined by Judge Hughes, that generally agreed with the position argued in the government’s amicus brief.

With respect to Mallinckrodt, Judge Dyk maintained that the decision was wrong from the outset and cannot now be reconciled with the Supreme Court’s Quanta decision. “We exceed our role as a subordinate court by declining to follow the explicit domestic exhaustion rule announced by the Supreme Court,” he added. With respect to Jazz Photo, he wrote that he would retain the ruling if read to say that a foreign sale does not always exhaust U.S. patent rights, but it may if the authorized seller failed to explicitly reserve those rights.

Background

Lexmark makes and sells patented ink cartridges for its printers. It sells cartridges under one plan that permits buyers to use them as they wish, and at a discounted price under a “Return Program” plan that limits buyers to a single use of the cartridge and requires the cartridges to be returned to Lexmark for recycling.

Lexmark brought infringement actions in the district court and the International Trade Commission against Impression Products and other makers of after-market ink cartridges for Lexmark printers. Most of the district court defendants settled the litigation with Lexmark.

As to Lexmark’s action against Impression Products, the district court entered a stipulated judgment on Impression Products motion to dismiss. It held that Lexmark’s patent rights in cartridges first sold in the United States were exhausted under Quanta, but that the rights were retained for cartridges first sold abroad under Jazz Photo.

On appeal, the Federal Circuit sua sponte granted en banc review of whether the appellate court’s ruling on conditional sales in the U.S. must be overruled in light of Supreme Court’s Quanta decision, and whether the appellate court’s Jazz Photo ruling on international exhaustion must be overruled in light of the Supreme Court’s ruling on copyright exhaustion in Kirtsaeng.