Patent Infringement

October 30, 2015

U.S. Supreme Court to Hear Patent Infringement Litigation Involving Indiana-Based Zimmer

Washington, D.C. -The United States Supreme Court has agreed to hear appeals in two separate lawsuits, Halo Electronics, Inc. v. Pulse Electronics, Inc., et al., Case No. 14-1513, and Stryker Corp, et al. v. Zimmer, Inc., et al., Case No. 14-1520, on the issue of willfulness as a prerequisite for awarding enhanced damages in patent infringement litigation. The two cases were consolidated.

Under 35 U.S.C. § 284 of the Patent Act, a district court “may increase … damages up to three times the amount found or assessed.” Despite this language, which on its surface is permissive and discretionary, the Federal Circuit imposes a stricter test. For a district court to award enhanced damages under § 284, this test requires that a patentee prove by clear and convincing evidence that infringement was “willful.” A determination of willfulness requires a finding of both (1) an objectively high likelihood that the infringer’s actions constituted infringement, and (2) that this likelihood was either known or so obvious that it should have been known to the accused infringer.

The questions presented to the Supreme Court are:

1. Has the Federal Circuit improperly abrogated the plain meaning of 35 U.S.C. § 284 by forbidding any award of enhanced damages unless there is a finding of willfulness under a rigid, two-part test, when this Court recently rejected an analogous framework imposed on 35 U.S.C. § 285, the statute providing for attorneys’ fee awards in exceptional cases?

2. Does a district court have discretion under 35 U.S.C. § 284 to award enhanced damages where an infringer intentionally copied a direct competitor’s patented invention, knew the invention was covered by multiple patents, and made no attempt to avoid infringing the patents on that invention?

The Court granted motions by Independent Inventor Groups and Nokia Technologies OY, et al. to file briefs as amici curiae.

Practice Tip: In December 2014, the Federal Circuit overturned the decision of the Western District of Michigan to triple the damages awarded to Stryker, reducing the amount from $228 million to $70 million.

October 26, 2015

Indiana Patent Litigation: German Lawyers and Law Firm Sued on Allegations of Misappropriation of Intellectual Property

By Overhauser Law Offices, LLC

South Bend, Indiana – An Indiana patent attorney for Plaintiffs Never Lost Golf, LLC of South Bend, Indiana; Michael Carnell, a domiciliary of California who resides in Berlin, Germany and who does business as The Never Lost Golf Tee Saver and The Never Lost Golf Tee Saver Mat System (“NLG”); and Teresa O’Keefe and Grant Holloway, Trustees for the N.L.G. Living Trust filed a lawsuit in the Northern District of Indiana alleging infringement of NLG’s German Patent A63B 57/100, which has been filed with the German Patent Office. Patent protection for NLG has also been sought with the U.S. Patent and Trademark Office.

Three Defendants in this litigation, Maia Steinert, Chrisoph Stephan and Ralf Menwegen, are partners and/or members of Steinert & Stephan, a German law firm. Steinert has been accused by Plaintiffs of “aggregious [sic] conduct in asserting ownership interest in the NLG German patent.” Stephan and Menwegen were accused of having been “involved in the patent process.”

Carnell contends that he retained Steinert & Stephan in 2010 to represent him in filing for a German patent for the Never Lost Golf product. He adds in his complaint that any intellectual property rights obtained by these filings were supposed to accrue to him alone. Carnell asserts that, subsequent to hiring the Steinert & Stephan and utilizing their services in pursuit of a German patent, Steinert applied for a Never Lost Golf patent with the United States Patent and Trademark Office. This filing, states Carnell, includes an assertion by Steinert that she was the sole owner of the patent rights associated with the NLG product. He states that her actions demonstrate an attempt to illegally claim rights to intellectual property that she knew was not hers, both in the United States and in Germany.

Two additional Defendants, Markus Schumann and Harribert Pamp, have been named as co-conspirators. Plaintiffs contend that they conspired with Steinert to commit fraud and perjury in support of Steinert’s assertion of ownership in NLG’s German patent.

Defendants seek equitable relief along with damages, costs and attorney fees.

October 14, 2015

Indiana Patent and Trademark Litigation: Global Archery Sues Seattle-Based Company for Infringement

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – An Indiana intellectual property attorney for Global Archery Products, Inc. of Ashley, Indiana commenced litigation in the Northern District of Indiana alleging trademark and patent infringement by Jordan Gwyther d/b/a Larping.org and UpshotArrows.com of Seattle, Washington.

Two patents are at issue in this lawsuit: U.S. Patent No. 8,449,413 (the “`413 Patent”) and U.S. Patent No. 8,932,159 (the “`159 Patent”). Both are entitled “Non-Lethal Arrow.” Also at issue are U.S. Trademark Registration No. 4,208,867 and 4,208,868 for ARCHERY TAG for use in connection with non-lethal arrows. The patents and trademarks have been registered by the U.S. Patent and Trademark Office.

Global contends that Jordan Gwyther d/b/a Larping.org (“Larping”) is selling and offering for sale several products including a “Crossbow Bolt,” a “Flat Tip Larp Arrow,” a “Glow in the Dark Larp Arrow” and a “Round Tip Larp Arrow.” These arrows are marketed at www.upshotarrows.com. Global asserts that Larping is violating Global’s trademark rights by, inter alia, using the ARCHERY TAG trademark on advertising and as a paid “key word” on one or more search engines in connection with the marketing of these products. Global also claims that Larping’s products infringe upon two of Global’s patents.

In addition to patent infringement and trademark infringement, Global asserts various additional claims against Larping. The counts listed in this federal lawsuit are as follows:

• Count I: Infringement of the ‘413 Patent by Larping
• Count II: Infringement of the ‘159 Patent by Larping
• Count III: Infringement of Federal Trademarks
• Count IV: False Designation of Origin/Unfair Competition
• Count V: False Advertising
• Count VI: Tortious Interference with Contractual Relations
• Count VII: Tortious Interference with Business Relationships
• Count VIII: Criminal Mischief

• Count IX: Deception

Global seeks equitable relief along with damages, including punitive damages, costs and attorney fees.

October 12, 2015

Federal Circuit Law: Laches Preserved as a Defense to Patent Infringement

By Overhauser Law Offices, LLC

Washington, D.C. – The Court of Appeals for the Federal Circuit decided the matter of SCA Hygiene v. First Quality Baby Products, a case about adult incontinence products.

At issue in the case was the legal doctrine of “laches.” The laches doctrine penalizes a plaintiff who “sleeps on” his or her rights by waiting a long time to file a lawsuit after learning of a violation of those rights. Laches, an equitable defense, protects those who would be harmed by the assertion of those rights after a plaintiff’s delay. For example, in the case of a lawsuit asserting patent infringement, laches could work against a patent owner who saw an infringing product emerge in 2000 but waited until 2015 to sue, after a significant investment of time and resources had been put into the product.

The Federal Circuit had long recognized laches as a limitation on patent owners’ rights. But a recent Supreme Court case, Petrella v. MGM, called the doctrine into question. In Petrella, the Supreme Court held that laches was not a defense in copyright cases. Given the ruling in Petrella, the Federal Circuit opted to hear this litigation en banc to determine whether laches should still be a defense in patent cases.

The court held that the defense should be preserved. Proponents of laches in the patent-infringement context (see, e.g., Electronic Frontier Foundation‘s friend-of-the-court brief), contend that patent defendants and copyright defendants are in very different positions when it comes to defending against stale claims. Patent defendants, unlike their copyright counterparts, often defend themselves by showing that the patent owner’s claimed invention was obvious at the time of filing (thus making the patent invalid). But, by delaying a lawsuit, a patent owner can make it difficult for the defendant to find evidence of what people in the field knew about or would have found obvious back when the application was filed. This is especially true in the Internet age, those proponents argue. Websites are constantly rewritten. Software code gets lost or is not documented. In sum, without the defense of laches, patent owners can sit and wait for time to destroy the evidence that an alleged infringer needs to defend herself.

The decision came out 6-5, meaning five judges of the Federal Circuit think Petrella changed the availability of the doctrine of laches in both copyright infringement and patent infringement lawsuits. Given the closeness of the decision, this case may go to the Supreme Court.

This edited article was provided by the Electronic Frontier Foundation, a nonprofit group which advocates for innovators and users of technology. The article has been licensed under the Creative Commons Attribution License.

October 1, 2015

Indiana Patent Litigation: Additional Complaint Asserting Patent Infringement Filed Against Lippert

By Overhauser Law Offices, LLC

Elkhart, Indiana – Indiana patent attorneys for Lifetime Industries, Inc. and LTI Flexible Products, Inc. of Modesto, California have filed another complaint asserting patent infringement against Lippert Components Manufacturing, Inc. of Elkhart, Indiana. This lawsuit alleges that Defendant infringed Patent Nos. 6,966,590 for a “Two-Part Seal for a Slide-Out Room,” 7,614,676 for a “Resilient Seal for Mobile Living Quarters,” and 7,614,677 for a “Seal Assembly for Mobile Living Quarters.” These patents have been issued by the U.S. Patent and Trademark Office.

Lippert, a subsidiary of Drew Industries, is a supplier serving the recreational vehicle, manufactured housing, trailer, and bus industries. It offers a line of products intended to improve the mobile lifestyle. Although Plaintiffs have a principal place of business in California, both operate a manufacturing facility in Elkhart, Indiana.

Three patents – Patent Nos. 6,966,590 (“the ‘590 patent”), 7,614,676 (“the ‘676 patent”) and 7,614,677 (“the ‘677 patent”) – are at issue in this intellectual property litigation. Defendant Lippert has been accused of making, offering for sale and/or selling products that infringe upon one or more of these patents. Some of these activities purportedly occurred on two or more recreational vehicles manufactured by facilities in Indiana.

The first accused product is a two-part seal that allegedly infringes one or more claims of the ‘590 patent. The second and third accused products, both “Slide Armor” seals, purportedly infringe as many as all of the patents-in-suit.

A cease-and-desist letter was sent to Jason Lippert, the CEO of Defendant, in March 2015. Plaintiff contends that, despite this letter and the communications that followed, Defendant’s manufacture, offer for sale, and sale of each of the accused products has continued.

In this Indiana complaint, patent lawyers for Plaintiffs assert the following claims:

• Count 1: Direct Infringement of the ‘590 Patent
• Count 2: Direct Infringement of the ‘676 Patent
• Count 3: Direct Infringement of the ‘677 Patent
• Count 4: Induced Infringement of the ‘590 Patent

• Count 5: Contributory Infringement of the ‘590 Patent

Plaintiffs ask the court to enter a declaration of direct, induced and contributory infringement as well as a declaration that infringement has been willful. Plaintiffs also ask for injunctive relief; damages, including treble damages; and costs and attorneys’ fees.

August 31, 2015

Indiana Patent Law: Court Orders TapLogic to Provide Additional Detail Regarding Non-Infringement Contentions

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Magistrate Judge Susan Collins ordered TapLogic, LLC to serve Agri-Labs with more-detailed preliminary non-infringement contentions (“PNICs”) in the ongoing patent litigation between TapLogic and Agri-Labs Holdings, LLC over TapLogic’s smart phone application “Ag PhD Soil Test.”

At issue in this patent litigation is U.S. Patent No. 8,286,857 (the “`857 Patent” or the “patent-in-Suit”), to which Agri-Labs claims ownership. The patent-in-suit, which was issued based upon an application filed by inventor Tony Wayne Covely, has been registered by the U.S. Patent Office. The `857 Patent generally relates to a system and method for performing soil analysis that uses smart phones, applications for smart phones, soil containers having unique identifiers, and global positioning (“GPS”).

In January, an Indiana patent attorney for Agri-Labs filed an intellectual property complaint in the Northern District of Indiana Fort Wayne Division alleging that TapLogic infringed on the ‘857 Patent. TapLogic counterclaimed. It asked the court for a declaratory judgment that it has not infringed Agri-Labs’ patent and that the claims of the patent are invalid. On July 1, 2015, the parties exchanged their respective contentions regarding infringement.

The instant order addresses Agri-Labs’ request that the court order TapLogic to provide a more detailed PNIC. Agri-Labs asserts that the PNICs it received were deficient, providing “nothing more than vague, conclusory language that simply mimics the language of the claims when identifying its theories of non-infringement.”

As is true for a party serving preliminary infringement contentions (“PICs”), a party serving PNICs must provide an infringement-claim chart for each accused product or process (the “accused instrumentality”). Each claim chart must contain the following contentions: (1) “each claim of each patent in suit that is allegedly infringed by the accused instrumentality;” (2) “[a] specific identification of where each limitation of the claim is found within each accused instrumentality, including . . . the identity of the structures, acts, or materials in the accused instrumentality that performs the claimed function”; and (3) “[w]hether each limitation of each asserted claim is literally present in the accused instrumentality or present under the doctrine of equivalents.”

The court noted that TapLogic’s PNICs merely recite the language of each claim and then deny that its Ag PhD Soil Test performs that function or includes that feature. As an example, one portion of Claim 1 was described as “scanning said unique identifier associated with said soil sample container containing said at least one soil sample with a handheld remote terminal, wherein said handheld remote terminal includes a handheld remote terminal sampling application.” In reply, Agri-Labs stated that its application “does NOT scan said unique identifier associated with said soil sample container containing said at least one soil sample with a handheld remote terminal, wherein said handheld remote terminal includes a handheld remote terminal sampling application.”

Consequently, the court agreed that TapLogic’s PNICs were inadequate because they lacked sufficient detail. It ordered TapLogic to serve Agri-Labs with detailed PNICs.

August 26, 2015

Indiana Patent Litigation: Court Permits Bonutti to Withdraw Counterclaim, Denies Attorneys’ Fees to Biomet

By Overhauser Law Offices, LLC

Hammond, Indiana – In the matter of Biomet, Inc. v. Bonutti Skeletal Innovations, LLC, the Northern District of Indiana, Hammond Division granted Defendant Bonutti’s motion to dismiss with prejudice its counterclaim. Bonutti’s counterclaim alleged that Biomet had infringed U.S. Patent No. 7,806,897 (the “‘897 patent”). Patent attorneys for Biomet Inc. asked the court to impose attorneys’ fees as a condition of the dismissal but this motion was denied.

On March 8, 2013, patent lawyers for Plaintiff Biomet filed an action for declaratory judgment against Bonutti Skeletal Innovations LLC. At issue were contentions of patent infringement of fifteen patents. Bonutti counterclaimed against Biomet and several other counterclaim Defendants. This multi-faceted dispute had been resolved with respect to some of the patents prior to this order. Other allegations of patent infringement remained.

Among the assertions by Bonutti that had remained was a counterclaim that Biomet had infringed the ‘897 patent. In this order, the court granted Bonutti’s request under Rule 41(a)(2) to dismiss this counterclaim with prejudice. The court also addressed Biomet’s contention that it should be awarded attorneys’ fees as a “prevailing party” in this portion of the patent litigation.

The court denied attorneys’ fees to Biomet on several grounds. First, it noted that, while attorney’s fees are available as part of a Rule 41(a)(2) dismissal without prejudice, this is justified as compensation for requiring a defendant to incur unnecessary litigation expenses. That same rationale does not apply where, as in this case, the dismissal is with prejudice.

Additionally, the court noted that any request for attorneys’ fees was premature. Such fees are only available to the “prevailing party” and Biomet had not established itself as such a prevailing party. Biomet may yet be able to recover attorneys’ fees if, at the conclusion of the patent lawsuit, Biomet is held to be the prevailing party.

August 10, 2015

Indiana Patent Litigation: Lilly Files New Lawsuit Alleging Patent Infringement of Alimta

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana patent attorney for Eli Lilly and Company of Indianapolis,

Indiana, in conjunction with Washington, D.C. co-counsel, sued for patent infringement in the Southern District of Indiana. Lilly claims that Emcure Pharmaceuticals Ltd. of Pune, India; Heritage Pharma Labs, Inc. of East Brunswick, New Jersey; and Heritage Pharmaceuticals, Inc. of Eatontown, New Jersey, will infringe and/or have infringed Lilly’s patented “Novel Antifolate Combination Therapies,” U.S. Patent Number 7,772,209 (the “‘209 patent”), which has been issued by the U.S. Patent Office.

Plaintiff Lilly is in the business of, among other things, the manufacture and sale of various pharmaceuticals. Emcure Pharmaceuticals Ltd. is a generic pharmaceutical company engaged in developing, manufacturing and marketing a broad range of pharmaceutical products. Heritage Labs is believed to perform functions relating to Emcure’s active pharmaceutical ingredient as well as formulation research and development. Heritage Pharmaceuticals is thought to be engaged in the acquisition, licensing, development, marketing, sale, and distribution of generic pharmaceutical products for the U.S. prescription drug market on behalf of Emcure.

Alimta®, which is licensed to Lilly, is a chemotherapy agent used for the treatment of various types of cancer. The drug 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 is also indicated as a single-agent treatment for patients with locally advanced or metastatic nonsquamous non-small cell lung cancer after prior chemotherapy. Additionally, Alimta is used 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 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 lawsuit for patent infringement, submitted to the court by an Indiana patent lawyer, was triggered by the filing by defendant Emcure Pharmaceuticals of an Abbreviated New Drug Application (“ANDA”) with the U.S. Food and Drug Administration. In that ANDA, Emcure Pharmaceuticals seeks approval to manufacture and sell its pemetrexed for injection, 500 mg/vial product prior to the expiration of the ‘209 patent.

This patent litigation asserts a single count: infringement of U.S. Patent No. 7,772,209. Lilly asks for a judgment that Emcure 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 that use of the intellectual property currently covered by the ‘209 patent shall be protected until its expiration date; injunctive relief; attorneys’ fees and expenses; as well as other relief.

August 6, 2015

Indiana Patent Litigation: Lilly Asks Indiana Court to Rule That It Has Not Infringed Patent

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana patent attorney for Eli Lilly and Company of Indianapolis, Indiana filed a patent-related lawsuit against Uropep Biotech GbR of Garbsen, Germany in the Southern District of Indiana.

Plaintiff Lilly is in the business of, among other things, the manufacture and sale of various pharmaceuticals including a drug trademarked as Cialis®. At issue in this intellectual property lawsuit is U.S. Patent No. 8,791,124, entitled “Use of Phosphordiesterase Inhibitors in the Treatment of Prostatic Diseases” (“the ‘124 patent”), which has been issued by the U.S. Patent Office.

Lilly states that the ‘124 patent was issued to Defendant Uropep Biotech. Lilly further states in this Indiana lawsuit that an entity related to Uropep Biotech, Erfindergemeinschaft UroPep GbR, sued Lilly last month in the Eastern District of Texas asserting that Lilly had infringed the ‘124 patent by manufacturing and selling Cialis.

Lilly contends that Erfindergemeinschaft does not own the patent-in-suit and that, consequently, the Texas lawsuit was improper. It further asserts that the Texas lawsuit provides evidence of an actual and justiciable controversy between Lilly and Uropep Biotech sufficient to warrant this instant Indiana lawsuit wherein the Indiana patent lawyer for Lilly asks the court for declaratory relief adjudging that it has not infringed the ‘124 patent. Lilly also asks the court for a declaration that the ‘124 patent is invalid as well as attorney’s fees and costs.

July 28, 2015

Supreme Court Keeps Brulotte – Post-Expiration Patent Royalties are Still Unlawful Per Se

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Supreme Court recently decided a patent-royalty lawsuit, Kimble v. Marvel Entertainment, LLC. The Court, divided 6-3, ruled against Kimble.

Stephen Kimble sued Marvel in 1997 for infringing his patent, U. S. Patent No. 5,072,856,

with its “Web Blaster,” a toy that allowed users to mimic Spider-Man’s web-slinging superpower. The litigation ended with a settlement wherein Marvel purchased Kimble’s patent for a lump sum and agreed to pay a 3% perpetual royalty on future sales.