Patent Infringement

May 28, 2014

Indiana Patent Law: Anchor Fails to Meet its Burden to Support Transfer of Indiana Patent Infringement Litigation

Fort Wayne, Indiana – Magistrate Judge Roger Cosbey of the Northern District of Indiana denied the motion for transfer filed by patent attorneys for Anchor Packaging, Inc. of St. Louis, Missouri (“Anchor”). Anchor sought a transfer of the declaratory judgment action filed by Mullinix Packages, Inc. of Fort Wayne, Indiana (“Mullinix”) to the Eastern District of Missouri where Anchor has a related, but later-filed infringement suit pending against Mullinix. Both patent infringement lawsuits pertain to the alleged infringement by Mullinix of Patent Nos. D679,587; D675,919 and D570,681, which were issued by the U.S. Patent Office.

Anchor and Mullinix are competitors in the commercial packaging industry. Prior to 2010, Anchor had been the primary supplier of mashed potato containers to Bob Evans Farms, Inc., a position now assumed by Mullinix. According to Mullinix, mashed potato container sales peak dramatically during the fourth quarter of the year and Mullinix’s ability to meet Bob Evans’s demand for containers during this period is critical to maintaining a successful relationship. It was around this time that patent lawyers for Anchor demanded that Mullinix cease and desist selling a tray that Anchor asserted was of a substantially similar design as trays claimed in three of Anchor’s patents.

While the cease-and-desist letter sent by Anchor’s patent counsel indicated that Anchor’s “interest is a resolution of this matter and not litigation,” Mullinix filed a complaint for declaratory judgment in the Northern District of Indiana shortly thereafter. Several weeks later, Anchor responded by filing a complaint for patent infringement in the Eastern District of Missouri.

In this opinion, Magistrate Judge Roger Cosbey, writing for the Northern District of Indiana, addresses Anchor’s motion to transfer Mullinix’s Indiana complaint for declaratory judgment for patent non-infringement to Missouri.

Anchor argued that the case should be transferred because (1) Mullinix filed its declaratory judgment action in anticipation of Anchor’s infringement suit, (2) a critical non-party witness is outside this Court’s subpoena power, but within the range of the Eastern District of Missouri, and (3) the Eastern District of Missouri is a more convenient forum.

The court evaluated Anchor’s request for transfer under § 1404(a) under precedent set by the Seventh Circuit. Under § 1404(a), a court may transfer a case if the moving party shows that: (1) venue was proper in the transferor district, (2) venue and jurisdiction would be proper in the transferee district, and (3) the transfer will serve in the convenience of the parties and the witnesses as well as the interests of justice.

As neither party disputed that both the Indiana and Missouri courts have jurisdiction and are proper venues, the court focused its analysis on the third factor. As the party requesting transfer, Anchor has the burden to show that the Eastern District of Missouri would be “clearly more convenient” than the Northern District of Indiana. In evaluating convenience, the factors to consider are: “(1) the plaintiff’s choice of forum, (2) the situs of the material events, (3) the relative ease of access to sources of proof, (4) the convenience of the parties, and (5) the convenience of the witnesses.”

The first factor, the plaintiff’s choice of forum, was held to be neutral. In general, a plaintiff’s choice of forum is entitled to substantial deference, particularly where the chosen forum is the plaintiff’s home forum. However, the court found that this factor did not weigh in either direction. In this case, there are two plaintiffs in two different fora. As a result, one of them will necessarily be disturbed.

The evaluation of the situs of the material events weighed against transfer. In patent infringement actions “the situs of the injury is the location, or locations, at which the infringing activity directly impacts on the interests of the patentee.” Mullinix is headquartered in Fort Wayne, Indiana, which is in the Northern District of Indiana, and keeps its documents pertaining to the accused infringing products in Fort Wayne. Additionally, two of the individuals who worked on the accused infringing products work and reside within the district.

For similar reasons, the court held the third factor, relative ease of access to sources of proof, to weigh against transfer.

The court briefly addressed the fourth factor, the convenience of the parties, noting that there was no way to avoid inconveniencing either one party or the other. In such a circumstance, the court held that “when the inconvenience of the alternative venues is comparable there is no[] basis for a change of venue; the tie is awarded to the plaintiff[.]”

Finally, the court addressed the fifth factor, the convenience of non-party witnesses, noting that this element was “often considered the most important factor in the transfer analysis.” The court noted with some displeasure that the parties had perhaps been disingenuous in arguing this factor. After a discussion of the evidence that had been submitted, it concluded that the parties had failed to provide it with much enlightenment on the subject and, as a result, the court was largely left to speculate about the convenience of non-party witnesses. The court thus held that this analysis-of-transfer factor was neutral.

In sum, it was found that the convenience factors did not support transfer.

The court also evaluated the interests-of-justice inquiry. On the whole, these factors – the speed to trial, familiarity with the applicable law, desirability of resolving controversies and relation of each community to the controversy – also weighed against transfer.

Finally, the court addressed the first-filed analysis under Federal Circuit precedent, which governs declaratory judgment actions in patent cases. Given that no “sound reason” for transfer had been found in the earlier analysis, court dismissed the first-filed analysis as “ancillary” and largely non-dispositive.

Practice Tip #1: The first-to-file rule is a doctrine of federal comity that generally favors pursuing only the first-filed action when multiple lawsuits involving the same claims are filed in different jurisdictions. It was designed to avoid conflicting decisions and promote judicial efficiency. Finding an exception to the first-to-file rule requires a “sound reason that would make it unjust or inefficient to continue the first-filed action.”

Practice Tip #2: A court may also consider the extent to which a declaratory judgment action is anticipatory and motivated by forum shopping. However, the Federal Circuit has repeatedly held that a finding that a filing was anticipatory does not in itself constitute sufficient legal reason to transfer or dismiss the first-filed case.

April 28, 2014

Indiana Patent Litigation: CleanTech Sues Pacific Ethanol Magic Valley

By Overhauser Law Offices, LLC

Indianapolis, Indiana – A patent attorney for GS CleanTech Corporation of Alpharetta, Georgia (“CleanTech”) filed a patent infringement lawsuit in the District of Idaho alleging that Pacific Ethanol Magic Valley, LLC of Burley, Idaho (“Pacific”); ICM, Inc. of Colwich, Kansas; and David J. Vander Griend of Wichita, Kansas infringed Patent Nos. 7,601,858 – “Method of Processing Ethanol Byproducts and Related Subsystems“; 8,008,516 – “Method of Processing Ethanol Byproducts and Related Subsystems“; 8,008,517 – “Method of recovering Oil From Thin Stillage“; and 8,283,484 – “Method of Processing Ethanol Byproducts and Related Subsystems“, which have been issued by the U.S. Patent Office. The case was transferred to the Southern District of Indiana as part of Multidistrict Litigation No. 2181.

This litigation began with an assertion of patent infringement by CleanTech of the ‘858 patent, which was issued on October 13, 2009. CleanTech sued numerous Defendants alleging infringement of that patent shortly after its issuance. The Defendants accused of patent infringement in prior patent infringement litigation include: Big River Resources Galva, LLC; Big River Resources West Burlington, LLC; Cardinal Ethanol, LLC; ICM, Inc.; LincolnLand Agri-Energy, LLC; David J. Vander Griend; Iroquois Bio-Energy Co., LLC; Al-Corn Clean Fuel; Blue Flint Ethanol, LLC; ACE Ethanol, LLC; Lincolnway Energy, LLC; United Wisconsin Grain Producers, LLC; Bushmills Ethanol, Inc.; Chippewa Valley Ethanol Co.; Heartland Corn Products, Adkins Energy, LLC, Little Sioux Corn Processors, LLLP; Southwest Iowa Renewable Energy, LLC; Western New York Energy, LLC; Homeland Energy Solutions, LLC; Pacific Ethanol, Inc.; Guardian Energy, LLC and Pacific Ethanol Stockton LLC. This Indiana patent lawsuit is being overseen in the Southern District of Indiana pursuant to the provisions for Multidistrict Litigation (“MDL”).

Since September 29, 2011, when the court overseeing the MDL issued its order on claim construction with respect to the disputed claims of the ‘858 patent, patentees CleanTech and its parent GreenShift Corp. have also asserted infringement by some of the allegedly infringing Defendants of four additional patents related to the ‘858 patent: U.S. Patent Nos. 8,008,516 (the “‘516 patent”), 8,008,517 (the “‘517 patent”), 8,283,484 (the “‘484 patent”) and, the newest addition, 8,168,037 (“the ‘037 patent”), (the ‘858, ‘516, ‘517, ‘484 and ‘037 patents are, collectively, the “‘858 patent family” or “the patents-in-suit”). Four of the patents in the “‘858 patent family” – the ‘858 patent, the ‘516 patent, the ‘517 patent, and ‘484 patent – have purportedly been infringed by Pacific.

CleanTech claims that the methods claimed increase the efficiency and economy of recovering corn oil. CleanTech’s patented methods recover corn oil by evaporating, concentrating and mechanically separating thin stillage (“stillage”), a byproduct of ethanol produced from corn, into two components: corn oil and a post-recovery syrup (“syrup”) with most of its corn oil removed.

In one embodiment, the patented method comprises initially processing the whole stillage by mechanically separating (such as by using a centrifugal decanter) the whole stillage into distillers wet grains and thin stillage, and then introducing the thin stillage into an evaporator to form a concentrated syrup byproduct. Prior to recombining the then-concentrated syrup with the distillers wet grains, the syrup is introduced into a second mechanical separator, such as a second centrifuge, which is different from the centrifuge that mechanically separated the whole stillage into distillers wet grains and thin stillage. This second centrifuge separates corn oil from the syrup thereby allowing for the recovery of usable corn oil. The syrup that exits the centrifuge is then recombined with the distillers wet grain and dried in a dryer. The corn oil that is extracted from the syrup can be used for various purposes such as feedstock for producing biodiesel.

In this current lawsuit, initiated in the District of Idaho, subsidiary GS CleanTech Corp. is the sole Plaintiff. A patent lawyer for CleanTech asserts the following counts against Pacific:

• Count I: Infringement of U.S. Patent No. 7,601,858
• Count II: Infringement of U.S. Patent No. 8,008,516
• Count III: Infringement of U.S. Patent No. 8,008,517
• Count IV: Infringement of U.S. Patent No. 8,283,484

CleanTech asks the court for preliminary and permanent injunctions prohibiting further infringement of the patents-in-suit; an award of damages adequate to compensate CleanTech for the infringement that has occurred, but in no event less than a reasonable royalty for the use made of the inventions of the patents-in-suit as provided in 35 U.S.C. § 284, together with prejudgment interest from the date the infringement began; and an award to CleanTech of all remedies available under 35 U.S.C. §§ 284, 285 and 154(d).

Practice Tip: More than thirty ethanol-production plants have executed installation and licensing agreements with GreenShift Corp., the parent company of CleanTech, for its corn-oil extraction system. When deciding whether to avoid the potential of being included as an additional defendant in ongoing patent infringement litigation, it’s useful to consult an experienced patent attorney to evaluate the possibility of licensing rights to use the patent(s)-in-suit.

April 25, 2014

Indiana Patent Litigation – Bonutti Research and Joint Active Systems Sue Lantz Medical for Patent Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Patent attorneys for Bonutti Research, Inc. (“Bonutti”) and Joint Active Systems, Inc. (“JAS”), both of Effingham, Illinois, filed an intellectual property lawsuit in the Southern District of Indiana alleging that Lantz Medical, Inc. of Indianapolis, Indiana (“Lantz”) infringed multiple patents: “Orthosis,” Patent No. 5,848,979; “Elbow Orthosis,” Patent No. 7,955,286; “Finger Orthosis,” Patent No. 7,404,804; and “Orthosis,” Patent No. 7,112,179, which have been issued by the U.S. Patent Office.

Bonutti claims ownership by assignment of four patents. The patents at issue are:

• Patent No. 5,848,979 (“the ‘979 patent”), titled “Orthosis,” which generally covers apparatuses for use in effecting relative movement between bones in an arm of a patient, was issued in 1998.
• Patent No. 7,112,179 (“the ‘179 patent”), titled “Orthosis,” which generally covers apparatuses for stretching tissue around a joint of a patient between first and second relatively pivotable body portions, was issued in 2006.
• Patent No. 7,404,804 (“the ‘804 patent”), titled “Finger Orthosis,” which generally covers apparatuses for positioning a joint in a finger on a hand of a patient, was issued in 2008.
• Patent No. 7,955,286 (“the ‘286 patent”), titled “Elbow Orthosis,” which generally covers apparatuses for stretching tissue around a joint of a patient between first and second relatively pivotable body portions, was issued in 2011.

The ‘979, ‘179, ‘286, and ‘804 patents are licensed exclusively to JAS. Among the products that JAS develops and markets are products covered by the patents-in-suit, including the JAS Pro/Sup, JAS EZ Pro/Sup, JAS EZ Elbow, JAS EZ Wrist, and JAS EZ Finger products.

Defendant Lantz manufactures and sells, among other products, the Stat-A-Dyne® ESP, Stat-A-Dyne® Pro/Sup, Stat-A-Dyne® Elbow, and Stat-A-Dyne® WHFO products. Bonutti and JAS contend that these products infringe their patented inventions and are sold in direct competition with products offered for sale by JAS.

In a complaint filed by patent attorneys for Plaintiffs, the following claims are made:

• Count I: Infringement of U.S. Patent No. 5,848,979
• Count II: Infringement of U.S. Patent No. 7,955,286
• Count III: Infringement of U.S. Patent No. 7,404,804
• Count IV: Infringement of U.S. Patent No. 7,112,179

Plaintiffs Bonutti and JAS seek injunctive relief, damages, pre- and post-judgment interest, costs and attorneys’ fees.

Practice Tip: Since September 2012, Bonutti Skeletal Innovations LLC, an entity believed to be related to Bonutti Research, Inc., 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; ConMed Corporation and Biomet, Inc. We blogged about the Biomet lawsuit, in which Biomet sought declaratory judgment of non-infringement and invalidity the Bonutti patents, here.

April 21, 2014

Indiana Patent Litigation: Four Mile Bay Asserts Infringement of Patented Dental Implant

By Overhauser Law Offices, LLC

Hammond, Indiana – Patent attorneys for Four Mile Bay LLC of Wadsworth, Ohio sued in the Northern District of Indiana alleging that Zimmer Holdings, Inc. of Warsaw, Indiana and Zimmer Dental Inc. of Carlsbad, California infringed DENTAL IMPLANT WITH POROUS BODY, Patent No. 8,684,734, which has been issued by the U.S. Patent Office.

Defendant Zimmer Holdings designs, develops, manufactures, and markets reconstructive orthopedic implants, including dental implants. Defendant Zimmer Dental, a division of Zimmer Holdings, is engaged in a similar business. The two Zimmer entities have been sued by Four Mile Bay for patent infringement.

The subject of the dispute is Patent No. 8,684,734 (the “‘734 patent”), which relates to the “osseointegration” of dental implants into a patient. A dental implant designed for osseointegration provides porous structures to which a patient’s bone may grow an attachment. Four Mile Bay indicates that prior art in the area was limited to providing a surface-level solution, wherein bone surrounding the implant could grow into the coating only on the outside of the implant.

Four Mile Bay contends that the ‘734 patent addresses this shortcoming of the prior technology by including porous structures to which bone can adhere that extend through a “significant part” of the implant. This, it states, allows the patient’s bone to grow completely through the implant and provides improved anchoring within the mouth. The invention also includes an internal cavity that may house a substance that stimulates bone growth.

Four Mile Bay contends in this current patent infringement litigation that Zimmer Holdings and Zimmer Dental are infringing the ‘734 patent. In the complaint, filed by Illinois patent attorneys for Four Mile Bay, the following are claims are asserted:

• Count I: Patent Infringement Against Zimmer Holdings
• Count II: Patent Infringement Against Zimmer Dental

Four Mile Bay asks the court for a judgment that defendants have directly infringed claims of the ‘734 patent, for a reasonable royalty and for pre- and post-judgment interest.

Practice Tip:

The concept of “prior art” appears simple upon first glance. It might be briefly defined as “all information that was publically available before a relevant date [often 12 months prior to a U.S. patent application being filed] that could be pertinent to a patent’s claim of originality.”

However, the legal nuances of what is “new” and what constitutes “prior art,” along with the difficulties in performing an adequate worldwide search of printed materials for references to claims in a pending application, makes performing a complete patentability assessment a daunting prospect for even the most experienced inventor. Thus, while an inventor is wise to conduct his or her own patent search initially, it is important to hire an experienced patent attorney to perform a thorough patent search and assessment of patentability.

April 14, 2014

Indiana Patent Litigation: CleanTech Sues Pacific Ethanol for Patent Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Patent attorneys for GS CleanTech Corporation of New York, New York (“CleanTech”), filed a patent infringement lawsuit in the Eastern District of California – Sacramento Division alleging that Pacific Ethanol Stockton LLC of Stockton, California infringed “METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS,” Patent No. 7,601,858 (the “‘858 patent”), which was issued by the U.S. Patent Office. The case was transferred to the Southern District of Indiana as part of Multidistrict Litigation No. 2181.

This litigation began with an assertion of patent infringement by CleanTech of the ‘858 patent, which was issued on October 13, 2009. CleanTech sued numerous Defendants alleging infringement of that patent shortly after its issuance. The Defendants accused of patent infringement in prior patent infringement litigation include: Big River Resources Galva, LLC; Big River Resources West Burlington, LLC; Cardinal Ethanol, LLC; ICM, Inc.; LincolnLand Agri-Energy, LLC; David J. Vander Griend; Iroquois Bio-Energy Co., LLC; Al-Corn Clean Fuel; Blue Flint Ethanol, LLC; ACE Ethanol, LLC; Lincolnway Energy, LLC; United Wisconsin Grain Producers, LLC; Bushmills Ethanol, Inc.; Chippewa Valley Ethanol Co.; Heartland Corn Products, Adkins Energy, LLC, Little Sioux Corn Processors, LLLP; Southwest Iowa Renewable Energy, LLC; Western New York Energy, LLC; Homeland Energy Solutions, LLC; Pacific Ethanol, Inc. [this entity is different from Pacific Ethanol Stockton LLC] and Guardian Energy, LLC. This Indiana patent litigation is being overseen in the Southern District of Indiana pursuant to the provisions for Multidistrict Litigation (“MDL”).

Since September 29, 2011, when the court overseeing the MDL issued its order on claim construction with respect to the disputed claims of the ‘858 patent, patentees CleanTech and its parent GreenShift Corp. have asserted patent infringement of three additional patents in the ‘858 family – U.S. Patent Nos. 8,008,516; 8,008,517 and 8,283,484 – against some of the allegedly infringing Defendants.

In this current patent infringement lawsuit, initiated by California patent lawyers in the Eastern District of California, subsidiary CleanTech is the sole Plaintiff. Patent attorneys for CleanTech assert only one count in the complaint: infringement of the ‘858 patent. CleanTech asks the court for preliminary and permanent injunctions prohibiting further infringement of the ‘858 patent; an award of damages adequate to compensate CleanTech for the infringement that has occurred, but in no event less than a reasonable royalty for the use made of the inventions of the ‘858 patent as provided in 35 U.S.C. § 284, together with prejudgment interest from the date the infringement began; and an award to CleanTech of all remedies available under 35 U.S.C. §§ 284 and 285.

Practice Tip: Previous articles about this litigation have posted many times by Indiana Intellectual Property Law News including:

CleanTech Adds Three Additional Defendants to Multidistrict Litigation

CleanTech Adds Western New York Energy as a Defendant in Patent Infringement Litigation

CleanTech’s Multidistrict Litigation Adds Southwest Iowa Renewable Energy as a Defendant

CleanTech Sues Aemetis for Infringing Patented Corn Oil Extraction Method

Southern District of Indiana Denies All Summary Judgment Motions Regarding Family of Corn Oil Extraction Patents

Southern District Allows CleanTech to Amend Complaint to Add Patent to Ethanol Patent Litigation

GS Cleantech Files Patent Infringement Lawsuit Against Flottweg in Indiana

Multiple Patent Infringement Suits Brought by Greenshift Consolidated in Indiana

GS CleanTech Sues Iroquois Bio-Energy for Patent Infringement

Cardinal Ethanol Sued by GS Cleantech for Patent Infringement

Little Sioux Added as a Defendant in CleanTech’s Multidistrict Litigation

April 11, 2014

Indiana Patent Litigation: Cor-A-Vent Sues Alleging Patent Infringement by DCI Products

By Overhauser Law Offices, LLC

South Bend, Indiana – Indiana patent attorneys for Cor-A-Vent Inc. of Mishawaka, Indiana filed a lawsuit in the Northern District of Indiana alleging that Designer Cabinets Inc. d/b/a DCI Products of Clifton Heights, Pennsylvania (“DCI”) infringed the patented “Moisture Resistant Roof Vent,” Patent No. 5,704,834, which has been issued by the U.S. Patent Office.

Cor-A-Vent is a designer and manufacturer of roof vent and other venting products. In 1998, United States Patent No. 5,704,834 (the “‘834 Patent”) was issued for a moisture-resistant roof vent. Cor-A-Vent asserts that it owns this patent.

DCI is accused of infringing the ‘834 Patent – either directly, by inducement, and/or contributorily – by making, using, selling, offering for sale, importing or supplying infringing roof vent products, including DCI’s SmartRidge® II product, in violation of 35 U.S.C. § 271 et seq. Cor-A-Vent contends that DCI has profited, and Cor-A-Vent has suffered damages, as a result of this alleged patent infringement.

Cor-A-Vent also asserts that DCI has been aware of the ‘834 Patent since 2010 or earlier. As a result, Cor-A-Vent contends that the patent infringement committed by DCI has been willful. Further, Cor-A-Vent contends that this is an exceptional case, which would support an award of reasonable attorneys’ fees pursuant to 35 U.S.C. § 285.

In its complaint, filed by Indiana patent attorneys in Indiana federal court, Cor-A-Vent lists a single count: Infringement of United States Patent No. 5,704,834. It requests the following:

• A judgment that DCI has infringed the ‘834 Patent in violation of 35 U.S.C. § 271;
• Preliminary and permanent injunctive relief prohibiting DCI and its agents from infringing the ‘834 Patent pursuant to 35 U.S.C. § 283;
• An award to Cor-A-Vent of its damages for patent infringement,
• An award of pre-judgment and post-judgment interest and costs against DCI pursuant to 35 U.S.C. § 284;
• A judgment that DCI’s infringement of the ‘834 Patent has been deliberate and willful;
• A judgment that DCI’s infringement of the ‘834 Patent has been exceptional under 35 U.S.C. § 285;
• Treble damage under 35 U.S.C. § 284; and
• An award to Cor-A-Vent of its reasonable attorneys’ fees under 35 U.S.C. § 285.

Practice Tip:

A court may award increased damages for willful infringement. These punitive damages, up to and including a trebling of damages, are appropriate when an infringer has acted in wanton disregard of the patentee’s intellectual property rights. In determining whether the infringing behavior supports increased damages, the court will consider the “totality of the circumstances.”

Potential exposure for increased damages may be reduced by seeking – and acting on – timely advice from a competent patent lawyer. In contrast, the failure to seek and heed such advice may increase the chance of a finding of willfulness.

March 27, 2014

Indiana Patent Litigation: Orthopaedic Hospital Seeks Injunction and Damages for Patent Infringement

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Patent attorneys for Orthopaedic Hospital of Los Angeles, California (the “Hospital”) filed a lawsuit in the Central District of California alleging that DePuy Orthopaedics, Inc. of Warsaw, Indiana (“DePuy”) infringed Oxidation-Resistant and Wear-Resistant Polyethylenes for Human Joint Replacements and Methods for Making Them, Patent No. 8,658,710, which has been issued by the U.S. Patent Office. The lawsuit was transferred to the Northern District of Indiana pursuant to a joint stipulation by the parties.

The Hospital, located in Los Angeles, is an independent nonprofit charitable organization that treats children with musculoskeletal disorders and conducts scientific research aimed at improving orthopaedic materials, implants, surgical instrumentation, and surgical techniques.

At issue in this Indiana patent lawsuit is United States Patent No. 8,658,710 (the “‘710 patent”), which was issued on February 25, 2014. The Hospital asserts that it is the owner of the ‘710 patent, and that it possesses the exclusive right to bring suit for infringement of the patent.

The Hospital contends that DePuy is infringing and has infringed the ‘710 patent by making, selling, offering for sale, and using infringing products, including but not limited to DePuy’s AOX Antioxidant Polyethylene for Sigma and LCS Rotating Platform Systems. It is also claimed that DePuy’s infringement of the ‘710 patent has been and continues to be willful, deliberate, and/or objectively reckless.

The Hospital further asserts that DePuy has known of the ‘710 patent since at least February 25, 2014, when the patent issued. It also states that DePuy had constructive notice of the ‘710 patent by operation of law, as the Hospital and any of its predecessors-in-interest have complied with all marking requirements of 35 U.S.C. § 287.

A single-count complaint asserting patent infringement was filed by California patent lawyers for the Hospital. The Hospital asks that the court:

• Adjudge that DePuy has infringed and is infringing the ‘710 patent;
• Preliminarily and/or permanently enjoin DePuy and its affiliates and agents from further infringement, including inducement and contributory infringement, of the ‘710 patent;
• Award damages for willful infringement of three times the damages so determined, as provided by 35 U.S.C. § 284, together with interest;
• Order an accounting of all accrued damages;
• Award any supplemental damages to the Hospital;
• Award the Hospital their costs and, where appropriate, reasonable attorneys’ fees under 35 U.S.C. § 285; and
• Award compensatory damages to the Hospital, together with interest.

Practice Tip:

The question of willfulness in the context of patent infringement consists of two elements: (1) an objective element that is often, but not always, a question of law, and (2) a subjective element that is inherently a question of fact, to be decided by the jury.

Under the first prong, if an “accused infringer’s position is susceptible to a reasonable conclusion of no infringement,” the infringer’s conduct cannot be objectively unreasonable. Conversely, an action is objectively unreasonable if the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.

When considering the second prong — the element of subjective willfulness — fact-finders should consider: (1) whether the infringer copied the patentee’s commercial products; (2) whether the infringer presented evidence that it obtained legal opinions of patent counsel to justify its infringing actions; (3) whether the infringer attempted to avoid infringement by designing around the patents; and (4) whether the infringer acted in accordance with the standards of commerce.

March 24, 2014

Indiana Patent Litigation: Headsight Sues John Deere for Patent Infringement

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Patent lawyers for Richard Gramm and Headsight, Inc., both of Indiana, sued in the Northern District of Indiana alleging that Deere and Company of Moline, Illinois (also known as “John Deere”) infringed the patented “Combine Header Height Control“, Patent No. 6,202,395, which has been issued by the U.S. Patent Office.

Gramm, the founder and President of Plaintiff Headsight, claims to own all right, title and interest to Patent No. 6,202,395 (the “395 patent”). In its complaint, Plaintiffs allege that Deere makes, uses, sells and/or offers for sale products that infringe at least claim 27 of the ‘395 patent, including at least the header height sensor kit, for the Deere 600C Series corn headers (the “Deere Height Sensor”).

Plaintiffs contend that Deere has had actual knowledge of the ‘395 patent since at least as early as 2002 and that Deere has been and now is directly infringing, actively inducing others to infringe and/or contributing to the infringement of the ‘395 patent by making, using, selling, offering for sale and/or importing in the United States products, including at least the Deere Height Sensor, in violation of 35 U.S.C. § 271.

Plaintiffs assert one claim in their complaint, filed by Indiana patent attorneys: “Count I: Patent Infringement of U.S. Patent No. 6,202,395.” Gramm and Headsight ask the court for:

• a declaration that Deere has infringed one or more claims of the ‘395 patent in violation of 35 U.S.C. § 271;
• equitable relief under 35 U.S.C. § 283, including, but not limited to, permanently enjoining Deere and its agents from infringing, contributing to, and/or inducing infringement of the ‘395 patent;
• an award of damages adequate to compensate Plaintiffs for Deere’s infringement of the ‘395 patent, together with prejudgment and post-judgment interest under 35 U.S.C. § 284;
• a declaration that Deere’s infringement is willful and/or an order increasing damages up to and including three times the amount found or assessed consistent with 35 U.S.C. § 284; and
• a declaration that this case is “exceptional” under 35 U.S.C. § 285 and awarding Plaintiffs their reasonable attorney fees, costs, and expenses.

Practice Tip:

A court may award increased damages for willful infringement. These punitive damages, up to and including a trebling of damages, are appropriate when an infringer has acted in wanton disregard of the patentee’s intellectual property rights. In determining whether the infringing behavior supports increased damages, the court will consider the “totality of the circumstances.”

Potential exposure for increased damages may be reduced by seeking – and acting on – timely advice from a competent patent lawyer. In contrast, the failure to seek and heed such advice may increase the chance of a finding of willfulness.

March 17, 2014

Indiana Patent Infringement Litigation: Eli Lilly Sues Numerous Defendants

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana patent attorney for Eli Lilly and Company of Indianapolis, Indiana (“Lilly”) filed a lawsuit in the Southern District of Indiana against multiple defendants asserting infringement of Patent Nos. 5,288,726, “Tetrahydrothienopyridine Derivatives, Furo and Pyrrolo Analogs Thereof and Their Preparation and Uses for Inhibiting Blood Platelet Aggregation,” 8,569,325, “Method of Treatment with Coadministration of Aspirin and Prasugrel” and 8,404,703, “Medicinal Compositions Containing Aspirin,” which have been issued by the U.S. Patent Office.

In a 101-page complaint, Indiana patent counsel for Plaintiffs Lilly; Daiichi Sankyo Co., Ltd.; Daiichi Sankyo, Inc.; and Ube Industries, Ltd. sued alleging patent infringement by more than thirty Defendants. The Defendants are: Accord Healthcare, Inc. USA; Accord Healthcare, Inc.; Intas Pharmaceuticals Ltd.; Amneal Pharmaceuticals LLC; Amneal Pharmaceuticals of New York, LLC; Amneal Pharmaceuticals Co. India Pvt. Ltd.; Aurobindo Pharma Limited; Aurobindo Pharma USA Inc.; Dr. Reddy’s Laboratories, Ltd; Dr. Reddy’s Laboratories, Inc.; Glenmark Generics Inc., USA; Glenmark Generics Ltd.; Glenmark Pharmaceuticals Ltd.; Hetero USA Inc.; Hetero Labs Limited; Hetero Labs Limited Unit V; Hetero Drugs Ltd.; Mylan Pharmaceuticals Inc.; Mylan Inc.; Mylan Laboratories Limited (these three companies are, collectively, “Mylan”); Par Pharmaceutical Companies, Inc.; Par Pharmaceutical, Inc.; Sun Pharma Global FZE; Caraco Pharmaceutical Laboratories, Ltd.; Sun Pharma Global Inc.; Sun Pharmaceutical Industries, Ltd.; Teva Pharmaceuticals USA, Inc.; Teva Pharmaceutical Industries, Ltd.; Watson Laboratories, Inc.; Actavis plc; Actavis, Inc.; Actavis Pharma, Inc.; Zydus Pharmaceuticals USA, Inc.; and Cadila Healthcare Ltd. (d/b/a Zydus Cadila). Defendants hail from various areas of the world, including India, the United Arab Emirates, the British Virgin Islands, Israel, Ireland and the United States.

This complaint asserts patent infringement arising out of the filing by Defendants of Abbreviated New Drug Applications (“ANDA”s) with the United States Food and Drug Administration (“FDA”) seeking approval to manufacture and sell generic versions of two pharmaceutical products – Effient® 5mg and Effient® 10mg tablets (pictured above) – prior to the expiration of United States Patent Nos. 5,288,726 (the “‘726 patent”), 8,404,703 (the “‘703 patent”) and 8,569,325 (the “‘325 patent”), which cover the two Effient® products and/or methods of using Effient® products and for which Lilly claims an exclusively license.

Effient® products were approved by the FDA for the reduction of thrombotic cardiovascular events in certain patients with acute coronary syndrome (ACS) who are to be managed with percutaneous coronary intervention (PCI, or angioplasty). Effient® products contain prasugrel hydrochloride, which is also known as 5-[(1RS)-2-cyclopropyl-1-(2-fluorophenyl)-2-oxoethyl]-4,5,6,7-tetrahydrothieno[3,2-c]pyridin-2-yl acetate hydrochloride or 2-acetoxy-5-(alpha-cyclopropylcarbonyl-2-fluorobenzy1)-4,5,6,7-tetrahydrothieno[3,2-c]pyridine hydrochloride, and is covered by the ‘726 patent.

The instructions accompanying Effient® products state that patients taking Effient® products should also take aspirin. The use of Effient® products in combination with aspirin for the reduction of thrombotic cardiovascular events in patients with ACS who are to be managed with PCI is allegedly covered by the claims of the ‘703 and ‘325 patents.

Defendants are, in general, accused of infringing the patents-in-suit by including with their products instructions for use that substantially copy the instructions for Effient® products, including instructions for administering the Defendants’ products with aspirin as claimed in the ‘703 and ‘325 patents. Moreover, Plaintiffs contend that Defendants know that the instructions that will accompany the Defendants’ Products will induce and/or contribute to others using the Defendants’ Products in the manner set forth in the instructions.

Plaintiffs also contend that Defendants specifically intend that health care providers, and/or patients will use the Defendants’ Products in accordance with the instructions provided by Defendants to directly infringe one or more claims of the ‘703 and ‘325 patents. In doing so, state Plaintiffs, Defendants will actively induce and/or contribute to infringement of the ‘703 and ‘325 patents.

The complaint, filed by an Indiana patent attorney, lists a total of fifty counts. All Defendants are accused of infringement of the ‘703 and ‘325 patents. Declaratory judgment of infringement of these patents is sought against all Defendants. Additionally, claims of infringement of, and a request for declaratory judgment regarding, the ‘726 patent are made against Mylan.

Plaintiffs ask the court for judgment:

• That all Defendants, either individually or collectively, have infringed or will infringe one or more claims of the ‘703 patent;
• That all Defendants, either individually or collectively, have infringed or will infringe one or more claims of the ‘325 patent;
• That Mylan, either individually or collectively, has infringed or will infringe one or more claims of the ‘726 patent;
• That, pursuant to 35 U.S.C. § 271(e)(4)(B), Defendants be permanently enjoined from making, using, selling or offering to sell any of the Defendants’ accused products within the United States, or, where applicable, importing accused products into the United States prior to the expiration of the ‘703 and ‘325 patents;
• That, pursuant to 35 U.S.C. § 271(e)(4)(A), the effective date of any approval of any ANDAs under § 505(j) of the Federal Food, Drug and Cosmetic Act (21 U.S.C. § 355(j)) shall not be earlier than the later of the expiration dates of the ‘703 and ‘325 patents, including any extensions;
• That the ‘703 patent remains valid and enforceable;
• That the ‘325 patent remains valid and enforceable;
• That the ‘726 patent remains valid and enforceable;
• If any Defendant commercially makes, uses, sells or offers to sell any accused product within the United States, or, where applicable, imports any accused product into the United States, prior to the expiration of either of the ‘703 and ‘325 patents, including any extensions, that Plaintiffs be awarded monetary damages for those infringing acts to the fullest extent allowed by law and be awarded prejudgment interest based on those monetary damages;
• If Mylan commercially makes, uses, sells or offers to sell any accused product within the United States, or, where applicable, imports any accused product into the United States, prior to the expiration of the ‘726 patent, including any extensions, that Plaintiffs be awarded monetary damages for those infringing acts to the fullest extent allowed by law and be awarded prejudgment interest based on those monetary damages;
• That the case be deemed exceptional under 35 U.S.C. § 285; and
• That Plaintiffs be awarded reasonable attorney’s fees, costs and expenses.

Practice Tip: Lilly is not an infrequent litigant. This may be in part due to the fact that the company is facing a significant patent cliff. Its patent for a former top product, the antipsychotic Zyprexa – which once generated $5 billion in annual revenues – expired in 2011. Its top-selling drug of 2013, the antidepressant Cymbalta, lost patent protection last year. The patent on blockbuster Evista, a drug for breast cancer and osteoporosis, expires this month.

March 12, 2014

Supreme Court Reverses Federal Circuit on Burden of Proof in Patent Infringement Litigation Brought Under the Declaratory Judgment Act

By Overhauser Law Offices, LLC

Washington, D.C. – An issue in the patent infringement dispute between medical-device giant Medtronic, Inc. and Mirowski Family Ventures, LLC (“Mirowski”) was heard by the United States Supreme Court. In question was the placement of the burden of proof in patent infringement litigation that seeks a declaratory judgment. The Supreme Court reversed the U.S. Court of Appeals for the Federal Circuit, holding that the burden of proof of infringement rests with the patent holder even if the lawsuit is filed under the Declaratory Judgment Act.

After hearing arguments by patent attorneys for each side, the district court had held that Mirowski, the party asserting infringement, had the burden of proving patent infringement; it found that Mirowski had not met that burden.

The Federal Circuit reversed. It concluded that, when a patentee (Mirowski) is a declaratory judgment defendant and is also prevented from asserting an infringement counterclaim by the existence of a license between the parties – as Mirowski was – the party seeking the declaratory judgment (Medtronic) bears the burden of proving that it had not infringed the patent.

The Supreme Court granted certiorari. The question before the Court was “whether the burden of proof shifts when the patentee is a defendant in a declaratory judgment action, and the plaintiff (the potential infringer) seeks a judgment that he does not infringe the patent.”

Mirowski argued that it would be unfair to place a burden of proof on the party that was not seeking relief. The Intellectual Property Owners Association supported Mirowski’s position, contending that a failure to shift the burden of proof in such cases would lead to abuse of declaratory judgment actions, as the risks and burdens of patent infringement litigation would be placed entirely on the patent owner.

In contrast, Medtronic argued that placing the burden on a licensee would create an unacceptable choice between finality and fairness, as it would require the judicial system to permit a party to relitigate issues that had been previously decided under a different burden of proof.

The Supreme Court reversed the shifted burden of proof imposed by the Federal Circuit. The Court declared that it saw “no convincing reason why burden of proof law should favor the patentee” simply because it was filed under the Declaratory Judgment Act.

Practice Tip #1: It is settled law that, in patent infringement litigation, a patentee normally bears the burden of proof. Because 1) the operation of the Declaratory Judgment Act is only procedural and leaves substantive rights unchanged and 2) the burden of proof is a substantive aspect of a claim, this holding by the Supreme Court is not unanticipated.

Practice Tip #2: When drafting the terms of a license, patent owners should consider adding provisions to deter potential challenges by licensees.

Practice Tip #3: We have also blogged recently about another declaratory judgment case involving Mirowski, which is being heard in the Southern District of Indiana.