Patent Ownership

October 10, 2019

Closure Systems International Sues Novembal USA Seeking Correction of Inventorship

Indianapolis, Indiana – Attorneys for Plaintiff, Closure Systems International, Inc. (“CSI”) of Indianapolis, Indiana, filed suit in the Southern District of Indiana seeking a correction in inventorship for two U.S. Design Patents issued to Defendant, Novembal USA Inc. (“Novembal”) of Edison, New Jersey. The patents at issue in this case are United States Patent Nos. D836,442 (the “‘442 Patent”) and D838,171 (the “‘171 Patent”) (collectively the “Patents in Suit”). CSI is seeking preliminary and/or permanent injunctions, attorneys’ fees, costs, and any other relief the Court deems proper.

CSI claims three of its employees, Arnold Benecke, Bill Moll, and John Edie, developed a closure for a bottle (the “Option 2 Closure”) for its customer, Nestle Waters (“Nestle”) on or about January 27, 2011. This invention was allegedly assigned to CSI pursuant to assignments from the three inventors. According to the Complaint, on March 9, 2011, CSI sent a presentation concerning the Option 2 Closure and another option to Nestle that stated that it would have “Prototypes molded by April 1” and “Small quantity of slit samples will be sent by April 13”. CSI claims it emailed Nestle a drawing of the Option 2 Closure on March 10, 2011.

CSI claims Nestle trialed different closures from CSI and at least two other competitors, including Novembal, and CSI delivered 100 samples of the Option 2 Closure to Nestle in or about June 2011. CSI alleges each of the manufacturers at the Nestle trials witnessed each closure and saw all the samples provided to Nestle. After the trials, Nestle awarded the business to Novembal, not CSI.

According to the Complaint, Nestle asked CSI to replace Novembal and inquired as to its ability to supply the Option 2 Closure in early 2018. CSI claims it began supplying a similar closure to the Option 2 Closure to Nestle, but it was slightly different (the “New Closure”). On or about May 24, 2019, CSI claims it was informed by Nestle that the New Closure infringed one or more Novembal patents. Just six days later, Novembal allegedly sent a cease and desist letter to CSI stating that the New Closure infringed the ‘442 Patent.

October 15, 2018

Indiana Patent Litigation: Eli Lilly and Company Seeking Declaratory Judgment in Patent Ownership Case

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Eli Lilly and Company of Indianapolis, Indiana, filed suit in the Southern District of Indiana for a declaratory judgment against Defendant, Adocia S.A. of Lyon, France, who is claiming inventorship and ownership rights in Lilly’s United States Patent No. 9,901,623 B2 (“the ‘623 Patent”) for “Rapid-Acting Insulin Compositions”, and United States Patent No. 9,993,555 B2 (“the ‘555 Patent”) for “Rapid-Acting Insulin Compositions”. Plaintiff is seeking declaratory judgment, attorneys’ fees and costs, and further relief the Court determines to be just and proper.

Lilly began its research that led to the ‘623 and ‘555 Patents at least as early as 2011. Right around that same time, Lilly and Adocia began negotiating an agreement to develop an ultra-rapid insulin “URI” formulation using Adocia’s BioChaperone® technology. Adocia and Lilly entered into a collaborative research and license agreement on December 13, 2011. The two companies signed a confidentiality agreement on November 21, 2012. By July 2013, the original agreement was terminated.

The Parties entered into a second confidentiality agreement on December 16, 2013 and a second collaborative research and license agreement on December 18, 2014 using different BioChaperone® molecules than the first agreement. The second research collaborative continued until January 2017. While Lilly was a part of the research collaborative, they were also running a separate internal program to develop a URI with specific concentrations of citrate for a more rapid time action profile and specific excipients to maintain the stability for the composition. Unlike this research, the collaborative research focused only on URI products containing BioChaperone® molecules. The separate internal research led to the ‘623 Patent issuing on February 27, 2018 and the ‘555 Patent issuing on June 12, 2018.

November 7, 2017

Indiana Patent Litigation: Indianapolis-Based Home Healthcare Company Sues Former Employee for Ownership of Patent

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Home Care Providers, Inc. and Dr. Dev A. Brar, of Indianapolis, Indiana filed suit in the Southern District of Indiana against Defendant, Shawn R. Bashore, of Carmel, Indiana. This suit was filed for inventorship of the United States Patent No. 9,668,328 (“the ‘328 Patent”), Night-Light and Alert System, for constructive fraud, and conversion of the patent. Plaintiff is seeking declaratory judgment, lost profits, and reasonable costs and attorneys’ fees.

The ‘328 Patent is for a system including a mat and a wirelessly-connected light, the purpose of which is to allow an individual to rise from bed and turn on the lights by stepping on the mat.

According to the complaint, Plaintiff alleges that Defendant, while overseeing development of the invention, represented himself as a co-inventor on the patent application, which violated provisions of the employment agreement requiring that all material created would belong to Plaintiff. Further, according to the complaint, Defendant has attempted to profit from licensing the invention.

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.

March 11, 2015

Indiana Intellectual Property Law: Patent Infringement Allegations of Pro Se Plaintiff Dismissed

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Judge Sarah Evans Barker of the Southern District of Indiana dismissed the patent infringement claims asserted in the amended complaint of pro se Plaintiff Dennis Lee Maxberry against ITT Technical Institute (“ITT”). Also included in Maxberry’s amended complaint were claims for copyright infringement, deprivation of disabled veterans’ benefits, sabotage of Maxberry’s bachelor’s degree, stalking, sabotage of Maxberry’s employment opportunities, RICO liability against ITT and the State of Wisconsin, malicious prosecution of intellectual property actions against Maxberry, violations of various executive orders relating to Maxberry’s service in the military, violations of the Higher Education Act, and violations of a number of Maxberry’s constitutional rights.

The parties in this patent infringement litigation are Defendant ITT, an Indiana-based for-profit higher education company, and Maxberry of West Allis, Wisconsin, who had previously been enrolled in an M.B.A. graduate course at ITT. In April 2014, Maxberry, acting as his own patent attorney, sued Defendant ITT alleging multiple harms, which the court summarized as follows:

It appears that Plaintiff accuses Defendant of stealing his federal student loan money, failing to award him grades for the classes that he completed, and applying money from his educational loans towards tuition payments even after he withdrew from school. Plaintiff also accuses Defendant of “being unconscious to the plaintiff by arbitrating the contract,” searching his person or property “without a warrant and without probable cause,” using excessive force upon him, failing to provide him with “needed medical care,” “false credit testimony, mayhem on property, defamation, false imcriminalization [sic], malicious prosecution, conspiracy, and/or any other claim that may be supported by the allegations of this complaint.” Plaintiff’s Complaint makes reference to 28 U.S.C. § 1983, 1985, and 1986, “Title IX, and Section 504 of the 1973 Rehabilitation Act,” the “False claim act,” and avers that “[t]he criminal proceeding by the defendants … [is] still pending,” but that Plaintiff “was innocent.”

The court dismissed Maxberry’s initial complaint on two grounds. First, Judge Barker noted that the Plaintiff was asking the Southern District of Indiana, a federal court, to review the rulings of a Wisconsin state court. Such a review, which would in effect place the Indiana federal court in the position of acting as a Wisconsin appellate court, was impermissible under the Rooker-Feldman doctrine. The court further found that the assertions in the complaint were “cast in such an incoherent and confusing manner that they must be dismissed under [Federal Rule of Civil Procedure 8(a)] based on Plaintiff’s failure to give Defendant (as well as the Court) fair notice of what they actually are.”

The court allowed Maxberry to file an amended complaint, which ITT moved to dismiss. In this complaint, Maxberry again made multiple claims, including five claims involving patent 8,632,592, for an “expandable vertebral body replacement device and method.” Maxberry asserted that this patent encompassed a cure for cancer, an automotive window-locking device, as well as a type of computer display equipment.

The court dismissed these “facially implausible” patent infringement claims with prejudice. Judge Barker noted that, not only was it wildly improbable that a single patent covered all of the asserted functions, but the records of the U.S. Patent and Trademark Office showed that the patent-in-suit was not registered to Maxberry.

The court also dismissed Maxberry’s other claims but granted him leave to reformulate those claims in a more understandable form and resubmit them.

August 4, 2014

Indiana Patent Litigation: Tippmann Family Dispute Regarding Patent Ownership and Validity Escalates to Litigation

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Indiana patent attorneys for Vincent P. Tippmann, Sr. Family, LLC and Tippmann Refrigeration, Inc., both of Fort Wayne, Indiana, filed an intellectual property lawsuit in the Northern District of Indiana against Gerald Tippmann of Fort Wayne, Indiana to correct ownership of Patent No. 8,220,287, “Apparatus and Method for Blast Freezing or Thawing A Product,” which was issued by the U.S. Patent Office. In addition to listing requests regarding inventorship, this Indiana patent lawsuit asks the court to, in the alternative, grant a judgment under Indiana State law of negligent misrepresentation and constructive fraud on the part of Defendant, Gerald Tippmann, and for associated relief and damages.

Vincent P. Tippmann Sr. Family, LLC (“Tippmann Family, LLC”) claims ownership of the patent-in-suit, a technology that facilitates rapid and efficient freezing and thawing of food products. It also indicates that it is the inventing and owning company of various patents and patent applications related to apparatuses and methods for blast freezing and/or thawing of products.

Rapid freezing was historically done in blast freezers, which are expensive and result in irregular freezing rates across arranged product stacks. Plaintiffs assert that Defendant Gerald Tippmann and Vincent P. Tippmann Jr. (presumably an employee of Tippmann Family, LLC) were the first to recognize, and jointly design, test and reduce to practice a new method and system for freezing and thawing boxes or pallets of a commodity more efficiently and rapidly through the strategic arrangement of product boxes and pallets to create a directional airflow.

This Indiana patent litigation concerns that invention, U.S. Patent No. 8,220,287 (the “‘287 Patent”), for which Tippmann Family, LLC is the assignee. According to Plaintiffs, the inventor declaration for the patent-in-suit that was signed by Gerald Tippmann averred that he and Vincent P. Tippmann Jr. were co-inventors and that the invention “was not in public use or on sale in the United States of America more than one year prior to filing this application.”

In May 2012, Gerald Tippmann left the employ of Tippmann Refrigeration, and became associated with Tippmann Construction, LLC (“Tippmann Construction”), a competitor of Tippmann Family, LLC. The owners of the Tippmann Family, LLC and the competing Tippmann Construction are relatives.

In June 2013, Gerald Tippmann and the Indiana patent lawyer for Tippmann Construction prepared a supplemental inventor declaration and disclosure statement to “clarify” statements Gerald Tippmann had made in his previous disclosures in the Tippmann Family, LLC applications. According to Plaintiffs, this supplemental declaration directly contradicts all previous declarations made by Gerald Tippmann with regard to his joint inventorship with Vincent P. Tippmann Jr., especially including its assertions that Gerald Tippmann was the sole inventor of the patent-in-suit.

In this supplemental declaration, Gerald Tippmann also indicates that he had been “mistaken” regarding the initial public display of the invention. Specifically, he claims that he had commercialized and publically used the underlying invention while in the employ of an unrelated Florida company called Citrus World on or about 1996-97.

The complaint, filed by Indiana intellectual property counsel, lists the following causes of action:

• Declaratory Judgment of Joint Inventorship, Correction of Inventorship under 35 U.S.C. § 256
• Negligent Misrepresentation under Indiana State Law
• Constructive Fraud under Indiana State Law

Plaintiffs ask that the court:

(a) Find that Gerald Tippmann and Vincent P. Tippmann Jr. are the true inventors of the ‘287 Patent;
(b) Find that Gerald Tippmann’s actions at Citrus World were an experimental use, not a public use or a commercialization, and that the invention was not ready for patenting at that time;
(c) Estop Gerald Tippmann from declaring the assertions set forth in his Declaration in the related continuation and divisional applications associated with the ‘287 Patent and any future related patents that he has assigned to the Tippmann Family, LLC;
(d) Award to Tippmann Family, LLC all costs and attorney’s fees;
(e) Alternatively to (a)-(d), find that Gerald Tippmann has committed negligent misrepresentation with respect to the actions described above, and that the Tippmann Family, LLC be awarded costs, attorney’s fees, and damages; and
(f) Alternatively to (a)-(d), find that Gerald Tippmann has committed constructive fraud with respect to the actions described above, and that the Tippmann Family, LLC be awarded costs, attorney’s fees, and damages.

Practice Tip: Public disclosure – as Gerald Tippmann has apparently claimed – is often, but not always, a bar to patentability. Indiana inventors are advised to consult with an Indiana patent lawyer to determine whether their invention(s) can be protected under U.S. patent law.

November 13, 2013

Endotach’s Patent Infringement Lawsuit Against Cook Medical Dismissed for Lack of Standing

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Endotach LLC of Plano, Texas sued Cook Medical Inc. of Bloomington, Indiana alleging infringement of Endovascular Bypass Graft, U.S. Patent No. 5,122,154 (the “‘154 patent”) and Endovascular Stent with Secure Mounting Means, U.S. Patent No. 5,593,417 (the “‘417 patent”; collectively, the “Rhodes patents”) issued by the U.S. Patent Office. Endotach filed its complaint in the Northern District of Florida. The case was transferred to the Southern District of Indiana upon Cook’s request.

The patents at issue, both of which were issued in the 1990s, were granted to Dr. Valentine Rhodes, an award-winning surgeon who practiced in the field of vascular medicine for over 30 years. The patents are directed to intraluminal and endovascular grafts for placement within a blood vessel, duct or lumen to hold it open. As it pertains to this lawsuit, the patents-in-suit are used for revascularization of aneurysms or stenosis occurring in blood vessels which includes anchoring projections to aid in securing the graft in place within the blood vessel.

Upon the death of Dr. Rhodes, the patents-in-suit passed as part of his estate. Dr. Rhodes’ Will bequeathed all “tangible personal property” to his wife, Brenda Rhodes (“Mrs. Rhodes”). However, there was no specific bequest of the Rhodes patents or mention of any intangible property. The Will’s residuary clause bequeathed “all the residue of [Dr. Rhodes’] estate, real and personal” to a Trust (the “Rhodes Trust”). Upon Dr. Rhodes’ death, his two daughters and Mrs. Rhodes became Co-Trustees of the Trust.

In November 2009, Mrs. Rhodes executed a document entitled “Exclusive License Agreement,” listing herself as the “patent owner.” The agreement purported to transfer an exclusive license on the ‘417 patent to Acacia Patent Acquisition LLC. That license was later assigned to Endotach and amended to include the ‘154 patent.

Endotach sued Cook in July 2012 asserting infringement of one or more claims in each of the patents-in-suit. In that complaint, it asserted that Mrs. Rhodes owned the patents-in-suit and that, as a result of the exclusive license Mrs. Rhodes had granted, Endotach had the right to enforce the patents against all infringers.

Cook moved to dismiss the lawsuit for lack of subject matter jurisdiction arguing that Endotach did not have standing to bring suit. On July 12, 2013, presumably in response to the motion, an “amendment” to the exclusive licensing agreement transferred an exclusive license on the Rhodes patents to Endotach from the Rhodes Trust. It was signed by Mrs. Rhodes and the other Co-Trustees.

In this opinion, Senior Judge Larry J. McKinney addressed Cook’s contention that Endotach did not have standing to sue. The court concluded that Endotach did lack standing as Mrs. Rhodes did not have any individual property interest in the Rhodes patents at the time that she purported to convey an exclusive license. The court dismissed Endotach’s lawsuit without prejudice.

Practice Tip #1: The principle of standing that is important in this case is whether or not Endotach had any legal rights and interests to the Rhodes patents at the time it filed suit. While there are some exceptions, in general, a plaintiff may not sue to assert rights held by third parties.

Practice Tip #2: Apparently realizing that the earlier effort to convey the license might be successfully challenged (as it was) and the case dismissed as a result (as it was), an additional complaint was filed on July 16, 2013, shortly after a new attempt was made to convey to Endotach an exclusive license to the patents-in-suit, this time by the Rhodes Trust. See here.

May 17, 2013

Purdue University Celebrates Innovation

By Overhauser Law Offices, LLC

Lafayette, Ind. — Purdue University students are creating and patenting products while pursuing their degrees. Purdue is celebrating the inventiveness of five of those students: Julia Alspaugh, Zachary Amodt, Sean Connell, Andrew Glassman and Anne Dye Zakrajsek.

Julia Alspaugh, a mechanical engineer in her second year as a master’s student, researches biomedicine. She says, “I see mechanical engineering as a broad field that analyzes the world’s processes and how the machinery and technology that makes them work can be simplified and improved.”

Julia is part of a large, interdisciplinary team seeking numerous patents related to the use of novel, resorbable biomaterials to create fixation devices for next-generation orthopedic devices, such as the plates, pins and screws used to set broken limbs or repair damaged tissues and joints.

“These devices would provide support while the bone and joint healed, for example, then degrade within a few years without leaving any foreign or potentially toxic materials in the body,” she explains. “It’s a similar concept to the dissolving stitches now used in many dental surgeries, but on a larger and more complex scale.”

For Julia, the most surprising thing she’s encountered in the patent process is unrelated to engineering or biomedicine. “Learning how to make sure what we are working on is novel and patentable has been more challenging than expected,” she says. “It may be an awesome new technology, but we also have to keep in mind its marketability. It requires communication between many different people with different interests and ways of doing things.”

Zachary Amodt dropped out of school to join the military after September 11, 2001. Ten years later, he returned and is now holding a provisional patent inspired by his experience as a combat medic in war zones all over the world.

March 29, 2012

Supreme Court Of The United States Reversed The Federal Circuit On Method Claim For Treating Autoimmune Diseases Are Not Eligible For Patent Protection

By Overhauser Law Offices, LLC

Washington, D.C. – The United States Supreme Court has unanimously reversed a patent decision by the Court of Appeals for the Federal Circuit and has held that patent claims that are a “law of nature” are not patent eligible under 35 U.S.C. § 101. The decision built upon the Court’s 2010 decision in Bilski v. Kappos.

Patent lawyers for Prometheus Laboratories, Inc. of San Diego, California filed a patent infringement suit against Mayo Collaborative Services, doing business as Mayo Medical Laboratories of Rochester, Minnesota, alleging that Mayo infringed patent no. 6,355,623, Method of treating IBD/Crohn’s disease and related conditions wherein drug metabolite levels in host blood cells determine subsequent dosage and patent no. 6,680,302, Methods of optimizing drug therapeutic efficacy for treatment of immune-mediated gastrointestinal disorders which have been issued by the US Patent Office.

The patents at issue involve claims over an observed correlation between certain blood tests and patient health, specifically the correlation between the level of certain drug metabolites in the patient’s blood and the patient’s symptoms of gastrointestinal disease. The Court of Appeals for the Federal Circuit had twice ruled in Prometheus’s favor. Oral arguments were held December 7, 2011 at the United States Supreme Court. The Court decision essentially held that Prometheus’s “invention” was not patentable because it was effectively a law of nature. In other words, the relationship between the dosages and the effect on patient health was a natural phenomenon and therefore, unpatentable.

We blogged a preview of this case in October. This ruling is being criticized by the patent bar as making the law less clear. In particular, Robert S. Sachs of Fenwick & West LLP is examining the decision in a series of blogs on Patently-O in which he examines “just some of the logical and legal errors in the Court’s decision.” Sachs commentary also suggests that numerous patents should now be found invalid.

Practice Tip: The Court’s decision has immediately changed protocol at the patent examination office. The US Patent Office has issued new guidelines to patent examiners which are available here.
Continue reading

March 12, 2012

Organic Seed Growers’ Patent Infringement Suit Against Monsanto Has Been Dismissed For Lack of Jurisdiction

By Overhauser Law Offices, LLC

New York, NY – The Southern District of New York has dismissed an innovative patent infringement lawsuit brought by a group of organic farmers against agriculture giant Monsanto Company for lack of jurisdiction. Monsanto has filed a motion to dismiss arguing that the plaintiffs have not demonstrated a justiciable case or controversy and therefore the court does not have subject matter jurisdiction because there was no current case or controversy.

We previously blogged about the case here. Earlier this year, patent attorneys for a group of 60 organizations and farmers, including the Organic Seed Growers and Trade Association, filed a patent lawsuit in the Southern District of New York against agriculture giant Monsanto Company of St. Louis, Missouri. The plaintiffs are farmers who do not want their organic seeds contaminated by the transgenic or genetically modified seeds that are produced and patented by Monsanto. They feared contamination occurs when organic seeds come into contact with genetic material from transgenic seeds through natural pollination processes, such as the wind blowing transgenic pollen to a organic farm nearby. The plaintiffs alleged that, given Monsanto’s reputation for vigorously defending its patents, they have brought “this action to protect themselves from ever being accused of infringing patents on transgenic seed.” Their complaint begins: “Society stands on the precipice of forever being bound to transgenic agriculture and transgenic food. Coexistence between transgenic seed and organic seed is impossible because transgenic seed contaminates and eventually overcomes organic seed. ” The organic farmers sought a declaratory judgment that all of Monsanto’s transgenic seed patents are invalid as injurious to public health and for numerous other reasons. “

The Organic Seed Farmers have not yet indicated whether they will appeal this decision.

Practice Tip: As the court noted in finding it did not have jurisdiction: “The Declaratory Judgment Act provides, “In a case of actual controversy within its jurisdiction, . . . any court of the United States . . . may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.” 28 U.S.C.§ 2201(a).” A plaintiffs belief that a lawsuit may be threatened, even if somewhat realistic, must typically allege some affirmative facts to support the threat in order for the court to find an actual case or controversy exists.