The U.S. Trademark Office issued the following 193 trademark registrations to persons and businesses in Indiana in November 2016 based on applications filed by Indiana trademark attorneys:
| Registration No. | Word Mark | Click To View | |
| 5097638 | NEGOTIATOR | TSDR | |
| 5095522 | WE’VE GOT YOUR BACK | TSDR | |
| 5095457 | KENRA | TSDR | |
| 5095293 | PSNOB | TSDR | |
| 5095265 | LET’S TALK ABOUT THE GORILLA IN THE ROOM | TSDR | |
| 5095098 | ZYLO | TSDR | |
| 5090995 | J U | TSDR |
The Supreme Court on December 2, 2016, agreed to review an en banc Federal Circuit decision that no changes to the Federal Circuit’s law of patent exhaustion are required by the Supreme Court’s decisions in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2012), and Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008). Impression Products, Inc., v. Lexmark International, Inc., U.S., No. 15-1189, cert. granted 12/2/2016.
En Banc Federal Circuit Decision
In a 10-2 decision, the en banc Federal Circuit held that a patentee, when selling a patented article subject to a single-use/no-resale restriction that is lawful and clearly communicated to the purchaser, does not by that sale give the buyer, or downstream buyers, the resale/reuse authority that has been expressly denied. 816 F.3d 721 (2016). It also held that a U.S. patentee, merely by selling or authorizing the sale of a U.S.-patented article abroad, does not authorize the buyer to import the article and sell and use it in the United States, which are infringing acts absent patentee-conferred authority. Judge Dyk filed a dissenting opinion, which was joined by Judge Hughes, generally agreeing with the position argued in the government’s amicus brief.
The Justice Department told the Federal Circuit (and later the Supreme Court in urging review) that foreign sales may exhaust patent rights unless the patentee reserves its rights, and that Mallinckrodt Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992), should be overruled because it erroneously held that patentees can impose servitudes on chattels with post-sale restrictions.
Indianapolis, Indiana – Alcon Research, Ltd. of Fort Worth, Texas and Alcon Pharmaceuticals Ltd. of Fribourg, Switzerland filed an intellectual property lawsuit in the Southern District of Indiana. They assert infringement of two patents covering Pataday®, an ophthalmic pharmaceutical. Pataday is covered by U.S. Patent Nos. 6,995,186 (the “‘186 patent”) and 7,402,609 (the “‘609 patent”).
Defendant Akorn, Inc., a generic drugmaker based in Lake Forest, Illinois, filed an Abbreviated New Drug Application (“ANDA”) with the U.S. Food and Drug Administration seeking approval to manufacture and sell a generic version of Plaintiffs’ drug prior to the expiration of the two patents-in-suit. Plaintiffs contend that the submission of this ANDA is an act of patent infringement.
In this Indiana complaint, patent lawyers for Alcon ask the court to adjudicate the following:
The U.S. Patent Office issued the following 144 patent registrations to persons and businesses in Indiana in October 2016, based on applications filed by Indiana patent attorneys:
| Patent No. | Title | |
| 1 | D770,038 | Medication injection device |
| 2 | 9,479,641 | System and method for routing a communication utilizing scoring |
| 3 | 9,479,070 | Power conversion system |
| 4 | 9,479,034 | Continuously formed annular laminated article and method for its manufacture |
| 5 | 9,476,824 | Optical chemical classification |
| 6 | 9,476,491 | Lockup clutch for a torque converter |
| 7 | 9,476,487 | Nested endload assembly for a variator |
| 8 | 9,476,377 | System, method, and apparatus for fuel injection control |
| 9 | 9,476,339 | Recessed exhaust reductant injector with cover plate |
| 10 | 9,476,338 | Ammonia sensor control, with NO.sub.x feedback, of an SCR aftertreatment system |
The United States Patent Office sent a November 2, 2016, Memorandum to the Patent Examining Corps discussing two recent Federal Circuit decisions and the rules on patent eligibility for computer software. The decisions are McRO, Inc. v. Bandai Namco Games America Inc. and BASCOM Global Internet Services v. AT&T mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). McRO is significant because it reminds patent examiners when examining a patent claim, that they must not be overgeneralize or simplify it into its “gist, and that an improvement in computer technology is not limited to improving the operation of a computer. BASCOM is significant because the considerations of elements showing an inventive feature should look for additional elements in combination as well as individually. It also notes that the absence of preemption may indicate the claim is not directed to a judicial exception.
Indianapolis, Indiana – A trademark lawyer for Defendants A3 Media, LLC; Collective Publishing, LLC; Yelena Lucas and Neil Lucas, all of Fishers, Indiana, and Janelle Morrison of Zionsville, Indiana removed a federal trademark lawsuit to the Southern District of Indiana. The litigation was initially filed by franchise law attorneys in Hamilton County Superior Court under Cause No. 29D03-1609-PL-008343 on behalf of Plaintiffs Britt Interactive, LLC and TownePost Network, Inc. of Fishers, Indiana. Tom and Jeanne Britt have been added as third party Defendants.
Britt Interactive runs a monthly newsletter and magazine. That entity, and later its successor TownePost Network, licensed its “techniques, intellectual property, and system” to others in the Indianapolis area for the purpose of producing “monthly hyper-local publications” in nearby territories. TownePost later ceased offering such licenses and moved to a franchise model.
In December 2012, Britt Interactive entered into a licensing agreement with Defendant A3 Media for the geographical area of Zionsville, Indiana. Plaintiffs contend, however, that A3 Media and related Defendants abandoned that license and, instead, began to engage with Plaintiffs’ advertising customers in a manner that confused the customers and interfered with Plaintiffs’ business relationships.
Plaintiffs’ complaint lists the following causes of action:
• Count I: Tortious Interference with Contracts
• Count II: Tortious Interference with Business Relationships
• Count III: Conversion
• Count IV: Trademark Infringement under Section 32(A) of the Lanham Act, 15 U.S.C. § 1114(A)
• Count V: Trademark Infringement, False Designation of Origin and Unfair Competition under Section 43(A) of the Lanham Act, 15 U.S.C. § 1125(A)
• Count VI: Violations of Indiana Trademark Act• Count VII: Breach of Contract
Plaintiffs asked the Hamilton County Court for injunctive relief, damages, costs and attorneys’ fees. Defendants counterclaimed against Plaintiff and, invoking federal jurisdiction on the basis of the federal questions raised in the complaint, removed the lawsuit to the Southern District of Indiana.
The Supreme Court on October 11, 2016, heard oral argument on whether an award of profits for design patent infringement of Apple’s iPhone should be limited to those profits attributable components bearing the claimed design features or should include profits from the entire iPhone. Samsung Electronics Co. Ltd. v. Apple, Inc., U.S., No. 15-777, oral argument 10/11/2016. The design patent statute provides for liability “to the extent of the [infringer’s] total profit” for applying the patented design “to any article of manufacture.” The parties agreed that the “article of manufacture” may be a component rather than the entire product, and agreed with the government’s proposed factors for determining the profit attributable to the infringing component. Apple maintained, however, that there is no basis for overturning the jury award of nearly $400 million since in this case Samsung never identified any article of manufacture other than the phones themselves.
Indianapolis, Indiana – An Indiana patent attorney for VOXX International Corp. of Indianapolis, Indiana filed a lawsuit in the Southern District of Indiana alleging patent infringement.
Plaintiff VOXX manufactures and supplies consumer electronics in the automotive, audio and consumer-accessory industry, including developing products sold under the Klipsch® and RCA® brands.
At issue in this Indiana litigation are patents that relate to overhead video units that can be mounted to the ceilings of vehicles as well as video units that are located in the headrests of vehicles. These patents have been registered with the U.S. Patent and Trademark Office as Patent Nos. 7,653,345; 8,255,958; 9,114,745 and 9,348,368.
VOXX contends that Defendant Johnson Safety, Inc. of San Bernardino, California has infringed these patents, asserting both direct and indirect infringement.
In a complaint filed by an Indiana patent lawyer, VOXX asks the federal court for a judgment of infringement of the four patents-in-suit, injunctive relief, damages, attorneys’ fees and costs of the litigation.
On April 26, 2016 United States District Court for the Northern District of Indiana announced that Michael G. Gotsch, Sr. will replace retiring judge Christopher A. Nuechterlein.
Chief Judge Philip P. Simon said “Gotsch has served as a Judge for the State of Indiana for nearly 12 years and has demonstrated the demeanor, intellect, and practical approach to problem solving that will make him an outstanding magistrate judge.”
A magistrate’s duties include presiding over preliminary proceedings in intellectual property and other cases. Judges may request that a magistrate judge handle pre-trial motions and any settlement attempts.
As reported by Jeremy Malcolm, Senior Global Policy Analyst for the Electronic Frontier Foundation, when the test of the Trans-Pacific Partnership (TPP) was released in November 2015, it included provisions dictating the kinds of penalties that should be available in cases of copyright infringement. Amongst those provisions, the following footnote allowed countries some flexibility in applying criminal procedures and penalties to cases of willful copyright infringement on a commercial scale:
With regard to copyright and related rights piracy provided for under paragraph 1,a Party may limit application of this paragraph to the cases in which there is an impact on the right holder’s ability to exploit the work, performance or phonogram in the market.
Following the footnote back to its source, it is apparent that the reference to limiting “the application of this paragraph” is to a more specific list of criminal procedures and penalties that the parties are required to make available in such cases. Paraphrased, these are:
Indiana Intellectual Property Law News