Indiana Intellectual Property Law News

January 26, 2015

Indiana Patent Litigation: Agri-Labs Asserts Infringement of Patented GPS-Enabled Soil-Analysis System

Fort Wayne, Indiana – An Indiana patent attorney for Agri-Labs Holdings LLC of Auburn, Indiana filed a patent infringement lawsuit in the Northern District of Indiana alleging that TapLogic, LLC of Murray, Kentucky infringed its patented “Soil Sample Tracking System and Method.”

At issue in this Indiana 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”).

TapLogic is accused of selling and offering for sale in the United States its “Ag PhD Soil Test,” which Agri-Labs contends infringes the patent-in-suit. To implement its soil-testing system, TapLogic provides its customers with soil containers. Customers are instructed to manually pull soil samples from a field and place them in separate containers, each of which includes a unique identifier. TapLogic’s Ag PhD test obtains a GPS coordinate reading associated with a location in the field from where the soil sample is taken and associates the GPS coordinate reading with the soil container having the customer scan the barcode contained on the soil container.

In December 2014, Agri-Labs sent a letter to TapLogic “attempting to amicably resolve this matter.” Agri-Labs indicates that it received no meaningful reply from TapLogic in response to the letter.

In this Indiana patent infringement complaint, the patent lawyer for Agri-Labs asserts a single count: Infringement of the ‘857 Patent by TapLogic. Agri-Labs asks the court to adjudge that the ‘857 Patent has been infringed and to enjoin TapLogic and its agents from directly and/or indirectly infringing the patent. Agri-Labs also asks for an award of compensatory damages pursuant to 35 U.S.C. § 284, as well as enhanced damages under 35 U.S.C. § 285, and for an award of its costs.

January 23, 2015

Indiana Copyright Law: Court Orders SVT to Provide Video to EEOC Despite Copyright Concerns

By Overhauser Law Offices, LLC

Hammond, Indiana – Magistrate Judge Paul R. Cherry of the Northern District of Indiana, Hammond Division, ordered SVT, LLC d/b/a Ultra Foods (“SVT”) to produce a copyrighted training video to the Equal Employment Opportunity Commission (“EEOC”) in ongoing gender-discrimination litigation.

In 2010, Tiffany Swagerty was rejected from a position as a night crew stocker at SVT’s Ultra Foods operation in Merrillville, Indiana. She complained to the EEOC contending that SVT’s hiring manager had told her that women that were not usually hired for night positions. The subsequent investigation by the EEOC corroborated Swagerty’s assertions. The EEOC later sued SVT for violations of Title VII seeking injunctive relief and, on behalf of Swagerty and other similarly rejected female applicants, monetary damages.

In this current opinion in the matter of Equal Employment Opportunity Commission v. SVT, LLC d/b/a Ultra Foods, the court ruled on several discovery disputes between the parties. Among those issues was whether SVT must produce to the EEOC copies of a copyrighted “stocking video” or whether, in order to obtain a copy, the EEOC must bear a portion of the cost of the materials.

Specifically, as part of its discovery requests, the EEOC asked SVT to provide “all documents containing job descriptions for all stocker positions … including hiring criteria, requirements, and responsibilities created.” SVT objected to providing one piece of responsive material – a stocking DVD that was shown to overnight stockers during orientation – on copyright grounds. SVT stated that, while it had made “in-house copies” of the video, it would not be able to produce a copy of the materials to the EEOC and that it would cost $700 for the EEOC to order and purchase a set of the DVDs. Instead of providing the DVD, SVT offered to have counsel for the EEOC either share in the cost of the DVDs or, in the alternative, to view the DVDs at counsel for SVT’s office during the breaks of depositions. EEOC refused this offer and filed a motion to compel the production of the video.

The court was not persuaded that either of SVT’s proposals was sufficient. The court stated instead that SVT had offered an “unclear … explanation of when and how it obtained the original and/or copies of the DVDs, the nature and extent of any copyright that might exist, and what the costs … were expended for.” Consequently, the court granted the EEOC’s motion to compel, holding that SVT had “not met its burden of demonstrating that the cost of this discovery should be shifted” and ordered SVT to produce the copyrighted material to the EEOC without cost to the EEOC.

January 22, 2015

Trademark Law: Update of Trademark Manual of Examining Procedure

By Overhauser Law Offices, LLC

On January 17, 2015, the United States Patent and Trademark Office issued the January 2015 Trademark Manual of Examining Procedure (“TMEP”), which incorporates changes made in accordance with the following rules:

• Renaming of Express Mail® to Priority Mail Express®, published October 22, 2014 at 79 FR 63036;

• Reduction of Fees for Trademark Applications and Renewals, published December 16, 2014 at 79 FR 74633; and

January 21, 2015

Open Wi-Fi and Copyright: DMCA Safe Harbors

By Overhauser Law Offices, LLC

As explained in Monday’s blog post, in general a network operator should not be liable for its users’ activity as long as the operator merely acts as a passive conduit for Internet traffic. However, network operators who remain worried about the risk of liability for copyright infringement can consider another option: the safe harbors provided by the Digital Millennium Copyright Act (“DMCA”).

In order to foster online expression and commerce, Congress crafted a set of safe harbors from copyright liability to provide “greater certainty to service providers concerning their legal exposure for infringements that may occur in the course of their activities.”

Under the DMCA, “service provider” includes “an entity . . . providing [] connections for digital online communications.” The definition of a service provider is broad, and includes those who do not operate communications equipment themselves. In one case, for example, a federal appeals court held that a payment processor for online content was a DMCA “service provider” even though it didn’t operate the alleged infringer’s Internet connection or transmit any infringing material. Congress also intended that the term cover “subcontractors” of Internet service providers. Arguably, this definition covers the providers of open Wi-Fi, such as municipalities, cafes, and libraries.

January 19, 2015

Open Wi-Fi and Copyright: A Primer for Network Operators

By Overhauser Law Offices, LLC

Open networks provide Internet access to the public. Users do not need to subscribe – they simply connect their devices, often over a wireless connection. For instance, the City of San Francisco recently deployed a free, public Wi-Fi network along a three-mile stretch of Market Street. Similarly, the Open Wireless Movement encourages owners of home Wi-Fi hotspots to open their networks to the public.

Operators of open networks may worry that they could be liable if people use their networks to engage in copyright infringement. This blog post generally explains the scope and limits of secondary liability for the acts of users, and additional steps network operators may choose to take to further limit any legal risk.

This post should not be taken as legal advice specific to any individual network operator.

January 16, 2015

IU Maurer School of Law Names Norman J. Hedges to Direct Intellectual Property Clinic

By Overhauser Law Offices, LLC

Bloomington, Indiana – The Indiana University Maurer School of Law has selected a prominent intellectual property lawyer to serve as the first full-time director of its intellectual property law clinic.

Norman J. Hedges (pictured) will join the law school today as a clinical associate professor of law. He comes to Bloomington with over 16 years of experience in patent practice in Indianapolis, including 10 years in the Indianapolis office of Faegre Baker Daniels, where he was named partner in 2007. He has been a member of the law school’s adjunct faculty since 2014.

“We are delighted that Norm will be joining our faculty full-time,” said Mark D. Janis, Robert A. Lucas Chair of Law and director of the school’s Center for Intellectual Property Research. “He brings a wealth of practical experience that will be invaluable in building our clinic as it expands to provide pro bono IP services to our state’s most innovative start-up businesses.”

January 15, 2015

Indiana Trade Secret Law: Federal Prosecutors Drop All Charges Against Scientists Accused of Theft of Lilly Trade Secrets

By Overhauser Law Offices, LLC

Indianapolis, Indiana – All federal criminal charges against Guoqing Cao and Shuyu Li, who were formerly employed by Eli Lilly and Company (“Lilly”), were recently dropped by federal prosecutors, who stated that “additional information” had been received that altered “the investigative facts initially relied upon by the government” in its case against Cao and Li.

This federal indictment was brought in 2013 in the Southern District of Indiana. Defendants Cao and Li, two doctoral-level scientists, were charged with multiple counts of theft. At issue was intellectual property belonging to Indiana-based Lilly valued at $55 million. Counts one through three of the indictment, as well as counts five through ten, were listed as theft of trade secrets and aiding and abetting. Count four alleged conspiracy to commit theft of trade secrets.

In the initial proceedings, the United States maintained that Defendants were traitors who had conveyed “American trade secrets” – specifically, “crown jewels” in the form of many millions worth of intellectual property belonging to Lilly – to Jiangsu Hengrui Medicine Co., Ltd., a company located in Shanghai, China.

January 14, 2015

Trademark Law: TTAB to Hold External Stakeholder Forum

By Overhauser Law Offices, LLC

Alexandria, Virgina – The Trademark Trial and Appeal Board (“TTAB”) will host an external stakeholder forum (please see below) on January 29, 2015, from 1 to 3 pm, to discuss issues related to its e-filing system or ESTTA (Electronic System for Trademark Trials and Appeals).

The United States Patent and Trademark Office (“USPTO”) is in the process of redesigning its IT systems to take advantage of new technology that will allow end-to-end electronic processing of trademark matters. The new system, known as Trademark Next Generation (“TMNG”), will significantly increase the functionality and flexibility of the USPTO’s systems, including those used by TTAB, but the TTAB-related aspects of TMNG, particularly for trial cases, will deploy later than those related to examination and appeals. In the interim, TTAB is considering potential updates to ESTTA that it considers crucial to its stakeholders. The goal of the forum is to gain stakeholder input as to capabilities considered to be critical, both for the purpose of enhancing ESTTA functionality in the near term and to assist TTAB in planning for the aspects of TMNG that will impact TTAB.

Some areas that TTAB has identified for discussion are:Difficulties encountered with attachments to filings, both in terms of pre-filing review and resolution of images in the Trademark Trial and Appeal Board Inquiry System (“TTABVUE”) following submission.

• Expansion of list of grounds on the ESTTA cover page for purposes of initiating opposition and cancellation proceedings.

• Modification of the consent motion form to allow filers to control resetting of dates that have not yet lapsed.

• Implementation of a “saved” feature (similar to the one available in the Trademark Electronic Application System) that will allow more than one author to contribute to the filing before submission.

This is only a preliminary list of topics for discussion and the TTAB welcomes any additional suggestions or issues that its stakeholders wish to explore.

The forum will be open to anyone who wishes to attend in person and also will be available in webinar format. The TTAB asks that you register your intent to attend by sending an e-mail with your contact information to TTABRSVP@uspto.gov. Please indicate whether you intend to attend in person or via the web.

Webinar instructions are available here. Additional information is available on the TTAB’s webpage.

January 13, 2015

Indiana Patent Litigation: Federal Circuit Overturns Trial Court’s Award of Enhanced Damages for Patent Infringement

By Overhauser Law Offices, LLC

Washington, D.C. – The U.S. Court of Appeals for the Federal Circuit ruled on the patent infringement litigation between Zimmer of Warsaw, Indiana and Stryker of Kalamazoo, Michigan. The Federal Circuit upheld the jury’s finding that Zimmer had infringed three of Stryker’s patents but overturned the decision of the Western District of Michigan to triple the damage award, reducing the award from $228 million to $70 million, and vacated the district court’s award of attorneys’ fees.

Stryker and Zimmer are the two principal participants in the market for orthopedic pulsed lavage devices. A modern, orthopedic pulsed lavage device is a combination spray-gun and suction-tube, used by medical professionals to clean wounds and tissue during surgery.

In 2010, Stryker Corp, Stryker Puerto Rico, Ltd. and Stryker Sales Corp. (collectively, “Stryker”), sued Zimmer, Inc., Zimmer Surgical, Inc. and Zimmer Orthopaedic Surgical Products of Warsaw, Indiana (collectively, “Zimmer”) alleging that Zimmer’s line of Pulsavac Plus pulsed lavage devices infringed three of Stryker’s patents – U.S. Patent No. 6,022,329 (“the ‘329 patent”), U.S. Patent No. 7,144,383 (“the ‘383 patent”) and U.S. Patent No. 6,179,807 (“the ‘807 patent”). A jury awarded $70 million in damages and the district court increased that figure by approximately $2.4 million to reflect sales made by Zimmer during a time period that had not been considered by the jury.

Stryker also moved for enhanced damages under 35 U.S.C. § 284, alleging willful patent infringement by Zimmer. Under § 284, “the court may increase the damages up to three times the amount found or assessed” at trial. For this determination, the court referred to Read Corp. v. Portec, Inc.. In Read, the Federal Circuit had held that the “paramount determination in deciding to grant enhancement and the amount thereof is the egregiousness of the defendant’s conduct based on all the facts and circumstances.” In evaluating the egregiousness of the defendant’s conduct, courts typically rely on the nine Read factors, which are:

1. whether the infringer deliberately copied the patentee’s ideas or design;

2. whether the infringer investigated the scope of the patent and formed a good faith belief that it was invalid or not infringed;

3. the infringer’s conduct during litigation;

4. the infringer’s size and financial condition;

5. closeness of the case;

6. duration of the infringing conduct;

7. remedial actions, if any, taken by the infringer;

8. the infringer’s motivation for harm; and

9. whether the infringer attempted to conceal its misconduct.

The district court found that all nine Read factors favored substantial enhancement of the jury’s award and trebled both the jury’s award of $70 million and the court’s award of supplemental damages.

In the current opinion, the Federal Circuit affirmed the jury’s findings that Stryker’s patents were valid and had been infringed by Zimmer, as well as the jury’s award of damages to Stryker but reversed the district court’s judgment that Zimmer’s infringement was willful.

To establish willfulness, the patentee has the burden of showing “by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” If and only if the patentee establishes this “threshold objective standard” does the inquiry then proceed to the question of whether the objectively defined risk was either known or so obvious that it should have been known to a party accused of patent infringement.

The Federal Circuit noted that the district court had failed to undertake the required objective assessment of Zimmer’s specific defenses to Stryker’s claims. The Federal Circuit then considered the question of objective recklessness, which “will not be found where the accused infringer’s position is susceptible to a reasonable conclusion of no infringement.” The court held that the objective standard showed that Zimmer had presented reasonable defenses to all of the asserted claims of Stryker’s patents. Consequently, Zimmer was found not to have acted recklessly and the decision to award enhanced damages was reversed.

Because the appellate court reversed the trial court’s determination that the infringement of the patents had been willful – and because district court’s award of attorneys’ fees was based on that determination – the Federal Circuit vacated district court’s finding that the case was exceptional as well as the award of attorneys’ fees and remanded the issue to the trial court for further consideration.

January 9, 2015

High Court Will Decide Whether to Overrule Brulotte Doctrine

By Overhauser Law Offices, LLC

picture of gavel.png

Washington, D.C. – The U.S. Supreme Court granted certiorari in a case asking whether its decision in Brulotte v. Thys Co., 379 U.S. 29 (1964), that a licensee’s obligations are absolved after the expiration of a patent, should be overruled. Kimble v. Marvel Ent. Inc., U.S., No. 13-720.

Ninth Circuit Decision

In this case, Kimble held a patent on a glove that allows its wearer to shoot pressurized foam string from the palm, mimicking a gesture of the comic-book hero “Spider-Man.” (Patent No. 5,072,856). Kimble met with Marvel’s predecessor to discuss his glove invention, which was then covered by his pending patent application. When Marvel began manufacturing a similar toy called the “Web Blaster,” Kimble sued in 1997 for patent infringement and for breach of contract based on an alleged oral agreement to compensate him for any use of his ideas.