What can be patented?
Utility patents are available for a new, nonobvious and useful:
• Process,
About Patents
What is a patent?
A patent is an intellectual property right granted by the U.S. Patent and Trademark Office (“USPTO”) that gives a patent owner the right “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted. The “invention” is set forth by a patent’s “claims” and individual claims of a patent or patent application may be challenged.
Basic information about patents and the process of applying for a patent can be found on the USPTO’s Inventor’s Resources webpage. Also you may find this video from the Federal Judicial Center helpful in explaining patents and the patenting process.
J & J Sports Sues Soriano’s Mexican Restaurant and Owner for Illegal Signal Interception
Indianapolis, Indiana – An intellectual property attorney for J & J Sports Production, Inc. of Campbell, California (“J & J Sports”) sued Minerva Soriano and Soriano’s Mexican Restaurant, LLC, both d/b/a Soriano’s Mexican Restaurant of Indianapolis, Indiana, in the Southern District of Indiana. Plaintiff alleges that Defendants illegally intercepted and broadcast the Julio Cesar Chavez, Jr. v. Sergio Martinez WBC Middleweight Championship Fight Program on September 15, 2012.
Defendant Minerva Soriano, alleged to be an owner and/or an individual with control, oversight and management of Soriano’s Mexican Restaurant has been sued for the illegal interception of the Julio Cesar Chavez, Jr. v. Sergio Martinez WBC Middleweight Championship Fight Program (the “Program”). Soriano’s Mexican Restaurant, LLC, the legal entity which apparently owns the restaurant, has also been sued.
Plaintiff J & J Sports alleges that it was granted the exclusive nationwide television distribution rights to the Program, including all under-card bouts and fight commentary included in the television broadcast of the event. It states that it entered into subsequent sublicensing agreements with various commercial entities, which were, in turn, granted certain commercial sublicensing rights to the Program.
J & J Sports contends that, “with full knowledge that the Program was not to be intercepted, received and exhibited by entities unauthorized to do so” Defendants and/or their agents unlawfully published, divulged and exhibited the Program. It further asserts that this conduct was “willful, malicious, and intentionally designed to harm” J & J Sports and to cause economic distress.
In the Indiana intellectual property complaint filed on behalf of J & J Sports, the following is alleged:
• Count I: Violation of Title 47 U.S.C. Section 605
• Count II: Violation of Title 47 U.S.C. Section 553
• Count III: Conversion
Regarding Count I, J & J Sports asks the court for the following: (a) Statutory damages for each willful violation in an amount to $100,000.00 pursuant to Title 47 U.S.C. 605(e)(3)(C)(ii), and (b) the recovery of full costs, including reasonable attorneys’ fees, pursuant to Title 47 U.S.C. Section 605(e)(3)(B)(iii).
Plaintiff requests the following remedies for the alleged violations of Count II: (a) Statutory damages for each willful violation in an amount to $50,000.00 pursuant to Title 47 U.S.C. 553 (b)(2) and (b) the recovery of full costs pursuant to Title 47 U.S.C. Section 553
(c)(2)(C), and (c) and reasonable attorneys’ fees, pursuant to Title 47 U.S.C. Section 553 (c)(2)(C).
Finally, for the count of conversion, J & J Sports asks: for compensatory damages in an amount according to proof against Defendants, and for reasonable attorney fees, and for all costs of the lawsuit, including but not limited to filing fees, service of process fees, investigative costs.
Practice Tip:
J & J Sports is a frequent litigant but it is relatively infrequent that a trial on the merits of its intellectual property claims is held. In 2010, it sued in the United States District Court for the Northern District of Texas alleging unauthorized interception and broadcast of the December 2007 “Undefeated” match between Floyd Mayweather and Ricky Hatton. Defendants argued that the broadcast had been authorized by its cable provider. Specifically, Time Warner Cable, which had been licensed to provide the non-commercial rights, expressly admitted that it had inadvertently authorized the commercial display of the broadcast. Time Warner Cable had also offered to pay to J & J Sports the liquidated damages that the contract required in cases of such a breach. On a motion for summary judgment, the trial court agreed with J & J Sports’ allegations that either a violation of § 605 or § 553 had occurred and awarded to J & J Sports statutory damages of $350 and costs and attorneys’ fees of $26,780.30.
The U.S. Court of Appeals for the Fifth Circuit reversed. The issue of whether § 605 applied was one of first impression for the court. It stated that § 605 did not apply to that case, holding that the receipt or interception of communications by wire from a cable system was not governed by § 605. The court then evaluated Defendants’ conduct under the “safe harbor” provision of § 553. That provision exempts from liability any cable recipient who is authorized by a cable company to receive a transmission. In this case,Time Warner Cable’s representative admitted that it had inadvertently sold the broadcast of the fight to Defendants for a non-commercial price, despite knowing that Defendants ran a commercial establishment. This, held the Fifth Circuit, was enough to create a material fact regarding whether Defendants in that case had violated § 553 making the trial court’s grant of summary judgment reversible error.
USPTO Launches Redesigned KIDS! Web Pages
WASHINGTON – New resource offers intellectual property education resources for parents, teachers, and students of all ages.
The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) recently announced the launch of its newly redesigned KIDS! Web pages aimed to encourage students of all ages to learn about the importance of intellectual property (“IP”) creation and protection. In addition to featuring young inventor profiles, activities, and videos, the pages also offer curricula that link Science, Technology, Engineering, and Math (“STEM”) education to IP and innovation through downloadable lesson plans, hands-on instructions for building inventions, USPTO career information and other useful resources.
“The USPTO looks to our children – the doers, makers, and tinkerers of the future – to reimagine the world and, as the Constitution calls for, ‘to promote the progress of Science and the useful Arts’ like never before,” said Michelle K. Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO. “As schools across the country ramp up their STEM programming, we look forward to putting even more tools in teachers’ hands that will ensure our next generation is well-versed in concepts of making, inventing, and creating the high-value intellectual property that drives our economy.” USPTO’s updated KIDS! Web pages also feature coloring pages designed to introduce younger students to patents and trademarks, an audio library of trademarked sounds, upcoming event listings, and other challenging activities to help encourage and inspire future generations of inventors. For more information, please visit www.uspto.gov/kids.
Indiana Unfair Competition Litigation: Property Damage Appraisers Sues Clinton Body Shop and Its Owner
Indianapolis, Indiana – Texas defamation and franchise attorneys for Property Damage
Appraisers (“PDA”), in conjunction with Indiana co-counsel, sued alleging that John Mosley (“Mosley”), owner of the Clinton Body Shop, Inc. of Clinton, Mississippi, committed unfair competition under the Lanham Act by falsely representing the nature of an estimate made by one of PDA’s franchisees. Various state-law claims have also been pled to the court. This unfair competition lawsuit was initially filed in Indiana state court. It was removed from the Marion County Superior Court to the Southern District of Indiana by Indiana intellectual property attorneys for Defendants.
Plaintiff PDA is a national franchisor with a network of approximately 185 independent franchisees that are in the business of performing inspections on vehicles and other property. It has been in business for over 50 years. Defendant Mosley is the owner of the Clinton Body Shop. Clinton Body Shop advertises itself as a one-stop, full-service shop for automobile services.
Mosley is accused of inducing a PDA franchisee, John Larry Gentry, into providing a nonconforming auto-services estimate on PDA letterhead. PDA contends that Gentry was told that this estimate was only for comparison purposes and that it would be provided only to the Mississippi Attorney General’s office.
PDA claims that, instead, Mosley subsequently e-mailed this estimate to the Indiana Auto Body Association. PDA also asserts that Mosley mischaracterized the contents of, and process involved in writing, the estimate. According to the complaint, Mosley also delivered this nonconforming estimate to “other body shops around the country, making the same misrepresentations.”
In its complaint, filed by Texas defamation and franchise lawyers for PDA, in conjunction with Indiana co-counsel, the following counts are listed:
• Count I: Federal Unfair Competition (15 U.S.C. § 1125(a))
• Count II: State Unfair Competition
• Count III: Defamation
• Count IV: Tortious Interference with Business Relationships
PDA asks the court for damages, including exemplary damages; interest; attorneys’ fees, expenses and costs; and a permanent injunction.
Practice Tip: The vast majority of Indiana intellectual property litigation takes place in federal court, as the intellectual property causes of action that are most often litigated creations of federal statutory law. Thus, they may be heard in federal court under federal-question jurisdiction. However, some intellectual property lawsuits – for example, litigation involving a trademark that is registered only with the state of Indiana and used solely within Indiana’s boundaries – may occur in Indiana state court.
Indiana Utility Patent Litigation: Functional Devices Sues for Declaratory Judgment of Utility Patent Non-infringement and Invalidity
Indianapolis, Indiana – Indiana patent attorneys for Functional Devices, Incorporated of
Russiaville, Indiana filed a declaratory judgment action asserting patent invalidity and non-infringement in the Southern District of Indiana. This intellectual property complaint alleges that Low Voltage Systems, Inc. d/b/a LVS, Inc. of San Leandro, California and Albert L. Hermans of Oakland, California wrongfully accused Functional Devices of infringing Utility Patent No. 7,045,964, “Emergency Lighting System with Automatic Diagnostic Test” (“the ‘964 Patent”), which was issued by the U.S. Patent Office.
Declaratory judgment Plaintiff Functional Devices been designing, manufacturing, and selling electronic devices in the United States since 1969. It sells relays, current sensors, power control, enclosures, power supplies, transformers, and accessories.
Declaratory judgment Defendant Low Voltage offers a line of electrical, low voltage, fire alarm, access control, security, video, and voice and data fiber optics products. It specializes in emergency lighting products, central-lighting inverters and power-control relays. Declaratory judgment Defendant Hermans is the owner of the ‘964 Patent. He is believed to have assigned or exclusively licensed the ‘964 Patent to Low Voltage.
Functional Devices asserts that it has been wrongly accused by LVS of infringing the ‘964 Patent. It indicates that, on August 28, 2014, patent counsel for LVS sent Functional Devices a demand letter contending that the manufacture, use, sale, and offer for sale of certain products infringes the ‘964 Patent. This letter, it claims, creates an actual, substantial, and continuing justiciable controversy between Functional Devices and LVS.
In its complaint, filed by Indiana patent lawyers, Functional Devices lists the following claims:
• Count I: Declaratory Judgment – Non-infringement of the ‘964 Patent
• Count II: Declaratory Judgment – Invalidity and Unenforceability of the ‘964 Patent
Functional Devices seeks a declaration from the court that 1) the ‘964 Patent is invalid and unenforceable and 2) no Functional Devices product infringes the ‘964 Patent. It also asks the court to order Low Voltage and Hermans to pay all costs and attorneys’ fees associated with the litigation.
Practice Tip #1: When the declaratory judgment plaintiff files in its home jurisdiction, establishing personal jurisdiction over declaratory judgment defendants is sometimes tricky and can lead to competing lawsuits in different jurisdictions. 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.
G & G Joins J & J in Suing for Illegal Interception of Championship Fight
South Bend, Indiana – An intellectual property attorney for G & G Circuit Events, LLC (“G & G”) of Campbell, California sued in the Northern District of Indiana alleging that Juan Aguirre, Beatriz Zarate, Graciela Valles and Taqueria Los Gallos, Inc. illegally intercepted and broadcast “Knockout Kings: Canelo Alvarez v. Josesito Lopez Championship Fight” (the “Program”) on September 15, 2012.
G & G states that it is the exclusive domestic commercial distributor of the Program. It has sued multiple Defendants both individually and doing business as Taqueria Los Gallos under the Communications Act of 1934 and The Cable & Television Consumer Protection and Competition Act of 1992.
Specifically, Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the Program at issue on September 15, 2012 without an appropriate license. Regarding the claim under 47 U.S.C. §605, the Complaint alleges that with “full knowledge that the Program was not to be intercepted, received, and exhibited” without authorization, “each and every one of the above named defendants . . . did unlawfully … exhibit the Program” for the purpose of commercial advantage and/or private financial gain. A count of conversion is also included. It asserts that Defendants’ acts were “willful, malicious, egregious, and intentionally designed to harm Plaintiff.”
In the Complaint, the intellectual property lawyer for G & G listed the following counts and requests for redress:
• Count I: Violation of Title 47 U.S.C. § 605. For this count, G & G requests (a) statutory damages for each willful violation in an amount to $100,000.00, and (b) the recovery of all costs, including reasonable attorneys’ fees.
• Count II: Violation of Title 47 U.S.C. § 553. For this count, G & G asks the court for (a) statutory damages of $50,000 for each willful violation; (b) the recovery of all costs; and (c) and in the discretion of the court, reasonable attorneys’ fees.
• Count III: Conversion. For this count, the court is requested to order both compensatory and punitive damages from Defendants as the result of the Defendants’ allegedly egregious conduct, theft, and conversion of the program and deliberate injury to G & G.
Practice Tip #1: Typically, an Indiana intellectual property plaintiff suing for interception cannot recover under both §§ 553 and 605, as the Seventh Circuit has held that those sections relate to two different kinds of piracy. Specifically, the Seventh Circuit has held that Section 553 governs the interception of cable television program traveling over a cable network. Section 605, in contrast, addresses interception of television programming traveling through the air. However, the federal appellate courts are not in agreement on this interpretation.
Practice Tip # 2:
This Complaint is very similar to the Complaint we blogged about on Friday, which was filed by the intellectual property counsel for J & J Sports. The complained-of activity (interception) is the same, the intellectual property that was allegedly intercepted (the Program) is the same and the Defendants are the same. One can also surmise that the Plaintiffs – J & J and G & G – may be related as well. Even the mysterious page-numbering notations found at the bottom of each page – “Page PAGE 7” [sic] – are the same on both Complaints.
The main substantive difference seems to be that Plaintiff J & J Sports asserts that it was granted “the exclusive nationwide commercial distribution (closed-circuit) rights” to the Program, while Plaintiff G & G asserts a right to “exclusive nationwide television distribution rights.”
J & J Sports Productions Sues For Illegal Interception of Satellite Signal
Hammond & South Bend, Indiana – An attorney for J & J Sports Productions, Inc., of
Campbell, California filed two Indiana intellectual property lawsuits alleging illegal interception of programming.
The first lawsuit was filed in South Bend, Indiana. It alleges that Juan C. Aguirre, Beatriz Zarate, Graciela Valles and Taqueria Los Gallos, Inc. of Logansport, Indiana illegally intercepted satellite signals and broadcast the “Julio Cesar Chavez, Jr. v. Sergio Martinez WBC Middleweight Championship Fight” Program. The second lawsuit alleged illegal interception of another program, “Knockout Kings: Canelo Alvarez v. Josesito Lopez Championship Fight” Program. This lawsuit was filed in Hammond, Indiana and listed Richard Serrano and Agave Mexican Restaurant of Hobart, Indiana as Defendants. Both Programs were broadcast on Saturday, September 15, 2012.
J & J Sports states that it is the exclusive domestic commercial distributor of the Programs. It has sued multiple Defendants both individually and doing business as commercial entities under the Communications Act of 1934 and The Cable & Television Consumer Protection and Competition Act of 1992.
Specifically, Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the Programs at issue on September 15, 2012 without a commercial license. Regarding the claim under 47 U.S.C. § 605, the Complaints allege that with “full knowledge” that the Program was not to be intercepted, received, and exhibited without authorization, “each and every one of the above named defendants . . . did unlawfully … exhibit the Program” for the purpose of commercial advantage and/or private financial gain.
A count of conversion is also included. It asserts that Defendants’ acts were “willful, malicious, egregious, and intentionally designed to harm Plaintiff J & J Sports.” In the Complaint against Agave, J & J Sports asserts that, as a result of being deprived of their commercial license fee, J & J Sports suffered “severe economic distress and great financial loss.”
In addition to naming the separate legal entities which apparently owns the restaurants in question, Plaintiff has also sued the individuals alleging that they had the right and ability to supervise the activities of the restaurants. J & J Sports asserts that the activities that they supervised included the unlawful interception of Plaintiff’s program. J & J Sports contends that the individual Defendants specifically directed the employees of the restaurants to unlawfully intercept and broadcast Plaintiff’s program at the commercial establishments or, if they did not, that the actions of the employees of the restaurants are directly imputable to the individuals by virtue of their purported responsibility for the activities of their respective restaurants.
In the Complaints, the intellectual property attorney for J & J Sports listed the following counts and requests for redress:
•Count I: Violation of Title 47 U.S.C. § 605. For this count, J & J Sports requests (a) statutory damages for each willful violation in an amount to $100,000.00 [$110,000 in the Complaint against Agave], and (b) the recovery of all costs, including reasonable attorneys’ fees.
•Count II: Violation of Title 47 U.S.C. § 553. For this count, J & J Sports asks the court for (a) statutory damages; (b) additional statutory damages for each willful violation; (c) the recovery of all costs; and (d) and in the discretion of the court, reasonable attorneys’ fees. [A total of $50,000 was requested as against Taqueria Los Gallos on this Count, while a total of $60,000 was requested as against Agave.]
•Count III: Conversion. For this count, the court is requested to order both compensatory and punitive damages from Defendants as the result of the Defendants’ allegedly egregious conduct, theft, and conversion of the program and deliberate injury to J & J Sports.
Practice Tip #1: The interception claim has a two-year statute of limitations, which explains why these complaints were filed on September 11, 2014, almost exactly two years after the broadcast date of the Programs at issue. J & J Sports and similar plaintiffs are frequent litigants, filing thousands of lawsuits per year, usually seeking a settlement instead of litigation. It appears that many of them are also filed near the eve of the two-year anniversary of the broadcast of the program at issue in each individual lawsuit.
Practice Tip #2: Most of these intellectual property lawsuits, including similar complaints filed by Joe Hand Promotions, are initiated with cut-and-paste complaints, leading to not-infrequent, and sometimes odd, errors. In this set of complaints, the same misspelling of “Agave Mexican Restuarant [sic]”occurred 16 times; J & J Sports was listed as “a California corporation with its principal place of liquor [sic] located [in California].” In turn, the complaint against Taqueria Los Gallos includes “page PAGE 7” [sic] at the bottom of each page, an error we first noticed in a November 2013 complaint filed on behalf of Joe Hand Promotions.
Loretta Rush Sworn in as Chief Justice of Indiana Supreme Court
Indianapolis, Indiana – Loretta H. Rush (pictured)succeeds former Chief Justice Brent Dickson as Chief
Justice of the Indiana Supreme Court.
Rush was appointed to the Indiana Supreme Court by then-Governor Mitch Daniels in 2012. Prior to her appointment, Rush was elected as a Tippecanoe Superior Court judge, where she served for 14 years. During her tenure as a Tippecanoe judge, Rush assisted with the creation of the county’s Court Appointed Special Advocate (CASA) program. During that time, she also helped initiate, develop and sustain more than twenty-five youth programs. In 2003, she was named the best juvenile court judge in the state.
Indiana Patent Law: Strong Showing Required to Plead and Prove Inequitable Conduct
Fort Wayne, Indiana – Judge Theresa L. Springmann of the Northern District of Indiana held
that a patent infringement defendant’s claim of inequitable conduct by the patentee had been insufficiently pled. The defendant’s counterclaim was dismissed and its affirmative defense struck.
In 2013, an Indiana patent attorney for Unverferth Manufacturing Co., Inc. of Kalida, Ohio sued Par-Kan Company of Silver Lake, Indiana alleging infringement of Patent No. 8,221,047, Seed Carrier With Pivoting Conveyor, which had been registered with the United States Patent and Trademark Office (“USPTO”).
Unverferth alleged that Par-Kan had engaged in both the “unauthorized, infringing manufacture, use, importation, sale and/or offer for sale” of the product and inducing others to infringe patented seed tender products, including its “Seed Weigh” product. Unverferth further alleged that the infringing behavior continued after Par-Kan was notified of the infringement and, as such, some or all of the infringement was willful.
In its complaint, filed by an Indiana patent lawyer, Unverferth asked for preliminary and permanent injunctions, for lost profits in an amount no less than a reasonable royalty, and that such damages be trebled. It also asked the court for a judgment that the case was “exceptional,” and that, consequently, it was entitled to all costs and expenses of the action, including reasonable attorneys’ fees.
Par-Kan interposed a claim of inequitable conduct against Unverferth, stating that two declarations of Unverferth’s Vice President of Sales and Marketing, which had been submitted to the USPTO, failed to mention all relevant facts. Par-Kan also asserted that certain statements in the declarations, such as “I am unaware of any other factors contributing to the success of the product,” were false.
Unverferth asked the court to dismiss Par-Kan’s counterclaim of inequitable conduct for failure to state a claim. Additionally, Unverferth asked the court to strike Par-Kan’s amended affirmative defense of inequitable conduct.
The court agreed that Par-Kan’s claim of inequitable conduct was not properly before the court. Inequitable conduct “renders an entire patent (or even a patent family) unenforceable,” stated the court. Thus, as a general rule, the application of a defense or counterclaim of inequitable conduct will be limited to instances where the patentee’s misconduct resulted in the unfair benefit of receiving an unwarranted claim.
Consequently, the accused infringer must meet the heavy burden of proving, by clear and convincing evidence, that the patent applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the USPTO.
The “materiality” element of the test requires a showing of “but-for” materiality – would the USPTO have allowed the claim if it had been aware of the undisclosed information? To allow the court to evaluate materiality, the alleged infringer’s pleading must include the “who, what, when, where, why and how” of the material misrepresentation or omission that it claims was made to the USPTO.
More specifically, the pleadings must identify the “who” – the specific individual associated with the filing or prosecution of the patent, who both knew of the material information and deliberately withheld or misrepresented it. They must also identify the “what” – which claims, and which limitations in those claims, the withheld references are relevant to – and the “where” – where in those references the material information is found. These assertions allow the alleged infringer to explain, and the court to infer, both “why” the withheld information is material and “how” an examiner would have used this information in assessing the patentability of the claims.
The court held that Par-Kan’s pleadings properly included the “who” and “when” components, but that they failed to meet requirements regarding the “what, where, how, and why” regarding the materiality of the alleged omissions and misstatements. Instead, the court noted that the USPTO had explicitly stated that the declarations in question were insufficient to overcome the rejections. Thus, the court held, but-for materiality had not been sufficiently pled.
The court then turned to the requirement that specific intent to deceive be shown. Deceptive intent may not be assumed from the materiality of a deception and a mere allegation of an omission is insufficient. Instead, to satisfy the inequitable conduct standard, “deceptive intent must be the most reasonable inference drawn from the evidence.” The court held that Par-Kan had failed to show that Unverferth had demonstrated deceptive intent, as other interpretations of the declarant’s intent were reasonable, including that the declarant had believed his sworn statements to be true.
The court dismissed Par-Kan’s counterclaim asserting, and struck its affirmative defense of, inequitable conduct. It stated, however, that were Par-Kan to file a motion to amend its pleadings, the court would consider whether such an amendment would be permitted.
Practice Tip: An exception to the requirement for “but-for” materiality exists where there is egregious affirmative misconduct. However, this exception contemplates extraordinary circumstances like “deliberately planned and executed schemes.” Alleged misconduct such as the failure to mention prior art references in an affidavit is insufficient to constitute such “egregious affirmative misconduct.”