Indianapolis, IndianaLoretta H. Rush (pictured)succeeds former Chief Justice Brent Dickson as Chief 

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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.

Fort Wayne, IndianaJudge Theresa L. Springmann of the Northern District of Indiana held

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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.”

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Bloomington, Indiana – In a highly publicized intellectual property case involving the design features of smartphones and tablets, the Federal Circuit will decide whether to force Samsung to pay Apple nearly $400 million – Samsung’s total profits on products that infringed Apple’s design patents. Though several high-profile academics have lined up in support of Samsung, Apple’s position on the total profits rule should prevail, according to Indiana University Maurer School of Law experts who have filed an amicus curiae brief in the case.

Apple and Samsung have been battling in dozens of complex intellectual property infringement cases in several countries. At trial in one of the U.S. cases, a jury found that several Samsung devices infringed Apple’s design patents, and awarded Apple all of Samsung’s profits on those devices. On appeal, Samsung is arguing that it should only be required to give up the portion of its profits that can be linked directly to the infringing design features of the products, a theory called “apportionment.”

“Congress debated this same question over a century ago and rejected apportionment,” said Mark D. Janis, the Robert A. Lucas Chair of Law and director of the Center for Intellectual Property Research at the IU Maurer School of Law. He explained that in the mid-1880s, the Supreme Court decided two cases involving carpet designs in which the infringers made thousands of dollars in profits, but the design patent holder was awarded only 6 cents because it failed to prove how much of the profit was attributable to the carpets’ appearance.

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Hammond, Indiana – An Indiana trademark lawyer for Chanel, Inc. of New York, New York, in conjunction with New York co-counsel, sued in the Northern District of Indiana alleging that Chanel’s Salon, LLC and Chanel Jones, both of Merrillville, Indiana, committed trademark infringement and trademark dilution of the trademark CHANEL, Registration Nos. 302,690; 510,992; 1,263,845; 1,348,842; 1,464,711; 1,559,404; 1,660,866; 3,134,695; and 4,105,557, which were issued by the U.S. Trademark Office.

Chanel is a fashion and beauty company. For over 85 years, Chanel has used CHANEL as a trade name, house mark and trademark to identify its goods and business. In addition to offering cosmetics, fragrances, and skin care products, Chanel’s goods include hair accessories, such as barrettes, hair clips, and men’s shampoo.

Chanel states that it has spent hundreds of millions of dollars to advertise and promote its goods. It indicates that last year in the United States it spent over $50 million dollars on advertising, all of which prominently featured the CHANEL mark. Consequently, it asserts, the CHANEL name and trademark is one of the most famous marks in the world and has become synonymous with Chanel.

At issue in this Indiana trademark infringement and trademark dilution lawsuit are the actions of Defendants Chanel’s Salon and its owner Chanel Jones. Defendants are accused of having begun to use the trade names CHANEL’S SALON and/or CHANEL’S COSMETOLOGY SALON in October 2012 in connection with their beauty salon without Chanel’s authorization and, in doing so, impinging on Chanel’s intellectual property rights.

Chanel contends in this lawsuit that Defendants are infringing the CHANEL trademark by, inter alia, offering goods and services that are related to those offered under the CHANEL mark, including cosmetics, beauty consultation services and hair accessories. Chanel also asserts that Defendants’ use of CHANEL dilutes the trademark, which Chanel claims is famous.

In July 2013, Chanel sent Defendants a cease-and-desist letter requesting that Defendants change the name of Chanel’s Salon to a name that did not include the word CHANEL. Chanel states that Defendants did not respond to this letter and that further attempts to resolve the dispute were unsuccessful.

In the complaint, filed by an Indiana trademark attorney, the following is alleged:

• Count I: Federal Trademark Dilution (15 U.S.C. § 1125(c))
• Count II: Federal Trademark Infringement (15 U.S.C. § 1114(1))
• Count III: Federal Unfair Competition (15 U.S.C. § 1125(a))
• Count IV: Trademark Infringement and Unfair Competition Under Indiana Common Law

Chanel asks the court for injunctive relief and “such other and further relief as the Court may deem just and proper.”

Practice Tip: This is an unusual trademark case in at least two respects. First, while trademark infringement lawsuits are relatively common, colorable assertions of trademark dilution are less so. This is due in large part to the requirement that the trademark that is allegedly diluted be “famous.” This trademark lawsuit is also unusual in that, while the complaint asks the court in passing for “such other and further relief as the Court may deem just and proper,” it does not explicitly seek damages for the alleged trademark infringement and dilution. Instead, the sole purpose of the complaint seems to be to obtain injunctive relief.

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The U.S. Patent Office issued the following 168 patent registrations to persons and businesses in Indiana in August 2014, based on applications filed by Indiana patent attorneys:

Patent No.  Title
D712,016 Toilet 
D711,670 Furniture support frame and panel 
D711,668 Shelving 
D711,667 Shelving 
D711,666 Shelving 
8819849 Customer support account with restricted patient data access 

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The U.S. Trademark Office issued the following 183 trademark registrations to persons and businesses in Indiana in July 2014 based on applications filed by Indiana trademark attorneys:

Reg.
Number
Mark Click to view
86188876 SABOTAGE View
86158448 PL”8″TED View
86151387 KINGFISHER View
86146172 TURTLEBACK View
86134928 TEAM FILM View
86133861 THE TRAVEL ADDICT View
86133176 COMPASSION KEY View
86126781 BAD MAMMA JAMMA FITNESS View

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WASHINGTON, D.C. – USPTO officials will discuss the First Inventor to File provision of the America Invents Act.

The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”)

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 announced this week that it will host seven roadshows across the country between September 16 and October 9, 2014. These events are designed to increase understanding of the First Inventor to File (“FITF”) provisions of the America Invents Act (“AIA”). The public meetings will serve as an opportunity for USPTO subject-matter experts and stakeholders to discuss the FITF provisions and updates since its implementation in March 2013.

Indianapolis, Indiana – Larry G. Philpot, a professional photographer from Indianapolis, Indiana, filed two new Indiana copyright infringement lawsuits in the Southern District of Indiana. These lawsuits are in addition to another intellectual property lawsuit filed by Philpot recently.

On October 4, 2009, Plaintiff Philpot photographed Willie Nelson during a performance in St. Louis, Missouri (“Nelson photograph”). On August 2, 2013, he photographed Chris Daughtry during a performance in Indianapolis, Indiana (“Daughtry Photograph”).

In an effort to increase his marketability and reputation and to gain more work, Philpot made the photographs of Nelson and Daughtry generally available through Wikimedia under the Creative Commons Attribution 2.0 Generic license (“CC BY 2.0”). Philpot asserts that CC BY 2.0 requires a licensee to (a) reference CC BY 2.0 with every copy of the photo used and (b) provide attribution in the manner specified by the author. He claims that these requirements applied to republication of his copyrighted photos of Nelson and Daughtry. The two new Indiana copyright infringement complaints assert that Defendants did not comply with these licensing requirements and are, consequently, liable for copyright infringement.

In the first complaint, Mansion America, LLC d/b/a Oak Ridge Boys Theater of Branson, Missouri is accused of copyright infringement of Philpot’s Willie Nelson photograph, Certificate Number VAu 1-132-411, which was issued by the U.S. Copyright Office.

In the second complaint, Everything Brooklyn Media, LLC d/b/a The Brooklyn Daily Eagle, is accused of copyright infringement of Philpot’s Nelson photograph and also the Daughtry Photograph, Certificate Number VAu 1-164-624, which was also issued by the U.S. Copyright Office.

In the copyright complaint against Mansion, filed by Philpot acting as a pro se litigant, the following claims are made:

• Count I: Copyright Infringement and Unfair Competition
• Count II: Unauthorized Distribution of Copyrighted Material
• Count III: Removal of Identifying Information

The copyright complaint filed against The Brooklyn Daily Eagle asserts only the first count (copyright infringement and unfair competition).

In both complaints, Philpot asks the court for an injunction, damages, costs and attorneys’ fees.

Practice Tip #1: Under 17 U.S.C. § 504(c)(1), a copyright owner may elect actual or statutory damages. Statutory damages range from a sum of not less than $750 to not more than $30,000 per infringed work.

Practice Tip #2: The claims in these complaints may trigger the “advertising injury” clause of many general business liability insurance policies. If a defendant has applicable business insurance, it may provide coverage for the expenses of a legal defense and damages found due as a result of unintentional copyright infringement. Overhauser Law Offices, publisher of this Site, counsels clients on insurance coverage for insurance claims.

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Indianapolis, Indiana – Larry G. Philpot, a professional photographer from Indianapolis,

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Indiana, sued asserting a violation of his intellectual property rights by Bake Me A Wish, LLC of New York. The lawsuit, filed in the Southern District of Indiana, alleges that Defendant Bake Me A Wish infringed the copyright of Philpot’s photograph of Willie Nelson, Certificate No. VAu 1-132-411, which was issued by the U.S. Copyright Office.

On October 4, 2009, Plaintiff Philpot photographed Willie Nelson during a performance in St. Louis, Missouri. In an effort to increase his marketability and reputation and to gain more work, on May 31, 2011, Philpot made the photograph of Nelson generally available through Wikimedia under the Creative Commons Attribution 2.0 Generic license (“CC BY 2.0”). Philpot asserts that CC BY 2.0 requires a licensee to (a) reference CC BY 2.0 with every copy of the photo used and (b) provide attribution in the manner specified by the author. He claims that these requirements applied to republication of his copyrighted photo of Nelson.

Philpot states that Bake Me A Wish owns and operates the website www.bakemeawish.com and a related Facebook page and that those websites are used to generate business. Defendant Bake Me A Wish is accused of placing a copy of the Nelson photo on its Facebook page on April 30, 2013 without displaying the proper attribution to Philpot.

In the copyright complaint, filed by Philpot acting as a pro se litigant, the following claims are made:

• Count I: Copyright Infringement and Unfair Competition
• Count II: Unauthorized Distribution of Copyrighted Material
• Count III: Removal of Identifying Information

Philpot asks the court for an injunction, damages, costs and attorneys’ fees.

Practice Tip #1: This complaint suffers from a number of legal and factual deficiencies. Among them is that Philpot simultaneous admits that Bake Me A Wish removed the content when requested and also alleges not only willful conduct but ongoing willful conduct. The allegation of ongoing willful conduct is made by Plaintiff in support of his contention that Defendant’s conduct entitles him to the maximum statutory damages allowable. Statutory damages may be awarded in a sum not less than $750 or more than $30,000 for each finding of infringement. A determination of willful copyright infringement permits the court in its discretion to increase the award of statutory damages up to $150,000 per infringement.

Practice Tip #2: Defendants who fail to appear run a significant risk of having a default judgment entered against them. There is a significant disparity in the dollar amount awarded in default judgments against defendants in copyright infringement cases. In two separate cases, Judge William T. Lawrence ordered defendants who failed to appear to pay $20,000 for the copyright infringement that was deemed to have been admitted by the defendants’ failure to defend against the allegations. See here and here. However, in a similar case, Judge Jane Magnus-Stinson ordered an entry of default judgment against a defendant for $151,425, the full amount requested.

Overhauser Law Offices, the publisher of this website, has represented several hundred persons and businesses regarding copyright infringement and similar matters.

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Indianapolis, Indiana – Indiana patent attorneys for Kimball International, Inc. of Jasper, Indiana commenced intellectual property litigation in the Southern District of Indiana alleging that NWN, Inc., d/b/a Westin-Nielsen, infringed Design Patent Nos. D654,718 for a “Side Chair” and D665,188, also for a “Side Chair.” These design patents have been issued by the U.S. Patent Office.

Kimball, a furniture design and manufacturing company that has operated for over four decades, asserts that Westin-Nielsen’s “Cascade” line of chairs infringes Kimball’s intellectual property rights in two design patents. The Cascade line of chairs, named after the Cascade River in northern Minnesota, is designed for plus-sized seating.

At issue in this design patent litigation are United States Design Patent Nos. D654,718 (the “‘718 Patent”) and D665,188 (the “‘188 Patent”). Westin-Nielsen is accused of infringing these patented designs, either directly or contributorily, by making, using, selling, offering for sale, or supplying products such as Westin-Nielsen’s Cascade line of chairs. Kimball asserts that Westin-Nielsen will continue to do so unless enjoined.

The complaint, filed by Indiana patent lawyers for Kimball, lists the following counts:

• Infringement of United States Design Patent No. D654,718

• Infringement of United States Design Patent No. D665,188

Kimball asks that the court:

• Adjudge that NWN has infringed the ‘718 and ‘188 Patents in violation of 35 U.S.C. § 271;

• Issue preliminary and permanent injunctive relief prohibiting NWN and its agents from infringing the ‘718 and ‘188 Patents pursuant to 35 U.S.C. § 283;

• Award Kimball damages for patent infringement, and prejudgment interest and costs against NWN pursuant to 35 U.S.C. § 284;

• Adjudge that NWN’s infringement of the ‘718 and ‘188 Patents has been deliberate, willful, and wanton;

• Adjudge that NWN’s infringement of the ‘718 and ‘188 Patents has been exceptional under 35 U.S.C. § 285;

• Treble the damage award under 35 U.S.C. § 284;

• Award Kimball its reasonable attorneys’ fees under 35 U.S.C. § 285; and

• Award Kimball the total profits received or derived by NWN from the manufacture, marketing, sale, offering for sale, and/or distribution of products bearing or using any copy or colorable imitation of the ‘718 and ‘188 Patents pursuant to 35 U.S.C. § 289.

Practice Tip: The U.S. Supreme Court ruled this year that a trial court may award attorneys’ fees in case of patent infringement litigation that it deems “exceptional.” These Supreme Court rulings revisiting how “exceptional” is defined may benefit any company which is the target of a questionable patent infringement lawsuit, as trial judges will now have greater latitude to award attorneys’ fees in those cases in which they determine that the conduct of the losing party “stands out from others.”

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