|
The U.S. Trademark Office issued the following 137 trademarks to persons and businesses in Indiana in March 2014 based on applications filed by Indiana trademark attorneys:
|
||||||||||||||||||||||||||||||||||||||||||||||||||||
137 Trademark Registrations Issued to Indiana Companies in March 2014
Patent Office Issues 197 Patents To Indiana Citizens in April 2014
The U.S. Patent Office issued the following 197 patent registrations to persons and businesses in Indiana in April 2014, based on applications filed by Indiana patent attorneys:
| PAT. NO. | Title | |
| D703,500 | Gas cap removal tool | |
| 8,712,748 | Medical diagnosis, therapy, and prognosis system for invoked events and methods thereof | |
| 8,712,654 | Acceleration based mode switch | |
| 8,712,591 | Constant low-flow air source control system and method | |
| 8,710,950 | Wireless control system for a patient support apparatus | |
| 8,710,784 | Vehicle seating system and method for reducing fatigue with changing actuator movement | |
| 8,710,437 | Ion generation using wetted porous material | |
| 8,710,154 | Non-aqueous solution process for the preparation of cross-linked polymers | |
| 8,710,063 | Purine compounds used as CB2 agonists | |
| 8,709,797 | Systems and methods for cryopreservation of cells | |
| 8,709,648 | Conductor-mixed active electrode material, electrode structure, rechargeable battery, and manufacturing method of conductor-mixed active electrode material |
Indiana Trademark Litigation: Agler Sues Westheimer Over Use of Stratotone Mark
Fort Wayne, Indiana – Indiana trademark attorneys for Darryl Agler, doing business as The Stratotone Guitar Company of Fort Wayne, Indiana, filed a lawsuit in the Northern District of Indiana alleging that Westheimer Corporation of Northbrook, Illinois infringed the trademark
“STRATOTONE” (the “Stratotone mark”), Trademark Registration No. 3,986,754 which has been issued by the U.S. Patent and Trademark Office (“USPTO”). Counterfeiting, unfair competition, and false designation of origin arising under the Lanham Act, 15 U.S.C. § 1051 et seq., and the statutes and common law of the State of Indiana have also been alleged.
Agler custom manufactures guitars and sells them across the United States. Each of Agler’s guitars is hand crafted from the wood of a customer’s choosing and features vintage hardware. Agler currently accepts orders for his guitars on his website at www.stratotoneguitar.com. He also displays and sells his guitars, which sell at retail for $1,250 or more, at vintage guitar shows across the nation. Angler asserts that, since at least as early as January of 2007, his marketing and promotions in connection with his guitars have included the Stratotone Mark.
Agler claims a right to exclude others’ use of the “Stratotone” mark in connection with guitars based on, inter alia, ownership of trademark rights to the mark “Stratotone” conferred by U.S. Reg. No. 3,986,754 (“‘754 Registration”). The ‘754 Registration was issued by the USPTO in 2011 as a result of a 2006 application for the Stratotone mark in association with “musical instruments, namely, guitars.”
According to the complaint, at the National Association of Music Merchants (“NAMM”) show in 2010, Westheimer offered and sold cheaper guitars using the Stratatone mark. Agler states that he spoke to Westheimer personnel twice at this show, notifying them that Westheimer’s products were infringing the Stratotone mark. Agler alleges that he was unable to sell any of his guitars at the NAMM show that year.
Agler indicates that, since the 2010 NAMM show, Westheimer has flooded the market with lower quality, cheaper guitars that bear the Stratotone mark. These guitars retail between $199.00 and $399.00. Agler contends that Westheimer’s “Stratotone” guitars have destroyed the market for Agler’s more expensive Stratotone guitars.
On April 25, 2013, Westheimer filed a petition to cancel the ‘754 Registration (the “Cancellation Petition”) with the Trademark Trial and Appeal Board. The Cancellation Petition is currently pending.
In the complaint, filed by Indiana intellectual property lawyers for Agler, the following counts are alleged:
• Count I: Federal Unfair Competition and False Designation of Origin
• Count II: Federal Trademark Infringement
• Count III: Federal Trademark Counterfeiting
• Count IV: Common Law Unfair Competition and Trademark Infringement
• Count V: Unjust Enrichment
• Count VI: Conversion
• Count VII: Deception
• Count VIII: Indiana Crime Victim’s Relief Act
Agler asks the court for injunctive relief; an accounting of damages; the surrender by Westheimer of items featuring the Stratotone mark; damages, including treble damages; and attorney’s fees.
Practice Tip: Indiana Code §§ 35-43-4-3 and 35-43-5-3(a)(6) are criminal statutes, claimed in the complaint in conjunction with an attempt to parlay the accusation into an award for damages, costs and attorneys’ fees. The Indiana Court of Appeals has discussed “theft” and “conversion” as they pertain to takings of intellectual property in several recent cases (see, for example, here and here) and has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property.
USPTO to Host Roundtables on AIA Trial Proceedings in Eight Cities Nationwide
Alexandria, Virginia – Administrative Patent Judges will share information and collect public input about inter partes review and covered business method review proceedings.
Washington – The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) announced this week that it will host a series of roundtables across the country to educate the public and collect feedback about the America Invents Act (“AIA”) trial proceedings. The series will begin on April 15 and run until May 8, 2014, with roundtables in Alexandria, VA; New York City; Chicago; Detroit; Silicon Valley; Seattle; Dallas; and Denver. The roundtables provide an opportunity to bring stakeholders together with USPTO administrative patent judges to discuss the inter partes review and covered business method review proceedings.
“These roundtables are a part of USPTO’s ongoing efforts to provide more opportunities for the public and other key stakeholders to share ideas, feedback, experiences and insights on additional ways we can improve our processes,” said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle Lee.
Indiana Patent Litigation: Orthopaedic Hospital Seeks Injunction and Damages for Patent Infringement
Fort Wayne, Indiana – Patent attorneys for Orthopaedic Hospital of Los Angeles, California (the “Hospital”) filed a lawsuit in the Central District of California alleging that DePuy 
Orthopaedics, Inc. of Warsaw, Indiana (“DePuy”) infringed Oxidation-Resistant and Wear-Resistant Polyethylenes for Human Joint Replacements and Methods for Making Them, Patent No. 8,658,710, which has been issued by the U.S. Patent Office. The lawsuit was transferred to the Northern District of Indiana pursuant to a joint stipulation by the parties.
The Hospital, located in Los Angeles, is an independent nonprofit charitable organization that treats children with musculoskeletal disorders and conducts scientific research aimed at improving orthopaedic materials, implants, surgical instrumentation, and surgical techniques.
At issue in this Indiana patent lawsuit is United States Patent No. 8,658,710 (the “‘710 patent”), which was issued on February 25, 2014. The Hospital asserts that it is the owner of the ‘710 patent, and that it possesses the exclusive right to bring suit for infringement of the patent.
The Hospital contends that DePuy is infringing and has infringed the ‘710 patent by making, selling, offering for sale, and using infringing products, including but not limited to DePuy’s AOX Antioxidant Polyethylene for Sigma and LCS Rotating Platform Systems. It is also claimed that DePuy’s infringement of the ‘710 patent has been and continues to be willful, deliberate, and/or objectively reckless.
The Hospital further asserts that DePuy has known of the ‘710 patent since at least February 25, 2014, when the patent issued. It also states that DePuy had constructive notice of the ‘710 patent by operation of law, as the Hospital and any of its predecessors-in-interest have complied with all marking requirements of 35 U.S.C. § 287.
A single-count complaint asserting patent infringement was filed by California patent lawyers for the Hospital. The Hospital asks that the court:
• Adjudge that DePuy has infringed and is infringing the ‘710 patent;
• Preliminarily and/or permanently enjoin DePuy and its affiliates and agents from further infringement, including inducement and contributory infringement, of the ‘710 patent;
• Award damages for willful infringement of three times the damages so determined, as provided by 35 U.S.C. § 284, together with interest;
• Order an accounting of all accrued damages;
• Award any supplemental damages to the Hospital;
• Award the Hospital their costs and, where appropriate, reasonable attorneys’ fees under 35 U.S.C. § 285; and
• Award compensatory damages to the Hospital, together with interest.
Practice Tip:
The question of willfulness in the context of patent infringement consists of two elements: (1) an objective element that is often, but not always, a question of law, and (2) a subjective element that is inherently a question of fact, to be decided by the jury.
Under the first prong, if an “accused infringer’s position is susceptible to a reasonable conclusion of no infringement,” the infringer’s conduct cannot be objectively unreasonable. Conversely, an action is objectively unreasonable if the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.
When considering the second prong — the element of subjective willfulness — fact-finders should consider: (1) whether the infringer copied the patentee’s commercial products; (2) whether the infringer presented evidence that it obtained legal opinions of patent counsel to justify its infringing actions; (3) whether the infringer attempted to avoid infringement by designing around the patents; and (4) whether the infringer acted in accordance with the standards of commerce.
Daughter’s Facebook Comments Establish Breach of Confidentiality, Cost Her Father $80,000
Miami, Florida – The Third District Court of Appeal for the State of Florida heard the appeal of Gulliver Schools, Inc. (“Gulliver”) and School Management Systems, Inc. in the age-discrimination and retaliation lawsuit of Patrick Snay. Appellants prevailed on their claim that Mr. Snay had breached the confidentiality clause of the settlement agreement, thus 
eliminating Gulliver’s obligation to pay portions of the settlement amount.
Patrick Snay, formerly the headmaster of Gulliver, sued for age discrimination and retaliation when Gulliver did not renew his contract for the 2010-2011 school term. The dispute was settled and the parties executed a release for the full and final settlement of Snay’s claims. Under the settlement, the school would pay $10,000 in back pay and $80,000 to Snay to settle the matter, as well as $60,000 for Snay’s legal fees.
As part of the settlement, Snay agreed to a detailed confidentiality clause, which provided that the existence and terms of the agreement between Snay and the school were to be kept strictly confidential and that, should Snay or his wife breach the confidentiality provision, a portion of the settlement proceeds (the $80,000) would be disgorged by Snay to Gulliver. This provision read, in pertinent part: “[T]he plaintiff shall not either directly or indirectly, disclose, discuss or communicate to any entity or person, except his attorneys or other professional advisors or spouse any information whatsoever regarding the existence or terms of this Agreement . . . A breach . . . will result in disgorgement of the Plaintiffs [sic] portion of the settlement Payments.”
Shortly after the agreement was signed, Snay informed his daughter that his lawsuit against Gulliver had been settled and that he was happy with the result. Snay’s daughter posted news of the agreement on Facebook, “Mama and Papa Snay won the case against Gulliver. Gulliver is now officially paying for my vacation to Europe this summer.” This Facebook post was available for viewing by approximately 1,200 of Snay’s daughter’s Facebook friends, many of whom were either current or past Gulliver students.
Gulliver learned of the Facebook post. Four days after the agreement was signed, Gulliver notified Snay that it considered the Facebook post to be a material breach of the agreement. Gulliver stated that, while it would pay the amount of the settlement which constituted attorneys’ fees, it would not pay any of Snay’s portion as a result of the breach of the confidentiality clause.
Snay moved to enforce the settlement agreement, arguing that his statement to his daughter and her comment on Facebook did not constitute a breach. The trial court agreed, finding that neither Snay’s comments to his daughter nor his daughter’s Facebook comments constituted a breach of the confidentiality agreement.
Gulliver appealed. The appellate court held that the plain language of the contract prohibited the disclosure that Snay had made, stating “before the ink was dry on the agreement, and notwithstanding the clear language . . . mandating confidentiality, Snay violated the agreement by doing exactly what he had promised not to do.” Moreover, the court noted that the significance of confidentiality to Gulliver was evinced by the fact that the majority of the proceeds of the settlement agreement expressly hinged on compliance with the confidentiality provision.
Based on the clear and unambiguous language of the parties’ agreement and Snay’s subsequent testimony that he had, in fact, breached the confidentiality provision, the appellate court found for Gulliver and reversed the trial court’s order granting the Snays’ motion to enforce the settlement agreement.
Practice Tip:
It’s not hard to see how this happened. As parents, the Snays recognized that it was important to inform their daughter of the resolution of this matter. Not only was this settlement significant to Mr. Snay, but the news that a satisfactory resolution had been reached also was presumably intended to assist his daughter in dealing with the difficulties she had apparently encountered as a result of the dispute with Gulliver. According to Mr. Snay, these difficulties had left his daughter with “quite a few psychological scars which forced [him] to put her into therapy.” It is also not difficult to imagine that, feeling vindicated, the Snays’ college-aged daughter would do what many people that age do with big news: she posted it on Facebook.
In situations such as these, contract attorneys must take special care to provide whole-picture legal counseling to their clients, both during settlement negotiations and after. It was not unforeseeable that Mr. or Ms. Snay would inform their daughter of the settlement. Nor was it unforeseeable that she would, in turn, want to share the news with her friends. Presumably, the Snays’ daughter had not realized the importance of confidentiality.
Here, this problem might have been avoided. First, in drafting the confidentiality clause, release of the information to the daughter could have been included. Thus, Mr. Snay would not have signed an agreement that he presumably knew – as he was signing it – that he would soon violate. Second, an explicit and dire warning by the settlement attorney representing Mr. Snay should have been given to anyone privy to the settlement to lessen the chance of an inadvertent breach of the contract, for example: “You, your wife and your daughter absolutely must adhere to the provisions of the confidentiality clause or you could lose some or all of the benefits of this settlement agreement.”
Indiana Patent Litigation: Headsight Sues John Deere for Patent Infringement
Fort Wayne, Indiana – Patent lawyers for Richard Gramm and Headsight, Inc., both of Indiana, sued in the Northern District of Indiana alleging that Deere and Company of Moline, 
Illinois (also known as “John Deere”) infringed the patented “Combine Header Height Control“, Patent No. 6,202,395, which has been issued by the U.S. Patent Office.
Gramm, the founder and President of Plaintiff Headsight, claims to own all right, title and interest to Patent No. 6,202,395 (the “395 patent”). In its complaint, Plaintiffs allege that Deere makes, uses, sells and/or offers for sale products that infringe at least claim 27 of the ‘395 patent, including at least the header height sensor kit, for the Deere 600C Series corn headers (the “Deere Height Sensor”).
Plaintiffs contend that Deere has had actual knowledge of the ‘395 patent since at least as early as 2002 and that Deere has been and now is directly infringing, actively inducing others to infringe and/or contributing to the infringement of the ‘395 patent by making, using, selling, offering for sale and/or importing in the United States products, including at least the Deere Height Sensor, in violation of 35 U.S.C. § 271.
Plaintiffs assert one claim in their complaint, filed by Indiana patent attorneys: “Count I: Patent Infringement of U.S. Patent No. 6,202,395.” Gramm and Headsight ask the court for:
• a declaration that Deere has infringed one or more claims of the ‘395 patent in violation of 35 U.S.C. § 271;
• equitable relief under 35 U.S.C. § 283, including, but not limited to, permanently enjoining Deere and its agents from infringing, contributing to, and/or inducing infringement of the ‘395 patent;
• an award of damages adequate to compensate Plaintiffs for Deere’s infringement of the ‘395 patent, together with prejudgment and post-judgment interest under 35 U.S.C. § 284;
• a declaration that Deere’s infringement is willful and/or an order increasing damages up to and including three times the amount found or assessed consistent with 35 U.S.C. § 284; and
• a declaration that this case is “exceptional” under 35 U.S.C. § 285 and awarding Plaintiffs their reasonable attorney fees, costs, and expenses.
Practice Tip:
A court may award increased damages for willful infringement. These punitive damages, up to and including a trebling of damages, are appropriate when an infringer has acted in wanton disregard of the patentee’s intellectual property rights. In determining whether the infringing behavior supports increased damages, the court will consider the “totality of the circumstances.”
Potential exposure for increased damages may be reduced by seeking – and acting on – timely advice from a competent patent lawyer. In contrast, the failure to seek and heed such advice may increase the chance of a finding of willfulness.
USPTO to Host Additive Manufacturing Partnership Meeting
Washington, D.C. – The U.S. Department of Commerce’s United States Patent and Trademark Office (“USPTO”) will host a meeting to serve as a forum for sharing ideas and insights between stakeholders and the USPTO.
The Additive Manufacturing Partnership Meeting will ta
ke place on Wednesday, April 9, 2014 at the USPTO headquarters in Alexandria, Virginia. Additive manufacturing, also known as 3D printing, is a process of making three-dimensional solid objects from a digital model. The technology is growing in use, including in such fields as jewelry, footwear, architecture, engineering and construction, automotive, aerospace, dental and medical industries.
The meeting will serve as a forum for sharing ideas, experiences, and insights between stakeholders and the USPTO. Industry representatives will also provide an overview of the application of additive manufacturing in different technologies. Individual opinions are sought from varying participants, and the meeting is intended to be informal in nature. These partnership groups are formed with full recognition of the USPTO’s responsibility under the Federal Advisory Committee Act (“FACA”), and are not established as FACA compliant committees.
Dyer’s General Store May Not Proceed Pro Se, Ordered to Retain Counsel
Terre Haute, Indiana – Indiana trademark litigation against a corporate entity requires the participation of an attorney for the defense to avoid default.
In 2013, a trademark lawyer for Coach, Inc. of New York, New York and Coach Services, Inc.
of Jacksonville, Florida (collectively “Coach”) sued for trademark infringement in the Southern District of Indiana. Plaintiffs alleged that Dyer’s General Store and Outlet (“Dyer’s General”), Kimberly Dyer and David L. Dyer, all of Worthington, Indiana, infringed Trademark Registration Nos. 2,088,706 and 3,157,972, which have been registered by the U.S. Patent and Trademark Office.
In the complaint, Coach asserted Lanham Act violations including counterfeiting, trademark infringement, false advertising, common law trademark infringement, unfair competition, forgery, counterfeiting and unjust enrichment. Coach alleges that it is suffering irreparable injury and has suffered substantial damages as a result of Defendants’ allegedly illegal activities.
David Dyer filed an answer pro se purporting to represent himself, Kimberly Dyer and Dyer’s General. While only Mr. Dyer signed this answer, the court seems to have accepted the filing with respect to both Mr. and Ms. Dyer. However, in its most recent order, the court noted that “corporations cannot appear pro se, but must appear through an attorney.” District Judge Jane Magnus-Stinson ordered Dyer’s General, a corporate entity, to retain counsel to prepare an answer to the complaint if it intends to participate in the litigation.
Practice Tip: Coach is an active litigant, especially in matters of protecting its intellectual property. Since 2009, it has sued more than 20 retailers in Indiana federal courts.
Divided Federal Circuit Rules En Banc to Retain Cybor Rule of De Novo Review for Claim Construction
Washington, D.C. – The United States Court of Appeals for the Federal Circuit concluded in a six-to-four decision that the rule in Cybor – that claim construction is an issue of law subject to de novo review on appeal – will be retained under the principles of stare decisis.
In 1998, the Federal Circuit, sitting en banc, decided Cybor Corp. v. FAS Technologies, Inc. Among the issues in Cybor was the standard of appellate review of district court decisions concerning the meaning and scope of patent claims (“claim construction”). The Federal Circuit held that, for purposes of appellate review, claim construction was to be considered to be a question of law, not one of fact, and subject to de novo review.
Recently, in Lighting Ballast Control LLC v. Philips Electronics North America Corp, the Federal Circuit was asked to revisit the Cybor holding. In addition to the arguments presented by the parties, patent attorneys for thirty-eight organizations and individuals filed twenty-one amicus briefs.
The opinion of the Court, written by Judge Newman, was joined by Judges Lourie, Dyk, Prost, Moore, and Taranto; it included a concurring opinion by Judge Lourie. A dissenting opinion, written by Judge O’Malley, was joined by Chief Judge Rader and Judges Reyna and Wallach.
The court, again sitting en banc, retained the rule, as stated in Cybor, that no deference will be given by the appellate court to the trial court’s decisions concerning the meaning and scope of patent claims.
Among the arguments presented for reversal of Cybor was an assertion that treating claim construction as a matter of law increases uncertainty, “negates settlement and increases litigation costs.” The court found these arguments unpersuasive. Instead, it discussed two reasons to maintain the Cybor rule.
The court cited the ruling of the U.S. Supreme Court in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (also known as “Markman II“), in which the Court had stressed that issues of claim construction should be considered “purely legal.” Moreover, the Supreme Court has emphasized the importance of “uniformity in the treatment of a given patent.” For example, the possibility of differing claim constructions could lead to different results for infringement and validity, as well as the possibility of disparate district court constructions. De novo review by an appellate court ensures national uniformity, stability and predictability in claim construction.
The court also cited the rule of stare decisis in its refusal to abandon the fifteen-year-old rule established in Cybor and the subsequent years of experience with that rule, stating that it had been presented with “no argument of public policy, or changed circumstances, or unworkability or intolerability, or any other justification for changing the Cybor methodology and abandoning de novo review of claim construction.” The court held that the demanding standard for departure from established law had not been met and retained the de novo review of claim construction established in Cybor.
Practice Tip #1: The issues addressed in claim construction are not considered to be questions of weight of the evidence or credibility of witnesses, but rather of the scope of the claims as set forth in the patent documents.
Practice Tip #2: Claim construction is typically conducted relatively early in the trial court’s proceedings, before addressing questions such as patent infringement, patent validity and damages. At the outset, the trial court must establish the metes and bounds of the claims that define the scope of the intellectual property.
Practice Tip #3: In a dissent that was, at times, strongly worded, Judge O’Malley opined that “no one in the legal community–except perhaps the members of the majority–has come to believe that either the wisdom or vitality of Cybor is settled.” She cited previous statements of Circuit Judges who challenged Cybor as improperly relying on the legal fiction that there are no facts to be decided in claim construction and as “profoundly misapprehend[ing]” the Supreme Court’s decision in Markman.