Indiana Intellectual Property Law News

September 16, 2013

CleanTech Sues Aemetis for Infringing Patented Corn Oil Extraction Method

Indianapolis, Indiana — Patent lawyers for GS CleanTech Corp. of Alpharetta, Georgia (“CleanTech”) filed a patent infringement suit in the United States District Court for the Eastern District of California — Fresno Division alleging that Aemetis, Inc. and Aemetis Advanced Fuels Keyes, Inc., (collectively, “Aemetis”), both of Cupertino, California, infringed CleanTech’s METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS, Patent No. 7,601,858, (the “‘858 patent”) which has been issued by the U.S. Patent Office. The case was transferred to the Southern District of Indiana as part of Multidistrict Litigation No. 2181.

This Multidistrict Litigation (“MDL”) began with an assertion of patent infringement by CleanTech of the ‘858 patent, which was issued on October 13, 2009. CleanTech sued numerous Defendants alleging infringement of that patent shortly after its issuance. The Defendants accused of patent infringement in prior litigation include: Big River Resources Galva, LLC; Big River Resources West Burlington, LLC; Cardinal Ethanol, LLC; ICM, Inc.; LincolnLand Agri-Energy, LLC; David J. Vander Griend; Iroquois Bio-Energy Co., LLC; Al-Corn Clean Fuel; Blue Flint Ethanol, LLC; ACE Ethanol, LLC; Lincolnway Energy, LLC; United Wisconsin Grain Producers, LLC; Bushmills Ethanol, Inc.; Chippewa Valley Ethanol Co.; Heartland Corn Products and Adkins Energy, LLC.

Since September 29, 2011, when the court overseeing the MDL issued its order on claim construction with respect to the disputed claims of the ‘858 patent, patentees, GS CleanTech Corp., and its parent GreenShift Corp., have asserted three additional patents in the ‘858 patent family against the allegedly infringing Defendants, U.S. Patent Nos., 8,008,516 (the “‘516 patent”), 8,008,517 (the “‘517 patent”) and 8,283,484 (the “‘484 patent”) (the ‘858, ‘516, ‘517 and ‘484 patents are, collectively, the “‘858 patent family”).

In this current lawsuit, initiated in Eastern District of California, subsidiary GS CleanTech Corp. is the sole Plaintiff. Patent attorneys for CleanTech assert only one count in the complaint: infringement of the ‘858 patent. CleanTech asks the court for preliminary and permanent injunctions prohibiting further infringement of the ‘858 patent; an award of damages adequate to compensate CleanTech for the infringement that has occurred, but in no event less than a reasonable royalty for the use made of the inventions of the ‘858 patent as provided in 35 U.S.C. § 284, together with prejudgment interest from the date the infringement began; and an award to CleanTech of all remedies available under 35 U.S.C. §§ 284 and 285.

Practice Tip: The United States Judicial Panel on Multidistrict Litigation, also known as the “MDL Panel” or, simply the “Panel,” consists of seven sitting federal judges, who are appointed to serve on the Panel by the Chief Justice of the United States. The job of the Panel is to (1) determine whether civil actions pending in different federal districts involve one or more common questions of fact such that the actions should be transferred to one federal district for coordinated or consolidated pretrial proceedings; and (2) select the judge or judges and court assigned to conduct such proceedings.

September 13, 2013

Steak n Shake Sues for Trademark Infringement

By Overhauser Law Offices, LLC

Denver, Colorado — Intellectual property lawyers for Steak n Shake Enterprises, Inc. and Steak n Shake, LLC of Indianapolis, Indiana (collectively “Steak n Shake”) sued in the United States District Court for the District of Colorado alleging that Globex Company, LLC; Springfield Downs, LLC; Christopher Baerns; Larry Baerns; Kathryn Baerns and Control, LLC, all of Colorado, are infringing the “Steak n Shake” marks, which have been registered by the U.S. Trademark Office.

Non-party Steak n Shake Operations, Inc., Steak n Shake Enterprises’ parent company, has continuously operated Steak n Shake restaurants specializing in burgers and milkshakes since 1934. There are currently 415 company-owned Steak n Shake restaurants in 15 states across the country. In addition, Steak n Shake Enterprises grants franchises to establish and operate Steak n Shake restaurants pursuant to written franchise agreements with Steak n Shake Enterprises, and written license agreements with Steak n Shake, LLC. There are currently 100 franchised Steak n Shake restaurants operating in 23 states, including Colorado. Steak n Shake asserts that the Steak n Shake trademarks, and the products and services offered in association with those marks, have been extensively promoted throughout the United States for many years.

This action against Defendants arose subsequent to the termination of franchise and license agreements between Plaintiffs Steak n Shake Enterprises, Inc., as franchisor, and Steak n Shake, LLC, as licensor, and Defendants as franchisees, licensees and/or guarantors. Steak n Shake contends that Defendants materially breached their obligations under the franchise and license agreements and failed to cure such breaches. As a result, Steak n Shake terminated the agreements.

Steak n Shake alleges that, notwithstanding the termination of the franchise and license agreements, Defendants continue to use the Steak n Shake name and marks in connection with the operation of competitive restaurants at the same locations as their former franchised Steak n Shake restaurants, and to hold their restaurants out to the public as authentic Steak n Shake restaurants.

In the complaint, trademark attorneys for Steak n Shake assert the following:

· Count I – Trademark Infringement

· Count II – Unfair Competition

· Count III – Breach of Contract – Specific Performance

· Count IV – Breach of Contract – Damages

· Count V – Breach of Guaranty – Damages

Steak n Shake seeks the following relief against Defendants, jointly and severally: preliminary and permanent injunctive relief enjoining Defendants’ trademark infringement and unfair competition, and ordering Defendants to perform their post-termination obligations under their franchise and license agreements and area development agreement, including their noncompetition covenants; recovery of the amounts owed to them by Defendants, including the damages each has sustained by reason of Defendants’ breaches and the resulting termination of the franchise and license agreements and area development agreement; and an award of the attorneys’ fees and costs incurred by Steak n Shake.

Practice Tip: Franchise agreements typically require the franchisee to cease using all of the franchise marks, as well as return all items bearing the franchise marks, in the event the franchise agreement is terminated. Failure to comply promptly with these provisions can lead to liability for trademark infringement, among other claims.

September 12, 2013

80/20 Sues “John Doe” for Trademark Infringement and Passing Off

By Overhauser Law Offices, LLC

Fort Wayne, Indiana — Trademark lawyers for 80/20, Inc. of Columbia City, Indiana filed a trademark infringement suit in the Northern District of Indiana alleging John Doe d/b/a TNutz of Champlain, New York infringed the trademark “80/20”, Trademark Registration No. 2,699,302, which has been registered with the U.S. Trademark Office.

80/20 is a manufacturer of T-slotted aluminum extrusion products and accessories. It sells to customers through a distribution network and an online “garage sale.” It asserts that it has marketed products and services under the trademark “80/20” since at least 1990. TNutz does business via its own website and an eBay store.

TNutz is accused of unfairly competing with 80/20 by, among other things, falsely representing that some of the products that it offers for sale are genuine 80/20 products when, according to 80/20, they are not. 80/20 indicates that it has no affiliation with TNutz.

The complaint also states that TNutz represents its own goods as 80/20 goods with the intention of causing confusion among, and deceiving, consumers who seek to purchase genuine 80/20 parts from or through 80/20. It also contends that TNutz has purposely hidden its true identity and physical location from consumers and competitors, asserting that the businesses listed as contacts for both TNutz’s website and its physical address are unrelated third parties.

80/20 indicates that it sent a cease-and-desist letter to TNutz on May 10, 2013 demanding that TNutz cease infringement and compensate 80/20 for the damages caused by the allegedly infringing conduct. 80/20 apparently received no response to its demands.

The complaint lists the following causes of action:

· Count I: Trademark Infringement

· Count II: Lanham Act Violation — Passing Off

Trademark lawyers for 80/20 ask the court for preliminary and permanent injunctions prohibiting infringement; an award of actual damages and profits by TNutz attributable to infringement of 80/20’s trademarks and/or statutory damages; an award of reasonable attorneys’ fees, upon a finding that this is an exceptional case; and the destruction of all materials in TNutz’s control bearing the “80/20” mark.

Practice Tip:

If a defendant’s identity is not clear from the evidence available when a complaint is filed, a “John Doe” designation is typically used to represent that unidentified defendant. After filing such a complaint, the plaintiff may then ask the court to use its authority to subpoena various third parties, such as internet service providers, to disclose the identity of the Doe defendant(s). Here, presumably, the plaintiff will subpoena to eBay to discover the identity of “John Doe.”

Although trademark lawsuits with a “John Doe” defendant are a relative rarity, this is the second one we have blogged about this week. Sometimes, as was the case in the other recent trademark complaint with a “John Doe” defendant, revealing the identity of the unknown defendant is largely procedural. In other cases, however, Doe defendants are highly motivated to preserve their anonymity, as they do not want to be associated with the embarrassing allegations in the complaint. See, e.g., one Doe defendant’s request to quash or modify a subpoena in a copyright case which involved the alleged illegal downloading of adult content.

September 9, 2013

USPTO Seeking Nominations for the Trademark Public Advisory Committee

By Overhauser Law Offices, LLC

Washington, D.C. — The United States Patent and Trademark Office (“USPTO”) is seeking nominations to fill upcoming vacancies for the Trademark Public Advisory Committee (“TPAC”). Nominations must be postmarked or electronically transmitted on or before September 30, 2013. Submission details can be found in the Federal Register.

Currently, there are up to three vacancies on the TPAC that need to be filled. Each committee has nine voting members who are appointed by, and serve at the pleasure of, the Secretary of Commerce. Each member serves a three-year term.

“The Committee’s input is an essential component to our continuing efforts to support American innovation, support job creation and make U.S. businesses more competitive in the global economy,” said Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea.

September 6, 2013

Texas Roadhouse Sues Multiple Restaurants Operating as “Texas Corral” or “Amarillo Roadhouse”

By Overhauser Law Offices, LLC

Grand Rapids, Michigan — Trademark lawyers for Texas Roadhouse, Inc. and Texas Roadhouse Delaware LLC, both of Louisville, Kentucky (collectively, “Texas Roadhouse”) sued for trademark infringement in the Western District of Michigan alleging that the Defendants, including those doing business as multiple Texas Corral restaurants located in Indiana (collectively “Texas Corral”), as well as one Amarillo Roadhouse restaurant, also located in Indiana, infringed the service mark TEXAS ROADHOUSE, Trademark Registration Nos. 1,833,533; 2,231,309; and 2,250,966, which have been registered by the U.S. Trademark Office.

Texas Roadhouse operates a Texas-themed restaurant chain. The first Texas Roadhouse restaurant opened in Clarksville, Indiana in 1993. As of March 2013, there were 397 Texas Roadhouse restaurants in 47 states and three countries.

Texas Roadhouse contends that each of the restaurants is required to comply with strict exterior and interior design requirements so that the look and feel is substantially identical across all Texas Roadhouse locations. It lists three U.S. Service Mark Registrations that include the mark “Texas Roadhouse” and asserts that each of them is incontestable. Texas Roadhouse also claims ownership of various unregistered marks that include the word “Texas” and “Roadhouse” as well as copyright protection, including a U.S. Copyright registration, of its marquee. Finally, Texas Roadhouse claims intellectual-property rights in the trade dress of its restaurants, including the look of the exterior design of the building, the interior décor, the music and the menu.

Texas Corral, against which Texas Roadhouse filed this complaint, also operates casual, western-themed, family restaurants. It owns and operates nine restaurant locations doing business under the name “Texas Corral.” A total of ten locations are at issue in this lawsuit. Six Indiana cities have “Texas Corral” restaurants: Highland, Merrillville, Portage, Michigan City, Martinsville and Shelbyville. Texas Corral also purportedly owns and operates a location that does business as “Amarillo Roadhouse” in Indiana, which is also at issue in this trademark-infringement lawsuit. In addition, three other Texas Corral restaurants have been listed in the complaint: two in Michigan and one in Illinois.

Also listed in the complaint are Paul Switzer, asserted to be the franchisor/licensor of Texas Corral restaurants and Victor Spina, asserted to be a franchisee/licensee. “John Doe Corp.,” a fictitious name intended to represent entities or individuals whose actual identity is not currently known to Texas Roadhouse, is also listed as a Defendant.

In the complaint, trademark attorneys for Texas Roadhouse assert that Texas Corral and Amarillo Roadhouse routinely use trade dress, trademarks, service marks, trade names, designs or logos that are confusingly similar to or copies of intellectual property owned by Texas Roadhouse. This purportedly infringing use is asserted to be visible in signage, print and electronic promotional materials, menus, décor, building design and websites.

Texas Roadhouse’s complaint against Texas Corral and Amarillo Roadhouse lists the following:

· Count I: Trade Dress Infringement

· Count II: Federal Trademark Infringement

· Count III: Trademark Infringement Under Mich. Comp. Laws § 429.42

· Count IV: Trademark Infringement Under Ind. Code § 24-2-1-13

· Count V: Trademark Infringement Under Common Law

· Count VI: Copyright Infringement Under 17 U.S.C. § 101 et seq.

· Count VII: Unfair Competition Under Michigan and Indiana Common Law

Texas Roadhouse asks for a judgment that Texas Roadhouse owns enforceable rights in the Texas Roadhouse intellectual property and that all registrations for the Texas Roadhouse intellectual property are valid; a judgment that the Defendants have been and are directly or indirectly infringing the Texas Roadhouse intellectual property; a judgment that the Defendants have been and are engaging in unfair competition by their unauthorized use of the Texas Roadhouse intellectual property; a judgment that Defendants acted deliberately, willfully, intentionally or with malicious intent; an injunction against Defendants prohibiting infringement; damages, including treble damages; a judgment that this case is exceptional and that the Defendants be ordered to pay all of Texas Roadhouse’s attorney fees associated with this action pursuant to 15 U.S.C. § 1117 and 17 U.S.C. § 505; and a judgment that the defendants be ordered to pay all costs and expenses incurred by Texas Roadhouse in this action.

Practice Tip:

The U.S. Supreme Court has addressed the requirements for trade dress protection in a similar context. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). At issue in Two Pesos was similar restaurant décor. Taco Cabana had sued rival Two Pesos for copying the look of its restaurant, described as “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme.” The lawsuit alleged that Two Pesos had imitated this scheme and had thereby infringed on Taco Cabana’s trade dress. Among the issues considered was whether trade dress which was inherently distinctive must also be shown to have secondary meaning to be granted protection under the Lanham Act. The Supreme Court held that trade dress which is inherently distinctive is protectable under § 43(a) of the Lanham Act without a showing that it has acquired secondary meaning, since such trade dress itself is capable of identifying products or services as coming from a specific source.

Also at issue in this case, among other matters, will be the eligibility of the words “Texas” and “Roadhouse” for protection under federal and Indiana intellectual-property laws. Under the Lanham Act, a federal law, the holder of a mark may ask the United States Patent and Trademark Office to register the mark on the principal register. 15 U.S.C.A. § 1051, et seq. Marks that are “primarily descriptive” and “primarily geographically descriptive” of the goods or services with which they are associated are not eligible for registration on the principal register unless they have “become distinctive of the applicant’s goods in commerce.” 15 U.S.C.A. § 1052(e), (f). Thus, registration of a descriptive mark on the principal register requires a showing of secondary meaning.

Although the Lanham Act protects both registered and unregistered marks, registration is desirable because it constitutes prima facie evidence of the mark’s validity. See 15 U.S.C.A. §§ 1057(b), 1115(a). Thus, federal registration of a mark “‘entitles the plaintiff to a presumption that its registered trademark is not merely descriptive or generic, or, if merely descriptive, is accorded secondary meaning.'” The plaintiff bears the burden, however, of establishing that an unregistered mark is entitled to protection.

The Indiana Trademark Act is similar, and in some respects identical, to the Lanham Act. Although Indiana’s body of trademark law is relatively undeveloped, the General Assembly has specified that the Indiana Trademark Act “is intended to provide a system of state trademark registration and protection that is consistent with the federal system of trademark registration and protection under the Trademark Act of 1946.” Ind. Code Ann. § 24-2-1-0.5. Moreover, “[a] judicial or an administrative interpretation of a provision of the federal Trademark Act may be considered as persuasive authority in construing a provision of the Indiana Trademark Act.

The Indiana Trademark Act’s definitions of “trademark” and “service mark” track the Lanham Act’s definitions of those terms nearly verbatim. See I.C. § 24-2-1-2(8), (9). Like the Lanham Act, the Indiana Trademark Act does not adversely affect common-law trademark rights. See I.C. § 24-2-1-15. Registration of a trademark or service mark with the office of the Indiana Secretary of State provides a registrant with a remedy for the infringement thereof under the Indiana Trademark Act. I.C. § 24-2-1-14(a). Like the Lanham Act, the Indiana Trademark Act prohibits the registration of marks that are “primarily geographically descriptive or deceptively geographically misdescriptive of the goods or services[.]” I.C. § 24-2-1-3. This provision does not, however, prevent the registration of a mark that is used in Indiana by the applicant and has become distinctive of the applicant’s goods or services. In other words, a geographically descriptive mark may be registered under the Indiana Trademark Act if it has acquired secondary meaning.
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September 5, 2013

Common Themes Between Elton John’s “Nikita” and Hobbs’ “Natasha” Insufficient to Support Claim of Copyright Infringement

By Overhauser Law Offices, LLC

Chicago, Illinois – The United States Court of Appeals for the Seventh Circuit has affirmed the judgment of the Northern District of Illinois, Eastern Division. Copyright lawyers for Guy Hobbs of the United Kingdom had sued alleging copyright infringement by Elton John and Bernie Taupin of the United Kingdom of Hobbs’ copyrighted work “Natasha” which has been registered in the United Kingdom. The district court dismissed the complaint and the appellate court affirmed.

While working on a Russian cruise ship, Hobbs composed a song entitled “Natasha” that was inspired by a brief love affair he had with a Russian waitress. He tried to publish his song, but was unsuccessful. A few years later, John and Taupin released a song entitled “Nikita” through a publishing company to which Hobbs had sent a copy of “Natasha.” Believing that “Nikita” was based upon “Natasha,” Hobbs eventually demanded compensation from John and Taupin. He ultimately filed suit asserting a copyright infringement claim and two related state-law claims. The Defendants asked the district court to dismiss Hobbs’ complaint for failure to state a claim.

In supporting his claim for copyright infringement in the district court, Hobbs asserted both traditional copyright infringement of individual elements of “Natasha” and also copyright infringement based upon “Natasha” as a combination of similar elements that would be unprotectable individually.

After considering Hobbs’ first argument of copyright infringement, the district court concluded that the elements identified were not entitled to copyright protection when considered alone.

Hobbs’ second legal theory to support a claim of copyright infringement was that the unique selection, arrangement, and combination of individually unprotectable elements in a song could be entitled to copyright protection. The district court also rejected Hobbs’ “unique combination” argument because it interpreted the law, as stated in Peters v. West, 692 F.3d 629, 632 (7th Cir. 2012), to preclude Hobbs’ copyright infringement claim based upon a combination of similar elements that are unprotectable individually. Despite rejecting Hobbs’ “unique combination” argument in this set of circumstances as an impermissible application of copyright law, the district court nevertheless considered the facts under this theory.

In defending his “unique combination” theory, Hobbs identified a number of allegedly similar elements between the two songs. He argued that his selection and combination of those elements in “Natasha” constituted a unique expression entitled to copyright protection, and that the Defendants’ similar use of those elements in “Nikita” supported a claim for copyright infringement. Hobbs identified the following allegedly similar elements that are found in both songs:

· A theme of impossible love between a Western man and a Communist woman during the Cold War;

· References to events that never happened;

· Descriptions of the beloved’s light eyes;

· References to written correspondence to the beloved;

· Repetition of the beloved’s name, the word “never,” the phrase “to hold you,” the phrase “I need you,” and some form of the phrase “you will never know”; and

· A title which is a one-word, phonetically-similar title consisting of a three-syllable female Russian name, both beginning with the letter “N” and ending with the letter “A.”

The district court held that the similar elements, even when considered under the “unique combination” theory, still could not support a claim for copyright infringement. It also concluded that the Copyright Act preempted Hobbs’ state-law claims.

The sole issue for appeal was Hobbs’ “unique combination” theory. The Seventh Circuit held that Hobbs failed to state a claim for copyright infringement because, even when the allegedly similar elements between the songs were considered in combination, “Natasha” and “Nikita” did not share enough unique features to give rise to a breach of the duty not to copy another’s work. It held that, although both songs contained the idea of an impossible love affair due to a conflict, each song expressed this general idea differently. That is, “Natasha” and “Nikita” tell different stories about impossible romances during the Cold War. Thus, as a matter of law, they were not substantially similar and the dismissal of Hobbs’ claim for copyright infringement was affirmed.

Practice Tip #1:

The Seventh Circuit declined to decide whether Hobbs was correct when he argued that a unique selection, arrangement, and combination of individually unprotectable elements in a song can support a copyright infringement claim. Instead, careful review of both songs’ lyrics reveals that Hobbs’ first four allegedly similar elements are expressed differently in “Natasha” and “Nikita.” The remaining similar elements were standard fare in popular love songs and, thus, could not serve to serve as evidence that infringement had occurred.

Practice Tip #2:

The Copyright Act does not protect general ideas, but only the particular expression of an idea. Additionally, even at the level of particular expression, the Copyright Act does not protect incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic.

However, there is a wealth of authority recognizing that, in certain situations, a unique arrangement of individually unprotectable elements can form an original expression entitled to copyright protection. See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 362 (1991) (“The question that remains is whether [the plaintiff] selected, coordinated, or arranged these uncopyrightable facts in an original way.”); JCW Invs., Inc. v. Novelty, Inc., 482 F.3d 910, 917 (7^th Cir. 2007) (“[T]he very combination of these [unprotectable] elements as well as the expression that is [the work itself] are creative.”); Bucklew v. Hawkins, Ash, Baptie & Co., 329 F.3d 923, 929 (7th Cir. 2003) (“[I]t is the combination of [unprotectable] elements, or particular novel twists given to them, that supply the minimal originality required for copyright protection.”); Roulo v. Russ Berrie & Co., 886 F.2d 931, 939 (7th Cir. 1989) (“While it is true that these elements are not individually capable of protection, just as individual words do not deserve copyright protection, it is the unique combination of these common elements which form the copyrighted material.”); see also Stava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003) (“It is true, of course, that a combination of unprotectable elements may qualify for copyright protection.”); Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1003-04 (2d Cir. 1995) (“As the Supreme Court’s decision in [Feist] makes clear, a work may be copyrightable even though it is entirely a compilation of unprotectible elements.”).

Practice Tip #3:

Although Hobbs brought his action twenty-seven years after “Nikita” was authored and eleven years after Hobbs allegedly first encountered “Nikita,” the Defendants did not raise the three-year statute of limitations, see 17 U.S.C. § 507(b), as a defense in their motion to dismiss.

September 4, 2013

146 Trademark Registrations Issued to Indiana Companies in August 2013

By Overhauser Law Offices, LLC

The U.S. Trademark Office issued 146 trademark registrations to persons and businesses in Indiana in August 2013 based on applications filed by Indiana Trademark Attorneys:

Serial Number	Reg. Number	Mark	Click Here
85796318	4383431	NORWICH HOUSING CORPORATION	LIVE
85977823	4394045	SUMMIT LIVESTOCK FACILITIES	LIVE
85881884	4392372	SABRE	LIVE
85832906	4392258	ROLLING BONES HEALTHY DOG TREATS	LIVE
85824955	4391898	C&G	LIVE
85818711	4391619	GUY AINTING NOW YOU KNOW A GUY!	LIVE
85805745	4391311	SWEET SLING	LIVE
85784483	4391170	FLIP ME	LIVE
85755411	4393974	SUN ANGELS	LIVE
85730389	4393887	NICO SHEPHERD’S HOOK	LIVE
85675342	4393742	ACOUSTI-SEAL ENCORE	LIVE
85663169	4390641		LIVE
85660511	4390618	M MATRIX ENGINEERING SAFETY ADVANCING AUTOMATION	LIVE

September 3, 2013

Patent Office Issues 146 Patents To Indiana Citizens in August 2013

By Overhauser Law Offices, LLC

The U.S. Patent Office issued the following 146 patent registrations to persons and businesses in Indiana in August 2013 based on applications filed by Indiana Patent Attorneys:

August 30, 2013

NIBCO Sues for Declaration of Non-Infringement of Valvulas Arco Patents

By Overhauser Law Offices, LLC

South Bend, Indiana – NIBCO, Inc. of Elkhart, Indiana has sued Valvulas Arco, S.A. (“Arco”) of Valencia, Spain in the Northern District of Indiana asking for a declaratory judgment that it has not violated Arco’s patents, U.S. Design Patent Nos. 429,518; 429,519; 429,520; 438,595; and 479,307.

Arco and NIBCO both manufacture shut-off valves. From about 2002 to 2008, Arco manufactured and sold to NIBCO shut-off valves of the type involved in this dispute. Around 2008, NIBCO discontinued purchasing valves from Arco. Currently, NIBCO manufactures shut-off valves for its own use and for sale.

In letters dated April 22, 2013 and August 16, 2013, Arco purportedly asserted that NIBCO infringes the Arco valves (the “patents-in-suit”). As a result of Arco’s claims of infringement in those letters, NIBCO asserts that there is now an actual controversy between it and Arco regarding the alleged infringement and validity of the patents-in-suit; NIBCO seeks a resolution under the Declaratory Judgment Act.

NIBCO states that Arco has never fixed upon its shut-off valves notice of, nor was there ever any mention of any of, any of the patents-in-suit. It further claims that most, if not all, of the features shown in the claims are functional. To the extent that any purely ornamental features do exist, it contends that those ornamental features of NIBCO’s products would not appear substantially similar to an ordinary observer. Consequently, NIBCO asserts that its products do not infringe, either literally or under the doctrine of equivalents. Finally, NIBCO denies inducing others to infringe any of the patents-in-suit.

NIBCO asks that this be found to be an exceptional case and asks that attorney’s fees be awarded pursuant to such a finding. In its complaint, patent attorneys for NIBCO ask the court for:

Count I: Declaratory Judgment of Non-Infringement
Count II: Declaratory Judgment of Invalidity of the Patents-In-Suit

Practice Tip: In MedImmune v. Genentech, 549 U.S. 118 (2007), the U.S. Supreme Court revised the Federal Circuit’s test for ripeness under the Declaratory Judgment Act, which had required a reasonable apprehension of suit in order to establish jurisdiction. The Court broadened the scope of declaratory judgment jurisdiction, holding that the totality of the circumstances should be evaluated in determining the existence of “a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant relief.”

In this case, it is unclear whether the complaint adequately alleges, under the totality of the circumstances, a controversy of sufficient immediacy to warrant jurisdiction under the Declaratory Judgment Act.

August 29, 2013

Raymond T. Chen Confirmed to U.S. Court of Appeals for the Federal Circuit

By Overhauser Law Offices, LLC

Washington, D.C. — Raymond T. Chen has been confirmed to the United States Court of Appeals for the Federal Circuit.

Judge Chen was nominated to the Federal Circuit by President Barack Obama on February 7, 2013. On August 1, 2013, the United States Senate voted 97-0 to confirm his nomination. Judge Chen assumed the duties of his office on August 5, 2013.

Prior to his confirmation, Judge Chen served as Deputy General Counsel for Intellectual Property Law and Solicitor at the United States Patent and Trademark Office from 2008 to 2013. He was an Assistant Solicitor in that office from 1998 to 2008. From 1996 to 1998, Judge Chen was a Technical Assistant at the United States Court of Appeals for the Federal Circuit. Before joining the court staff, Judge Chen was an Associate with Knobbe, Martens, Olson & Bear from 1994 to 1996. Before entering law school, Judge Chen worked as a scientist at Hecker and Harriman from 1989 to 1991.

PAT. NO.
D688,777		Faucet
D688,630		Electrical receptacle bracket for an electrical distribution harness
D688,493		Cabinet with sliding door
D688,476		Bench
8,519,581		Electric machine cooling system and method
8,519,354		Low temperature plasma probe and methods of use thereof
8,519,335		Detection of solar events
8,519,229		Canola cultivar G152964H
8,519,228		Canola cultivar G152950H
8,519,224		Generation of plants with altered protein, fiber, or oil content
8,518,906		Rho kinase inhibitors for treatment of mastocytosis and acute myeloid leukemia
8,518,856		Solid-state hydrogen storage media and catalytic hydrogen recharging thereof