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Indianapolis, Ind. – Klipsch Group, Inc. (“Klipsch”) and Audio Products International Corp. (“API”), both of Indianapolis, Ind., have sued Monoprice, Inc. (“Monoprice”) of Rancho Cucamonga, Calif. alleging patent infringement, trade dress infringement, unfair competition and copyright infringement.KlipschGroupLogo.JPG

In an eight-count complaint, intellectual property attorneys for Klipsch and its subsidiary API allege that Monoprice has been engaged in manufacturing, importing, selling and/or offering to sell a system entitled “5.1 Hi-Fi Home Theatre Satellite MonopriceLogo.JPGSpeakers & Subwoofer” which is a less expensive “knock-off” of plaintiffs’ “ENERGY® TAKE CLASSIC™ 5.1” (“Energy Take Classic 5.1”) home theater system.

Count I of the complaint alleges the infringement of API’s Patent No. 6,725,967 (“Low distortion loudspeaker cone suspension“; also called the “‘967 Patent”) which was issued by the U.S. Patent Office in 2004.

The system has apparently been well received, garnering positive reviews and selling well.  In Count II, “Trade Dress Infringement and Unfair Competition,” it is alleged that API has continuously promoted the Energy Take Classic 5.1 system and its predecessors and that, as a result of the commercial success of the systems, the systems’ trade dress has acquired secondary meaning among relevant consumers as an identifier of the source of the Energy Take Classic 5.1 system.  The complaint further alleges that Monoprice’s conduct is causing confusion among consumers as to the affiliation of Monoprice with API and as to the origin of Monoprice’s goods.

Counts III through VII [NB: this should have been “III through VIII”; “Count III” was enumerated as a separate count twice in the complaint], all pertain to copyright infringement.  More specifically, it is alleged that Monoprice has violated the copyrights of:

·        the Energy Take Classic 5.1 Home Theatre System as a whole

·        the Energy Take Classic 5.1 Satellite Speaker

·        the Energy Take Classic 5.1 Center Channel Speaker

·        the Energy Take Classic 5.1 Subwoofer Speaker

·        the Energy Take Classic 5.1 Subwoofer Backplate

·        the Energy Take Classic 5.1 Owner’s Manual

The complaint lists 14 separate requests for relief [NB: these appear, upon first count, as 13; however “request for relief” letter “k” is listed twice].  Among these are requests for judgments against Monoprice for infringement of the ‘967 Patent, trade-dress infringement, unfair competition and copyright infringement.  API seeks compensatory damages and, for willful and deliberate wrongdoing by Monoprice, statutory damages up to treble the actual amount found or assessed by the court.  API also asks the court to enjoin infringing behavior by Monoprice.  Finally, it asks for attorneys’ fees, costs and expenses.

Practice Tip: There is certainly some overlap between design-patent infringement and copyright infringement.  However, the multiple counts of copyright infringement for speakers and similar “original work[s] of authorship” – all of the applications for which were filed on February 22, 2013 – attempt to proceed under copyright law against alleged infringements that seem more appropriately considered to be a matter of design-patent law.  Proceeding under copyright law, however, does have two significant advantages: a liberal filing period and a substantially longer period of protection.  Many products are brought to market without having filed for a design patent.  If the application for such a patent is not filed within one year of the public offering or sale of the products, the statutory bar under 35 U.S.C. § 102 will prevent the design patent from being issued.  Copyright has no such strict application deadline.  Additionally, the 14-year life of design-patent protection is in stark contrast to the protection available under copyright law to a corporation for a work-for-hire, which can extend over 100 years.

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Indianapolis, Ind. – Plaintiffs Cosco Management, Inc. (“Cosco”) CoscoLogo.JPGand DorelJuvenileGroupLogo.JPGDorel Juvenile Group, Inc. (“Dorel”) of Columbus, Ind. along with Ameriwood Industries, Inc. (“Ameriwood”) of Wright City, Mo. filed a patent infringement suit alleging Wing Enterprises, Inc. (“Wing”) and Wing Enterprises, Inc. d/b/a Little Giant Ladders (“Little Giant”) of Springville, Utah have been infringing and continue to infringe certain claims of Patent No. 6,427,805 (the “‘805 Patent”), entitled “Folding step stool,” which has been issued by the U.S. Patent Office.

AmeriWoodIndustriesLogo.JPGThe plaintiffs assert that the defendants’ Flip-N-Lite step ladder infringes upon various claims of its ‘805 patent.  That patent was issued in 2002 and was initially assigned to Cosco.  Cosco licensed the patent exclusively to Dorel which, in turn, assigned those exclusive rights to Ameriwood.

LittleGiantLogo.JPGPlaintiffs state that both Wing and Little Giant, by their allegedlyLadderPic.JPG infringing activities, have caused Cosco, Dorel and Ameriwood irreparable harm for which there is no adequate remedy at law.  Plaintiffs assert that this conduct has been willful.

Plaintiffs ask for a permanent injunction against activity found to infringe the ‘805 patent, an order directing the destruction of all equipment used in the alleged infringement, damages up to triple the amount of the actual damages, costs and reasonable attorneys’ fees.

Practice Tip: It is unclear why Wing Enterprises, Inc. is listed as a defendant twice – once as Wing Enterprises, Inc. and again as Little Giant Ladders, an assumed business name.  Various jurisdictions have held that it is acceptable to sue under an assumed name.  For example, under Texas case law, one can sue an individual under his real or assumed name if he has filed an assumed name certificate and conducts business under that assumed name.  See Employees Loan Co. v. Templeton, 109 S.W.2d 774, 778 (Tex. Civ. App. 1937).  However, listing one party twice, whether as a plaintiff or a defendant, is traditionally viewed as unnecessarily duplicative.

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Indianapolis, IN – The Indiana Court of Appeals has reversed the decision of the Marion Superior Court to deny injunctive relief to Clark Sales & Service, Inc. (“Clark”) of Indianapolis, Indiana in its suit against John D. Smith (“Smith”) and Ferguson Enterprises, Inc. (“Ferguson”) of Newport News, Virginia.

In 1998, Smith began working for Clark, a company that sells and services appliances in the builder-distributor market in Indiana.  In 2004, after one of its high-level managers left Clark ClarkSales&ServiceLogo.JPGfor a competitive position at another company, Clark had Smith and various other employees sign a written employment agreement containing both a confidentiality clause and a noncompetition agreement.

Smith resigned his position at Clark on April 13, 2012 but, before doing so, he took copies of Clark’s sales records from 2010 and 2011, including customer and builder contact information, the price of materials sold and Clark’s costs and profit margins.  On April 18, 2012, he accepted an offer of employment with Ferguson, FergusonLogo.JPGa nearby competitor.  In his new position, he solicited business from various Clark customers.

Attorneys for plaintiff Clark sued to enforce the confidentiality and noncompetition provisions of the agreement entered into with Smith.  The trial court granted Clark’s non-disclosure request and ordered the confidential documents to be returned but it denied Clark’s request for an injunction to enforce the noncompetition portion of the employment agreement.  The trial court noted that there had been no incentive for Smith to agree to the noncompetition provision in the form of, for example, the commencement of a new job or a pay raise.  It held that, as a result, the noncompetition agreement failed for lack of consideration.

Clark filed an interlocutory appeal.  In a memorandum decision, the Indiana Court of Appeals found that the trial court had abused its discretion by denying the injunction and reversed the decision.  The appellate court held that Indiana law, as enunciated by the Indiana Supreme Court, was that an employer’s promise to continue an employee’s at-will employment was sufficient consideration to support the employee executing a new employment contract with a noncompetition agreement.  No raise or other additional incentive was required.

The appellate court remanded the matter to the trial court for further proceedings regarding the reasonableness of the noncompetition agreement.

Practice Tip: Covenants not to compete are in restraint of trade and are not favored by the law.  If a court applying Indiana law finds that portions of a noncompetition agreement are unreasonable, it may not modify the restrictions to make them reasonable.  Doing so would subject the parties to an agreement they had not made.  The court may, however, employ the “blue pencil” rule to “cross out” portions deemed unreasonable while leaving any separable and reasonable portions intact.

 

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South Bend, IN – Biomet, Inc. of Warsaw, Indiana has filed a declaratory judgment suit against Bonutti Skeletal Innovations LLC of Frisco, Texas in the Northern District of Indiana, asking the court to enter a judgment of non-infringement and invalidity of fifteen Bonutti patents.

BiometLogo2.JPGBiomet is a privately held company that designs, manufactures and markets products used primarily by musculoskeletal medical specialists in surgical and non-surgical therapy.  Dr. Peter Bonutti is an orthopedic surgeon listed as an inventor or co-inventor on over 150 U.S. patents, including the patents-in-suit.  Biomet entered into a licensing agreement with Dr. Bonutti, via his research and/or patent-holding company MarcTec, LLC, in 2006.

Since September 2012, Bonutti Skeletal has initiated a series of patent-infringement lawsuits against medical-device manufacturers, including Depuy, Inc.; Zimmer, Inc.; Smith & Nephew, Inc.; Wright Medical Group, Inc.; ConforMIS, Inc.; Arthrex, Inc.; Linvatec Corporation and ConMed Corporation.  In each of these suits, Bonutti Skeletal has asserted infringement of Bonutti patents against products similar to those produced by Biomet.

In January 2013, Bonutti informed Biomet that it believed that Biomet was infringing upon Bonutti patents; it demanded a settlement to license these patents shortly thereafter.  On that basis, Biomet seeks a judgment under the Declaratory Judgment Act, stating that an actual and justiciable controversy exists.

Patent attorneys for Biomet listed fifteen Bonutti patents in their complaint.  Biomet asks for declarations that there was no infringement by Biomet of any of the fifteen Bonutti patents and of invalidity of all of the patents, a finding that the case is exceptional and an award of attorneys’ fees and costs pursuant to that finding.

The patents-in-suit, all issued by the U.S. Patent and Trademark Office are:

• 5,921,986: “Bone suture”

• 6,638,279: “Method of positioning body tissue relative to a bone”

• 8,147,514: “Apparatus and method for securing a portion of a body”

• 7,087,073: “Method of securing body tissue”

• 6,702,821: “Instrumentation for minimally invasive joint replacement and methods for using same”

• 7,806,896: “Knee arthroplasty method”

• 7,708,740: “Method for total knee arthroplasty and resecting bone in situ”

• 7,806,897: “Knee arthroplasty and preservation of the quadriceps mechanism”

• 8,133,229: “Knee arthroplasty method”

• 7,828,852: “Inlaid articular implant”

• 7,931,690: “Method of resurfacing an articular surface of a bone”

• 7,070,557: “Tissue graft material and method of making”

• 6,423,063: “Changing relationship between bones”

• 6,099,531: “Changing relationship between bones”

• 7,104,996: “Method of performing surgery”

Practice Tip #1:  It is common for those who consider themselves likely to become defendants in patent-infringement litigation to proactively seek a declaratory judgment of non-infringement.  Such a suit allows the potential defendant not only to choose their own forum, to the extent that it is consistent with jurisdictional restrictions, but also to remove an ever-present cloud of potential litigation and potential damages that may be continuing to accrue. 

Practice Tip #2:  The standard for an actual controversy under the Declaratory Judgment Act was most recently addressed by the Supreme Court in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007).  We blogged recently about another action for declaratory judgment involving Genentech here.

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Indianapolis, IN – Patent lawyers for Mid-West Metal Products Company, Inc. d/b/a Midwest Homes for Pets of Muncie, IN sued Yuntek International, Inc. of Hayward, CA seeking a declaratory judgment of noninfringement and intervening rights regarding Yuntek’s “Pet Tent,” Patent No. 6,715,446, issued by the U.S. Patent and Trademark Office.

Defendant Yuntek alleged that Midwest had infringed its patented Pet Tent and had sent multiple “cease and desist” letters to Midwest.  In its complaint, Midwest asserts that thereMid-WestMetalLogo.JPG exists an actual and continuing justiciable controversy between the parties, as contemplated under the Declaratory Judgment Act 28 U.S.C. §§2201 et seq., and has brought the matter to the Southern District of Indiana for resolution.

The patent for the Pet Tent, issued in 2004, was reexamined by the U.S. Patent and Trademark Office (“USPTO”).  In this reexamination, certain claims were canceled and others were substantively amended.   New claims were also added.

At issue is the alleged infringement of the patent-in-suit prior to the issuance by the USPTO of the Ex Parte Reexamination Certificate as well as the Inter Partes Reexamination Certificate.  Midwest asks the court to declare that it does not infringe and did not infringe any valid claim of the patent prior to the issuance of the Ex Parte Reexamination Certificate, at least on the basis of intervening rights.  It claims similar noninfringement prior to the issuance of the Inter Partes Reexamination Certificate.

Midwest also asks the court for a judgment that it is entitled to absolute and equitable intervening rights under each of the Reexamination Certificates pursuant to 35 U.S.C. §252.  Finally, Midwest asks the court to enjoin Yuntek from pursuing or threatening litigation related to the Pet Tent patent for the time period prior to the issuance of the two Reexamination Certificates, for a declaration that the case is exceptional and for attorneys’ fees pursuant to that declaration.

Practice Tip: The Federal Circuit recently considered whether intervening rights apply where claims were neither amended nor added during reexamination.  (See, Marine Polymer Technologies, Inc. v. HemCon, Inc.)  It held that the doctrine of intervening rights applied only where claims had been amended or added.

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Indianapolis, IN – Intellectual property lawyers for DirecTV, LLC sued Roger York, Dianna York and D.L.Y., Inc. d/b/a Marty’s Pub of Converse, IN alleging the commercial use of satellite programming sold at the residential rate.

This suit was brought under the Cable Communications Policy Act of 1984, 47 U.S.C. §521, et seq., and 47 U.S.C. §605.  It alleges that Roger York and Dianna York, in their capacity as owners, and individuals with close control over internal operating procedures, of Marty’s Pub willfully and unlawfully used a residential subscription to DirecTV DirecTvLogo.JPGin a commercial establishment.

The three-count complaint cites three causes of action.  Count One: Damages for Violations of Cable Communications Policy Act under 47 U.S.C. §605(e)(3)(c); Count Two: Damages for Violations of 18 U.S.C. §2511; and Count Three: Civil Conversion.

DirecTV asks for the following: a declaration that the defendants’ use of DirecTV was a violation of §2511, that such violations were willful and for the purpose of commercial advantage; an injunction against further violations; statutory damages under 18 U.S.C. §2511; statutory damages under 47 U.S.C. §605; punitive damages and costs and interest.

Practice Tip: As part of its complaint, DirecTV claims that its goodwill and reputation have been usurped.  It will be interesting to see what evidence it offers as proof that, as a result of allegedly receiving a lower monthly fee for the programming provided to the defendants – a circumstance presumably known to few other than the Yorks – its goodwill or reputation have been impacted.

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Indianapolis, IN – The Southern District of Indiana ruled in favor of Plaintiff Patrick Collins, Inc. by denying the motion of pro se Defendant John Doe No. 7 to quash or modify Plaintiff’s subpoena.

 In a lawsuit originally styled “Patrick Collins, Inc. v. John Does 1 – 13,” Patrick Collins, Inc. of Canoga Park, California (“Patrick Collins”), alleged direct and contributory infringement by 13 then-unidentified individuals including John Doe No. 7.  The suit was filed by copyright attorney Paul Nicoletti.

By motion, Dustin Hillman (“Hillman”), identifying himself only as “John Doe 7,” asked the court to quash or modify the subpoena seeking to compel his internet service provider to provide his real name to the Plaintiff, stating that “such actions violate right to privacy and the disclosure of such matters may result in wrongful or unjust incrimination.”

Hillman attached for the court’s review an article which concluded that a common approach for identifying users infringing copyright law using BitTorrent (via the Internet) was not conclusive.  He then asked the court to require Plaintiff to provide further information about its methods of identifying defendants and proof of the reliability of those methods.  “Hardly a day goes by,” said Hillman, “that the news does not contain a story where a computer system containing highly confidential data has been hacked, spoofed and infected by malware.”  He asked for the subpoena to be quashed or modified on these grounds.

The court was not persuaded.  It discussed those situations under FRCP 45(c)(3)(A) where a court must quash or modify a subpoena and then those situations under FRCP 45(c)(3)(B) where a court may quash or modify a subpoena.  Citing the Malibu Media litigation, a similar matter which we blogged about here, the court then noted that the burden of establishing the grounds to quash a subpoena is borne by the party seeking to quash it.  Hillman, it said, had made an argument denying liability based on the possibility that his IP address may have been used by someone else.  Such an objection was an argument on the merits of the case and was “irrelevant and premature” in the discovery phase of the litigation. 

Hillman also asked the court to require the Plaintiff to disclose its “shake down methods” of collection, how much it had collected from alleged copyright infringers, the percentage of cases settled without trial and the total costs incurred by the Plaintiff.  The court was not moved by this request, either, stating that no evidence of abusive settlement tactics had been presented to the court.

Hillman’s identity was deemed “relevant information that is reasonably calculated to lead to the discovery of admissible evidence” and Hillman’s motion to quash or modify the subpoena was denied.  

Practice Tip: Patrick Collins, Inc. has filed quite a few suits, including another case naming over 1,000 John Doe defendants.  The company has been called a “copyright troll” on more than one occasion.  The actions of companies such as Patrick Collins and Malibu Media have been called “extortionate” and, in at least one case, a class action suit has been filed against these “trolls.” 

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Indianapolis, IN – Plaintiff Malibu Media, LLC of Los Angeles, CA has sued seventeen “John Does” for copyright infringement in separate complaints filed in both the Southern District of Indiana and the Northern District of Indiana.

Paul Nicoletti, a copyright attorney, has filed seventeen nearly identical suits in Indiana federal court on behalf of Malibu Media.  The “John Does” allegedly used the BitTorrent file-sharing protocol to illegally download, copy and distribute elements of various works of copyrighted material.

We have previously blogged about Malibu Media here.  We have also blogged about some of the other copyright-infringement litigation filed by Paul Nicoletti here.

Malibu Media seeks a permanent injunction against infringing activities; an order by the court to remove infringing materials from all computers of each defendant; an award of statutory damages of $150,000 per infringed work – which would total over $1 million for many defendants – and reasonable attorneys’ fees and costs.

Practice Tip: The BitTorrent protocol is a decentralized method that allows users to distribute data via the Internet, and has become an extremely popular method for unlawful copying, reproducing and distributing files in violation of the copyright laws. While the copyright infringements committed with BitTorrent once consisted mostly of music copyright violations, the adult entertainment industry has increasingly been filing suit against infringers who have used BitTorrent-based technology. 

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Indiana patent attorneys obtained issuance of the following 160 patents from the US Patent Office to persons and businesses in Indiana in February, 2013:

PAT. NO.

Title

1

D676,952

Fan

2

D676,939

Faucet handle

3

D676,938

Faucet handle

4

D676,937

Faucet handle

5

D676,936

Faucet handle

6

D676,932

Faucet handle

7

D676,931

Faucet handle

8

D676,927

Handheld showerhead

9

8,386,090

System and method for wireless remote operation of an accessory associated with a vehicle

10

8,385,708

Apparatus for the collection and transmission of electromagnetic radiation

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The US Trademark Office issued the following  137 trademark registrations to persons and businesses in Indiana in February, 2013, based on applications filed by Indiana Trademark Attorneys:

 Reg. Number   Mark  Click to View
1 4289474 BRINGING SAFETY TO PEOPLE View
2 4294335 VINO VAN GOGH View
3 4296699 CHICAGO BLUE View
4 4295760 TOP SELECTS View
5 4295717 GENTLEMAN’S RULE View
6 4295564 SCEPTERMAX View
7 4295456 ·MARIAN UNIVERSITY · KNIGHTS MU View
8 4295450 ARTZY GIRLZ View
9 4295233 FIBERGLASS FREAKS View
10 4295158 SPECIALIZED TRUST STRATEGY (STS) View

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Contact Information
Indiana Intellectual Property: IP Litigation, Patents, Trademarks, Copyrights
  • Seventh Circuit
  • Northern District of Indiana
  • Southern District of Indiana
Paul B. Overhauser
Overhauser Law Offices, LLC
Greenfield
18 E Main St #202
Greenfield, IN 46140
Phone: 317.467.9100
Fax: 866.283.8549
Indianapolis
101 W Ohio St #2000
Indianapolis, IN 46204
Phone: 317.891.1500
Fax: 866.283.8549

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