Indiana Intellectual Property Law News

August 9, 2012

Delivery of U.S. Pre-Grant Search Results to the EPO Without Delay Requires Timely Consent From Applicants

Washington, DC. Current EPO regulations require that search results from an application, to which a European patent application filed on or after January 1, 2011 claims priority, must be filed with the EPO by the patent attorney without delay after the search results are made available to applicants. See Amended Rule 141(1) EPC (European Patent Convention). For the time being, U.S. applicants are exempt from personally providing search results for a U.S. priority application to the EPO as a result of an arrangement worked out between the USPTO and the EPO, whereby the USPTO will electronically deliver search results from priority U.S. applications to the EPO, as a no-charge service to applicants. See Electronic Delivery of Search Results From the United States Patent and Trademark Office to the European Patent Office, 76 FR 82279 (December 30, 2011).

Maintenance of the exemption, however, is dependent upon delivery of search results by the USPTO to the EPO as soon as they become available, including when search results are available prior to publication of the U.S. application. Because 35 U.S.C. 122 prohibits the USPTO from providing information about an as-yet unpublished application to a third party without the applicant’s consent, timely delivery of pre-publication search results requires applicant cooperation in providing the USPTO with the proper consent to release the search result information to the EPO. Failure of applicants to provide the USPTO with the required consent will prevent the USPTO from delivering the search results in a timely fashion and could result in EPO rescinding the exemption, which would require all U.S. applicants to provide the search result information to the EPO at their own time and expense.

Practice Tip: Inventors should timely file the Certification and Authorization form PTO/SB/69 (available at http://www.uspto.gov/forms/sb0069.pdf) in each application that is intended to form the basis for a claim of priority to a corresponding application filed with the EPO. This form provides applicant’s consent for the USPTO to deliver to the EPO the search results from an unpublished U.S. application. Applicants should file the form prior to filing a European application that claims priority to the U.S. application in order for search results to be delivered to the EPO without delay should they become available prior to publication of the U.S. application. When filing form PTO/SB/69 using EFS-Web, applicants should be careful to select the correct document description,”PTO/SB/69 – Authorize EPO Access to Search Results,” which can be found under the General Transmittal category. Identifying form PTO/SB/69 using any other document description will significantly delay or prevent delivery of the search results from an unpublished U.S. application to the EPO.

August 7, 2012

Wine & Canvas Litigation Narrowed and Clarified by Court

By Overhauser Law Offices, LLC

Indianapolis, IN – The Southern District of Indiana dismissed multiple claims by Plaintiff Wine & Canvas in its trademark infringement suit against YN Canvas, et al.

Wine & Canvas organizes parties where guests can take a painting class while enjoying cocktails. Anthony Scott (“Scott”), one of the founders of Wine & Canvas, sued multiple defendants. He alleged that he entered into a business venture wherein he would license the Wine & Canvas business model to Christopher Muylle (“Muylle”) and Theodore Weisser (“Weisser”) for use in San Francisco, both to operate a new Wine & Canvas location and to license others to operate under the Wine & Canvas name and business model. Instead, Scott alleged, the defendants breached that agreement, appropriated the Wine & Canvas model and proceeded without Scott as YN Canvas CA, LLC (“YN Canvas”). Defendants, in turn, alleged that they breached no agreement but instead merely parted ways, changing their business name to “Art Uncorked,” when Wine & Canvas insisted on a new agreement with additional terms that were unfavorable to the defendants.

Plaintiff Wine & Canvas Development, LLC (“Wine & Canvas”), via its attorneys, sued multiple defendants: (1) YN Canvas, a Nevada limited liability company with its principal place of business in California; (2) www.art-uncorked.com, the corporate website for Art Uncorked; (3) Weisser, an officer of YN Canvas; and (4) Muylle, an officer of YN Canvas (collectively, “defendants”). [NB: Art Uncorked was also named as a defendant but, as that was merely the new name of YN Canvas, which had already been named as a defendant, the court chose to refer to both by the one name, “YN Canvas.”]

The eleven-count complaint was originally filed in Hamilton County Circuit Court and included claims for trademark infringement, false designation of origin, trademark dilution, sales of counterfeit items/services, unfair competition, declaratory judgment, civil action under the Indiana Crime Victims Act, breach of contract, fraud, permanent injunctive relief, and request for writ of attachment. It was removed to the Southern District of Indiana as its Lanham Act issues provided federal question jurisdiction. We previously blogged about that element of this case here.

The parties came to the court with several motions. After a detailed discussion on personal jurisdiction, the court held that it could exercise specific jurisdiction over both Weisser and YN Canvas and denied the motion to dismiss for lack of personal jurisdiction as to them. The motion to dismiss the website as a defendant was granted, with the court finding that, “[b]ased on common sense and Indiana precedent, it is obvious to this Court that a website alone is not an entity capable of being sued.”

The court declined to discuss jurisdiction regarding “Art Uncorked,” finding that it was merely the new name of YN Canvas and, as such, it need not be considered separately. Any references to YN Canvas would also apply to Art Uncorked.

The court then moved to the defendants’ 12(b)(6) motions to dismiss for failure to state a claim. Two counts – trademark infringement under 15 U.S.C. § 1114(1)(a) and use of a counterfeit mark under 15 U.S.C. § 1116(d) – were dismissed. Each of those claims required a registered mark, which Wine & Canvas conceded it did not have. However, the court dismissed the counts without prejudice, as the registration of the marks is pending.

The court next moved to two “counts” – permanent injunction and attachment – and dismissed them summarily as inappropriate pleading. “Because these remedies are based on causes of actions in other counts within the Wine & Canvas’s complaint and are included within the Wine & Canvas’s prayer for relief,” the court held, “it is unnecessary to dedicate a separate count for each specific remedy.”

Defendants next asked the court to dismiss the claim of fraud for failure to meet the heightened standard required for pleading fraud. As no time frame or location of the alleged fraud had been included in the plaintiff’s complaint, the court dismissed the fraud claim without prejudice.

Finally, as with the “counts” for permanent injunction and attachment noted earlier, the court addressed another “count” by Wine & Canvas seeking a declaratory judgment. Ruling here on the defendants’ motion to strike, the court cited Federal Rule of Civil Procedure 12(f) allowing a court to strike “redundant, immaterial, impertinent, or scandalous matter” from any pleading and, again, held that the “count” was redundant, as appropriate remedies would be addressed in the adjudication of the substantive claims, and granted the defendants’ motion to strike.

Practice Tip #1: The decision to sue a website is a curious one and seems to be the modern-day equivalent of suing a book. It is notable that this has, however, happened. See, e.g., here. On the one hand, it is an attorney’s duty to pursue zealously his clients’ interests and, at times, that leads to maintaining a cause of action that is not a “sure thing.” On the other hand, the law is unambiguous that a website is neither a real person nor a legal entity capable of being sued and, thus, it would have been wiser to omit this “defendant.”

Practice Tip #2: The decision to include various remedies that a party is seeking as separate causes of action is also curious but, instead of zealous advocacy run amok, it merely seems to reflect improper drafting.
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August 3, 2012

Patent attorneys obtained issuance of 178 patents from the US Patent Office in July, 2012

By Overhauser Law Offices, LLC

Indiana patent attorneys obtained issuance of the following 178 patents from the US Patent Office to persons and business in Indiana in July, 2012.

PAT. NO. TITLE

1	D664,630	Tank lever
2	8,234,067	Methods and apparatus for swarm navigation of multiple agents
3	8,233,748	Image-resolution-improvement apparatus and method
4	8,233,682	Methods and systems for improving spatial and temporal resolution of computed images of moving objects
5	8,232,301	Pesticidal compositions
6	8,232,289	Spiropiperidine compounds as ORL-1 receptor antagonists
7	8,231,929	Medical device coating process
8	8,231,891	Implantable drug depot for weight control
9	8,231,683	Shoulder prosthesis assembly having glenoid rim replacement structure
10	8,231,681	Self-contained expandable implant and method
11	8,231,679	Prosthesis connection mechanism
12	8,231,661	Systems and methods for minimally invasive facet fusion

August 1, 2012

Attorneys’ Fees Awarded to Defendant in Trade Secrets Case

By Overhauser Law Offices, LLC

Indianapolis IN. Lawyers representing the defendant, Loparex, LLC were awarded their attorneys’ fees in a trade secret infringement case filed against it by MPI Release, LLC. Loparex had previously filed a trade secret case in Illinois against one defendant, Mr. Kerber. However, when Loparex sought a temporary restraining order in the case, the Illinois judge told Loparex that “I don’t think you have identified protectable trade secrets.This is a very broad list of claimed secrets, supposedly, that I think largely are under the umbrella of skill that he has developed having worked in this industry for such a long time.” Shortly after that hearing, Loparex dismissed the Illinois suit and then filed a new suit in Indiana, which added defendant, MPI Release and another person as a defendant.

When Loparex sought a preliminary injunction in the Indiana case, the Court commented stating, “You brought this lawsuit and have the burden of proof, and you have a particularized burden here with a request for a preliminary injunction to show that specific trade secrets were misappropriated.” Following this comment, Loparex withdrew its motion citing its inability to establish “actual misappropriation”, despite “substantial discovery.” The Court later granted a summary judgment in favor of the defendants, and the defendant MPI sought to recover its attorneys’ fees.

The Court found that MPI was entitled to recover its attorneys’ fees under the Illinois Uniform Trade Secrets Act because the claim had been made “in bad faith.” In addition, the defendants separately sought attorneys’ fees under 28 USC § 1927, which allows an award of attorneys’ fees against an attorney “who so multiplies the proceedings in any case unreasonably and vexatiously.” The Court found the case suitable for an award of attorneys’ fees under 28 USC § 1927. Significantly, the Court held one of Loparex’s attorneys personally liable for MPI’s attorneys’ fees, stating, “He could and should have intervened when MPI sought a take-no-prisoners litigation strategy. As an enabler of the client’s unreasonable litigation desires, he becomes personally liable for them too.” Accordingly, Loparex’s attorney was found liable for MPI defendant’s attorneys’ fees, $475,332.70.

Practice Tip:

This ruling is significant because it is rare for a Court to award sanctions under 28 USC § 1927. It appears the Court found it significant that plaintiff asserted the claims even though it had dismissed the same claim filed previously in an Illinois court. Loparex also sought to avoid sanctions under 28 USC § 1927 by arguing that the defense counsel had alleged unclean hands, namely “unreasonably aggressive litigation from the other side.” The Court did not consider that argument, rejecting “and if you can do it, I can do it too” attitude towards litigation misconduct. The Court instead stated that the plaintiff, Loparex, or its attorney, Mr. Pautsch, should have filed a § 1927 motion against defense counsel when it established unreasonable behavior on defense counsel’s part.

July 31, 2012

CP Productions, Inc. Sues John Doe for copyright Infringement of Video: “GH Hustlers – Maryjane’s Second Visit”

By Overhauser Law Offices, LLC

Indianapolis IN – Copyright lawyers for CP Productions, Inc. of Phoenix, AZ filed a copyright infringement declaratory judgment suit in alleging John Doe, an alleged serial infringer known at this time only by an IP address, infringed the copyrighted work “GH Hustlers – Maryjane’s Second Visit” which has been registered by the US Copyright Office.

In the complaint filed by attorneys for CP Productions, John Doe and other un-named parties are believed to have infringed a copyrighted video belonging to CP Productions. CP Productions is a producer of adult entertainment and seeks judgment against John Doe and others for the alleged serial infringement of the video “GH Hustlers–Maryjane’s Second Visit” to which the Plaintiff owns the copyright. John Doe and the joint tortfeasers are not known by name but rather, through their IP address and attorneys for CP Productions will be filing a Motion for Leave to Take Discovery in order to ascertain the actual identities of the Defendants from their ISPs. CP Productions is seeking judgment from counts including copyright infringement, civil conspiracy, and contributory infringement. CP Productions claims to have observed John Doe’s infringing multiple copyrighted content through agents the Plaintiff has employed using the BitTorrent protocol because the Plaintiff employs P2P netword forensic software to provide real time monitoring of the BitTorrent swarm that distributes the video. This software allowed CP Productions to log John Doe and the joint tortfeasers unlawful activities. CP Productions further alleges that John Doe and the joint tortfeasers intentionally downloaded a torrent file particular to the Plaintiff’s video, purposefully uploaded the torrent into their BitTorrent clients and entered a BitTorrent swarm particular to the Plaintiff’s video and reproduced and distributed the copyrighted video among themselves and third parties thereby becoming both and uploader and downloader of the video. By doing so, CP Productions claims that this “ever growing swarm will jointly contribute to the complete download of the Video for all individuals that enter the swarm at any given moment.” CP Productions believes that this lawsuit is the only practical means by which to combat BitTorrent based infringement. Because the damage claimed by CP Prodcutions includes economic and reputation losses, to which Plaintiff asserts will continue, the Complaint sets out demand for actual or statutory damages allowed under the Copyright Law, compensatory damages for the counts of civil conspiracy and contributory infringement, and an order or impoundment for all copies of Plaintiff’s works, photographs or other materials in the Defendant’s possession or control.

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. Where this market was once consumed by music copyright violations, the adult entertainment industry has seen an increase in litigation against infringers using BitTorrent-based technology. Although no concrete rules govern jurisdiction of the Internet, Indiana’s long arm statute (Indiana Rule of Trial Procedure 4.4) permit personal jurisdiction of Defendants if they either downloaded or uploaded the copyrighted material.

July 30, 2012

SCR Solutions Sues H2O Underpressure, Inc. For Patent Infringement of Manual SCR Catalyst Cleaning Method

By Overhauser Law Offices, LLC

Indianapolis; IN – Patent attorneys for Michael Ware, President of SCR Solutions of Madison, Indiana filed a patent infringement suit in alleging H2O Underpressure, Inc., of Dale, Wisconsin infringed provisional patent application no. 61,633,642, MANUAL SCR CATALYST CLEANING METHOD which has been filed with the US Patent Office.

On May 11, 2012, Michael Ware, President of SCR Solutions, filed the Complaint pro se against H20 Underpressure for willful patent infringement. The Complaint alleges that H2O Underpressure infringed, and continues to do, the Manual SCR Catalyst Cleaning Method by using it and selling it to the Duke Energy East Bend Power Plant in Union, Kentucky. SCR Solutions is also alleging that H20 Underpressure had previous knowledge of the ownership of the patent pending process and “conspired to steal and use so without written agreement or intention to compensate the owner” for the sale and use of the Manual SCR Catalyst Cleaning Method. SCR solutions claims to have complied with the statutory requirement of placing notice of the patent on all Manual SCR Catalyst Cleaning Method sells and also giving H2O Underpressure written notice of the infringement. SCR Solutions is seeking to enjoin H2O underpressure from using and selling the Manual SCR Catalyst Cleaning Method by demanding a preliminary and permanent injunction against the continuing infringement and damages.

July 27, 2012

U.S. Patent Office Publishes Rules Implementing the America Invents Act

By Overhauser Law Offices, LLC

Washington, DC. On Thursday, July 26, 2012, the United States Patent Office published in the Federal Register proposed rules and proposed examination guidelines for the first-inventor-to-file provision of the America Invents Act. The first-inventor-to-file provision converts the United States from a “first-to-invent” to a “first-inventor-to-file” system. The proposed rules and proposed examination guidelines amend the rules of patent practice to implement the conversion and show the Office’s interpretation of how the conversion impacts sections of the Manual of Patent Examining Procedure related to novelty and obviousness. The proposed rules and proposed examination guidelines are accessible here:

First-Inventor-to-File Proposed Rules (77 Fed. Reg. 43742, July 26, 2012)

First-Inventor-to-File Proposed Examination Guidelines (77 Fed. Reg. 43759, July 27, 2012)

July 2, 2012

152 Trademark Registrations Issued to Indiana Companies in June, 2012

By Overhauser Law Offices, LLC

The US Trademark Office issued the following 152 trademark registrations to persons and businesses in Indiana in June, 2012 based on applications filed by Indiana Trademark attorneys:

	Serial Number	Mark	Click to View
1	4,163,724	AUCTIONTRAC	View
2	4,155,354	ICONIC	View
3	4,152,511	C CENTER FOR A SECURE RETIREMENT	View
4	4,164,736	MAMMOGRAM A FRIEND	View
5	4,165,913	TORQUE	View

July 1, 2012

Patent attorneys obtained issuance of 121 patent from the US Patent Office in Indiana in June, 2012

By Overhauser Law Offices, LLC

Indiana patent attorneys obtained issuance of the following 121 patents from the US Patent Office to persons and business in Indiana in June, 2012.

June 27, 2012

194 Trademark Registrations Issued to Indiana Companies in May, 2012

By Overhauser Law Offices, LLC

The US Trademark Office issued the following 194 trademark registrations to persons and businesses in Indiana in May, 2012, based on applications filed by Indiana Trademark Attorneys:

	Registration No.	Mark
1	4149541	ESENSE INCORPORATED IN EVERYTHING WE DO	VIEW
2	4151667	COOL CURE 365	VIEW
3	4150758	PRESS GANEY OUTCOMES DRIVEN. PERFORMANCE STRONG.	VIEW
4	4141938	JOURNEY FORWARD	VIEW
5	4150205	BODY ENVY	VIEW
6	4150167	SLUMBER MAX	VIEW
7	4150109	OA	VIEW
8	4150083	DON’T BE A TOOL – RENT ONE	VIEW
9	4150077	CTEMS	VIEW
10	4150057	WELLFOUNT	VIEW

	PAT. NO.	Title
1	D662,685	Vault
2	D662,681	Aluminum extrusion
3	D662,502	Tablet computer cradle
4	D662,441	Spindle vase
5	8,208,265	Circuit board retainer
6	8,207,494	Laser ablation flowing atmospheric-pressure afterglow for ambient mass spectrometry
7	8,207,362	Bio-fuel and process for making bio-fuel
8	8,207,344	GPR119 agonists
9	8,206,983	In vitro methods for the induction and maintenance of plant cell lines as single suspension cells with intact cell walls
10	8,206,648	Liquid container with an extraction chimney
11	8,206,565	System and method for coding information on a biosensor test strip
12	8,206,455	Hip stem prosthesis