Indiana patent attorneys obtained issuance of the following 173 patents from the US Patent Office to persons and businesses in Indiana in September, 2012:
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The US Trademark Office issued the following 160 trademark registrations to persons and businesses in Indiana in September, 2012, based on applications filed by Indiana Trademark Attorneys:
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Indiana patent attorneys obtained issuance of the following 115 patents from the US Patent Office to persons and businesses in Indiana in August, 2012:
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Apparatus and method of segmenting an image in an image coding and/or decoding system |
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Perturbed decoder, perturbed decoding method and apparatus in communication system using the same |
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The US Trademark Office issued the following trademark registrations to persons and businesses in Indiana in August, 2012 based on applications filed by Indiana trademark attorneys:
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The USPTO seeks public comment on the possibility of adjusting trademark application fees so as to lower the fees for all applicants willing to file and communicate electronically with the USPTO . The efficiencies achieved by trademark electronic filing and communications have put the USPTO in a position to potentially reduce the overall collection 
of trademark application fees, and the Office wishes to adjust the fees in a way that further promotes efficiency both for users and the USPTO. Comments are also being sought on the possibility of increasing fees on applications based on paper, currently only 1% of trademark applications, given that these applications are more costly and burdensome for the USPTO to process. A Notice of Inquiry has been published in the Federal Register, www.gpo.gov/fdsys/pkg/FR-2012-08-16/pdf/2012-20127.pdf. Responses are due b y October 15, 2012.
The USPTO seeks public comment on the possibility of amending federal law to shorten by two years the first filing deadline to demonstrate either use or excusable nonuse of a registered trademark. Although any such change would require a legislative amendment of the Trademark Act, and thus is beyond the authority of the agency, the USPTO wishes to collect public comment that might assist in the consideration of such an amendment, or another alternative. The goal would be to remove marks no longer in use, known as “deadwood,” from the register sooner.” Under this proposal, Sections 8 and 71 of the Trademark Act would be amended, requiring a trademark owner to file the first Affidavit of Declarations of Use or Excusable Nonuse within three to four years after the registration date, or the six-month grace period that follows. Under current law, owners must file their first Affidavit between five and six years after the registration date, or the six-month grace period that follows. A request for comments has published in the Federal Register, www.gpo.gov/fdsys/pkg/FR-2012-08-16/pdf/2012-20130.pdf, and responses are due by October 15, 2012.
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.
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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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
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.
