Indiana Intellectual Property Law News

January 30, 2012

Trademark Trial and Appeal Board Issues Opinion for Rolex in Trademark Dispute Suit Over Dilution

Alexandria, VA – The Trademark Trial and Appeal Board of the US Trademark Office has reached a decision regarding the opposition of trademark registration filed by Rolex Watch U.S.A., Inc. of New York, New York against AFP Imaging Corporation of Elmsford, New York on trademark serial no. 77/492,131 for the mark ROLL-X registered with the US Trademark Office.

In 2008, AFP filed a trademark application with the US Trademark Office for the mark ROLL-X, with the product category of “x-ray tables for medical and dental use.” Rolex Watch filed an opposition to that registration, arguing that there was a likelihood of confusion between AFP’s products and the Rolex trademark that Rolex has used for many years and that the Rolex marks would likely be diluted by tarnishing or blurring of the marks. The opinion notes that Rolex’s trademarks state that their products are “watches, clocks, parts of watches and clocks, and their cases.” After considering all the statutory factors, the Board determined that Rolex had not demonstrated that AFP’s proposed trademark registration would result in dilution of Rolex’s trademarks.

Practice Tip: In considering whether a trademark application dilutes a prior mark by blurring, there are six factors to consider pursuant 15 U.S.C. § 1125(c)(2)(B)(i-vi). These are: the degree of similarity between the two marks, the degree of distinctness, the extent to which the owner of the famous mark is engaging in exclusive use, the degree of recognition of the famous mark, intent to create association with the famous mark, and finally, actual association with the famous mark.
Continue reading

January 27, 2012

Lioness Vizions, LLC Sues Rhasha and Mikel Hoosier for Copyright Infringement in Dispute Between Co-authors of Book

By Overhauser Law Offices, LLC

Indianapolis, IN – Copyright attorneys for Lioness Vizions, LLC, Angentia Childs of Indianapolis, Indiana and Delina Hill-Brooker of Powder Springs, Georgia filed a copyright infringement suit in the Southern District of Indiana alleging that Rhasha and Mikel Hoosier of Gahanna, Ohio, Reign Media Group and Romantic Media Group of the State of Ohio infringed the copyrighted work Revealing & Healing: 3 Women’s Stories of Survival. The plaintiffs also allege other claims based on the operation of a limited liability company that marketed and sold the book.

The complaint describes how Ms. Childs, Ms. Hill-Brooker and Ms. Hoosier wrote a book together, which is the allegedly copyrighted work. Because they could not find a publisher, the three women formed a limited liability company, Lioness Vizions LLC, to publish, market and sell their book. The complaint states that the three women assigned their copyright to the company. The complaint states that in August 2010, Ms. Hoosier resigned from company and then dissolved the company without the authorization of the two other women. The complaint alleges that Ms. Hoosier, however, went on to market and sell the book on her own and formed another company to sell the book. The complaint states that Ms. Hoosier has appeared on radio shows and done other promotional activities to sell the book and has not shared the profits with the other co-authors. The complaint makes claims of wrongful dissolution for Lioness Vizions LLC, copyright infringement, right of publicity infringement, breach of operating agreement, breach of fiduciary duty, civil theft, tortuous interference with existing or potential business relationships, and unfair competition. Copyright attorneys are seeking an injunction, damages, return of all copies of the book, an order reinstating Lioness Vizions LLC, disgorgement of profits,

Practice Tip: It is interesting to note that the Plaintiffs claim venue is proper in Indiana because “solicitation of the Plaintiffs took place” in Indiana. Lioness Vizions LLC was registered as an Ohio limited liability company.
Continue reading

January 25, 2012

Eli Lilly and Company Sues Accord Healthcare for Patent Infringement of Lung Cancer Drug ALIMTA

By Overhauser Law Offices, LLC

Indianapolis, IN – Patent attorneys for Eli Lilly and Company of Indianapolis, Indiana filed a patent infringement suit in the Southern District of Indiana alleging that Accord Healthcare, Inc., USA of Durham, North Carolina infringed patent no. 7,772,209, Antifolate combination therapies, which has been issued by the US Patent Office.

The complaint states that in December Accord sent a letter notifying Lilly that Accord had submitted an Abbreviated New Drug Application (ADNA) to the Food and Drug Administration (FDA) for its generic version of Alimta. Lilly alleges that Accord’s proposed product and labeling will infringe its patents. Lilly seeks an injunction to prevent Accord from developing, manufacturing and selling the allegedly infringing product.

Practice Tip: Lilly has already won a patent infringement case over Alimta. As we blogged about last year, the District Court of Delaware affirmed the validity of Alimta patents. This lawsuit, however, is over a patent that was not the subject of the District Court of Delaware’s decision.
Continue reading

January 24, 2012

Indiana House Bill Looks Right of Publicity

By Overhauser Law Offices, LLC

Indianapolis, IN – A bill pending in the Indiana General Assembly would make changes to Indiana’s Right of Publicity Law, I.C. 32-36-1-8. The bill would clarify that a person who died before 1994 does have the publicity rights provided by the law.

This bill is co-authored by Representatives Sean Eberhart of Shelbyville and Ralph Foley of Martinsville. It has been referred to the House Judiciary Committee. The Indianapolis Star quoted Representative Foley as explaining the need for the law as confusion in federal courts regarding whether the publicity rights attach to persons who died before 1994.

As we have previously blogged about, Indiana’s Right to Publicity law is considered one of the strongest in the world. This bill, if passed, appears to strengthen that law even further. The Indiana Law Blog has compiled some recent blogs regarding the Right to Publicity law.

Practice Tip: The Indiana General Assembly has a “short session” this year, meaning March 14 will be the last day of the session. If this bill is to become a law this session, it must move quickly through the House and Senate committees in the next several weeks in order to get to Governor Daniel’s desk by March 14.
Continue reading

January 23, 2012

Angie’s List Sues Click and Improve over Theft of Computer Files, Breach of Contract: Case Removed to Federal Court

By Overhauser Law Offices, LLC

Indianapolis, IN – A trade secret and breach of contract lawsuit filed in Marion County Superior Court has been removed to the Southern District of Indiana. In December, intellectual property attorneys for Angie’s List of Indianapolis, Indiana filed a suit in Marion County Superior Court alleging Click and Improve, Inc. d/b/a, ClickAndImprove.com, Avi Zikry and Jesse Friedman of New York State breached a membership agreement by misappropriating trade secrets and committing computer fraud and abuse.

Angie’s List provides consumer reviews of different service providers. Click and Improve is a competitor website started in 2011. Zikry and Friedman are Click and Improve’s principles. The complaint alleges Zikry and Friedman became a member of Angie’s List in 2011 and signed a membership agreement that limited the ways that members could use the information on Angie’s List. The complaint alleges Zikry and Friedman essentially stole reviews and other information on Angie’s List and published the information on their competing website. The complaint states over 24,000 proprietary files were stolen. The complaint makes claims of breach of contract, tortuous interference with contract, misappropriation of trade secrets, computer fraud and abuse, computer trespass, conversion, fraud and theft. Angie’s List seeks an injunction, damages, treble damages, costs and attorney fees.

Practice Tip: Any case filed in state court that makes a federal claim can be removed to federal court upon request. Most intellectual property cases involve a federal claim under the federal patent, trademark or copyright laws. Here, however, the plaintiff made a federal claim under the Computer Fraud and Abuse Act, 18 U.S.C. § 1030.
Continue reading

January 19, 2012

Appeal Court Grants Decision for Epocal, Inc. in Patent Infringement Suit Over Point of Care Blood Testing.

By Overhauser Law Offices, LLC

Washington, D.C. – The Court of Appeals for the Federal Circuit has affirmed the dismissal of a patent infringement case. Patent attorneys for Abbott Point of Care of Princeton, New Jersey had filed a patent infringement lawsuit in the Northern District of Alabama alleging that Abbott should have legal title to patent no. 6,845,327, Point-of-care in-vitro blood analysis system, and 6,896,778, Electrode module which has been issued by the US Patent Office. The patents are owned by Epocal, Inc. of Ottawa, Ontario, Canada, who was named as defendant in this suit. The Northern District of Alabama had granted Epocal’s motion to dismiss and dismissed Abbott’s complaint. Abbott appealed, and the Court of Appeals for the Federal Circuit affirmed.

According to the opinion, Dr. Imants Lauks was once an employee of Abbott’s predessor company, but went on to start Epocal after he left that employment. Dr. Lauks has assigned all his patent rights to Epocal. Pursuant a series of employment and consulting contracts with Abbott, Dr. Lauks agreed to assign to Abbott all patent rights to any inventions he conceived while employed with Abbott. Abbott claims that the patents in questions cover inventions that were conceived while Dr. Lauks was employed with Abbott and therefore Abbott should have the patent rights. Epocal filed a motion to dismiss for lack of subject matter jurisdiction and failure to state a claim. Epocal claimed the patents in question were conceived after Dr. Lauks’s employment terminated, therefore Abbott has no ownership.

Chief Judge Rader, writing the opinion of the court, agreed with the district court that Abbott did not have any rights to the patents and therefore, lacked standing to bring a patent infringement lawsuit. The opinion noted that the district court had concluded the terms of the most recent agreement did not cover the invention in question. Justice Bryson wrote a dissenting opinion, noting he found that contracts to be ambiguous and would have remanded for further discovery of extrinsic evidence of the intention of the parties in entering the employment contract.

Practice Tip: Employment and consultancy contracts routinely require assignment of intellectual property rights. In this case, the language of the clause in the employment/consultancy agreement changed over time. The court discussed that if the language in the first contract would have been identical to the language in the latest contract, Abbott would have had rights to the patents in question. This illustrates the importance of having an intellectual property attorney draft these clauses carefully.
Continue reading

January 18, 2012

Syndicate Sales, Inc. Sues Hill’s Import, Inc. for Patent Infringement of Flower Vase

By Overhauser Law Offices, LLC

Indianapolis, IN – Patent attorneys for Syndicate Sales, Inc. of Kokomo, Indiana filed a patent infringement suit in the Southern District of Indiana alleging Hill’s Import, Inc. of Quakertown, Pennsylvania infringed design patent no. D652,342, Plateau vase with constant size neck, known as the “Harshman patent, “which has been issued by the US Patent Office.

The complaint states that the patented vase design was created by artist Trent Harshman, who has assigned all his rights to Syndicate. Syndicate’s complaint states that Hill’s has never been granted any rights to sell or import the patented vase design. The complaint alleges that Hill’s infringed the patent by importing and selling vases that utilized the patented design. Syndicate’s patent attorneys have alleged that the vases in question were manufactured in by Shangdong Yiyaun Oking Glassware Company in China. Syndicate is seeking a declaration of infringement, an injunction, damages, attorney fees and costs.

Practice Tip: Syndicate Sales’ patent purports to cover a vase having a square bottom that morphs into a rounded top with a flange. This would seem to be a common shape, and, if Hill’s import does not get the case dismissed on jurisdictional ground, it can be expected to attack the validity of the patent on grounds of “obviousness.” Also, the complaint alleges that the vases Hill’s allegedly sold came from a factory in China and include Syndicate’s UPC code. This raises an issue of whether the Chinese factory had been authorized by Syndicate to make the vases. If so, Hills may have license defense. Alternatively, Hill’s may be entitled to be indemnified by its alleged Chinese supplier.
Continue reading

January 16, 2012

Several 2011 Indiana Patent Infringement Cases Dismissed or Near Settlement

By Overhauser Law Offices, LLC

Indianapolis, IN — Indiana Intellectual Property Law and News has followed up on patent infringement cases filed in the Northern District of Indiana and the Southern District of Indiana by patent attorneys in 2011. The following updates are now available:

As we blogged in March 2011, the U.S. District Court of South Carolina transferred FC Patents v. Ford Meter Box Company of Wabash, Indiana, a patent infringement case involving fire prevention fixtures, to Northern District Court of Indiana. Following the transfer, plaintiff FC Patents voluntarily dismissed the case. This case was assigned to Judge Theresa Springmann and Magistrate Judge Christopher A. Nuechterlein in the Northern District of Indiana, and assigned case no. 3:11-cv-00116-TLS -CAN.

As we blogged in May 2011,Brandon S. Judkins of Indianapolis, Indiana filed a patent infringement suit alleging Polo Ralph Lauren Corporation of New York, New York infringed Patent No. D591,090, FURNITURE ARTICLE, which has been issued by the US Patent Office. In August 2011, Mr. Judkins voluntarily dismissed the case. This case was assigned to Chief Judge Richard L. Young and Magistrate Judge Debra McVicker Lynch in the Southern District of Indiana, and assigned Case No. 1:11-cv-00661-RLY-DML.

January 13, 2012

Northern District Denies Motion To Amend Protective Order In Patent Infringement Case Over Mobile Banking Vehicle

By Overhauser Law Offices, LLC

Fort Wayne, IN – The Northern District of Indiana has denied a Motion to Amend a Stipulated Protective Order in a patent infringement case. Romary Associates Inc. of Fort Wayne, Indiana had filed a patent infringement lawsuit in the Northern District of Indiana alleging that KIBBI LLC d/b/a Renegade Custom Coaches and Trailers, McKibbin Enterprises, Inc. and KIBBI, Inc. all of Bristol, Indiana infringed patent no. 7,475,809, MOBILE BANKING VEHICLE, which has been issued by the US Patent Office. The invention is essentially a bank branch that can be.

The parties entered a Stipulated Protective Order in February 2011. Romary had moved to have the stipulated protective order amended to have certain “strategic” information designated “Highly Confidential – Outside Attorneys’ Eyes Only.” The original protective order allows the other party’s attorneys as well as officers and employees to view confidential information. Romary now argued that KIBBI is seeking market analysis and strategic planning documents in discovery and that such document should be subject to heightened protection. Romary argued this type of disclosure was not foreseeable.

The court, in summary, held that these types of disclosures should have been foreseeable to Romary when the original protective order was entered. Therefore, the court failed to find “good cause to amend the protective order.

Practice Tip: This case raises issues of how litigation can cause trade secret protection to be impaired if a protective order is not carefully drafted. Protective orders, which can designate certain trade secrets “attorneys’ eyes only,” are intended to prevent the disclosure of trade secrets and other intellectual property.
Continue reading

January 12, 2012

Update: FirePASS, Bombardier Patent Infringement Suit Over Aircraft Fire Prevention Systems Stayed Pending Patent Re-Examination

By Overhauser Law Offices, LLC

Indianapolis, IN – A patent infringement lawsuit over aircraft fire prevention systems has been put on hold until the US Patent Office completes a re-examination of the patents at issue in the case.

In June, patent lawyers for FirePASS IP Holdings and FirePASS Corporation of New York, New York filed a patent infringement lawsuit in the Southern District of Indianaalleging Bombardier, Inc. of Montreal, Canada, and Bombardier Aerospace Corporation, of Richardson, Texas, infringed four patents: No. RE 40,065, HYPOXIC FIRE PREVENTION AND FIRE SUPPRESSION SYSTEMS FOR COMPUTER CABINETS AND FIRE-HAZARDOUS INDUSTRIAL CONTAINERS; 6,418,752, Hypoxic fire prevention and fire suppression systems and breathable fire extinguishing compositions for human occupied environments; Patent No. 6,314,754, Hypoxic fire prevention and fire suppression systems for computer rooms and other human occupied facilities; and Patent No.7,207,392, Method of preventing fire in computer room and other enclosed facilities which have been issued by the US Patent Office. The complaint alleges that Bombardier sells and offers to sell products that infringe FirePASS’s patents. Specifically, FirePASS alleges that Bombardier has a contract to sell 40 CS300 aircraft to Republic Airways of Indianapolis, valued at $3.2 billion. FirePASS alleges that the aircraft contain flammability reduction means that infringe FirePASS’s patented technology. The Federal Aviation Administration has implemented new regulation requiring additional flammability reduction means to prevent fuel tank fires in aircraft.

Patent attorneys for the parties filed a joint motion requesting the stay, which was approved by the court. The motion notes that FIREPASS has filed a patent infringement lawsuit in the Eastern District of New York where the validity of the same four patents is at issue. The opposing party in that case had requested the re-examination. The judge in the New York case has also stayed that litigation pending the re-examination.

Practice Tip: It is common for patent infringement litigation to be stayed when the US Patent Office is re-examining the patent, although the district court is not required to stay the litigation. Each claim of a patent is presumed to be valid and enforceable, even if the patent is being re-examined. The US Patent Office offers this FAQ sheet that explains the re-examination process.
Continue reading