Indiana Intellectual Property Law News

January 16, 2012

Several 2011 Indiana Patent Infringement Cases Dismissed or Near Settlement

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.
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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.
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January 10, 2012

Coach Sues Kristy Davidson for Trademark and Copyright Infringement of the Coach Marks

By Overhauser Law Offices, LLC

Indianapolis; IN – Trademark lawyers for Coach Inc. of New York, New York filed a trademark and copyright infringement suit in the Southern District of Indianaalleging Kristy Davidson d/b/a Kristy’s Trends of Greenfield, Indiana infringed the Coach’s registered trademarks and copyrights, including the copyrighted works known as the “Coach Design Elements” including the SIGNATURE C DESIGNS, Registration No. VAu1-046658, COACH 70^th ANNIVERSARY SNAPHEAD PRINT Registration No. VA1-010-918, and COACH CLOVER DESIGN, which have been registered by the US Copyright Office, and approximately fifty trademarks that have been registered by the US Trademark Office.

The complaint alleges that Ms. Davidson is designed, distributed, sold, promoted and offered for sale products that bear the Coach marks and copyrights without authorization from Coach. Essentially, Coach claims the Ms. Davidson is offering counterfeit Coach products for sale. The complaint alleges that on November 7, 2011, a Coach Representative visited Kristy’s Trends in Greenfield, Indiana and purchased a handbag bearing the Coach marks, but that was not an authentic Coach handbag. The complaint alleges that the representative saw 20 additional handbags, six wallets, and a pair of boots bearing the Coach marks that was offered for sale. The complaint states that Coach’s trademark attorneys sent a cease and desist letter to Ms. Davidson thereafter. In response, Ms. Davidson surrendered handbags, wallets, sunglasses and boots bearing the Coach marks.

The complaint makes claims of copyright infringement, trademark infringement, trade dress infringement, false designation of origin, false advertising, trademark dilution, unfair competition, forgery and counterfeiting. Coach seeks an injunction, damages of $2,000,000 per counterfeit mark, actual and punitive damages, costs and attorney fees.

Practice Tip: Coach has been very aggressive in protecting its intellectual property rights in Indiana courts in the last year. Coach’s intellectual property attorneys have filed eight similar lawsuits in Indiana courts, which Indiana Intellectual Property Law and News has blogged and that are linked below.
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January 9, 2012

Group Dekko Inc. Sues Byrne Electrical for Patent Infringement of an Electrical Receptacle Assembly

By Overhauser Law Offices, LLC

Fort Wayne, IN – Patent attorneys for Group Dekko, Inc. of Garrett, Indiana filed a patent infringement suit in the Northern District of Indiana alleging Byrne Electrical of Rockford, Michigan infringed patent no. 7,075,769, NEXT CONNECT ELECTRICAL RECEPTABLE ASSEMBLY, which has been issued by the US Patent Office.

The complaint alleges that Byrne is infringing the patent by making, using, offering for sale or selling a product called Interlink iQ that embodies that patented technology. Group Dekko sells competitive products called Next Connect and Perimeter. These products appear to be electrical configurations for office furniture. Dekko’s patent attorneys are seeking a declaration that its patent is valid and enforceable, an injunction, damages, attorney fees and costs.

Practice Tip: The complaint filed does not contain any details about where the allegedly infringing products have been sold or offered for sale, particularly whether any sales or marketing occurred in Indiana. In order to establish personal jurisdiction over the defendant, the plaintiff must demonstrate certain minimum contacts with the jurisdiction. The plaintiff here may need to show more to obtain personal jurisdiction. The Southern District of Indiana, for example, recently dismissed a patent infringement case where all the plaintiff alleged was that the defendant had a website offering the allegedly infringing product that was accessible in Indiana.
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January 6, 2012

Wisconsin Court To Hear Simon Property Group Patent Infringement Claims Over Mobile Application For Mall Marketing: Case Dismissed from Indiana Court

By Overhauser Law Offices, LLC

Indianapolis, IN – A patent infringement suit filed in the Southern District of Indiana has been transferred to the Western District of Wisconsin. In April, patent lawyers for Simon Property Group of Indianapolis, Indiana filed a patent lawsuit against NorthMobileTech of Middleton, Wisconsin. In its complaint, Simon stated that NorthMobileTech has accused Simon of infringing NorthMobileTech’s patent, and Simon believed a patent infringement lawsuit against it is imminent. On April 20, 2011, the same day as Simon’s patent attorneys filed its suit, patent attorneys for NorthMobileTech filed a patent infringement lawsuit against Simon in the Western District of Wisconsin. Indiana Intellectual Property Law and News blogged about the case when it was filed.

Simon had filed requests to have the two lawsuits heard by the Southern District of Indiana, however, it has recently filed a motion to dismiss in the Indiana court, noting that the case in the Western District of Wisconsin was moving along quicker than the Indiana case.

The controversy is over Simon’s new application for mobile phones that allows users to access information about shopping malls and merchandise. NorthMobileTech is the owner of patent no. 7,805,130, which has been issued by the US Patent Office. This patented technology is a mobile phone application that allows shopping store and merchandise information to be transmitted to a wireless phone. According to an exhibit attached to Simon’s Complaint, a patent attorney for Fenwick Corporation, which has assigned its patent rights to NorthMobileTech, has sent a letter to Simon alleging that Simon’s mobile phone application infringes its patent. Simon’s application is called “Simon Malls – more choices.”

Practice Tip: This litigation has been quite contentious with both parties filing motions to compel discovery compliance and with Simon requesting sanctions. The parties have also briefed claim construction. The latest entry on PACER indicates that Magistrate Stephen L. Crocker will hear the parties discovery disputes tomorrow, January 6, 2012.
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January 4, 2012

Southern District Issues Partial Summary Judgment in Norwood Promotional Products v. Kustom Koozies Trademark Suit Over KOOZIE Mark

By Overhauser Law Offices, LLC

Indianapolis, IN – Judge Magnus-Stinson of the Southern District of Indiana has issued a partial summary judgment in a trademark infringement case. Trademark attorneys for Norwood Promotional Products, Inc. of Indianapolis, Indiana had filed a trademark infringement lawsuit in the Southern District of Indiana alleging that KustomKoozies, LLC and Steve Liddle of Raleigh, North Carolina infringed trademark registration no.3,240,989 for the KOOZIE mark registered with the US Trademark Office. Trademark attorneys for Norwood had sued Kustom in 2005 and 2006 over the use of the term “Koozie.” The parties reached a settlement of those lawsuits that included the terms that Kustom abandon its trademark application for the mark “KUSTOM KOOZIE”and accept a royalty-free license agreement regarding Norwood’s claimed mark, “Koozie.” In 2008, Norwood alleged that Kustom was not complying with terms of the license agreement, specifically it was required that KOOZIE be in all capital letter in any use and was not displaying ® after the mark. Further it was alleged that Kustom had registered internet domain names and sold products that were not allowed by the license agreement. The defendants attempted to cure the non-compliance, but in 2009 Norwood informed Kustom that it was cancelling the license agreement due to Kustom’s non-compliance and filed this lawsuit. Both parties moved for summary judgment.

One of Kustom’s counterclaims was that Norwood’s registered trademark for “KOOZIE” should be cancelled. Kustom argued that the mark was invalid. However, the Court rejected this claim finding that Kustom was estopped from challenging the legitimacy of the KOOZIE mark because it had voluntarily gave up the right to challenge this mark in the prior settlement agreement. The Court also cited the doctrine of “licensee estoppel” that a trademark licensee is barred from challenging the validity of the licensor’s mark. The Court granted summary judgment in favor of Norwood, finding that Kustom had breached the settlement and license agreements. The issue of damages was reserved for trial. The Court, however, granted summary for Kustom, finding that it had not infringed the trademark after the license agreement was cancelled. Several issues in this case remain pending for upcoming trial.

Practice Tip: In its opinion, the Court is critical of both parties’ trademark attorneys litigation strategies. The Court notes “The advocacy in this matter has been zealous if not always effective or efficient.” Later, the Court notes “the briefs have defined the issues with a preference for litigation tactics and strategy, as opposed to clarity.” The court then noted that the parties’ briefs were not well organized and noted it was structuring its opinion in a more logical organization.
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January 3, 2012

Indiana Patent Attorneys Obtain 134 Patents for Indiana Companies in December, 2011

By Overhauser Law Offices, LLC

Indiana patent attorneys obtained issuance of the following 134 patents from the US Patent Office to persons and businesses in Indiana in December, 2011:

	PAT. NO.	Title
1	D651,318	Femoral resection alignment tool
2	D651,317	Femoral prosthesis sizing tool
3	D651,316	Femoral cut guide
4	D651,315	Femoral provisional prosthesis with cut guide
5	D651,314	Extramedullary modular post

December 31, 2011

165 Trademark Registrations Issued to Indiana Companies in December, 2011

By Overhauser Law Offices, LLC

The US Trademark Office issued the following 165 trademark registrations to persons and businesses in Indiana in December, 2011, based on applications filed by Indiana Trademark Attorneys:

	Reg. Number	Mark	Click to View
1	4,077,289	SF	View
2	4,077,266	GATORADE SPORTS SCIENCE INSTITUTE	View
3	4,077,214	IBMX	View
4	4,077,149	{Design}	View
5	4,077,054	FLEXWOOD	View

December 29, 2011

Eight Circuit Affirms Judgment for Rolls Royce over Trade Secrets

By Overhauser Law Offices, LLC

St. Louis, MO – The Eighth Circuit Court of Appeals has affirmed a lower court’s summary judgment in favor of Rolls Royce Corporation of Indianapolis and a jury’s award of $350,000. Intellectual property attorneys for Avidair Helicopter Supply, Inc. of Lee Summit, Missouri had filed a lawsuit seeking a declaration that it had not violated Indiana’s Trade Secret laws relating to trade secrets of the Rolls Royce Corporation of Indianapolis, Indiana. The case was originally filed in the Southern District of Indiana in 2006 but was transferred to the Missouri Western District Court in 2007.

The Court of Appeals affirmed the district court’s judgment. One issue that the Court of Appeals looked at was the definition of a trade secret. The Uniform Trade Secret Act provides that a trade secret is: “information, including a formula, pattern, compilation, program, device, method, technique, or process, that: (1) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and (2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”

Practice Tip: This case makes a claim under Indiana’s Trade Secrets Act, which allows a plaintiff to seek an injunction and damages when someone has misappropriated a trade secret. Indiana’s trade secret law is based upon the Uniform Trade Secret Act.
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