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Indianapolis, IN – The Honorable William T. Lawrence of the Southern District of Indiana has granted a Motion to Remand to the Marion County Superior Court in a case that had been removed to federal court due to Lanham Act trademark infringement claims in the original complaint. The complaint originally filed by intellectual property attorneys for the Jackson Group LLC of Indianapolis, Indiana in the Marion County Superior Court made claims of breach of fiduciary duty, fraudulent inducement, civil conspiracy, misappropriation of trade secrets and confidential and proprietary information, tortuous interference with existing and prospective business relationships, breach of contract and trademark infringement claims under the Lanham Act against defendants Touch Point One, LLC of Indianapolis, Indiana, Convergent Resources, Inc. and Dean Weathers.

After the defendants indicated to the plaintiff that they would seek removal to federal court due to the federal Lanham Act claims, the plaintiff amended its complaint to drop the trademark infringement claim. The plaintiff’s trademark infringement claim was the Marion County court’s basis for removing the case to federal court. After filing its amended complaint, the Jackson Group sought to have the case remanded back to the Marion County Superior Court since there were no longer any federal claims. While the other defendants consented to remand, Convergent opposed remand arguing that the breach of contract claim required a determination of whether trademarks or copyrights were infringed. The court, however, found that Convergent did not demonstrate that there were any actual disputed and substantial federal issues involved in the case. Therefore, the court remanded the case to the Marion County Superior Court.

Practice Tip: As the Court wrote in its order, pursuant to 28 U.S.C. § 1441(a), removal from state court to federal court “is appropriate if the Plaintiff properly could have filed the amended complaint in federal court “as a civil action ‘arising under the Constitution, laws, or treaties of the United States.” Grable & Sons Metal Products, Inc. v. Darue Engineering & Manuf., 545 U.S. 308, 312 (2005) (quoting 28 U.S.C. § 1331).” When a an intellectual property attorney makes a federal trademark, copyright or patent infringement claim in a state court case, removal to federal court is generally appropriate.
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Washington, D.C. – The U.S. Court of Appeals for the Federal Circuit has affirmed a decision of Chief Judge Richard L. Young of the Southern District of Indiana in a patent infringement case. Patent lawyers for Vernon Hugh Bowman, an Indiana farmer, had appealed Chief Judge Young’s ruling in favor of Monsanto Company of St. Louis, Missouri. In 2007, patent attorneys for Monsanto Thumbnail image for Monsanto.jpghad filed a patent infringement lawsuit in the Southern District of Indiana alleging that Mr. Bowman infringed patent no. 5,352,605, Chimeric genes for transforming plant cells using viral promoters and RE39,247E, GLYPHOSATE-TOLERANT 5-ENOLPYRUVYLSHIKIMATE-3-PHOSPHATE SYNTHASES, which has been issued by the US Patent Office. The patents at issue cover different aspects of genetically-modified “Roundup Ready®” soybeans that are resistant to certain herbicides, including Monsanto’s Roundup® product.

According to the court’s opinion, all growers of the Roundup Ready soybeans must sign a limited use license, called a Technology Agreement. The agreement restricts the use of the seed to a single season and does not allow the grower to save any seed from the crop produced to plant the next season. However, the agreement allows growers to sell the second-generation seeds to local grain elevators as “commodity seeds.” Farmer Bowman purchased some of these commodity seeds, planted and produced a crop from them. Mr. Bowman then retained some of the seeds from the commodity seed crop and replanted them the next year. He had also planted “Roundup Ready®” soybeans in a different area of his farm and signed the Technology Agreement.

Chief Judge Richard L. Young found that Farmer Bowman had infringed the Monsanto’s patents and entered a judgment in the amount of $84,456.20 in favor of Monsanto. The Federal Circuit Court affirmed. Reuters reported on the story.

Practice Tip: Mr. Bowman argued that he did not infringement patents under the doctrine of patent exhaustion. Specifically, he argued that no patent rights were attached to the “commodity seeds” since planters could sell the seeds to grain elevators without infringing the patent rights or technology agreement. Patent exhaustion in the context of second generation seeds has already been subject of two federal circuit court opinions: Monsanto Co. v. Scruggs, 459 F.3d 1328 (Fed. Cir. 2006) and Monsanto Co. v. McFarling, 302 F.3d 1291 (Fed. Cir. 2002).
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Pittsburg, PA – Judge Nora Barry Fischer of the U S District Court for Western District of Pennsylvania has dismissed a suit seeking a declaration a non-infringement of patents owned by a Brownsburg, Indiana company. Patent attorneys for Matthews International Corporation of Pittsburg, Pennsylvannia had filed a lawsuit seeking a declaration of non-infringement of patents owned by Biosafe Engineering, LLC,Thumbnail image for Biosafe.jpg and Digestor, LLC of Brownsburg, Indiana. The patents at issue are patent nos. 5,332,532, Method for disposing of radioactively labeled animal carcasses, 6,437,211, and 6,472,580 Methods for treatment and disposal of regulated medical waste, 7,829,755, System and method for treating infectious waste matter, and 7,910,788, System for treating infectious waste matter, which have been issued by the US Patent Office. Patent attorneys for Matthews also made state law claims of trade libel, defamation, and tortuous interference with prospective contracts.

According to the court’s opinion, Matthews is in the cremation industry and provides “environmentally-friendly alternative to flame-based cremations” through an alkaline hydrolysis process. Biosafe is a competitor and owns patent rights to similar process of disposing various types of bio-waste, however none of its patents reference cremation of human remains. In 2008, Biosafe accused Matthews of infringing its patents. Matthews also alleges that Biosafe told prospective customers that Matthews committing patent infringement. In February 2011, Matthews filed this suit seeking a declaration of non-infringement. Biosafe had filed a motion to dismiss, which the court addresses in its memorandum opinion. The court stated the issue before it as “the patent portion of this motion challenges whether this Court has jurisdiction over a declaratory judgment action where the declaratory plaintiff cannot possibly be liable for direct infringement and no direct infringement has occurred such that the declaratory plaintiff could be found liable for indirect infringement.”

The court found that it did not have jurisdiction to issue a declaration of non-infringement because it found that Matthews had taken no steps towards direct infringement of the patents. The court also found it did not have jurisdiction over the state law defamation, libel and tortuous interference claims. The court dismissed the suit with prejudice.

Practice Tip: In its motion to dismiss, Biosafe argued that the court did not have jurisdiction because there was no “case or controversy” regarding a patent infringement claim, citing Federal Rule of Civil Procedure 12(b)(1). The legal standard for jurisdiction over a suit seeking a declaration of non-infringement of a patent has been significantly revised in recent years following the U.S. Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 132 n. 11 (2007) and its progeny. The court here noted “It is, thus, insufficient in a patent case simply to plead that a declaratory defendant‘s actions have caused economic harm. Instead, under MedImmune, the Federal Circuit has found that an “adverse legal interest” requires a dispute pertaining to a legal right. Arris, 639 F.3d at 1374 (“An adverse legal interest‟ requires a dispute as to a legal right-for example, an underlying legal cause of action that the declaratory defendant could have brought or threatened to bring.”).”
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Chicago, IL — Copyright lawyers for Home DepotHome Depot.jpg successfully defended a copyright infringement lawsuit that had been appealed to the Seventh Circuit Court of Appeals.

Edgenet, Inc. of Waukesha, Wisconsin had filed a copyright infringement lawsuit in the Eastern District of Wisconsin alleging that Home Depot of Atlanta, Georgia infringed the copyrighted work BIG HAMMER MASTER COLLECTION TAXONOMY , which has been registered by the US Copyright Office.

Home Depot had contracted with Edgenet to develop a “taxonomy” which is essentially a method of categorizing different types of products. The parties successfully worked together for several years, but at some point Home Depot decided to develop their own taxonomy in-house that was built upon Edgenet’s system. At that point, EdgeneEdgenet.jpgt caught wind and filed to copyright its taxonomy, calling it Big Hammer Master Collection Taxonomy. Home Depot offered Edgenet $100,000 for a perpetual license and informed Edgenet that it would discontinue using its services. Edgenet, however, declined the check and filed suit alleging copyright infringement. In an opinion by Judge Easterbrook, the Seventh Circuit Court of Appeals found that Home Depot had not infringed the copyrighted work. The court found Home Depot had a right to use the intellectual property pursuant the parties’ contract, which did not limit types of uses.

Practice Tip: In this case, the Court of Appeals asked for supplemental briefing because it was not sure whether the federal courts would have jurisdiction over the case. The court noted that federal jurisdiction is available if the case involves a federal question (28 U.S.C. 1331) or if there is diversity of citizenship. Since both corporations were registered in Delaware, diversity of citizenship was not available. The question the court was concerned with was whether this was simply a contract dispute, which would be a state law question, or whether the controversy was really copyright infringement, a federal question. The court noted the T.B. Harms doctrine, which states that “the fact that a copyright is a contract’s subject matter does not change the status of a claim that arises under the contract.” According to the court, the supplemental briefs confirmed that the controversy was a copyright infringement claim.
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Chief Judge Philip P. Simon of the Northern District of Indiana has award a default judgment and $30,000 in damages to Coach, Inc. of New York, New York in a trademark infringement case over the sale of knock-off Coach purses against a Gary, Indiana business.

In June 2010, trademark attorneys for Coach filed a trademark infringement lawsuit in the Northern District of Indiana alleging that Tom’s Treasure Chest of Gary, Indiana infringed 48 trademarks registered with the US Trademark Office. Thumbnail image for Thumbnail image for Thumbnail image for Coach.jpgCoach also alleged Tom’s Treasure Chest infringed the copyrighted works of Registration No. VAu000704542, LEGACY STRIPE, Registration No. VA0001228917, SIGNATURE C DESIGNS, Registration No. VAu1-046658, COACH 70th ANNIVERSARY SNAPHEAD PRINT AND Registration No. VA1-010-918, COACH CLOVER DESIGN which have been registered by the US Copyright Office. The complaint alleged that a Coach representative purchased two handbags labeled “Coach” at Tom’s Treasure Chest store in Gary on May 12, 2010. The purchased handbags were not genuine Coach products, rather they were knock-off products. The complaint made claims of trademark counterfeiting, trademark infringement, trade dress infringement, false designation of origin and false advertising, trademark dilution, copyright infringement, unfair competition, criminal forgery, and criminal counterfeiting.

Since Tom’s has failed to respond to the lawsuit in anyway, Coach filed a motion for default judgment. The court in its opinion granted the default judgment. The court then turned to the issue of damages. Coach sought statutory damages of $100,000 per violation, which would total $600,000 and argued that these damages were reasonable since Coach could have sought up to $12,000,000 under the statute. The court, however, found this amount was unreasonable. The court noted the only allegation was the sale of two infringing handbags and that Coach had not presented evidence of actual damages in this range. The court concluded that damages in the amount of $5,000 per violation for a total of $30,000. The court also awarded attorney fees and costs.

Practice Tip: Coach filed a nearly identical complaint against J & J.S. Petroleum just a few days ago. Indiana Intellectual Property Law News blogged about case here.

This case illustrates the importance of seeking legal counsel from a trademark infringement lawyer who will properly respond to a lawsuit if you are served with a similar complaint and summons. Federal Rule of Civil Procedure 55(b)(2) governs default judgment and allows the court to enter a default judgment after considering numerous factors. Here, the court gave great weight to the fact that the lawsuit was filed in June 2010 and Tom’s had not filed any type of response. The court also considered that “it’s in the public’s interest to protect intellectual property from trademark infringement.”
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Indianapolis, IN – Senior Judge Larry J. McKinney of the Southern District of Indiana has issued a claim construction order in a patent infringement lawsuit. Patent attorneys for GS Cleantech Corporation of New York, New York, filed a patent infringement suit regarding patent no. 7,601,858, Method of processing ethanol byproducts and related subsystems which has been issued by the US Patent Office.

The ‘858 patent is directed to “a method of processing a concentrated byproduct of a dry milling process for producing ethanol. In its most basic form, the method comprises of recovering oil from the concentrated byproduct.” Id. col.2 l.18-22. The specification of the patent repeatedly refers to the invention as a two-step process comprised of a concentration step and a recovery step. Plaintiffs accuse Defendants’ methods of infringing “The Concentrate Terms” of the ‘858 patent.

In the order the Court construed the following terms: 

                    Claim Term

                   Construction

“concentrate”/”concentrated byproduct”/ “concentrated thin stillage”.

“syrup containing water, oil, and solids resulting from the concentrating or evaporating process”.

“mechanically processing”

“to subject to a mechanical device (or devices) to effect a particular result”.

“heating and mechanically processing the concentrate/ concentrated byproduct/concentrated thin stillage to separate the oil from the concentrate/concentrated byproduct/concentrated thin stillage”

“the Concentrate Term (as construed by the Court in this Order) subjected to heat and a mechanical device (or devices) to extract a product that is substantially oil from the Concentrate Term (as construed by the Court in this Order)”.

“centrifuging the concentrate to recover oil “.

“processing the concentrate (as defined by the Court in this Order) with a centrifuge to separate the oil from the concentrate so that the oil stream coming out of the centrifuge is substantially oil and the remaining concentrate stream coming out of the centrifuge is substantially free of oil”

Practice Tip:Previous articles about this litigation have posted many times by Indiana Intellectual Property Law News including:

GS Cleantech Files Patent Infringement Lawsuit Against Flottweg in Indiana

Multiple Patent Infringement Suits Brought by Greenshift Consolidated in Indiana

GS CleanTech Sues Iroquois Bio-Energy for Patent Infringement

Cardinal Ethanol Sued by GS Cleantech for Patent Infringement

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New Albany, IN – Magistrate Judge William G. Hussmann of the Southern District of Indiana has denied a Motion to Quash Subpoena filed by Defendant Doe No. 2 in First Time Video v. Indiana John Does 1-18. A copyright infringement attorney had filed a motion to quash subpoena on behalf of John Doe Number 2. Copyright lawyers for First Time Video did not know the names and addresses of the person who allegedly committed copyright infringement by downloading adult videosThumbnail image for Thumbnail image for BitTorrentPicture.JPG and had named 18 “John Does” when the suit was filed. First Time Video then served subpoenas on the internet service providers seeking the names and addresses of certain IP addresses which were alleged to have downloaded the copyrighted works. John Doe 2’s copyright attorney argued that the internet service provider subpoena should be quashed because it sought protected information and the subpoena was unduly burdensome.

The court’s order denied the motion to quash, meaning the internet service providers can be expected to turn over the names and addresses of the subscribers with the IP addresses that First Time has identified. The court’s order also reveals that John Doe 2 claims to be a woman who denies downloading the adult video. While denying the motion to quash, the Court made a very interesting notation at the end of the order:

The Magistrate Judge notes Doe No. 2’s concerns that the disclosure of her identity can lead to unwarranted embarrassing public disclosures, extortion-like attempts to force settlements, or lawsuits brought against defendants who have no liability. Those concerns are not far-fetched. However, the Rules of Professional Responsibility and Rule 11 of the Federal Rules of Civil Procedure stand as barriers to such conduct. Plaintiff’s attorneys are admonished to carefully consider these rules before determining what use to make of the information garnered from the Subpoena.

This case was previously blogged about by Indiana Intellectual Property Law News when it was filed. This is one of three suits currently pending in the Southern District of Indiana that are copyright infringement suits alleging infringement of adult videos by Indiana John Does using the BitTorrent“distribution protocol”.

Practice Tip: Pursuant Federal Rule of Civil Procedure 45(c)(3), the Court could quash a subpoena if it requests protected information or if it is unduly burdensome. The court here noted “there is no expectation of privacy in Internet subscriber information because it has already been exposed to a third party, the Internet Service Provider.” Regarding the undue burden argument, the court noted “Courts that have addressed this issue have concluded that the issuance of a subpoena to the Internet Service Provider of putative defendants does not create an undue burden on the putative defendants because they are not required to produce anything.”

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Indiana patent attorneys obtained issuance of the following 105 patents from the US Patent Office to persons and businesses in Indiana in September, 2011:
PAT. NO. Title
1 D645,908 Wall mounted sign 
2 D645,906 Literature holder 
3 D645,905 Literature holder 
4 8,026,822 Networked pest control system 
5 8,026,821 System for monitoring caregivers and equipment at a patient location 

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Washington, DC – On Monday, October 3, 2011, the U.S. Supreme Court Thumbnail image for Thumbnail image for US Supreme Court.jpgopened its session and refused to review several appellate decisions in patent, trademark and copyright cases. These included the following cases:

Lockwood v. Sheppard, Mullin, Richter, & Hampton, LLP., U.S., No. 10-1339.

The Federal Circuit summarily affirmed a district court dismissal of a patent owner’s malicious prosecution suite against the patent attorney that requested the USPTO to reexamine his patents. The patent owner had alleged, among other things, that the law firm filed a sham reexamination request with misrepresentations of the prior art. The district court held that the state law claims were essentially allegations of fraud and bad faith before the USPTO, preempted by federal law under Buckman Co. v. Plaintiffs’ Legal Committee, 531 U.S. 341 (2001). The district court also found the claims over the 2003 reexamination request barred by the two-year statute of limitations.

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Indianapolis, IN – Magistrate Judge Debra McVicker Lynch of the Southern District of Indiana has issued a decision in a discovery dispute in a copyright infringement lawsuit. Intellectual property attorneys for Kevin B. McCarthy of Indianapolis, Indiana, Albert H. Langsenkamp, Carmel, Indiana and BVM Foundation, Inc. of Batesville, Indiana had filed a lawsuit in the Southern District of Indiana making several claims against that Patricia Ann Fuller, also known as Sister Joseph Therese of Fostoria, Ohio and John Doe of Ohio. Ms. Fuller apparently has counterclaimed claiming trademark and copyright ownership of the copyrighted work OUR LADY OF AMERICA. Ms. Fuller apparently operates the website www.ourladyofamerica.com.

The Our Lady of America copyrighted works are drawings and statutes based upon a nun’s visions of the Virgin Mary that began in the 1950s. According to the complaint filed in the case, Ms. Fuller claims she owns the copyright to one of theOurLadyofAmerica.jpg Our Lady of America statute and the parties dispute the ownership. The plaintiffs disagree and believe Ms. Fuller is making numerous misrepresentations regarding the works and is fraudulently representing herself as the owner of the works and marks. In the original complaint, the plaintiffs made claims of defamation, intentional infliction of emotional distress, fraud, deception, theft, criminal conversion, and civil conspiracy. It appears that Ms. Fuller is claiming copyright and/or trademark rights to the images and statutes. The court’s discovery orders require her to disclose information such as “how the representation of the Virgin Mary was being used as a trademark in 1960.

Practice Tip: It appears that Ms. Fuller provided vague answers to numerous interrogatories sent to her. Federal Rule of Civil Procedure 26(e)(1)(A) requires parties to supplement their answers to discovery questions when the party learns that an answer provided is incomplete or incorrect.
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Indiana Intellectual Property: IP Litigation, Patents, Trademarks, Copyrights
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