Indiana Intellectual Property Law News

November 4, 2011

Patent Lawsuit Filed Over Playground “Curved Rail Panels”

Evansville, IN – Parents try to protect their children from playground hazards. Now there is a new threat to watch out for – patent infringement.

Patent lawyers for Plaintiff, INDIAN INDUSTRIES, INC. d/b/a Escalade Sports of Evansville, IN, have sued Defendant RAINBOW PLAYSYSTEMS, INC. of Brookings, South Dakota alleging it has infringed patent no. 8,002,642, PLAYSET SYSTEM COMPONENTS, which has been issued by the US Patent Office.

The Complaint alleges that Rainbow’s “Turbo Sunshine Castle, Turbo Sunshine Clubhouse, Rainbow Castle Supersized, and King Kong Quarter Turned Club Playsets” infringe Indian’s “curved rail panels” feature. Although parents seek to protect their children from “playground injuries,” Indian alleges that the accused playsets cause it “irreparable injury.”

November 3, 2011

Update to Third Degree Films V. John Doe: Purdue Releases Student’s Name Who Is Accused of Copyright Infringement of Adult Film

By Overhauser Law Offices, LLC

Lafayette, IN – According to a report from the Associated Press, Purdue University has released the name of a student who is accused of illegally downloading an adult film from a dorm room internet connection. Last month, Indiana Intellectual Property Law and News reported on Magistrate Judge Andrew Rodovich of the Northern District of Indiana ruling that denied a motion to quash the subpoena that sought Purdue’s disclosure of the student’s name and address.

This Purdue student is one of 2,000 internet subscribers that Third Degree Films, Inc. of California alleges have committed copyright infringement by illegally downloading adult videos. Third Degree did not know the identities of the persons who allegedly illegally downloaded the copyrighted work, but did have the internet protocol (I.P.) address. Third Degree has served subpoenas on internet services providers attempting to uncover the identities of the subscribers with the specified I.P. addresses. The underlying copyright infringement lawsuit was filed by copyright attorneys for Third Degree in the Northern District of California. Several similar copyright infringement cases are currently pending in Indiana district courts.

The Purdue student had filed a motion to quash the subpoena issued on Purdue, arguing that the subpoena sought confidential information and was burdensome.

Practice Tip: Typically in a case like this, once the identity of the I.P. subscriber is learned, the copyright attorneys for the film company will send a letter to the person seeking a settlement and threatening to sue the person if a settlement is not reached.
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November 2, 2011

Borg Warner Sues Cummins for Patent Infringement of Turbocharger Wheel Design and Methods

By Overhauser Law Offices, LLC

Asheville, NC – Patent attorneys for Borg Warner, Inc. of Auburn Hills, Michigan and Borgwarner Turbo Systems, Inc. of Arden, North Carolina have filed a patent infringement suit in the Western District of North Carolina alleging Cummins, Inc. of Columbus, Indiana, Cummins Turbo Technologies Limited of the United Kingdom, and Cummins Turbo Technologies of North Charleston, South Carolina BW Turbochargers.jpg infringed patent no. 6,904,949, Method of making turbocharger including cast titanium compressor wheel; along with patent no’s. 6,629,556 and 6,663,347, Cast titanium compressor wheel, which have been issued by the US Patent Office. These patents are known collectively as “the Borg Warner Compressor Wheel Patents”.

The patents at issue are designs for and methods of manufacturing titanium compressor wheels for use in turbocharger applications. Bloomberg.com described the technology “directing air into an engine’s manifold.” The complaint alleges that Cummins infringes the Borg Warner patents by importing, making, selling, and offering for sale devices created by the patented methods. Borg accuses Cummins of directing its foundries to use the patented methods. The complaint makes three claims of patent infringement and seeks an injunction, damages and attorney fees.

Practice Tip: According to Reuters.com, patent lawyers for Borg Warner filed a similar patent infringement lawsuit against Honeywell, which resulted in a $32.5 million settlement in favor of Borg Warner.
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October 31, 2011

Preview of U.S. Supreme Court Patent Infringement Case Mayo Collaborative Services v. Prometheus Labs

By Overhauser Law Offices, LLC

Washington, D.C. – The United States Supreme Court will hear an important patent infringement case this term that will determine the scope of patent rights in certain medical methods. Patent lawyers for Prometheus Laboratories, Inc. of San Diego, California filed a patent infringement suit against Mayo Collaborative Services, doing business as Mayo Medical Laboratories of Rochester, Minnesota, alleging that Mayo infringed patent no. 6,355,623, Method of treating IBD/Crohn’s disease and related conditions wherein drug metabolite levels in host blood cells determine subsequent dosage and patent no. 6,680,302, Methods of optimizing drug therapeutic efficacy for treatment of immune-mediated gastrointestinal disorders which have been issued by the US Patent Office.

The patents at issue involve claims over an observed correlation between certain blood tests and patient health, specifically the correlation between the level of certain drug metabolites in the patient’s blood and the patient’s symptoms of gastrointestinal disease. As characterized by Mayo in its brief to the Supreme Court, the inventors did not “invent” these correlations; rather, they simply observed the correlations in a patient population. Based on the patents, Prometheus brought a blood test product called Pro-Predict to the market. The level of metabolite in the patient’s blood can give the treating physician information relevant to adjusting the patient’s dose of certain medications. Mayo improved upon Prometheus’s blood test product and later released its own competing product. Patent attorneys for Prometheus then initiated this lawsuit, alleging that Mayo had infringed its patents. Mayo has attempted to defend the suit by arguing that Prometheus’s patent claims were not patent-eligible under 35 U.S.C. § 101. The Court of Appeals for the Federal Circuit has twice ruled in Prometheus’s favor.

The oral argument is scheduled for December 7, 2011 at the United States Supreme Court. The briefs can be found on the American Bar Association’s preview page for the case. A number of amicus curiae briefs have been filed as well. Notably, the American Medical Association filed an amicus brief in support of Mayo.

October 28, 2011

Southern District Court Grants Partial Summary Judgment for Eli Lilly and Company in Dispute With Parkinson’s Disease Drug Licensee Over Products Liability Lawsuit

By Overhauser Law Offices, LLC

Indianapolis. IN – Judge Tanya Walton Pratt of the Southern District of Indiana has granted a Partial Summary Judgment for Eli Lilly and Company of Indianapolis, Indiana in a dispute with licensee Valeant Pharmaceuticals International of Irvine, California involving the costs associated with product liability lawsuits over Lilly’s Parkinson’s disease drug.

Lilly began selling a product called Permax, which is used to treat Parkinson’s disease, in 1989. In March 2002, Lilly entered an exclusive licensing agreement with Amarin Corporation allowing Amarin to market, use and sell Permax in the United States, including the licensed use of Permax trademarks. The parties’ license agreement prohibited either party from assigning rights or obligations under the contract to any third party absent written consent of the other party. In 2004, Valeant purchased the assets of Amarin, including the rights under the Permax license. Lilly provided written consent to this assignment in a letter agreement that also addressed costs and indemnification relating to defending a pending products liability lawsuit involving Permax. The present lawsuit was filed when a dispute arose between Lilly and Valeant over the costs and indemnification relating to the products liability lawsuit. After settlement of one of the products liability cases, Valeant refused to indemnify Lilly. Lilly sought a declaratory judgment requiring Valeant to pay certain litigation and settlement costs relating to the products liability suit.

In the court’s decision, Judge Pratt found that the parties’ contract was clear and unambiguous in providing a schedule for sharing costs associated with the product liability suit. Thus Valeant must pay Lilly pursuant the schedule in the contract.

Practice Tip: This case illustrates that license agreements, which grant the licensee limited rights to use the intellectual property, owned by the licensor, can come with additional responsibilities and obligations. It is important to have an intellectual property attorney draft and review license agreements to ensure that the parties understand what is included.
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October 27, 2011

Minka Lighting Sues Fanim Industries, Fanimaton, Inc, and Lowe’s for Patent Infringement of Ceiling Fans

By Overhauser Law Offices, LLC

Indianapolis, IN – Patent lawyers for Minka Lighting, Inc. of Corona, California filed a patent suit in the Southern District of Indianaalleging Fanim Industries, Inc. of Zionsville, Indiana, Fanimation, Inc. of Indianapolis, Indiana and Lowes Companies, Inc. of Mooresville, North Carolina infringed Patent no. 7,481,626 Ceiling fan with integrated fan blades and Housing, Patent no. D535,387 Ceiling fan blade assembly, and Patent no. D535,388 Ceiling fan blade which have been issued by the US Patent Office.

Minka manufactures, markets and sells home products including ceiling fans, and Fanim is a competitor in the ceiling fan industry. Lowe’s distributes and markets ceiling fans and is also a competitor of Minka. The complaint alleges that Fanim and Lowe’s sell a line of ceiling fans called the “Goldey” that infringes the ‘626, ‘387 and ‘388 patents. The complaint makes three claims of patent infringement and seeks damages, an injunction, attorney fees and costs.

Practice Tip: According to PACER, Minka sued Fanimation in the Southern District of Indiana in 2009 also alleging that Fanimation infringed the ‘626 patent. In the 2009 case, the parties agreed to dismiss the case with prejudice. The stipulation of dismissal referenced that Minka was in the process of applying for re-issue of the ‘626 patent.
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October 26, 2011

Copyright Infringement Suit Filed Over Course Materials for “Recovering Money From Taxing Authorities”

By Overhauser Law Offices, LLC

Hammond, IN – Copyright attorneys for Abandoned Property, LLC have filed a copyright infringement suit against Netcentric Publishing. LTD. and Stacie Kellams and others. The lawsuit alleges that Abandoned Property developed a course called “We’re hooked on overages” that teaches people how to recover amounts owed to them by various taxing authorities. Allegedly, the Defendants “purchased a copy of Plaintiff’s phenomenal course in January, 2010, but did so under what appears to be an alias, “Luke Matthews.””The complaint then alleges that the Defendants began selling a competing Course that was “identical” to the Plaintiff’s Course for $997.00 each.

The suit alleges various causes of action including Copyright Infringement, Misappropriation of Trade Secrets, Breach of Contract, Fraudulent Inducement, Declaratory Judgment and “Vicarious Liability.”

This may be a retaliatory suit. On July 18, 2011, Netcentric Publishing’s lawyer filed a suit against Abandoned Property and Joe Kaiser in Austin, Texas asserting claims for business disparagement, defamation, fraud, and tortious interference with existing and prospective business relationships. That case is in the Western District of Texas, Cause No. 1:11-cv-602.

Practice Tip: Plaintiffs complaint appears to suffer from several defects. It does not explicitly allege that the Plaintiff owns a Copyright Registration for its work, which is a prerequisite to filing a copyright infringement suit pursuant to 17 U.S.C. § 412. Also, it will be interesting to see how the Plaintiff can contend that its Course is a “trade secret,” in view of the fact that they make their Course available for purchase over the Internet. It is also not evident how the Plaintiff expects to assert personal jurisdiction over the defendants, who are in Texas.

October 25, 2011

American Petroleum Institute Sues Tailor Made Oil Co., LLC for Trademark Infringement of Engine Oil Quality Certification Mark

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark lawyers for American Petroleum Institute (“API”) of Washington, D.C. filed a trademark infringement suit in alleging Tailor Made Oil Co., LLC of Cambridge City, Indiana, TMO Oil, LLC of Fishers, Indiana, Circle Town Oil of Fishers, Indiana, William R. Selkirk and Rebecca Selkirk of Cambridge City, Indiana, Lincoln R. Schneider of Fishers, Indiana and Jafarikal Corporation of Rosedale, New York infringed trademark registration no. 1,864,428 for the AMERICAN PETROLEUM INSTITUTE CERTIFIED STARBURST registered with the US Trademark Office.

The trademark at issue is a starburst mark used by API to designate that products have met certain quality standards, which are monitored and enforced continuously. The complaint alleges that the individual defendants own and operate the corporate defendants as an interrelated business that offers low quality engine oil for sale. In March 2010, Tailor Made obtained certification for its engine oil, and a one year license to use the starburst mark on its products. In order to renew the one year license, Tailor Made was required to report its sales and to pay a renewal fee to API. Tailor Made failed to comply with these requirements and has continued to sell products bearing the trademarked starburst without authorization.

The complaint also states that API obtained a sample of the engine oil in April 2011 and found that the oil did not meet API’s quality standards. API claims that Tailor Made and Circle Town maintain websites that falsely advertise that their engine oil meets the API quality standards. Jafarikal is a distributor of Tailor Made Oil products and also advertises that Tailor Made’s products meet or exceed API’s standards. API has made claims of trademark counterfeiting under the Lanham Act, trademark infringement, false advertising, unfair competition, trademark dilution, breach of contract, common law trademark infringement and unfair competition, fraud and forgery. API is seeking an injunction, statutory damages of $1,000,000 per type of good sold, seizure and destruction of any infringing products, actual and treble damages, attorney fees and costs.

Practice Tip: Here, API has cited 15 U.S.C. § 1117(c)(2) for its request of statutory damages for each class of goods sold with a counterfeit mark. This section of the Lanham Act caps damages at $2,000,000 for willfully selling, offering, or distributing a type of good with a counterfeit mark.
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October 24, 2011

Saeilo Sues Jacobson Hat Co. in Hamilton County for Trademark Infringement of Toy Tommy Guns: Case Removed to Federal Court

By Overhauser Law Offices, LLC

Indianapolis, IN – A trademark infringement case that was originally filed in Hamilton County Superior Court has been removed to the Southern District of Indiana. On September 14, 2011 trademark lawyers for Saeilo Enterprises, Inc. Pearl River, New York filed a trademark infringement suit in Hamilton County alleging Jacobson Hat Company, Inc. of Scranton, Pennsylvania infringed trademark registration no.2,885,628 for the words TOMMY GUN registered with the US Trademark Office and 20090707-13956, 20090707-13957 and 20090707-13958 for TOMMY GUN design registered trademarks in the State of Indiana State. Trademark attorneys for Jacobson filed notice of removal to have the case heard by the federal Southern District of Indiana, rather than the Hamilton County court, based upon the fact that Saeilo makes federal law trademark infringement claims.

The complaint alleges that Jacobson has distributed, advertised or sold toy guns bearing the Tommy Gun trademarks without Saeilo’s authorization. The complaint does not reveal any details of the allegedly infringing sales, advertising or distribution. However, a print-out of Jacobson’s website, dated October 2009 was attached to the complaint. The complaint makes claims of trademark infringement, trademark dilution, false designation of origin, false advertising, trade dress infringement, common law trademark infringement, unfair competition, counterfeiting, and Indiana state law trademark infringement.

Practice Tip: This is the third trademark infringement case in the past several months that Saeilo filed in Hamilton County court, only to be removed to federal court. In all three cases, Continental Enterprises, which is an Indianapolis corporation that claims to “non-traditional strategies to combat infringers domestically and around the globe and provide effective solutions for seemingly intractable IP problems,” has represented Saeilo. Indiana Intellectual Property Law and News has blogged about the two other cases: one was against BuzzBee Toys and the other was against Scottwerx. According to PACER, trademark attorneys have reached a settlement in the Buzz Bee case. The terms of the settlement are undisclosed. The Scottwerx case is still pending.
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October 20, 2011

Federal Circuit Court Grants Injunction in Patent Infringement Suit Over Windshield Wiper Blade Technology

By Overhauser Law Offices, LLC

Washington, D.C. — The Honorable Circuit Judges Kathleen O’Malley, Jimmie V. Reyna and William C. Bryson of the U.S. Court of Appeals for the Federal Circuit have issued a permanent injunction in a patent infringement lawsuit, overruling the denial of the injunction by the District Court of Delaware. Patent lawyers for Robert Bosch LLC of Farmington Hills, Michigan, who had filed a patent infringement lawsuit in the District Court of Delaware alleging that Pylon Manufacturing Corporation of Deerfield Beach, Florida, infringed patent no. 6,292,974 Glass wiper blade for motor vehicles, patent no. 6,675,434 Wiper blade for the glass surfaces of motor vehicles with an elongated, spring-elastic support element, and patent no. 6,978,512 Wiper blade for cleaning vehicle windows, which have been issued by the US Patent Office.

The technology at issue is a beam-type automobile windshield wiper blade that perform better than traditional windshield wipers. Pylon is a competitor windshield wiper blade manufacturer. Patent attorneys for Bosch filed this patent infringement lawsuit in 2008 in the District Court of Delaware. On March 31, 2010, the district court granted Pylon’s motion for summary judgment of noninfringement of the ‘512 patent, but denied summary judgment of noninfringement of the two other patents. The remaining issues were tried by jury, which found that claim 13 of the ‘974 and ‘434 patents had been infringed. Bosch then filed a motion for a permanent injunction. The district court denied the permanent injunction, and this ruling is the subject of the Federal Circuit court opinion today.

The Federal Circuit reversed the district court and issued the injunction. The court found that the district court made legal errors in applying the standard for a permanent injunction. The district court also erred in concluding that Bosch had not demonstrated an irreparable harm. Bosch introduced evidence of loss of market share and access to potential customers. The Federal Circuit found that this evidence did demonstrate an irreparable injury. Judge William C. Bryson dissented in part, stating he would have remanded the case to the district court to appropriately apply the correct standard.

Practice Tip: In this case, the Federal Circuit affirmed the standard for granting a permanent injunction in a patent infringement case. The patentee must make a four-part showing:

(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hard-ships between the plaintiff and the defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a per-manent injunction.

eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006). Prior to the eBay case, an injunction normally would issue when there a finding that a patent is valid and has been infringed. However, the Federal Circuit Court’s opinion today seems to bolster the availability of injunctions when patent infringement has been found.