Indiana Intellectual Property Law News

March 26, 2020

Motion to Disqualify: Patent Law Firm Tries to Cap Bottle Cap Suit

This suit is over the design of two bottle caps.

Plaintiff, Closure, claims it designed the bottle cap on the left, and Defendant, Novembal, got a patent on the bottle cap on the right. But Closure claims that it, not Novembal is the actual “inventor” of the bottle cap design. Perhaps fearing that Novembal was about to file suit, Closure in its home turf of New Jersey and trying to gain a home court advantage, took the initiative and sued Novembal in Indiana. Its Complaint sought to “correct the inventorship” of Novembal’s patent and to prevent Novembal from enforcing the patent against Closure. That suit is reported here: Closure Systems International Sues Novembal USA Seeking Correction of Inventorship. Not surpisingly, Novembal asserted a counterclaim for patent infringement.

The twist is that in the infringement counterclaim, Novembal seeks a broad injunction. So broad, that it would prevent not just Closure, but some of Closure’s customers from infringing the patent. In its counterclaim, Novembal seeks:

A permanent injunction enjoining CSI and its employees, agents, successors, partners, officers, directors, owners, shareholders, principals, subsidiaries, related companies, affiliates, distributors, dealers, and all persons in active concert or participation with any of them . . . from making, importing, promoting, offering, or exposing for sale, or selling the CSI Production Closures, or any other closures with designs confusingly similar to the claimed design of Novembal’s ‘442 patent.

One company that apparently gets its bottle caps from Closure is Nestle, one of the biggest sellers of bottled water. So far, no big deal. Except, Nestle is represented by the blue chip Washington DC patent law firm, Finnegan, Henderson, Farabow, Garrett & Dunner. Finnegan happens to be the same law firm that represents Novembal in the suit with Closure. So Finnegan is attempting to get an injunction for one client (Novembal) that would apply to another client, Nestle. Continue reading

March 23, 2020

Indiana Supreme Court Holds Liquidated Damage Provisions are Unenforceable Penalties

By Overhauser Law Offices, LLC

The Indiana Supreme Court affirmed the trial court on both issues on appeal in the case of American Consulting, Inc. d/b/a American Structurepoint, Inc. (“American”) versus Hannum Wagle & Cline Engineering, Inc., d/b/a HWC Engineering, Inc. (“HWC”), Marlin A. Knowles, Jr., Jonathan A. Day, David Lancet, and Tom Mobley, originally filed in the Marion County Superior Court.

Knowles, Day, Lancet, and Mobley were all previous employees of American. Mobley was granted summary judgment in his favor in the trial court so claims against him were not discussed on appeal. Each of the employees signed contracts precluding them from hiring or employing other American employees. These contracts each had clauses for liquidated damages upon breach set at 50% of the employee’s pay during the twelve months prior to the breach for Knowles and 100% of the employee’s pay during the twelve months prior to the breach for Day and Lancet.

March 12, 2020

174 Trademark Registrations Issued to Indiana Companies in February 2020

By Overhauser Law Offices, LLC

The U.S. Trademark Office issued the following 174 trademark registrations to persons and businesses in Indiana in February 2020 based on applications filed by Indiana trademark attorneys.

Overhauser Law Offices the publisher of this site, assists with US and foreign trademark searches, trademark applications and assists with enforcing trademarks via infringement litigation and licensing.

REGISTRATION NUMBER	WORD MARK
5998420	THIS IS THE MOST IMPORTANT PERSON IN THE WORLD
5997175	FUNCTIONAL DEVICES, INC.
5997114	FRUSHBURN
5995930	IT’S PROVEN, BECAUSE IT LASTS
5995226	COMBAT OPS
5994993	WEBWRAP
5994864	VICTORIA HARBOR
5994780	FUNCTIONAL DEVICES, INC. LIGHTING CONTROLS

March 12, 2020

Patent Office Issues 338 Patents To Indiana Citizens in February 2020

By Overhauser Law Offices, LLC

Patent Office Issues 338 Patents to Indiana Citizens in February 2020 in the U.S.

Patent Office Issued the following 338 Patent Registrations to persons and business in Indiana in February 2020, based on Applications filed by Indiana Patent Attorneys.

Overhauser Law Offices, the publisher of this site, assists with US and Foreign Patent Searches, Patent Applications and assists with enforcing patents via infringement litigation and licensing.

	Patent No.	Title
1	D0876,667	Rack for assay tips and assay cups
2	D0876,588	Faucet body
3	D0876,582	Faucet sprayer
4	D0876,203	Mounting bracket
5	D0876,101	Make-up brush
6	10,574,655	Networked access control system
7	10573943	System and method for thermally robust energy storage system
8	10573942	Fluid bath cooled energy storage system
9	10573443	Process for producing magnetic monodisperse polymer particles

March 10, 2020

Tatuyou Sues Indiana-Based One Ink Seven for Alleged Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana – Attorneys for Plaintiff, Tatuyou, L.L.C. (“Tatuyou”) of Hastings, Minnesota, filed suit in the Northern District of Indiana alleging that Defendants, One Ink Seven LLC (“One Ink”) of Goshen, Indiana and Robert F. Smead (“Smead”), infringed its rights in its intellectual property portfolio. Tatuyou is seeking damages,costs, and attorneys’ fees.

Tatuyou claims to be in the business of selling products to be used in the tattoo industry with an intellectual property portfolio all relating to its sales business. According to the complaint, Tatuyou is the owner by assignment of U.S. Patent No. 9,546,281 (the “‘281 Patent”) entitled “Tattoo Stencil Composition and Method for Manufacturing.” Tatuyou also claims to be the owner by assignment of U.S. Patent No. 8,545,613 (the “‘613 Patent”) entitled “Tattoo Transfer Pattern Printed by an Ink Jet Printer.”

According to the complaint, One Ink does business as “Electrum Supply” and owns and operates a website with the domain name: http://www.electrumsupply.com. Tatuyou claims that One Ink is infringing, actively inducing infringement, and contributorily infringing both the ‘281 Patent and the ‘613 Patent under 35 U.S.C. § 271 by offering for sale products named “Electrum Premium Tattoo Stencil Primer,” “Electrum Gold Standard Tattoo Stencil Primer,” “NOX Violet,” and “Eco Stencils.” Tatuyou’s attorney allegedly sent One Ink a letter on December 20, 2018 informing One Ink of the alleged infringement of the ‘281 Patent and a subsequent letter on June 12, 2019 to inform One Ink of the alleged infringement of the ‘613 Patent.

March 4, 2020

Brightlamp, Inc. of Indianapolis Sued for Alleged Patent Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, NeurOptics, Inc. (“NeurOptics”) of Laguna Hills, California, filed suit in the Southern District of Indiana alleging that Defendant, Brightlamp, Inc. (“Brightlamp”) of Indianapolis, Indiana, infringed its rights in United States Patent Nos. 6,820,979 (the “‘979 Patent”) and 9,402,542 (the “‘542 Patent” and collectively the “Asserted Patents”). NeurOptics is seeking preliminary and permanent injunctions, treble damages, attorneys’ fees, costs, and any other relief the Court deems proper.

Click Image for larger size

NeurOptics claims to be an industry leader for the design, manufacture, and sale of pupilometer products. According to the Complaint, NeurOptics owns the Asserted Patents that are both entitled “Pupilometer with pupil irregularity detection, pupil tracking, and pupil response detection capability, glaucoma screening capability, intracranial pressure detection capability, and ocular aberration measurement capability.” Brightlamp is allegedly a manufacturer and distributor of pupilometer products.

As claimed in the Complaint, Brightlamp’s “Reflex” Mobile Pupillometer Application (“Accused Product”) is available for download and use by certified medical professionals and the use of that application results in direct infringement of the Asserted Patents. NeurOptics also stated it believes Brightlamp has infringed various claims from other patents owned by NeurOptics and the Complaint is likely to be amended as it completes its investigation. NeurOptics claims it sent a cease and desist notice in writing to Brightlamp prior to filing the Complaint, but Brightlamp continued the alleged infringement. Therefore, NeurOptics is seeking damages for infringement of the ‘542 and ‘979 Patents pursuant to 35 U.S.C. § 271 with willful damages, fees, and costs pursuant to 35 U.S.C. §§ 284 and 285.

March 4, 2020

Patent Litigation:

By Overhauser Law Offices, LLC

The Supreme Court of the United States has issued an Opinion affirming the decision of the United States Court of Appeals for the Federal Circuit in the case of Laura Peter, Director of the United States Patent and Trademark Office, versus NantKwest, Inc. (“NantKwest”).

Following an adverse decision by the USPTO, an applicant may either appeal directly to the Federal Circuit, 35 U.S.C. § 141, or may file a new civil action against the USPTO Director in the United States District Court for the Eastern District of Virginia, 35 U.S.C. § 145. In this case, NantKwest filed a new civil action in the District Court. Under § 145, the applicant is required to pay “[a]ll the expenses of the proceedings.”

The District Court granted summary judgment for the USPTO affirming the denial of NantKwest’s patent application. The Federal Circuit then affirmed the decision of the District Court. Following this affirmation, the USPTO moved for the reimbursement of its expenses, “including the pro rata salaries of PTO attorneys and a paralegal who worked on the case.” The District Court denied the motion finding “that the statutory language referencing expenses was not sufficient to rebut the ‘American Rule’ presumption that parties are responsible for their own attorney’s fees.” That decision was affirmed by the en banc Federal Circuit.

February 27, 2020

Indiana Supreme Court Invalidates Non-Solicitation Clause

By Overhauser Law Offices, LLC

The Indiana Supreme Court has issued an Opinion finding the non-solicitation clause used by Zimmer invalid and unenforceable in the case of Heraeus Medical, LLC (“Heraeus”), et. al. versus Zimmer, Inc. (“Zimmer”), et al., originally filed by Zimmer in the Kosciusko Superior Court.

Robert Kolbe allegedly signed a noncompetition agreement (the “Kolbe Agreement”) shortly after transitioning into a new role with Zimmer that claimed to prohibit Kolbe from recruiting employees of Zimmer to work for a competitor. A couple years later, Kolbe terminated his employment with Zimmer, and went to work for a competitor of Zimmer, Heraeus. After Kolbe joined Heraeus, several of its positions were filled with former Zimmer employees. Zimmer then filed suit against Heraeus for violation of the Kolbe Agreement.

The trial court preliminarily enjoined Kolbe from recruiting Zimmer’s employees. On appeal, the Court of Appeals found the non-solicitation covenant was overbroad and thus unenforceable as written. However, it revised the non-solicitation covenant to make it “reasonable” by applying the covenant only to “those employees in which [Zimmer] has a legitimate protectable interest.” Heraeus Med., LLC v. Zimmer, Inc., 123 N.3d 158, 167-68 (Ind. Ct. App. 2019). Continue reading

February 19, 2020

Urschel Laboratories, Inc. of Chesterton, Indiana Sued for Alleged Patent Infringement

By Overhauser Law Offices, LLC

Hammond, Indiana – Attorneys for Plaintiff, FAM N.V. (“FAM”) of Belgium, filed suit in the Northern District of Indiana alleging that Defendant, Urschel Laboratories, Inc. (“Urschel”) of Chesterton, Indiana, infringed its rights in United States Patent No. D730,703 (the “D‘703 Patent”) entitled “Knife Holder”. FAM is seeking judgment, consequential and compensatory damages, attorneys’ fees and costs, pre-judgment and post-judgment interest, and any other relief the Court deems proper.

FAM claims to be a world leader in designing, developing, and manufacturing of cutting solutions for the food industry. According to the Complaint, the D’703 Patent was issued to Brent L. Bucks on June 2, 2015 and was later assigned to FAM. FAM alleges the “25883 Urschel® USA” product is an example of a knife holder that has infringed the D’703 Patent. Further, FAM claims Urschel’s alleged infringement of the D’703 Patent is “willful, deliberate, and objectively reckless.” As such, FAM is seeking damages pursuant to 35 U.S.C. § 284 or 35 U.S.C. § 289, and is requesting the case be considered “exceptional” under 35 U.S.C. § 285.

February 18, 2020

Indiana Trademark Litigation:Harley-Davidson Sues Harley Life, LLC for alleged Trademark and Copyright Infringement

By Overhauser Law Offices, LLC

Terre Haute, Indiana – Attorneys for Plaintiffs, H-D U.S.A., LLC and Harley-Davidson Motor Company Group, LLC (collectively “Harley”), both of Milwaukee, Wisconsin, filed suit in the Southern District of Indiana alleging that Defendants, Harley Life, LLC (“Harley Life”) and Bill Lemon (“Lemon” and collectively “Defendants”), both of Vincennes, Indiana, infringed their rights in U.S. Copyright Reg. No. VA 1-987-746 and the United States Trademark Registrations below (collectively “Harley’s Intellectual Property”).

Mark	Reg. No.	Goods and Services
HARLEY	1406876	Clothing; namely—tee shirts for men, women and children; knit tops for women and girls; and children’s shirts
HARLEY	1683455	Shirts, tank tops, boots and sweatshirts
HARLEY	1708362	Embroidered patches for clothing
HARLEY	1352679	Motorcycles
HARLEY	3818855	Non-luminous, non-mechanical tin signs, non-luminous, non-mechanical metal signs
	4465604	Clothing, namely, shirts, hats, caps, belts, jackets, gloves, sweatshirts, lounge pants, wrist bands
	3525970	Jackets, coats, gloves, shirts, shorts, caps, hats, headwear, knit hats, belts, neckties, pants, sweatshirts, T-shirts, leather clothing, namely, leather jackets, leather gloves, footwear, namely, boots and vest extenders