Indiana Intellectual Property Law News

February 13, 2020

Federal Circuit finds in favor of Seirus Innovative over Columbia Sportswear

The United States Court of Appeals for the Federal Circuit issued an opinion as to Summary Judgment in the case of Columbia Sportswear North America, Inc. (“Columbia”), an Oregon Corporation, versus Seirus Innovative Accessories, Inc. (“Seirus”), a Utah Corporation. This appeal by Columbia came after a jury trial in the U.S. District Court for the Southern District of California found that claims 2 and 23 of U.S. Patent 8,453,270 (the “’270 Patent”) are invalid as anticipated and obvious. Seirus cross-appealed from the U.S. District Court for the District of Oregon’s grant of summary judgment that it infringes U.S. Patent D657,093 (the “’093 Patent”) and from the entry of the jury’s damages award. The Court of Appeals found claims 2 and 23 of the ‘270 Patent are invalid and that the Court for the District of Oregon erred in granting summary judgment for infringement of the ‘093 Patent.

Columbia originally filed suit in the District of Oregon on January 12, 2015 claiming that Seirus infringed both the ‘270 and ‘093 Patents. Seirus moved to transfer the case to the Southern District of California, but that motion was denied. The district court then “granted summary judgment that Seirus’s HeatWave products infringe the ‘093 patent” stating that “the difference in wave pattern, orientation, and the presence of Seirus’s logo” were characterized as “minor differences.” Seirus moved to transfer the case to the Southern District of California for a second time, two years after its first motion, in light of the decision in TC Heartland LLC v. Kraft Foods Grp. Brans LLC, 137 S. Ct. 1514 (2017). Due to the intervening case law, the District of Oregon transferred the remainder of the claims to the Southern District of California.

A jury trial was held in the Southern District of California and claims 2 and 3 of the ‘270 Patent were found to be invalid as anticipated and obvious. The jury also awarded Columbia $3,018,174 in damages for non-willful infringement of the ‘093 Patent. Both Parties “filed post-trial motions for judgment as a matter of law and for a new trial, but the court summarily denied them in a two-page opinion.” Subsequently, the Parties each filed notices of appeal.

The court’s denial of the motions for judgment as a matter of law is reviewed by the substantial evidence standard. “A jury’s verdict must be upheld if supported by substantial evidence.” OTR Wheel Eng’g, Inc. v. W. Worldwide Servs. Inc., 897 F.3d 1008, 1015 (9th Cir. 2018) (citing Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980, 984 (9th Cir. 2017). The court’s denial of a motion for a new trial is reviewed for an abuse of discretion. Molski v. M.J. Cable, Inc., 481 F.3d 724, 728 (9th Cir. 2007). The granting of a new trial may only be done “if the verdict is contrary to the clear weight of the evidence, is based upon false or perjurious evidence, or to prevent a miscarriage of justice.” Passantino v. Johnson & Johnson Consumer Prods., Inc., 212 F.3d 493, 510 n.15 (9th Cir. 2000). Continue reading

February 11, 2020

I’m Speaking at the Center for Intellectual Property Law: Reversal of Fortunes: Indianapolis Skyline Photo and $1,000,000 Damages (Copyright Litigation of the Year)

By Overhauser Law Offices, LLC

On February 18, 2020 at 12:45 pm, I will be speaking at IUPUI Center for Intellectual Property Law at Inlow Hall, Room 259. Reversal of Fortunes: Indianapolis Skyline Photo and $1,000,000 Damages (Copyright Litigation of the Year). This is a free event, however registration is required.

More information about my speech to IUPUI on February 18, 2020, Click here.

February 10, 2020

Patent Office Issues 171 Patents To Indiana Citizens in January 2019

By Overhauser Law Offices, LLC

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.

The U.S. Patent Office issued the following 171 patent registrations to persons and businesses in Indiana in January 2020, based on applications filed by Indiana patent attorneys:

D0839493	Latch clip for a door assembly of an animal enclosure
D0839492	Clip for a door assembly of an animal enclosure
D0839391	Faucet handle
D0839390	Faucet
D0839139	Compartment lid
D0839034	Furniture spine unit
D0839033	Conference table
10,192,029	Secure and scalable mapping of human sequencing reads on hybrid clouds
10,191,073	Apparatus and method for processing at least one sample
10,190,988	Methods of laser welding disposable diagnostic test elements

February 7, 2020

Indiana-Based Orthotict Sued for Alleged Patent Infringement and Patent False Marking

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, ERMI LLC (“ERMI”) of Atlanta, Georgia, filed suit in the Southern District of Indiana alleging that Defendants, Clyde Peach, Jr., (“Mr. Peach”) d/b/a Indiana Brace Co Inc., d/b/a, Clyde Peach LLC, d/b/a Peach Medical, LLC of Indianapolis, Indiana, willfully infringed its rights in United States Patent No. 6,669,660 (the “‘660 Patent”) for “Orthotic Apparatus and Method for Using Same.” ERMI is seeking damages, costs, attorneys’ fees, pre-judgment and post-judgment interest, and any other relief the Court deems proper.

According to the Complaint, Dr. Thomas P. Branch (“Dr. Branch”) while practicing as a board certified orthopedic surgeon with TREX Orthopedics, P.C., invented the orthotic apparatus claimed in the ‘660 Patent. Dr. Branch allegedly assigned all rights to the continuation patent application that led to the issuance of the ‘660 Patent to ERMI. The ‘660 Patent expired on August 10, 2019. ERMI claims it produces and sells the ERMI Knee Extensionater® device that is covered by the claims of the ‘660 Patent and marked with the ‘660 Patent number.

ERMI claims Mr. Peach filed a provisional followed by a non-provisional patent application (the “Peach ‘028 Application”) for a Knee Extension Therapy Device in July 2010 and July 2011, respectively. The Peach ‘028 Application was allegedly rejected by the United States Patent and Trademark Office on August 2, 2013 citing a number of patent references including the ‘660 Patent. ERMI claims the Peach ‘028 Application became abandoned on September 11, 2014 and that “Mr. Peach had actual notice of the ‘660 Patent no later than August 2, 2013.”

February 6, 2020

Indiana Trade Secret Litigation: Eli Lilly and Company Seeks Declaratory Judgment of Non-Misappropriation of Trade Secrets

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Eli Lilly and Company (“Lilly”) of Indianapolis, Indiana, filed suit in the Southern District of Indiana seeking a declaratory judgment that Lilly did not misappropriate any trade secrets of Defendant, SensorRx, Inc. (“SensorRx”) of Charlotte, North Carolina, or breach a contract with SensorRx. Lilly is seeking declaratory judgment, costs, attorneys’ fees, litigation expenses, and any other relief the court deems proper.

According to the complaint, Lilly has developed an app to help manage migraines called Vega™ Migraine. Lilly claims it created the app over the course of two years, it released the app on the Apple App Store on November 5, 2019, and the app is currently available for a free download, on a limited basis. Previously, Lilly has allegedly developed other mobile apps including “Go Dose,” a diabetes management and insulin dosing app, which helped Lilly gain experience to create and develop Vega™ Migraine. Lilly claims there are over fifty migraine management and other migraine related apps available to the public and many other health apps directed to various health conditions.

Lilly alleges it began having non-confidential discussions regarding SensorRx’s app, MigrnX™, in mid to late 2018 during which SensorRx discussed the capabilities of the app and demonstrated the app’s usage to Lilly. During the parties’ second in-person meeting in January 2019, they allegedly entered into a Mutual Confidentiality Agreement (“MCA”). Per the complaint, the MCA noted any information already known, becomes known to the public, has been lawfully received without restriction, or has been independently developed without use of confidential information, is not confidential information. Lilly claims due diligence was performed by both parties subsequent the signing of the MCA. After being concerned throughout the process and disappointed after the due diligence was conducted in the level of quality and capability of MigrnX™, Lilly alleges it contacted a representative of SensorRx on or about May 28, 2019 to terminate the due diligence. Continue reading

February 5, 2020

Indiana Trademark Litigation: Baskin-Robbins Sues Franchisees for Alleged Breach of Contract and Trademark Infringement

By Overhauser Law Offices, LLC

Evansville, Indiana – Attorneys for Plaintiff, Baskin-Robbins Franchising LLC and BR IP Holder LLC (collectively “Baskin-Robbins”), both of Canton, Massachusetts, filed suit in the Southern District of Indiana against Defendants, Radhakrishna LLC (“Radha”) of Indianapolis, Indiana, Naik’s, LLC (“Naik’s”) of Louisville, Kentucky, and Mukesh Naik, a citizen of Indiana (collectively “Defendants”), alleging breach of contract, trademark infringement, trade dress infringement, and unfair competition. Baskin-Robbins is seeking injunctive relief, judgment, including statutory damages, and attorneys’ fees.

According to the Complaint, Baskin-Robbins, along with its franchisees, currently operate more than 7,800 shops worldwide and have been in business for over seventy years. BR IP Holder LLC claims to own numerous registrations for marks relating to “Baskin-Robbins” and derivations thereof, most of which are incontestable under 15 U.S.C. § 1065. Baskin-Robbins further claims that the public knows and recognizes their marks due to the extensive sales and marketing Baskin-Robbins has done while in business.

It is alleged that Mukesh Naik, individually, entered a franchise agreement for PC 361694 on or about September 14, 1998; Radha entered into a franchise agreement for PC 351607 on or about August 10, 2013; and Naik’s entered into two franchise agreements for PC 353400 and PC 360506 in 2014 (collectively the “Franchise Agreements”). Each of the alleged Franchise Agreements were entered into between the Defendants and Baskin-Robbins Franchising LLC to operate Baskin-Robbins shops and each were allegedly personally guaranteed by Mukesh Naik. Baskin-Robbins claims that the Defendants defaulted under the Franchise Agreements and after three separate failures to cure their defaulting actions, were each sent a Notice of Termination. According to the Complaint, Defendants have continued using the Baskin-Robbins marks after the Notice of Termination was received by each Defendant, in breach of the Franchise Agreements.

February 3, 2020

191 Trademark Registrations Issued to Indiana Companies in January 2020

By Overhauser Law Offices, LLC

The U.S. Trademark Office issued the following 191 trademark registrations to persons and businesses in Indiana in January 2020 based on applications filed by Indiana trademark attorneys:

Registration No.	Word Mark
5974325	S~CURVE
5973146	FLYING SWINE
5974308	MICHIANA VIP MD
5973023	MATHOO’S
5972954	KYNGIN

January 31, 2020

Indiana Trade Secrets Litigation: Dow AgroSciences LLC and Phytogen Seed Company, LLC Sue Two Former Employees for Alleged Misappropriation of Trade Secrets

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiffs, Dow AgroSciences LLC (“Dow”) of Indianapolis, Indiana and Phytogen Seed Company, LLC (“Phytogen”), a Delaware limited liability company, filed suit in the Southern District of Indiana alleging that Defendants, Robert Lemon and Sotero Ramirez, both residents of Texas, infringed their rights under the Defend Trade Secrets Act of 2016, 18 U.S.C. § 1831, et seq. Plaintiffs are seeking permanent injunctions, judgment, compensatory damages, attorney’s fees, costs, and other relief the Court deems proper.

Dow claims to be an industry-leading agricultural chemical and seed company working on innovative ways to increase farm yield and create productive seeds while emphasizing sustainability. Phytogen claims to sell cottonseed under the trade name PhytoGen®, primarily in the southern United States. According to the Complaint, Dow and Phytogen have a mutual controlling member, Mycogen LLC, that allows Dow to provide services to Phytogen via a Service Agreement. Those services allegedly include allowing Dow’s employees to sell PhytoGen® cottonseed.

According to the Complaint, Lemon and Ramirez were both employed by Dow until September 5, 2019. At some point during or before Lemon and Ramirez terminated their employment with Dow, they allegedly both signed Loyalty and Confidentiality Agreements with Plaintiffs (“Agreements”) which included non-compete and non-disclosure agreements. Ramirez allegedly worked for Dow as a Territory Manager and Lemon was a PhytoGen® Cotton Development Specialist, supporting Ramirez and three other Territory Managers.

Prior to giving their two weeks’ notice and resignation from Dow to work for a direct competitor, Americot, Plaintiffs allege Lemon and Ramirez knew of and planned their departure for weeks. Lemon and Ramirez also allegedly lied about the positions they were taking with Americot and told Dow Representatives that they would not be working in similar positions for their new company. Following the resignations, Dow claims it took possession of the Defendants’ company property including their laptops and cell phones.

After an investigation took place, Dow claims it found evidence that the Defendants had attended important, proprietary, strategy meetings after they had received their job offers. Dow further claims the Defendants had deleted and/or transferred information, including proprietary and confidential information, from their company laptops and phones to other devices, including USBs, which were not turned in to Dow. Finally, Dow claims it has text message evidence that shows Lemon planning to utilize training materials developed by Dow in his employment at Americot and shows the Defendants planning to take and utilize contact information for their current clients.

As such, Dow and Phytogen are seeking judgment and damages for the misappropriation of trade secrets against both Defendants pursuant to the Defend Trade Secrets Act of 2016, 18 U.S.C. § 1831, et seq., the Texas Uniform Trade Secrets Act, Tex. Civ. Code § 134A.001 et seq., and the Indiana Code § 24-2-3-1, et seq. Dow and Phytogen are also seeking damages from Lemon and Ramirez for breaching their Agreements.

January 30, 2020

Indiana Trademark Litigation: Jelly Belly Candy Company Sued for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Circle City Marketing & Distributing, Inc. d/b/a/ Candy Dynamics (“Candy Dynamics”) of Carmel, Indiana, filed suit in the Southern District of Indiana alleging that Defendant, Jelly Belly Candy Company (“Jelly Belly”) of Fairfield, California, infringed its rights in United States Trademark Registration No. 4,780,103 (the “‘103 Registration”) for “candy”. Candy Dynamics is seeking damages, costs, attorneys’ fees, expenses, and any other relief the Court deems proper.

Candy Dynamics claims it has sold candy for over twenty years and has offered various product lines including its TOXIC WASTE® line of sour candy. According to the Complaint, Candy Dynamics began using a two-tone pattern of alternating angled stripes (the “Hazard Stripe Mark”) for its advertising and packaging at least as early as 2001. Candy Dynamics claims that the Hazard Stripe Mark is inherently distinctive and it was therefore awarded trademark protection under the ‘103 Registration.

According to the Complaint, Jelly Belly has, with constructive knowledge of the Hazard Stripe Mark, advertised, promoted, and sold candy products, including its Bean Boozled product line using a “hazard stripe design” (the “Infringing Mark”). Candy Dynamics claims that on or about March 28, 2017, its counsel sent a letter to Jelly Belly informing it of the ‘103 Registration and alleged infringement. While Jelly Belly allegedly agreed to “phase out use of the solid stripe design,” Candy Dynamics claims Jelly Belly instead slightly modified its product by adding several “CAUTION” statements in front of the Infringing Mark and modified the width of the stripes. As such, Candy Dynamics is seeking damages for federal and common law trademark infringement and unfair competition pursuant to 15 U.S.C. § 1114 et seq., the common law, and 15 U.S.C. § 1125, respectively.

January 16, 2020

Indiana Trademark Litigation: CityMoms, Incorporated in Delaware, Seek Declaratory Judgment Against theCityMoms Greater Indianapolis LLC

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, CityMoms, Inc. (“CityMoms”) incorporated in the State of Delaware, filed suit in the Southern District of Indiana seeking a declaratory judgment that its use of “CityMoms” does not infringe the rights of Defendant, theCityMoms Greater Indianapolis LLC (“theCityMoms”) of Indianapolis, Indiana, or theCityMoms’ Trademark Registration No. 4,588,132 (the “‘132 Registration”) for “theCityMoms”. In the alternative, if there is a likelihood of confusion found between the two parties’ marks, CityMoms is claiming its use of the term predates that of theCityMoms. As such, CityMoms is seeking declaratory judgment of non-infringement, and in the alternative, injunctive relief, judgment including statutory damages, and attorneys’ fees.

According to the complaint, CityMoms conducts business online and offers, among other things, a mobile app and software system “that helps local businesses book unused spots in their kids’ activities programs and family events.” TheCityMoms is alleged to provide “a sisterhood for the modern mom” that offers a support network for moms, events and activities, and an official membership. CityMoms claims that theCityMoms has threatened to take action against it for trademark infringement and unfair competition and has interfered with CityMoms’ ability to sell its app to a third party.

CityMoms’ services are alleged to have begun in 2012 with theCityMoms filing its application for the ‘132 Registration on January 2, 2014. This application was given Serial No. 86156171 (the “‘171 Application”) and was filed for the goods and services of International Class 041, which includes “Educational and entertainment services, namely, providing motivational and educational speakers; Organizing, arranging, and conducting playdates, mom-only evenings, open play times, shopping parties, fitness classes, volunteering and cultural events”. The ‘171 Application was submitted with a statement by Melissa Kondritz and Jeanine Bobenmoyer that “theCityMoms” was used in commerce and related with the company at least as early as March 1, 2013. However, CityMoms claims that the domain name http://thecitymoms.org/ was not registered until March 8, 2013 and therefore could not have existed prior to that date. CityMoms further claims it has found no evidence theCityMoms provided motivational and educational speakers on or before January 2, 2014 as part of its business and therefore, the ‘171 Application was filed with “willfully false material statements that constituted fraud” and should make the ‘132 Registration invalid and unenforceable.