Indiana Intellectual Property Law News

March 14, 2019

Supreme Court Delineates What Costs May Be Recovered In Copyright Infringement Litigation

Washington D.C.- Attorneys for Oracle USA, Inc. and Oracle International Corporation (collectively “Oracle”) of Colorado and California, respectively, filed suit in the District Court of Nevada alleging that Rimini Street, Inc. and Seth Ravin, both of Nevada, infringed the copyrights for Oracle Software and Technology, which have been registered by the U.S. Copyright Office. A jury awarded damages to Oracle upon finding that Rimini had indeed infringed Oracle’s copyrights. The District Court awarded Oracle additional fees and costs, which included $12.8 million dollars for litigation expenses including costs for expert witnesses, e-discovery, and jury consulting. After the award of additional fees and costs was affirmed by the U.S. Court of Appeals for the Ninth Circuit, the U.S. Supreme Court held the additional costs were not appropriate under the Copyright Act.

The Ninth Circuit recognized that in granting the additional damages, they were covering expenses not included in the six categories of costs that the federal statutes, 28 U.S.C. §§ 1821 and 1920 authorize. However, they affirmed the District Court’s award based on the Copyright Act giving district courts discretion to award “full costs” under 17 U.S.C. § 505. The Supreme Court held that while the “term ‘full’ is a term of quantity or amount; it does not expand the categories or kinds of expenses that may be awarded as ‘costs’ under the general costs statute.” Therefore, Oracle was not entitled to the additional $12.8 million dollar award for litigation expenses outside of the six statutory categories.

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March 7, 2019

SCOTUS Rules That Registration Required to File Copyright Suit

By Overhauser Law Offices, LLC

Washington D.C.– The United States Supreme Court has ruled to affirm the United States Court of Appeals for the Eleventh Circuit’s decision against the Petitioner, Fourth Estate Public Benefit Corp. (“Fourth Estate”) of Delaware. The Petitioner originally filed a copyright infringement lawsuit in the Southern District of Florida, alleging that Wall-Street.com, LLC (“Wall-Street”) of Florida, infringed over 200 articles pending copyright registration.

Fourth Estate filed suit after Wall-Street failed to remove Fourth Street’s licensed works from its news website after Wall-Street canceled the Parties’ licensing agreement. Petitioner had filed to register its articles with the Copyright Office, but the articles had not been registered at the time the action commenced. Pursuant to 17 U.S.C. § 411(a), the District Court dismissed the complaint and the Eleventh Circuit affirmed holding there is no right to civil action for infringement of a copyright in the United States until registration has occurred, and merely filing an application for registration does not meet the registration burden under the statute. While the Register of Copyrights did refuse registration of the articles at issue in this case after the Eleventh Circuit Decision, that was not a factor in this decision.

An author gains rights including the right to reproduce, distribute, and display their work immediately upon the creation of the work pursuant to 17 U.S.C. § 106. However, generally before filing an infringement claim in court, the claimant must comply with the registration requirements of § 411(a). The exceptions to that rule are for those works that are vulnerable to predistribution infringement, typically movies or musical compositions, which are not found here. In this case, the Court had to decide if registration has been made pursuant to § 411(a) when the application, materials, and fee were submitted, or when the registration was granted by the Copyright Office. The Supreme Court in affirming the Eleventh Circuit’s Decision held that “registration has been made” under § 411(a) when the registration is granted by the Register of Copyrights after examination of a properly filed application.

March 7, 2019

Indiana Patent Litigation: Indiana Craft Company Sued for Patent Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana – Attorneys for Plaintiff, Ellison Educational Equipment of California, filed suit in the Northern District of Indiana alleging that Defendants, Heartfelt Creations, Inc. and DOES 1-10 of Goshen, Indiana, infringed its rights in the United States Patent No. 9,079,325 (the ‘325 Patent). Plaintiff is seeking a permanent injunction, punitive damages, compensatory damages, attorneys’ fees, and costs.

Ellison was founded in 1977 by a husband and wife who designed the first hand-operated die-cutting machine. Plaintiff has continued to provide innovations in the educational and craft markets ever since and even launched a new craft brand, Sizzix® in 2001. On July 15, 2011, Ellison filed a provisional patent application for a “Chemical-Etched Die Having Improved Registration Means.” The ‘325 Patent was issued stemming from the provisional patent application on July 14, 2015.

Heartfelt is alleged to have created patterns that are turned into chemically-etched dies and are used in conjunction with the method taught by the ‘325 Patent. Further, the company gives demonstrations on how to use the product in violation of the ‘325 Patent and teaches the public how to infringe the ‘325 Patent on Heartfelt’s YouTube channel. Ellison sent a cease and desist letter to Heartfelt based on Ellison’s beliefs Heartfelt was infringing the ‘325 Patent on December 21, 2018.

Plaintiff is claiming direct patent infringement pursuant to 35 U.S.C. § 271(a) with enhanced damages under 35 U.S.C. § 284. Second, it is claiming inducement of infringement pursuant to 35 U.S.C. § 271(b). Finally, Ellison is claiming contributory infringement pursuant to 35 U.S.C. § 271(c).

March 5, 2019

Indiana Trademark/Trade Dress Litigation: Baskin-Robbins Sues Indiana Company for Trademark and Trade Dress Infringement

By Overhauser Law Offices, LLC

Terre Haute, Indiana – Attorneys for Plaintiffs, Baskin-Robbins Franchising LLC, and BR IP Holder LLC (collectively “Baskin-Robbins”), both Delaware limited liability companies, filed suit in the Southern District of Indiana alleging that Defendants, Big Scoops Inc. and David M. Glasgow, Jr., both of Terre Haute, Indiana breached their Franchise Agreement with Baskin-Robbins by failing to pay required fees. By continuing to operate, Defendants are infringing Baskin-Robbins’ trade dress and numerous registered trademarks.

Baskin-Robbins Franchising is in the business of franchising independent businesses and people to operate Baskin-Robbins shops in the United States. The “Baskin-Robbins” trade name, trademark, and service mark are owned by BR IP Holder along with other related marks. Since October 14, 2015, Big Scoops has been the owner and operator of a Baskin-Robbins shop located in Terre Haute, Indiana pursuant to a Franchise Agreement with Baskin-Robbins. David M. Glasgow, Jr. personally guaranteed the obligations of Big Scoops under the Franchise Agreement.

Pursuant to its Franchise Agreement, Big Scoops was granted a license to use the trademarks, trade names, and trade dress of Baskin-Robbins, but only in the manner specified in the Franchise Agreement. The fees due to Baskin-Robbins from Big Scoops under the Franchise Agreement included a franchise fee equal to 5.9% of gross sales of the business, an advertising fee equal to 5.0% of gross sales of the business, late fees, interest, and costs on unpaid monies due under the Franchise Agreement, and all sums owing and any damages, interest, costs and expenses, including reasonable attorneys’ fees, incurred as a result of Big Scoops’ defaults. Under the Franchise Agreement, Big Scoops agreed that nonpayment of any of the required fees would be a default, that failure to pay within seven days after receiving written notice would be a continued default, and that receiving three notices of default within a twelve-month period would result in Baskin Robbins having the right to terminate the Franchise Agreement.

Plaintiffs sent Big Scoop three separate notices that it was in default of the Franchise Agreement for nonpayment on June 19, 2018, October 9, 2018, and December 7, 2018. As a result of these defaults and failure to cure after the December 7, 2018 notice, Baskin-Robbins sent Big Scoop a Notice of Termination with respect to the franchised business on February 12, 2019. Since receiving the Notice of Termination, Defendants have continued to operate the Baskin-Robbins shop and have used the Baskin-Robbins marks without authorization. Baskin-Robbins is claiming breach of contract, trademark infringement pursuant to 15 U.S.C. § 1114, unfair competition pursuant to 15 U.S.C. § 1125(a), and trade dress infringement pursuant to 15 U.S.C. § 1125.

March 4, 2019

Indiana Patent Litigation: Canadian Manufacturer Files Patent Infringement Suit in the Northern District of Indiana

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Tyler Research Corporation (“TRC”), a corporation organized under the laws of Pennsylvania with its principal place of business in Alberta, Canada, filed suit in the Northern District of Indiana alleging that Defendants, Envacon, Inc., a Canadian corporation with a facility in Lafayette, Indiana, Keirnan Bozman, an individual residing in Alberta, Canada, and JKKB Holdings Corporation of Alberta, Canada, infringed its rights in United States Patent No. 6,273,053 (the “‘053 Patent”). Plaintiff is seeking a permanent injunction, damages, costs, expenses, both prejudgment and post-judgment interest, and any other relief the Court may deem just and proper.

TRC, Bozman, and non-party, Joseph Krepela, entered into an exclusive licensing agreement granting TRC the exclusive right to manufacture Bozman and Krepela’s innovative engine shut off valves (the “Shut Off Valves”) on November 11, 1999. For consideration under the licensing agreement, TRC assisted with the design and completed development of the Shut Off Valves and provided employment to Bozman and Krepela. The licensing agreement did not limit TRC’s rights geographically and TRC’s exclusive right was to be in place so long as any patent rights of Bozman and Krepela existed in reference to the Shut Off Valves.

Bozman and Krepela were to put forth their best efforts in obtaining patent protection in Canada and the United States for the Shut Off Valves. Just short of four months after the exclusive licensing agreement with TRC was signed, Bozman and Krepela assigned their rights to the Shut Off Valves and the exclusive licensing agreement to JKKB. The very next day, JKKB filed for patent protection in the United States and Canada for the Shut Off Valves. The ‘053 Patent issued on August 14, 2001, with TRC holding the exclusive license to manufacture the Shut Off Valves.

Plaintiff exclusively manufactured the Shut Off Valves from 2001 until 2004, when it decided to outsource some of the manufacturing steps to Envacon, pursuant to the exclusive licensing agreement. Envacon, even before they began manufacturing some parts of the Shut Off Valves, had marketed and sold the completed Shut Off Valves for TRC and paid TRC’s parent corporation for TRC’s manufacturing services. TRC and Envacon operated out of the same premises from November 23, 1999 until April 16, 2011 and as such, TRC was able to maintain oversight, direction, and control over Envacon’s actions and involvement in manufacturing the Shut Off Valves.

Without giving prior notice, Envacon abandoned the space it shared with TRC on April 16, 2011. As TRC could no longer provide the necessary control and oversight over the manufacturing after Envacon left, Envacon was no longer authorized to manufacture the Shut Off Valves. TRC claims that Envacon, Bozman, and JKKB have all participated in the manufacturing of Shut Off Valves that infringe at least Claims 4, 14, and 15 of the ‘053 Patent or have conspired to deprive TRC of its rights under the exclusive licensing agreement. Plaintiff is claiming patent infringement against Envacon and Bozman, civil conspiracy against all Defendants, tortious interference against Envacon and Bozman, and civil conspiracy for tortious interference with a contractual relationship against Bozman and Envacon.

TRC of its rights under the exclusive licensing agreement. Plaintiff is claiming patent infringement against Envacon and Bozman, civil conspiracy against all Defendants, tortious interference against Envacon and Bozman, and civil conspiracy for tortious interference with a contractual relationship against Bozman and Envacon.

March 1, 2019

Patent Office Issues 144 Patents To Indiana Citizens in February 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 144 patent registrations to persons and businesses in Indiana in February 2019, based on applications filed by Indiana patent attorneys:

	Patent No.	Title
1	D0841343	Robe hook
2	10,217,530	Patient-specific cutting block and method of manufacturing same
3	10,216,767	Management method and system for implementation, execution, data collection, and data analysis of a structured collection procedure which runs on a collection device
4	10,215,195	Vibration isolation system for a fan motor
5	10,215,182	Plastic fan shroud and cone assembly and method

March 1, 2019

167 Trademark Registrations Issued to Indiana Companies in February 2019

By Overhauser Law Offices, LLC

The U.S. Trademark Office issued the following 167 trademark registrations to persons and businesses in Indiana in February 2019 based on applications filed by Indiana trademark attorneys:

Registration No.	Word Mark
5,687,964	LOWE LOGISTICS
5,688,011	DOWNTOWN INDY INC.
5,687,986	FIXKNEE
5,687,970	THE MEXICANA COLLECTION
5,686,138
5,686,137	IGNITE

March 1, 2019

Defendant DriverReach bolsters Motion to Dismiss patent infringement suit by citing recent CAFC ruling.

By Overhauser Law Offices, LLC

Indianapolis, IN– Tenstreet’s patent infringement complaint against DriverReach was previously discussed here. In its Complaint, Tenstreet accuses DriverReach of infringing Patent No. 8,145,575 (“the ‘575 patent”) for “Peer to Peer Sharing of Job Applicant Information”. DriverReach previously moved to dismiss the suit arguing that the asserted patent was invalid. Dkt-14 Motion to Dismiss

On February 26, 2019, the Court of Appeals for the Federal Circuit issued it decision in University of Florida Research Foundation, Inc. v. General Electric Company, No. 2018-1284. In that case the Federal Circuit found that the asserted claims of U.S. Patent No. 7,062,251 (“the ’251 Patent”) were not patentable under 35 U.S.C. § 101. This was because the Federal Circuit stated that automating “‘pen and paper methodologies’ to conserve human resources and minimize errors”, is not patentable. Specifically, a patent claim using terms like “receiving” data, “converting” the data into a specific format, “performing at least one programmatic action” on the data, and “presenting results,” was just an abstract idea because it was a “quintessential ‘do it on a computer’ patent: it acknowledges that data . . . was previously collected, analyzed, manipulated, and displayed manually, and it simply proposes doing so with a computer.”

In addition, the Federal Circuit rejected the University of Florida’s argument that the “converting” limitation claimed a specific improvement to existing technology. The court said that neither “the patent, nor its claims, explains how the drivers do the conversion.”

February 11, 2019

Supreme Court Finds Secret Sales are Prior Art Under the AIA

By Overhauser Law Offices, LLC

The Supreme Court of the United States has affirmed the Federal Circuits’ Decision for the Helsinn Healthcare v. Teva Pharmaceuticals USA case regarding “secret sales” as prior art under the Leahy-Smith America Invents Act (“AIA”). In their Opinion, the Court held that given the pre-AIA precedent that even “secret sales” could invalidate a patent, the same “on sale” language in the AIA provisions should be given the same presumption. Further, the addition of the phrase “or otherwise available to the public” does not allow the Court to conclude that Congress intended to alter the meaning of “on sale,” but instead, means that 35 U.S.C. § 102 could be applied to other non-delineated situations.

Helsinn Healthcare (“Helsinn”) produces a treatment utilizing the chemical palonestron to treat chemotherapy-induced nausea and vomiting. During the development of this product, Helsinn entered into two separate and confidential agreements with MGI Pharma, Inc. (“MGI”) giving MGI the right to distribute, promote, sell, and market a 0.25 g dose of palonosetron in the United States. While the dosage was kept confidential, the agreements were reported to the Securities and Exchange Commission. About two years later, in January 2003, Helsinn filed their provisional patent application covering a 0.25 mg dose of palonestron. Helsinn went on to file four patent applications claiming priority to the January 2003 provisional application, with its fourth patent application being filed in 2013 and being subject to the AIA. This fourth patent application led to the issuance of U.S. Patent No. 8,598,219 (the “‘219 patent”).

Teva Pharmaceutical Industries, Ltd. and Teva Pharmaceuticals USA, Inc. (collectively “Teva”) sought approval to market a generic 0.25 mg palonosetron product. Helsinn, in turn, filed suit against Teva for infringement of the ‘219 patent. Teva claimed that the ‘219 patent was invalid under the AIA because the invention was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1).

February 1, 2019

179 Trademark Registrations Issued to Indiana Companies in January 2019

By Overhauser Law Offices, LLC

The U.S. Trademark Office issued the following 179 trademark registrations to persons and businesses in Indiana in January 2019 based on applications filed by Indiana trademark attorneys:

Registration No.	Word Mark
5,666,680	ORBIT
5,666,614	CODA EVOLUTION
5,663,224	MONSER ANALYTICS
5,661,539	FORLORN HOPE
5,661,468	CREATE SOMETHING DELICIOUS