Indiana Intellectual Property Law News

December 30, 2016

Indiana Trademark Litigation: Super 8 Sues Former Franchisees for Infringement

Fort Wayne, Indiana – Super 8 Worldwide, Inc. f/k/a Super 8 Motels, Inc. of Parsippany, New Jersey sued in the Northern District of Indiana alleging trademark infringement and other wrongdoings.

Plaintiff Super 8 operates a franchise system for guest lodging. It claims ownership to the SUPER 8® service mark as well as various related trade names, trademarks and service marks, some of which have been registered with the U.S. Patent and Trademark Office. It estimates the value of the entity’s goodwill to exceed hundreds of millions of dollars.

In this Indiana intellectual property lawsuit, Super 8 alleges that former franchisees have violated the terms of a franchise agreement entered into with Super 8. Three Indianapolis Defendants were listed: Auburn Lodging Associates, LLP (“ALA”), Kokila Patel and Dilip Patel. A fourth Defendant Chicago Capital Holdings, LLC (“CCH”) of Hinsdale, Illinois was also named.

December 29, 2016

Indiana Patent Litigation: Lilly Defends Alimta Patent in Federal Court

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Eli Lilly and Company of Indianapolis, Indiana filed a lawsuit in the Southern District of Indiana alleging patent infringement.

Defendant is Hospira, Inc. of Lake Forest, Illinois. It has been accused of infringing U.S. Patent No. 7,772,209 (the “‘209 patent”) by the filing of a New Drug Application (“NDA”) with the U.S. Food and Drug Administration (“FDA”) seeking approval to manufacture and sell a pharmaceutical product, “Pemetrexed for Injection,” in various concentrations. In its filing with the FDA, Hospira contended that the claims of Lilly’s patent are “invalid, unenforceable, and/or not infringed by the manufacture, use, offer for sale, or sale of Hospira’s NDA Products.”

Lilly contends that this product will compete with Alimta®, which also consists of the pharmaceutical chemical pemetrexed disodium. Alimta is used as a chemotherapy agent to treat certain types of cancer.

December 27, 2016

Indiana Trademark Litigation: Carmel Golf Merchant Accused of Counterfeiting

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiffs Acushnet Company of Fairhaven, Massachusetts, Roger Cleveland Golf Company, Inc. of Huntington Beach, California and Dunlop Sports Co. Ltd. of Hyogo, Japan filed a trademark lawsuit in the Southern District of Indiana. This intellectual property litigation, commenced by an Indiana trademark litigator for Plaintiffs, was filed against both an individual and a business entity.

Listed as Defendants in this lawsuit are Giorgio Nunns a/k/a George Nunns a/k/a Georgie Nunns a/k/a Giorgio, an individual, and Custom Golf Solutions, LLC, individually and jointly, doing business under the names “bogie’s nearly new golf,” “gnunns81” and “golfcustomsolutions15.” Defendants operate in Indianapolis and Carmel, Indiana.

Defendants are accused of engaging in the sale of counterfeit products and infringing upon Plaintiffs’ trademarks. The following trademarks, to which Acushnet claims ownership and/or an exclusive license, are at issue:

Trademark	Registration No.	Registration Date	Class/Goods
	1,155,766	26 May 1981	IC 28: golf equipment, namely golf balls, golf clubs and golf bags.
	3,376,961	5 February 2008	IC 24: golf towels IC 25: golf clothing, namely jackets, shirts, hats and visors. IC 28: golf equipment, namely golf putters, golf club head covers, golf club grips and divot tools.
	2,620,432	17 September 2002	IC 28: golf clubs and accessories, namely golf tees, golf gloves, golf bags, golf putters, golf drivers, golf woods, golf irons, golf green repair tools, golf club covers and golf bag covers.
	3,421,373	6 May 2008	IC 28: golf equipment, namely golf bags.

December 23, 2016

Indiana Patent Litigation: Curling Iron Patents the Subject of Second Indiana Lawsuit

By Overhauser Law Offices, LLC

Northern District of Indiana – The Beachwaver Co. of Libertyville, Illinois commenced intellectual property litigation in the Northern District of Indiana asserting infringement of patents pertaining to a rotating curling iron.

Defendant is T3 Micro, Inc. of Venice, California, which is accused of infringing Beachwaver’s U.S. Patent Nos. 9,398,796 (“the ‘796 patent”) and 9,504,301 (“the ‘301 patent”). These patents have been issued by the U.S. Patent and Trademark Office.

Both patents are titled “Hair Styling Device.” One of the two patents was the subject of at least one additional lawsuit in Indiana recently. That lawsuit, filed in October, covered only the ‘796 patent but included counts for both direct and induced infringement. In contrast, in this litigation, Indiana attorneys for Plaintiff list only one count of infringement for each of the two patents-in-suit:

December 22, 2016

Indiana Patent Litigation: South Bend Auto Finance Company Sued for Patent Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana – Plaintiff Hawk Technology Systems, LLC of Miami, Florida filed a lawsuit in the Northern District of Indiana alleging patent infringement.

Hawk accuses Defendant Instant Auto Finance Inc. of South Bend, Indiana of infringing U.S. Patent No. RE43,462 (the “‘462 patent”), which is a reissue of U.S. Patent No. 5,265,410. Claim 12 of the ‘462 patent, and possibly others, is at issue in this litigation. That claim covers a method of simultaneously displaying and storing multiple video images.

In this complaint, filed by an Indiana patent attorney in conjunction with a lawyer from Minnesota, Hawk contends that Instant Auto Finance infringed the ‘462 patent by using a video storage and display system and/or methods that infringe one or more of the claims in the ‘462 patent. Plaintiff seeks damages as well as reimbursement of costs and attorneys’ fees.

December 21, 2016

Indiana Patent Litigation: Safe Manufacturers Clash over Smart Safe Technology

By Overhauser Law Offices, LLC

New Albany, Indiana – FireKing Security Products, LLC of New Albany, Indiana sued in the Southern District of Indiana alleging infringement of a patent related to smart safes.

Defendant in this litigation is American Security Products Company of Fontana, California. Both Plaintiff and Defendant are in the business of manufacturing smart safes, which feature technology designed to count and log each deposit as it is made into the safe as well as generating and transmitting daily reports of the amount of cash stored in the safe.

American Security makes a line of smart safes offered under the name “CashWizard.” FireKing asserts that these products infringe its patent for “Electronic Transmission and Tracking of Deposit Information,” which has been registered by the U.S. Patent and Trademark Office as Patent No. 7,216,098 (the “’098 patent”). FireKing asserts that it has multiple patents associated with its smart-safe products, including the ‘098 patent, which is the only patent at issue in this Indiana lawsuit.

December 19, 2016

Indiana Trademark Litigation: Founding Member of Museum Registers Trademark Under His Own Name, Sues Museum for Use

By Overhauser Law Offices, LLC

Evansville, Indiana – Richard Litov of Evansville, Indiana sued Freedom Heritage Museum, Inc., of Evansville, Indiana alleging trademark infringement. Litov asserts claims under both federal and Indiana law.

Litov claims that he conceived the idea for the museum – a collection of exhibits and artifacts from the World War II era – as well as the museum’s name, stating that he served as its founding president and a founding board member. He asserts that the museum used the trademarked name pursuant to permission that he granted “as president and board member” of the museum.

The trademark in question has been registered under Litov’s name as U.S. Trademark Registration No. 4,939,292. Litov states in his complaint that the registration covers the words FREEDOM HERITAGE MUSEUM and an associated design. The word portion of the trademark, as listed by the U.S. Patent and Trademark Office’s website, is FREEDOM HERITAGE MUSEUM, EST. 2012, EVANSVILLE INDIANA. The application for the trademark registration was filed on July 6, 2015 and granted on April 19, 2016.

December 16, 2016

Indiana Patent Litigation: Taiwan Plaintiffs Allege Infringement of Bike Rack

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiffs King Sheng Co., Ltd., which does business as Seiki, and David Tsai, both of Taiwan, initiated a patent infringement lawsuit in the Southern District of Indiana.

Defendant in this Indiana litigation is Hollywood Engineering, Inc. d/b/a Hollywood Racks of Los Angeles, California. It is accused of having infringed U.S. Patent No. 7,240,816 (“the ‘816 patent”), which relates to a bike rack for use on vehicles. Plaintiffs contend that Defendant“has made, imports, sells, offers to sell, and/or uses” numerous infringing products. The products at issue include items offered under model numbers HR200, HRT220, HR1000, HR1000R, HR1400, HR1450, HR1450E, HR1450R, HR1475, and Sunlite models 45815 and 45816.

Defendant is accused of having infringed the ‘816 patent directly and/or jointly with other entities, with the alleged infringement occuring literally and/or under the doctrine of equivalents. Plaintiff further contends that Defendant is liable under 35 U.S.C. § 271(b) for inducing infringement of the patent-in-suit and under 35 U.S.C. § 271(c) for contributory infringement. Stating that Defendant has had actual notice of the ‘816 patent since no later than 2009, Plaintiff also asserts that infringement of the ‘816 patent has been willful and deliberate.

December 15, 2016

Indiana Copyright Litigation: Allegations of Infringement of Movie Filed in Southern District

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Cook Productions, LLC of Los Angeles, California filed a lawsuit accusing unnamed Doe Defendants of copyright infringement. The lawsuit, filed in the Southern District of Indiana, mirrors another lawsuit filed by Cook Productions in the Northern District of Indiana.

The copyrighted work at issue is the motion picture “Mr. Church,” which features Eddie Murphy and Britt Robertson. The movie has been registered with the U.S. Copyright Office under Registration No. PA 2-002-851.

In this litigation, filed by a copyright lawyer for Plaintiff, the ten unnamed Doe Defendants are accused of having participated in a BitTorrent swarm to disseminate illegal copies of the movie. Plaintiff states that it used geolocation technology to trace Defendants to the Southern District of Indiana.

December 13, 2016

Supreme Court to Decide Whether Roche Exported Enzymes are “Substantial” Component of Product Made in UK

By Overhauser Law Offices, LLC

The Supreme Court on December 6, 2016, heard oral argument on whether the export by Roche, which has an office in Indiana, of an enzyme triggers patent infringement. Roche’s customer Life Technologies imported Roche’s “AmpliGold Plus” enzyme into the United Kingdom, and used it to build genetic testing kits. Life Technologies did not sell the kits in the US. However, Promega Corp. sued it for vicarious patent infringement (inducing or contributing to patent infringement) claiming that by purchasing enzyme in the US, Life Technologies violated 35 U.S.C. § 271(f)(1). This provision of the patent Act makes it an infringement to supply abroad “all or a substantial portion of the components.” The Federal Circuit had earlier held that the AmpliGold Plus enzyme, met the requirement of a “substantial” portion of the components. The Supreme Court seemed to agree that “substantial” may be ambiguous, but some Justices suggested that supply of a single component was more properly considered under Section 271(f)(2), which addresses the supply of a non-staple, specially made component. Promega distinguished (f)(1) and (f)(2) as exporting counterparts to Section 271(b) induced infringement and §271(c) contributory infringement, respectively. The transcript of the hearing is below.

Transcript-Life-v-Promega