Indiana Intellectual Property Law News

May 20, 2015

Indiana Trademark Litigation: Integrity Trade Services Sues Ex-Employees Alleging Conspiracy and Conversion

South Bend, Indiana – Trademark attorneys for Integrity Trade Services, Inc. (“ITS”) of Frankfort, Illinois filed an intellectual property complaint in the Northern District of Indiana naming as Defendants Integrity Employment Partners, LLC, Integrity Trade Services, LLC, Janice Hernandez, James Hernandez, Michaela Williams, and Jason Reis, all of Indiana, and alleging multiple claims, including trademark infringement, conversion of ITS trade secrets, breach of contract, and tortious interference with business relationships.

ITS is a national staffing services company, doing businesses in multiple states, including Indiana, Florida, Illinois, and Texas. ITS is wholly owned by John E. Cumbee, III. In 2008, ITS acquired all of the operational assets of the Knox, Indiana branch of a staffing company owned by CES America, Inc. ITS also hired most, if not all, of the CES employees then working at the Knox facility, including defendants James and Janice Hernandez.

ITS contends that, since purchasing the Knox facility, it has invested well over $1 million to build the Knox business and the ITS brand as it is related to that facility. It asserts in this federal lawsuit, inter alia, that Defendants conspired to convert ITS’ customers, employees and trade secrets for their own use.

The accused in this case are husband and wife Janice Hernandez and James Hernandez; several family members of Janice Hernandez, including Michaela Williams, and Jason Reis; and two entities apparently owned by the Hernandezes, Integrity Employment Partners, LLC, Integrity Trade Services, LLC.

Defendant James Hernandez (“James”) worked for ITS from the time that ITS acquired the business until April 30, 2015 when he was fired. ITS asserts that James engaged in a conspiracy to solicit away and convert (a) ITS’ office employees at the Knox location, (b) at least the active ITS field employees servicing the Knox location, and (c) customers comprising the Knox-area business. He is accused of attempting to transfer them to Integrity Employment Partners, LLC, an Indiana limited liability company formed to process the Knox business converted from ITS for his benefit and the benefit of the other co-conspirators.

Defendant Janice Hernandez (“Janice”), also became employed by ITS when ITS was acquired from its prior owner. She has been accused of not only being an integral part of the alleged conspiracy but also of being “likely its “‘mastermind.'” Defendant Michaela Williams is Janice’s daughter. Defendant Jason Reis is the ex-son-in-law of James and Janice, having been married to another of Janice’s daughters.

ITS states that, in the last two weeks in April 2015, it discovered various anomalies in the Knox business. These anomalies alerted ITS to the activities that triggered this federal lawsuit. They included a drop off in weekly gross sales, the formation of Integrity Employment Partners, LLC (“IEP”), and checks issued by existing ITS customers made payable to IEP (and not ITS).

Defendants are accused of orchestrating a scheme to confuse ITS’ customers and employees regarding with which staffing businesses using the name “Integrity” – Plaintiff’s firm or Defendants’ firms – those customers and employees were transacting business. In doing so, ITS contends, Defendants attempted with some success to convert ITS’ business assets and relationships for Defendants’ benefit. Allegations of criminal conduct by Defendants were also made. In a 48-page complaint, filed by trademark lawyers for Plaintiff, those claims and others are made:

• Count I: Federal Trademark Infringement
• Count II: Federal Unfair Competition
• Count III: Illinois Deceptive Trade Practices Act
• Count IV: Breach of Fiduciary Duty
• Count V: Breach of Agreement
• Count VI: Tortious Interference with Contract
• Count VII: Tortious Interference with Business Relationships
• Count VIII: Conversion
• Count IX: Computer Fraud and Abuse Act
• Count X: Uniform Trade Secrets Act
• Count XI: Civil Conspiracy
• Count XII: Unjust Enrichment

• Count XIII: Breach of Contract

Plaintiff asks the court for, inter alia, injunctive relief, compensatory damages, punitive damages, attorneys’ fees, interest and costs.

May 18, 2015

Indiana Patent Litigation: Klink Trucking Sues Seaboard Asphalt for Declaration of Non-Infringement

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Indiana patent attorneys for Klink Trucking Inc., K-Tech Specialty Coatings, Inc., BIT MAT Products of Indiana, Inc. and BIT MAT Products of Michigan, Inc. (collectively the “Klink Group”), all of Ashley, Indiana, initiated an intellectual property lawsuit in the Northern District of Indiana alleging that Seaboard Asphalt Products Company (“Seaboard Asphalt”) of Baltimore, Maryland wrongly accused Klink Group of infringing Seaboard Asphalt’s patented “Trackless Tack Coat,” Patent No. 8,764,340, which has been issued by the U.S. Patent Office.

Seaboard Asphalt claims ownership of U.S. Patent No. 8,764,340 for a “Trackless Tack Coat” (“the ‘340 patent”). This patent protects an “asphalt emulsion available for high performing, trackless tack coat applications. The tack coat can be used with hot mix asphalt, warm mix asphalt or cold mix asphalt to provide a tack coat on an existing bituminous or concrete pavement surface. The tack coat can also be used for repair of potholes, utility cuts, and general pavement patching areas.”

On April 28, 2015, Seaboard Asphalt contacted Klink Group. According to a document filed with the Indiana court, Seaboard Asphalt stated that it believed that Klink Group’s “AE-NT Trackless Tack Coat” infringed Seaboard Asphalt’s ‘340 patent and requested that Klink Group “discontinue production and distribution for sale of your AE-NT and all versions of Trackless Tack Coat which violate our Patent” until Klink Group and Seaboard Asphalt had entered into a licensing agreement.

This Indiana litigation arises from that assertion and request by Seaboard Asphalt. Klink Group asserts that it has no liability for infringement of the ‘340 patent because none of the Klink Group entities have infringed any valid and enforceable claim of the ‘340 patent. Plaintiffs have sued under the Declaratory Judgment Act. They ask the Indiana federal court for two declarations with respect to the patent-in-suit:

• Count I – Declaration of Non-Infringement

• Count II – Declaration of Invalidity

Plaintiffs also ask the court to declare this case to be exceptional under 35 U.S.C. § 285 and, pursuant to such a declaration, to award to Plaintiffs its reasonable attorneys’ fees, expenses and costs relating to this patent litigation.

May 15, 2015

Congresswoman Susan Brooks of Indiana Listed as one of D.C.’s Top 50 Women in Tech

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Congresswoman Susan Brooks, who represents the northern third of Indianapolis, was recently named as one of the District of Columbia’s Top 50 Women in Tech. Her lawmaking focus includes legislation that will cause “our laws need to catch up with technology.”

Rep. Brooks, the Republican co-chair of the Congressional High-Tech Women’s Caucus, represents a burgeoning area of startups and entrepreneurship in the technology sector. In her first term, Brooks co-chaired a subcommittee focused on emergency preparedness, response and communications. Since then, she’s introduced the Social Media Working Group Act, which passed the House twice, and is awaiting action in the Senate. If passed, the bill would codify the Homeland Security Department’s Social Media Working Group, which meets regularly to improve the department’s social media techniques. The bill would also bring representatives from academia and the private sector into the working group.

“I think our laws need to catch up with technology and some of the other things that we are also focused on,” Brooks said. “Data breach notification is one of the top issues facing companies that hold personal information about our customers and our employees. We need to bring the government up to speed there, too.”

May 14, 2015

Ninth Circuit Copyright Proceedings: Prenda Law Parties Ask to be Prosecuted

By Overhauser Law Offices, LLC

San Francisco, California – A lawyer for Prenda Law argued before the United States Court of Appeals for the Ninth Circuit and was heard by Judges Harry Pregerson, Richard Tallman and Jacqueline Nguyen. The appeal focused on the rulings of U.S. District Court Judge Otis Wright II.

The intellectual property attorney representing Prenda Law, the now-infamous copyright trolling law firm, squared off with the judges of the Ninth Circuit recently. In a hearing before the appellate court, he contended that the district court had denied due process to the Prenda Law parties. He noted that Judge Wright had threatened incarceration argued and, in doing so, Judge Wright had indirectly initiated a criminal contempt proceeding.

“The entire proceeding was tainted. Mark Lutz, the CEO of Ingenuity 13, was not allowed to testify. As soon as they asserted their Fifth Amendment rights, the judge stopped the proceeding,” Prenda Law’s lawyer said. “He can’t use that against them,” he continued, arguing that Judge Wright had punished the Prenda Law parties for invoking their Fifth Amendment rights against self incrimination.

May 13, 2015

Patent Office Issues 173 Patents To Indiana Citizens in April 2015

By Overhauser Law Offices, LLC

The U.S. Patent Office issued the following 173 patent registrations to persons and businesses in Indiana in April 2015, based on applications filed by Indiana patent attorneys:

Patent No.		Title
D728,184		Bag holder
D727,732		Baked goods box
D727,713		Clip for an animal housing
9021539		Leakage location methods
9020878		Intelligent airfoil component surface inspection
9020669		Hybrid vehicle driver coach
9020262		Symbol compression using conditional entropy estimation

May 12, 2015

Copyright Law: U.S. Copyright Office Publishes Index of Fair Use Decisions

By Overhauser Law Offices, LLC

Washington, D.C. – Register of Copyrights Maria A. Pallante yesterday announced the launch of the U.S. Copyright Office’s Fair Use Index, which is designed to provide the public with searchable summaries of major fair use decisions. The Index was undertaken in support of the 2013 Joint Strategic Plan on Intellectual Property Enforcement prepared by the U.S. Intellectual Property Enforcement Coordinator within the Executive Office of the President.

Although not a substitute for legal advice, the Index is searchable by court and subject matter and provides a helpful starting point for those wishing to better understand how the federal courts have applied the fair use doctrine to particular categories of works or types of use, for example, music, internet/digitization, or parody.

“The doctrine of fair use has been an essential aspect of our copyright law for nearly 175 years,” said Pallante, “but it has too often been a mystery to good-faith users who seek more detail about its application. It has been a pleasure coordinating this practical and important resource with the U.S. Intellectual Property Coordinator’s office.”

May 8, 2015

155 Trademark Registrations Issued to Indiana Companies in April 2015

By Overhauser Law Offices, LLC

The U.S. Trademark Office issued the following 155 trademark registrations to persons and businesses in Indiana in April 2015 based on applications filed by Indiana trademark attorneys:

Reg. Number	Word Mark	Click To View
4715442	INDIANA GRAND RACING & CASINO	View
4727755	FLEXSHADE	View
4727476	TPG	View
4727465	SMARTPARCEL	View
4727415	CHILLMODE	View
4727372	BOTTLED ARTIST	View
4727350	NCA	View
4727073	JACOBS & BRICHFORD	View
4727064	BEST WINTER HATS	View
4726917	STEAM COUTURE	View

May 6, 2015

Indiana Intellectual Property Litigation: J & J Sports Alleges Illegal Interception in Two New Lawsuits

By Overhauser Law Offices, LLC

Hammond, Indiana – An intellectual property attorney for J & J Sports Productions, Inc. (“J & J Sports”) of Campbell, California filed two federal lawsuits in the Northern District of Indiana, both alleging illegal interception of a cable signal for the Floyd Mayweather, Jr. v. Robert Guerrero, WBC Welterweight Championship Fight Program (“Program”). One lawsuit named Jorge Zamora, individually and d/b/a El Sombrero Bar of East Chicago, Indiana. The other lawsuit named JP & P, Corporation and Jose L. Gonzalez, individually, both d/b/a Michigan Avenue Bar and Grill of Hammond, Indiana.

J & J Sports states that it is the exclusive domestic commercial closed-circuit distributor of the Program. It has sued multiple Defendants, both individually and doing business as commercial entities, under the Communications Act of 1934 and The Cable & Television Consumer Protection and Competition Act of 1992. Specifically, Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the Program at issue on May 4, 2013 without an appropriate license. A count of conversion is also included.

Plaintiff has sued two Defendants as individuals, alleging that they had the right and ability to supervise the activities of the commercial establishments that allegedly engaged in the illegal interception. J & J Sports asserts that the activities that they supervised included the unlawful interception of Plaintiff’s Program. J & J Sports contends that the individual Defendants specifically directed the employees of the restaurants to unlawfully intercept and broadcast Plaintiff’s Program at the commercial establishments or, if they did not, that the actions of the employees of the restaurants are directly imputable to the Defendants sued as individuals by virtue of their purported responsibility for the activities of their respective restaurants. In the second lawsuit, a corporate Defendant has also been sued. This lawsuit also lists “Loida Chavarria as a Defendant in paragraph 10, although she has not been listed as a Defendant in the caption of the complaint.

In both of these interception complaints, the intellectual property attorney for J & J Sports listed the following counts:

• Count I: Violation of Title 47 U.S.C. § 605
• Count II: Violation of Title 47 U.S.C. § 553

• Count III: Conversion

J & J Sports asks for damages, as well as costs and attorneys’ fees.

May 1, 2015

Appellate Patent Law: Federal Circuit Affirms that Prior Art was Anticipatory

By Overhauser Law Offices, LLC

Washington, D.C. – The United States Court of Appeals for the Federal Circuit heard an appeal in the matter of Ineos USA LLC v. Berry Plastics Corporation. It affirmed the decision reached by the United States District Court for the Southern District of Texas, Case No. 3:13-cv-00017, regarding the infringement of Patent No. 6,846,863 (the “‘863 patent), which was issued by the U.S. Patent and Trademark Office.

Ineos holds the ‘863 patent, which was directed to polyethylene-based compositions which could be used to form shaped products, such as screw caps for bottles. In a patent lawsuit filed in Texas, Ineos accused Berry Plastics of infringing its ‘863 patent.

Berry Plastics moved for summary judgment that the asserted claims were anticipated independently by various prior art references, including U.S. Patent No. 5,948,846. Prior art incorporated a lubricant to allow the cap to glide better, which facilitated unscrewing the cap. However, in addition to increasing usability, the prior chemical formulations also imparted a bad odor and flavor to food products stored in contact with them. Ineos’ ‘863 patent claimed to have solved this problem by modifying the proportions of polyethylene, lubricants, and additives.

The district court ruled in Berry Plastic’s favor, holding that the ‘863 patent was invalid as anticipated by prior art under 35 U.S.C. § 102 (2006).

Ineos appealed from the district court’s ruling. The Federal Circuit affirmed, holding that Ineos had failed to show that the range claimed by the ‘863 patent was “critical to the operability of [Ineos’] invention.”

April 30, 2015

Supreme Court Holds TTAB Decision Can Have Issue Preclusion Effect

By Overhauser Law Offices, LLC

The Supreme Court on March 24, 2015, held that a Trademark Trial and Appeal Board (TTAB) decision should be given issue preclusion effect when the usages it adjudicated are materially the same as those before a district court. B&B Hardware, Inc. v. Hargis Industries, Inc., U.S., No. 13-352, 3/24/2015.

Reversing an Eighth Circuit decision, the Court found no categorical reason why issue preclusion can never apply. The same likelihood of confusion standard applies for both registration and infringement, Justice Alito explained, even if the TTAB and the district court do not always consider the same usages. A concurring opinion was filed by Justice Ginsburg, who stressed that preclusion will not apply for a great many TTAB decisions. Justice Thomas (joined by Justice Scalia) dissented, objecting to the presumption of preclusion for adjudicating agencies. The Court’s decision is consistent with the position taken in an AIPLA amicus brief filed in this case.

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