Indiana Intellectual Property Law News

Keystone Management and Lockridge Sue Alleging Copyright Infringement of Architectural Work

Thu, 23 May 2013 14:06:39 -0500

Indianapolis, Ind. -- Copyright lawyers for Keystone Management Systems, Inc. f/k/a Keystone Builders Resource Group, Inc. ("Keystone Management") and Lockridge Homes-Indianapolis, LLC ("Lockridge"), both of Richmond, Va., filed a copyright infringement lawsuit alleging William Clyde Moore, Jr. ("Moore") and Carol Cooper ("Cooper"), d/b/a DrafTech, both of Indianapolis, Ind., infringed the copyrighted work "Birkshire II" (architectural work: 1-396-233; and technical drawings: VA 1-396-224), which is registered with the U.S. Copyright Office.

Keystone Management is in the business of creating, designing, producing, distributing and marketing original architectural working drawings, architectural works and related technical drawings ("the Keystone Designs"). Lockridge is in the business of constructing, marketing and selling distinctive single-family residential homes. Keystone Management has granted to Lockridge the right to use the Keystone Designs.

Moore allegedly asked to purchase one of the Keystone Designs but no agreement was reached. He also allegedly discussed various home plans with Lockridge for the purpose of constructing a single-family home on his property. As a part of this discussion, Lockridge provided Moore with a rendering of the floor plan for the Birkshire II design. Moore then allegedly provided these plans to Cooper for the purpose of constructing a home in the Birkshire II design. Construction is either underway or completed.

Keystone Management and Lockridge sued in the Southern District of Indiana. They list two counts in their complaint: copyright infringement and unjust enrichment. They seek an injunction; impoundment and destruction of any homes built from the Keystone Designs; for damages up to $150,000 for each infringement; costs and fees.

We have blogged about similar cases here, here and here.

Practice Tip #1: Copyright protection extends to any architectural work created on or after December 1, 1990, but architectural designs embodied in buildings constructed prior to that date are not eligible for copyright protection.

Practice Tip #2: The second claim, for unjust enrichment, is preempted by The Copyright Act.

J & J Sports Sues Five Restaurants for Unauthorized Interception and Broadcast of Championship Fight

Wed, 22 May 2013 14:50:54 -0500

Indianapolis, Ind. -- Intellectual property lawyers for J & J Sports Productions, Inc. ("J&J Sports") of Campbell, Calif. have sued five Indianapolis restaurants and their owners in the Southern District of Indiana for illegally displaying the 2011 World Boxing Organization Welterweight Championship Fight.

J & J Sports was granted exclusive nationwide commercial rights to the closed-circuit distribution of the "Manny Pacquiao v. Shane Mosley, WBO World Welterweight Championship Fight" Program ("the Program"), which was telecast nationwide on Saturday, May 7, 2011.

In five separate but similar complaints, J&J Sports has alleged such wrongful acts as interception, reception, publication, divulgence, display, exhibition, and tortious conversion of the Program. The claims have been made both against the restaurants and as personal liability claims against the owners. The five restaurants that have been sued are: Fandango's Night Club, La Favorita Mexican Restaurant, El Rey Del Taco Mexican Restaurant, Taqueria Night Club and Costa Brava Mexican Restaurant. Of these, at least one, Fandango's Night Club, has been sued before under similar circumstances.

Each group of defendants has been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553. Each complaint also lists a count of conversion. Among its assertions of wrongdoing, J&J Sports has alleged interception under 47 U.S.C. 605, which is a different cause of action from copyright infringement. The interception claim has a two-year statute of limitations, which explains why the complaints were filed on May 6, 2013.

The complaints seek statutory damages of $100,000 for each violation of 47 U.S.C. § 605; $10,000 for each violation of 47 U.S.C. § 553; $50,000 for each willful violation of 47 U.S.C. § 553; costs and attorney fees.

In 2011, J&J Sports filed 708 lawsuits. We have blogged before about J&J Sports here, here and here.

Practice Tip: All of these lawsuits were filed on the eve of the two-year anniversary of the program that the defendants are alleged to have illegally broadcast. When Congress passed the Cable Communication Act, a statute of limitations was not included. Some federal courts have determined that a two-year statute of limitation is appropriate while other federal courts have used a three-year statute of limitations.

Overhauser Law Offices, the publisher of this website, has represented several hundred persons and businesses accused of infringing satellite signals.

U.S. Supreme Court Rules Against Indiana Farmer in "Roundup Ready" Soybean Patent Decision

Mon, 20 May 2013 14:03:28 -0500

Washington D.C. -- The U.S. Supreme Court has ruled that "patent exhaustion" does not bar an infringement claim against Indiana farmer Vernon Bowman for reproducing patented seeds by planting and harvesting second generation seeds without the patent holder's permission. Bowman v. Monsanto Co., U.S., No 11-796, 5/13/2013. Monsanto produces and sells patented soybean seed that is genetically altered to resist its "RoundUp" herbicide. Bowman is a farmer who purchased soybean for planting from a grain elevator, expecting that most of the grain elevator soybean would be Monsanto's herbicide-resistant soybean. In the subsequent patent infringement brought by Monsanto, Bowman argued that Monsanto's sale of its seed that he ultimately purchased from the grain elevator exhausted any patent rights in the seed. The argument was rejected by both the District Court and the Federal Circuit, and the Supreme Court agreed to review the case.

Patent Exhaustion Only for Sold Article

Under the patent exhaustion doctrine, an authorized sale of a patented product cuts off the patent owner's right to control of that product, because the sale of that product fulfills the patent law by providing a reward to the patentee. However, this limitation on patent rights applies only to the particular article sold. If the purchaser could make and sell endless copies, the patent would effectively protect just a single sale.

In this case, the patent exhaustion doctrine provides Bowman with the right to use the purchased product in several different ways without Monsanto's permission, including resale, human consumption or animal consumption of the product. However, it does not permit Bowman to make additional patented soybeans without Monsanto's permission.

Bowman contended that his use of the purchased seed was covered by the patent exhaustion doctrine because that is the normal way farmers use seed, and that Monsanto seeks an impermissible exception to the exhaustion doctrine for patented seeds and other self-replicating technologies.

The Court rejected the argument, pointing out that it is Bowman who seeks an unprecedented exception to the well-settled rule that the exhaustion doctrine does not extend to the right to make a new product.

Purdue University Celebrates Innovation

Fri, 17 May 2013 10:26:01 -0500

Lafayette, Ind. -- Purdue University students are creating and patenting products while pursuing their degrees. Purdue is celebrating the inventiveness of five of those students: Julia Alspaugh, Zachary Amodt, Sean Connell, Andrew Glassman and Anne Dye Zakrajsek.

Julia Alspaugh, a mechanical engineer in her second year as a master's student, researches biomedicine. She says, "I see mechanical engineering as a broad field that analyzes the world's processes and how the machinery and technology that makes them work can be simplified and improved."

Julia is part of a large, interdisciplinary team seeking numerous patents related to the use of novel, resorbable biomaterials to create fixation devices for next-generation orthopedic devices, such as the plates, pins and screws used to set broken limbs or repair damaged tissues and joints.

"These devices would provide support while the bone and joint healed, for example, then degrade within a few years without leaving any foreign or potentially toxic materials in the body," she explains. "It's a similar concept to the dissolving stitches now used in many dental surgeries, but on a larger and more complex scale."

For Julia, the most surprising thing she's encountered in the patent process is unrelated to engineering or biomedicine. "Learning how to make sure what we are working on is novel and patentable has been more challenging than expected," she says. "It may be an awesome new technology, but we also have to keep in mind its marketability. It requires communication between many different people with different interests and ways of doing things."

Zachary Amodt dropped out of school to join the military after September 11, 2001. Ten years later, he returned and is now holding a provisional patent inspired by his experience as a combat medic in war zones all over the world.

Serenity Springs Prevails Against Allegations of Trademark Infringement and Cybersquatting

Thu, 16 May 2013 15:13:06 -0500

Indianapolis, Ind. -- The Indiana Court of Appeals has vacated a trial court's judgment in favor of the LaPorte County Convention and Visitors Bureau (the "Bureau") of LaPorte, Ind., holding that neither trademark infringement nor cybersquatting had been committed by Serenity Springs ("Serenity") of LaPorte, Ind.

Serenity operates a resort in LaPorte County. The Bureau is a special-purpose governmental unit charged with representing the visitor industry by marketing to potential visitors to the LaPorte area.

On September 9, 2009, the Bureau announced at a public meeting that it planned to adopt the phrase "Visit Michigan City LaPorte" as its branding identifier for the area. A representative of Serenity was in attendance. Immediately afterward, an employee for Serenity registered the domain name "visitmichigancitylaporte.com" and set it up to redirect internet traffic to Serenity's website.

The Bureau sent a cease-and-desist letter claiming trademark infringement and cybersquatting. Serenity responded that (1) it had registered and begun using the domain name before the Bureau had made any commercial use of it and (2) the designation was not protectable as a trademark because it was merely descriptive and had not acquired distinctiveness.

In April 2010, the Bureau filed an application with the Indiana Secretary of State to register "Visit Michigan City LaPorte" as a trademark under the Indiana Trademark Act. In its application, the Bureau indicated that it had first used the mark in commerce on September 9, 2009. The application was approved. Nonetheless, Serenity continued using the visitmichigancitylaporte.com domain name.

The Bureau sued Serenity in the LaPorte Superior Court alleging, inter alia, trademark infringement, cybersquatting and unfair competition by Serenity. The trial court permanently enjoined Serenity from using "Visit Michigan City LaPorte" and ordered the transfer of the domain name "visitmichigancitylaporte.com" to the Bureau.

Serenity appealed the trial court's holding that it had committed trademark infringement and cybersquatting. The trial court had held that, due to the Bureau's status as a governmental entity, it was entitled to a different application of trademark law. Specifically, it held that there was a lesser requirement for using the mark to acquire trademark rights.

The appellate court disagreed. It has long been held that the exclusive right to use a mark is acquired through adoption and use of the mark in commerce. The appellate court also held that this mark was clearly geographical in nature and that it was "difficult to conceive of a mark that falls more squarely within the category of geographically descriptive marks." Geographically descriptive designations generally fall within the descriptive category; thus, to be protected, the must have acquire secondary meaning.

The trial court considered the entirety of the time that the Bureau had been using the mark in considering whether the Bureau had established secondary meaning. It found that such secondary meaning had been established. However, the correct test for secondary meaning is to evaluate whether secondary meaning had been established by the senior user immediately prior to the time and place that the junior user began to use the mark. As this was, on its face, entirely unsupported by evidence, the appellate court held that the trial court erred in its determination that the Bureau had acquired secondary meaning in the mark. The appellate court reversed the trial court's judgment, holding that the Bureau had not established that it held a valid and protectable trademark in the designation "Visit Michigan City LaPorte."

The appellate court did, however, point out that additional claims had been made by the Bureau which had not been reached by the trial court. One of the claims, unfair competition, does not require the existence of a protectable trademark. Instead, it is an open-ended category of torts designed to protect "commercial values." The appellate court remanded with instructions to the trial court to vacate its judgment as to trademark infringement and cybersquatting and to adjudicate the Bureau's remaining claims.

Practice Tip #1: While the Indiana Trademark Act and the Lanham Act have many similarities, the former does not provide all of the protections afforded by the latter. While the Lanham Act provides that federal registration of a mark provides prima facie evidence of its validity, the Indiana Trademark Act contains no such provisions. A certificate of registration with the Indiana Secretary of State is proof of registration only (although such a registration is necessary to support a claim of infringement under the Indiana Trademark Act).

Practice Tip #2: One wonders if the entirety of this litigation might have been avoided by taking one simple step: registering the domain name before making the public announcement.

Federal Circuit Denies Petition by ArcelorMittal France for Rehearing in Patent Infringement Case

Wed, 15 May 2013 12:02:59 -0500

Washington, D.C. -- The United States Court of Appeals for the Federal Circuit denied the petition of ArcelorMittal for a rehearing in its patent infringement lawsuit against AK Steel involving ULTRALUME®.

AK Steel produces flat-rolled carbon and stainless and electrical steels. Their products are primarily for automotive, infrastructure, manufacturing, construction, and electricity-generation and distribution markets. The company, headquartered in West Chester, Ohio, also employs people in Indiana, Pennsylvania, and Kentucky.

ArcelorMittal is a multinational steel manufacturing corporation headquartered in Avenue de la Liberté, Luxembourg. It is the world's largest steel producer, with an annual crude steel production of 97.2 million tons as of 2011.

At issue in this suit was a claim of patent infringement by ArcelorMittal France and ArcelorMittal Atlantique et Lorraine (collectively "ArcelorMittal") against AK Steel et al. of Patent No. 6,296,805, entitled "Coated hot- and cold-rolled steel sheet comprising a very high resistance after thermal treatment," ("the '805 patent") which has been issued by the U.S. Patent Office.

The '805 patent covers boron steel sheeting with an aluminum-based coating applied after rolling the sheet to its final thickness. The steel is used for "hot-stamping," a process which involves rapidly heating the steel, stamping it into parts of the desired shape, and then rapidly cooling them. The rapid heating and cooling alters the crystalline structure of the steel, converting it to austenite and then martensite. By altering the steel's microstructure in this manner, hot-stamping produces particularly strong steel. Because hot-stamped steel is so strong, parts created using the process can be thinner and lighter than steel parts produced with other methods while being just as strong.

ArcelorMittal sued AK Steel and two other steel producers in the United States District Court for the District of Delaware, alleging infringement of the '805 patent. In 2011, a jury found that defendants AK Steel, Severstal Dearborn, Inc., and Wheeling-Nisshin Inc. had not infringed ArcelorMittal's patent and that the asserted claims were invalid as anticipated and obvious.

ArcelorMittal appealed from the judgment of the trial court, challenging both the district court's claim construction and the jury's verdict.

The federal circuit upheld the district court's claim construction in part and reversed it in part. It also reversed the jury's verdict of anticipation. With respect to obviousness, a new trial was required because a claim-construction error by the district court prevented the jury from properly considering ArcelorMittal's evidence of commercial success.

Despite the mixed results - partially affirming, partially reversing, partially vacating and remanding for a new trial - the decision of the federal circuit has confirmed that AK Steel did not infringe Arcelor's patent and can sell Ultralume, its aluminized boron steel product.

Practice Tip: Patent decisions of the Federal Circuit, a federal appellate court, are unique in that they are binding precedent throughout the United States. Decisions of the Federal Circuit can be superseded only by decisions of the U.S. Supreme Court or by legislation. As such, Federal Circuit decisions are often the final word nationwide on the issues of patent law that the court decides. In contrast, the authority of other federal appellate courts is restricted by geographic location. In those courts, the federal common law often varies among the circuits (a "circuit split").

Court of Appeals for Federal Circuit Can Not Agree When Computer Implemented Methods Are Patentable

Mon, 13 May 2013 13:39:09 -0500

As reported by the American Intellectual Property Law Association, in a severely splintered decision, the en banc Federal Circuit was unable to agree on a rationale for analyzing the abstract idea exception to patent eligibility for computer implemented method claims, computer-readable media, and system claims. CLS Bank International v. Alice Corp., en banc Fed. Cir., No. 11-1301, 5/10/13.

Instead, the court issued a 58-word per curiam opinion for the Court, affirming by a majority vote the patent ineligibility of method and computer-readable media claims are ineligible, and affirming by a 5-5 tie vote the patent ineligibility system claims. Six separate opinions (totaling 127 pages) were issued by judges stating their agreement or disagreement with the result in the appeal.

The challenged patents in this case are directed to a computerized trading platform for exchanging obligations in which a trusted third party settles obligations between a first and second party so as to eliminate "settlement risk." Seven Judges (Chief Judge Rader and Judges Lourie, Dyk, Prose, Reyna, Wallach, and Moore) voted to affirm the decision that the method and media claims were ineligible were. As to the system claims, those who would find ineligibility were Judges Lourie, Dyk, Prost, Renya, and Wallach; those who would find eligibility were Chief Judge Rader and Judges Newman, Linn, O'Malley, and Moore.

Judge Lourie's Opinion

In its en banc order for this case, the Court posed two questions for briefing: (1) what test should the court adopt for determining if a computer-implemented invention is patent ineligible "abstract ideal," and when does a computer lend patent eligibility to an otherwise ineligible idea; and (2) should it matter whether the invention is claimed as a method, system, or storage medium, and should such claims be considered equivalent for purposes of Section 101.

Judge Lourie filed a concurring opinion joined by Judges Dyk, Prost, Renya, and Wallach. He wrote that the Supreme Court in Section 101 cases has cautioned against the preemption of fundamental tools of science, against the use of formalistic approaches that permit drafting strategies to circumvent Section 101 exclusions, and against bright-line rules that do not accommodate changing technology. His opinion makes the following points:

Preemption: The Section 101 concern is not preemption per se since any patent inherently includes some preemption in the right to exclude. "Rather, the animating concern is that claims should not be coextensive with a natural law, natural phenomenon, or abstract idea; a patent-eligible claim must include one or more substantive limitations that, in the words of the Supreme Court, add 'significantly more' to the basic principle, with the result that the claim covers significantly less."

Inventive concept: The Supreme Court's reference to an "inventive concept" requirement under Section 101 is not a reference to "inventiveness" for patentability. Instead, it is the "genuine human contribution to the claimed subject matter" and must be "a product of human ingenuity." Nor should the Court's use of terms such as "routine" or "conventional" in discussing patent ineligibility be confused with the novelty and nonobviousness. The question, is whether steps combined with a natural law or abstract idea are so insignificant that the claim effectively covers the natural law or abstract idea itself.

Threshold requirement and presumption of validity: It is incorrect to argue that patent eligibility under Section 101 is a "threshold test" that must always be considered first among all of the possible bases for finding invalidity. District courts are entrusted with great discretion to control their dockets, including the order of issues presented during litigation. In addition, the presumption of validity under 35 U.S.C. 282 applies when Section 101 patent ineligibility is raised as an invalidity challenge.

Method claims: The method claims in this case involve the concept of reducing settlement risk by facilitating a trade through third-party intermediation, an abstract idea that is not patent eligible standing alone. Limitations of keeping and maintaining shadow records do not add "anything of substance to the claims." The requirement for computer implementation is not specific enough and lacks express language defining the computer's participation. "Furthermore, simply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility."

Computer-readable medium claims: Although the computer readable storage medium claims recite a physical device, the patent eligibility analysis must look past drafting formalities and focus on the "true substance of the claims." The claim term is stated in broadly and every substantive limitation pertains to the method steps of the program code embodied in the medium. Thus, the claim is not truly drawn to the medium but rather to the underlying method. Despite the Beauregard format, these claims are equivalent to the methods they recite for patent eligibility purposes.

System claims: These claims recite a computerized system to carry out steps that mirror the method claims of maintaining, controlling, and adjusting shadow records. The computer-based limitations recited in the system claims cannot support any meaningful distinction from the computer-based limitations that failed to supply an "inventive concept" to the related method claims. Applying a different approach for system claims than for method claims "would reward precisely the type of clever claim drafting that the Supreme Court has repeatedly instructed us to ignore."

We are not here faced with a computer per se. Such are surely patent-eligible machines. We are faced with abstract methods coupled with computers adapted to perform those methods. And that is the fallacy of relying on Alappat, as the concurrence in part does. Not only has the world of technology changed, but the legal world has changed. The Supreme Court has spoken since Alappat on the question of patent eligibility, and we must take note of that change. Abstract methods do not become patent-eligible machines by being clothed in computer language.

Chief Judge Rader's Opinion

Chief Judge Rader filed a concurring-in-part, dissenting-in-part opinion, joined by Judges Linn, Moore, and O'Malley. He stated that the asserted system claims were wrongly ruled ineligible. However, Judges Linn and O'Malley disagreed with the view of Judges Rader and Moore that method and media claims were ineligible. Judge Rader's opinion makes the following points:

Court created subject matter exceptions: The claims are the key to the patent eligibility inquiry into the subject matter exclusions of abstract ideas, laws of nature and natural phenomena and abstract ideas. "Any claim can be stripped down, simplified, generalized, or paraphrased to remove all of its concrete limitations, until at its core, something that could be characterized as an abstract idea is revealed. * * * A court cannot go hunting for abstractions by ignoring the concrete, palpable, tangible limitations of the invention the patentee actually claims."

Specific Claim limitations: A claim may be premised on an abstract idea, but the question is whether the claim contains limitations that meaningfully tie that idea to a concrete reality or actual application of that idea. "The key to this inquiry is whether the claims tie the otherwise abstract idea to a specific way of doing something with a computer, or a specific computer for doing something; if so, they likely will be patent eligible, unlike claims directed to nothing more than the idea of doing that thing on a computer." As explained in Alappat, a special purpose computer, i.e., a new machine, specially designed to implement a process may be sufficient.

Inventive concept and presumption of validity: The "inventive concept" language in the Section 101 inquiry should not be read to conflate patent eligibility principles with validity principles, or to insert an "inventiveness" or "ingenuity" factor into the inquiry. The term is a shorthand for asking whether the recited steps of the claim are inherently required to implement the abstract idea. In footnote 5, Judge Rader complains that Judge Lourie's interpretation of "inventive concept" as the "genuine human contribution" incorrectly injects "ingenuity" into the analysis. The presumption of validity that applies to other validity challenges also applies to patent eligibility challenges under Section 101, which require proof by clear and convincing evidence.

System claims: The system claims are patent eligible. The Supreme Court has said that a useful and important clue to patent eligibility for a method claim may be where the method is tied to a machine; "it would seem that a claim embodying the machine itself, with all its structural and functional limitations, would rarely, if ever, be an abstract idea," Judge Rader observed.

In footnote 7, Judge Rader disagreed with Judge Lourie that a computer must do something other than what a computer does before it can considered patent eligible. Everything done by a computer can be done by a human. Requiring a computer to do something that a human could not would mean that computer implementation could never product patent eligibility. "Indeed, even an increase in speed alone may be sufficient to result in a meaningful limitation." Labeling the claimed system an abstract concept "wrenches all meaning from those words, and turns a narrow exception into one which may swallow the expansive rule (and with it much of the investment and innovation in software)."

The recited steps in the system claim are not inherent in the abstract idea of using an escrow, which can be done without a data processing system that includes a data storage unit coupled to a computer which has been modified by software to receive transactions adjust records, and generate electronic instructions according to specific structural limitations in both software and hardware formats.

Method claims: Writing only for himself and Judge Moore, Judge Rader observed that method claim describes the general and theoretical concept of using a neutral intermediary in exchange transactions to reduce risk that one party will honor the deal, i.e., an escrow arrangement. The question then is whether the recited steps are inherent in an escrow and claimed at a high level of generality, such that in fact the claim is not to a practical application of the concept of an escrow, but in effect claims the abstract concept of an escrow. Judge Rader concluded that each step of the method merely recites a general step inherent within the concept of an escrow, using a third party intermediary in this fashion. While the claim limits use of an escrow to the context of this particular field, that attempted limitation is not enough.

In a separate opinion entitled "Additional Reflections," Judge Rader noted "when all else fails, consult the statute."

Endotach Patent Claims Construed

Fri, 10 May 2013 13:51:41 -0500

Indianapolis, Ind. -- The Southern District of Indiana has construed the claims of two patents-in-suit in the matter of Endotach LLC v. Cook Medical Inc.

In 2012, patent attorneys for Endotach LLC of Frisco, Texas sued Cook Medical Inc. of Bloomington, Ind., alleging infringement of Patent No. 5,122,154, entitled "Endovascular Bypass Graft," and Patent No. 5,593,417, entitled "Intravascular Stent with Secure Mounting Means," both issued by the U.S. Patent Office. The suit, initially filed in the Northern District of Florida, was transferred to the Southern District of Indiana.

The patents, both of which were issued in the 1990s, were granted to Dr. Valentine Rhodes, an award-winning surgeon who practiced in the field of vascular medicine for over 30 years. The patents are directed to intraluminal and endovascular grafts for placement within a blood vessel, duct or lumen to hold it open. As it pertains to this lawsuit, the patents-in-suit are used for revascularization of aneurysms or stenosis occurring in blood vessels which includes anchoring projections to aid in securing the graft in place within the blood vessel.

Upon the death of Dr. Rhodes, the patents-in-suit passed as part of his estate to his wife, Brenda Rhodes. While Mrs. Rhodes remains the owner of the patents, Endotach is the exclusive licensee and has the right to enforce the patents against all infringers.

In its complaint, Endotach asserted infringement of one or more claims in each of the patents-in-suit. It sought a judgment that the patents-in-suit have been infringed, either literally and/or under the doctrine of equivalents; damages, including treble damages; costs; interest; attorneys' fees and an injunction.

In its opinion, the court construed multiple terms:

· The term "stent means" was construed to mean "a generally ring-like, hollow support that is resistant to contraction back to a compact state once it has been expanded"

· The term "resistant to contraction back" was construed to mean "able to withstand the force or effect of"

· The term "tubular member" was construed to mean "tubular member"

· The term "anchoring means" was construed to mean "multiple projections or protuberances with a leading portion and a trailing portion, such that one surface of the trailing portion is positioned at an acute angle relative to the direction of fluid flow"

· The term "projections" was construed to mean "protuberances or parts that extend outward from a surface"

· The term "a leading portion" was construed to mean "part of a projection oriented in the upstream direction of the fluid flow"

· The term "a trailing portion" was construed to mean "part of a projection oriented in the downstream direction of the fluid flow, with at least one portion positioned at an acute angle to the fluid flow"

· The term "at least one surface" was construed to mean "one portion, part or surface of the trailing portion of a projection oriented at an acute angle to the fluid flow"

· The terms "engagement with" and "engaging" were construed to mean "to partly embed, interlock or enmesh"

· The term "tightly" was construed to mean "firmly"

· The term "stent" was construed to mean "a hollow support"

Practice Tip: When construing the terms in the asserted claims of a patent-in-suit, the court must determine the meaning of the language used before it can ascertain the scope of the claims that the plaintiff asserts are infringed. In doing so, the court's interpretive focus is not the subjective intent of the party employing a certain term, but the objective test of what one of ordinary skill in the art at the time of the invention would have understood the term to mean.

Tough Mudder Sues Mudderland for Trademark and Service Mark Infringement

Thu, 09 May 2013 13:56:24 -0500

South Bend, Ind. -- Tough Mudder LLC of Brooklyn, N.Y. sued alleging trademark infringement by Mudderland of Kingsbury, Ind.; and Rick and Susan Hollaway, both of Hebron, Ind. of Tough Mudder trademarks registered under Registration Nos. 3,810,118; 4,131,912; 4,308,918; 4,131,913; 4,241,510; 4,241,512; 4,241,513; and 4,233,607 for marks containing "MUDDER," which have been registered with the U.S. Trademark Office.

Tough Mudder is in the obstacle-course industry with challenges such as multi-mile mud obstacle courses. In the past three years, Tough Mudder has held such challenges in the United States, Canada, the United Kingdom and Australia with over a million registrations. Tough Mudder has been recognized by such well-known news sources as The Wall Street Journal, ESPN, National Geographic and Sports Illustrated.

In addition to federally registered marks, Tough Mudder asserts that it is the owner of common law and federal service mark rights available without registration in the words "Mudder" and "Mudders" for use in connection with various outdoor events. It also asserts common law and federal unregistered service mark rights in the phrases "Walk the Plank" and "Berlins Walls" that are also used in conjunction with outdoor obstacle courses and similar events.

Also in the obstacle-course industry, Rick and Susan Hollaway co-own and co-operate an unincorporated entity named "Mudderland." In 2012, the Hollaways designed, organized and promoted an obstacle-course mud challenge under the name "Mudderland" which was similar to those held by Tough Mudder. In doing so, Tough Mudder alleges that the Holloways were attempting to benefit illegally from Tough Mudder's brand by using the similar name "Mudderland" for an obstacle-course event. The Hollaways also included other similar indicia such as the color orange and similar-or-identical obstacle names. After having been contacted by Tough Mudder, Susan Hollaway agreed to cease using the name "Mudderland" and to abandon the domain name www.mudderland.com.

Despite this purported agreement to discontinue the use of the name "Mudderland" and the associated domain name, Tough Mudder learned in 2013 that the Hollaways had resumed using both. The Hollaways planned to host a 2013 event which would also include an event named "Walk the Plank" and another named "Berlin Wall," both of which are similar to names claimed by Tough Mudder. The Holloways' "Mudderland" website is again using the same color scheme as Tough Mudder's website, with orange as the predominant color.

Trademark lawyers for Tough Mudder brought this case after the Holloways failed to abide by the alleged earlier agreement by the Holloways to cease what the complaint calls their "admittedly infringing activity" of Tough Mudder's "extraordinarily valuable trademark rights."

Tough Mudder claims that its first use in commerce of both the Tough Mudder mark and the Mudder family of marks predate the Hollaways' first use and therefore Tough Mudder's use of the marks has priority. The complaint asserts that, in addition to the constructive notice of the Mudder marks provided by the federal trademark registrations, the Holloways also had actual notice of Tough Mudder's rights in the marks as of May 21, 2012 when Tough Mudder sent the first cease-and-desist letter via e-mail to the Hollaways. Further, it is asserted that the Holloways knew of Tough Mudder's rights and acted with wanton disregard for those rights and with the willful intent of benefiting from the goodwill of the Tough Mudder marks. Tough Mudder asserts that the Hollaways' actions are likely to cause confusion, to cause mistake and to deceive consumers as to the source, nature and quality of the goods and services offered by the Hollaways and/or Tough Mudder.

Tough Mudder's complaint lists ten counts:

· Count 1: Federal and State Trademark Infringement

· Count 2: Trade Name Infringement

· Count 3: State Trademark Infringement

· Count 4: Federal Statutory Unfair Competition

· Count 5: False Designation of Origin

· Count 6: Common Law Unfair Competition

· Count 7: Trademark Dilution, § 1125(c)

· Count 8: Trademark Dilution, Indiana Code § 24-2-1-13.5

· Count 9: Violation of the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)(1)(A)

· Count 10: False Advertising, 15 U.S.C. 1125(a)

Tough Mudder lists 20 separate requests for relief, among them: preliminary and permanent injunctions; transfer of the domain name www.mudderland.com to Tough Mudder; destruction of infringing items; an accounting of the profits by Mudderland attributable to infringement or other wrongful conduct; an accounting of damages to Tough Mudder; statutory damages; punitive and/or treble damages; costs of the action; and attorneys' fees.

Practice Tip: There are facts weighing in favor of both parties in this case and, perhaps, that is why the Hollaways have decided to continue with the allegedly infringing activities. Tough Mudder has in its favor such elements as similarity of various names, along with use of the color orange, in conjunction with muddy endurance races. On the other hand, courts are reluctant to set aside colors for any one entity (see here). Also, both the terms "Mudder" (a racehorse that runs well on a muddy racetrack) and "Mudderland" (when considered to be a whimsical spelling of "Motherland") have meaning independent of any given to them through commercial use.

Malibu Media Sues Twenty-Eight Additional "John Doe" Defendants for Copyright Infringement

Wed, 08 May 2013 13:16:27 -0500

Indianapolis, Ind. -- Malibu Media, LLC of Los Angeles, Calif. has sued twenty-eight "John Does" for copyright infringement in separate complaints filed in the Northern District of Indiana and Southern District of Indiana.

Copyright lawyer Paul Nicoletti is again in federal court on behalf of Malibu Media. The company has filed twenty-eight similar lawsuits claiming copyright infringement. The "John Doe" defendants allegedly used the BitTorrent file-sharing protocol to illegally download, copy and distribute elements of various works of Malibu Media's copyrighted material.

We have previously blogged about Malibu Media here and here. We have also blogged about some of the other copyright-infringement litigation filed by Paul Nicoletti here.

Malibu Media seeks a permanent injunction against infringing activities; an order by the court to remove infringing materials from all computers of each defendant; an award of statutory damages of $150,000 per infringed work and reasonable attorneys' fees and costs.

Practice Tip: The actions of companies such as Patrick Collins and Malibu Media have been called "extortionate" and, in at least one case, a class action suit has been filed against these "trolls." The issue of "trolls" has also caught the attention of at least one U.S. lawmaker. Senator Charles Schumer has proposed legislation wherein the U.S. Patent and Trademark Office would review patent infringement suits before they could be filed in court. Of course, such legislation is not directly relevant to actions sounding in copyright, such as the multiplicity of lawsuits filed by Malibu Media. It may, however, sound a warning bell that tolerance of the questionable activities of intellectual-property trolls of all varieties is wearing thin.

Manchester University Sues Sportswear for Trademark Infringement

Mon, 06 May 2013 11:31:32 -0500

Ft. Wayne, Ind. -- Trademark lawyers for Manchester University, Inc. ("Manchester") of North Manchester, Ind. sued Sportswear, Inc. of Seattle, Wash. alleging trademark infringement of the "Manchester University" trademark, Registration No. 3,375,265, which is registered with the U.S. Trademark Office.

Manchester is an independent, liberal-arts university with campuses in North Manchester, Ind. and Fort Wayne, Ind. It owns a federal trademark for "Manchester University." The use of the Manchester mark dates back to 1895.

Sportswear, doing business as "Prep Sportswear" and "Campus Team Shop," operates the "Manchester University Spartans Apparel Store" as part of its online presence. The store carries items for men, women and children including assorted shirts, sweatshirts, pants, hats and accessories that bear the name "Manchester," often with another word or words (e.g., "Spartans" or "University").

Manchester has sent at least two letters to Sportswear asking it to discontinue selling goods bearing these markings, which Manchester claims infringe upon its trademark. Despite these requests to stop, Sportswear continues to sell goods bearing the Manchester name.

In counts one and two of its complaint, Manchester alleges federal trademark infringement under §§ 32 and 43 of the Lanham Act, respectively. Count three asserts trademark infringement and unfair competition under common law. Manchester further contends that Sportswear's infringement is intentional, deliberate and willful.

Manchester asks for preliminary and permanent injunctions; damages, including treble damages; Sportswear's profits; interest; costs and attorneys' fees. It also lists a separate request for punitive damages.

Practice Tip:

Litigation can be time consuming and expensive for parties. To best protect their clients, litigators usually have the possibility of settlement in mind. In a settlement, no one typically gets "everything they want." Everyone, however, usually gets something (even if it's merely paying less in damages than they would likely pay after a trial). But, to settle, parties need to find common ground. Sometimes, instead of finding that common ground, they seem determined to compound the dispute.

This case is an interesting illustration wherein, even in the complaint, one can see the parties moving farther apart. For example, the complaint includes several exhibits. One shows a page from the Sportswear website from September 2012 advertising "Manchester College" goods. A September 2012 letter from Manchester College asked Sportswear to cease infringing. A November 2012 letter followed, also demanding that the unauthorized use of the "Manchester" name cease. In that letter, written on Manchester University stationery, the attorney for Manchester also noted that the institution's name had been changed from "Manchester College" to "Manchester University."

Instead of evidence of an attempt to reach an understanding, and also visible in the exhibits to the complaint, is Sportswear's response. The screenshots of its website that had been captured prior to the letter from "Manchester University" showed "Manchester College" apparel available for sale. After Manchester's attorney mentioned the name change in the subsequent letter, Sportswear began carrying new merchandise bearing the "Manchester University" name. For example, under "New Stuff" on the Sportswear website, you can find items featuring "Manchester University Spartans," apparently designed and ordered after (and, perhaps, somewhat ironically, as a result of) receiving the November 2012 cease-and-desist letter. Sportswear has also added a disclaimer to its "Manchester University Spartans Apparel Store" in an attempt to avoid liability: "This store is not sponsored or endorsed by Manchester University."

District Court Dismisses Two Counts in Konecranes' Suit Against Industrial Crane Service

Fri, 03 May 2013 09:14:08 -0500

Indianapolis, Ind. -- The Southern District of Indiana has dismissed two of four claims by Konecranes, Inc. of Pascagoula, Miss. against Industrial Crane Service, Inc. of Pascagoula, Miss. and Brian Scott Davis of Marion County, Ind.

Plaintiff Konecranes, Inc. ("Konecranes") provides lifting equipment and services to various clientele including manufacturing and process industries, shipyards, ports and terminals. To serve its customers, Konecranes enters into agreements with subcontractors to assist it in the performance of the maintenance agreements it has entered into.

Industrial Crane Service, Inc. ("ICS") has served as a subcontractor for Konecranes, although ICS and Konecranes also compete for customers to enter into maintenance agreements with them directly.

Brian Scott Davis ("Davis") was employed at Konecranes as a Service Manager. During that employment, he and Konecranes entered into a noncompetition and confidentiality agreement, which contained provisions to keep certain Konecranes information confidential. Davis and ICS both worked for Konecranes on various maintenance and service contracts with Nucor Sheet Metal Group ("Nucor") and Steel Dynamics Incorporated ("SDI").

In May 2012, Davis resigned from Konecranes and began working for ICS. Since Davis began working for ICS, Nucor has cancelled purchase orders with Konecranes and SDI did not renew an existing purchase order with Konecranes. Instead, both have contracted with ICS to perform the work. Konecranes also alleged that Davis and ICS have been actively soliciting other customers to change their crane maintenance provider from Konecranes to ICS.

In response to the activities of Davis and ICS, Konecranes sued for injunctive relief and damages, asserting claims for: (1) breach of contract, (2) breach of fiduciary duty and/or duty of loyalty, (3) tortious interference with contractual relationships and (4) unfair competition. Davis and ICS moved to dismiss the claims for tortious interference with contractual relationships and unfair competition.

The court granted the motion on both counts. On the claim of tortious interference with contractual relationships, the court found that the plaintiff had "pled itself out of court" by admitting in its pleadings that an element of its claim was not present. Under Indiana law, the elements of a claim for tortious interference with a contract are: (1) the existence of a valid and enforceable contract; (2) defendant's knowledge of the existence of the contract; (3) defendant's intentional inducement of breach of the contract; (4) the absence of justification; and (5) damages resulting from defendant's wrongful inducement of the breach.

While Konecranes did allege the element of "absence of justification" in its complaint, it also alleged that Davis and ICS had induced Nucor, SDI and others to break their contracts with Konecranes, or not renew them, so that ICS could gain their business. The court held that this amounted to an acknowledgement that the actions of Davis and ICS were motivated at least in part by a legitimate business interest -- their own desire to secure new customers. The court held that this constituted justification under Indiana law. Having admitted in its pleadings that it lacked an element of this claim, Konecranes was barred from pursuing it.

On the claim of unfair competition, the court cited the Indiana Uniform Trade Secret Act, Ind. Code § 24-2-3-1(b) and (c) (the "IUTSA") which "'abolishes...causes of action for theft or misuse of confidential, proprietary, or otherwise secret information falling short of trade secret status...." It held that, under the facts of the case, Konecranes' unfair competition claim was preempted by the IUTSA and not cognizable under Indiana law.

Practice Tip: As the court notes, while the claim under unfair competition failed, Konecranes may still pursue claims for misappropriation of information or ideas that are protected by contract. This is a good reminder to those whose practice of law includes shielding sensitive information from disclosure: if you want it protected, get it in writing.

Patent Office Issues 199 Patents To Indiana Citizens in April, 2013

Thu, 02 May 2013 10:19:27 -0500

The US Patent Office issued the following 199 patent registrations to persons and businesses in Indiana in April, 2013, based on applications filed by Indiana Patent Attorneys:

	PAT. NO.	Title
1	D681,205	Intervertebral body spacer implant
2	D681,204	Lumbar-sacral interbody spacer implant
3	D681,174	Faucet spout
4	D681,169	Faucet
5	D681,168	Faucet
6	D681,167	Faucet body
7	D681,166	Faucet
8	D681,165	Faucet
9	8,433,488	System and method for controlling engagement of a lockup clutch in a torque converter
10	8,433,391	Site marker

163 Trademark Registrations Issued to Indiana Companies in April, 2013

Wed, 01 May 2013 12:14:57 -0500

The US Trademark Office issued the following 163 trademark registrations to persons and businesses in Indiana in April, 2013, based on applications filed by Indiana Trademark Attorneys:

	Reg. Number	Mark	Click to View
1	4324437	MPC	View
2	4326145	WARBIRD DIGEST	View
3	4324176	DEX 360	View
4	4324174	DEX	View
5	4323979	MEDIBEACON	View

Gravity Defyer Sues Under Armour and Multiple Retailers, Including Indiana-Based Finish Line, for Trademark Infringement of G Defy Mark

Mon, 29 Apr 2013 12:37:54 -0500

Los Angeles, Calif. -- Trademark lawyers for Gravity Defyer Corporation of Pacoima, Calif. sued Under Armour, Inc. of Baltimore, Md., sixteen retailers and nine "Doe" defendants alleging infringement of the trademarked "G Defy," Registration No. 3,749,223, which is registered with the U.S. Trademark Office.

Gravity Defyer has been engaged in the business of manufacturing and selling specialty shoes in the U.S. and elsewhere since 2006, primarily online and through catalogs. The patent-pending shoes and related products are sold under the mark "G DEFY®." Recently, Gravity Defyer became aware of Under Armour's use of "G Defy" in the U.S. and elsewhere for similar specialty shoes.

Under Armour, Inc. and nine unidentified "Does" were listed as defendants in the original trademark-infringement complaint. Gravity Defyer recently amended its complaint, adding Finish Line, Inc. of Indianapolis, Ind., Foot Locker, Inc. of New York, N.Y., Nordstrom, Inc. of Seattle, Wash., Dick's Sporting Goods, Inc. of Albany, N.Y., Champs Sports, Inc. of Tarrytown, N.Y., Sport Chalet, Inc. of La Canada, Calif., Amazon.com, Inc. of Turnwater, Wash., Zappos IP, Inc. of Henderson, Nev., Backcountry.com, Inc. of Park City, Utah, Rogan's Shoes, Inc. of Racine, Wis., Road Runner Sports Retail, Inc. of San Diego, Calif., MonkeySports, Inc. of Corona, Calif., Holabird Sports, LLC of Baltimore, Md., Eastbay, Inc. of Madison, Wis., and Dodd Shoe Company, Inc. of Laramie, Wyo.

Under Armour uses the mark "Micro G Defy" on shoes. In the complaint, Gravity Defyer alleges that Under Armour's use of the G Defy mark as part of "Micro G Defy," particularly for shoes having similar features, is likely to cause confusion, mistake or deception. Gravity Defyer alleges that those encountering defendants' products may mistakenly assume, at least initially, that Under Armour products are in some way connected with Gravity Defyer.

Gravity Defyer further asserts that, as a result of the care and skill it has exercised in the conduct of its business, the high quality of its products offered under its marks, and the long-running advertising, sale and promotion of Gravity Defyer's products bearing the marks, the marks have acquired secondary meaning. It also contends that Under Armour infringed purposely and with the wrongful intent of trading upon Gravity Defyer's goodwill.

The complaint lists two counts, each against all defendants: trademark infringement under federal law and unfair competition under California law. It asks for a preliminary and permanent injunction; for a finding that this is an exceptional case; for damages, including enhanced damages; and for costs and expenses. Gravity Defyer has demanded a jury trial.

Practice Tip: Under Armour is no stranger to trademark infringement suits. In 2012, it sued BodyArmor, a maker of sports drinks, alleging that BodyArmor's name and logo infringed upon Under Armour's trademarks. In February 2013, it sued Nike alleging trademark infringement of Under Armour's advertising phrase "I will."