Indianapolis, Indiana – Attorneys for Plaintiff, National Federation of Professional Trainers, Inc. (“NFPT”) of Lafayette, Indiana, filed suit in the Northern District of Indiana alleging that Defendant, Carrington College, Inc. (“Carrington”) of Sacramento, California, infringed its rights in United States Copyright Registration No. TX 8-515-798 (“NFPT 0241 Exam”). Plaintiff further alleges misappropriation of trade secrets, breach of contract, and fraud. Plaintiff is seeking damages, profits received from unauthorized copying and distribution of the copyrighted work, attorney’s fees, costs, and injunctive relief.
NFPT creates and administers examinations for the certification of personal trainers. Their certification programs have been accredited by the National Commission for Certifying Agencies since 2005. Carrington has utilized NFPT’s examinations and educational materials as a part of its Physical Therapy Technology Program. At the end of the course, students were able to sit for the NFPT certification exam for the opportunity to become a certified personal trainer upon obtaining a “passing” score.
Carrington administered an NFPT examination December 10, 2015 via their proctor, Mr. Phillip Schauer (“Schauer”). As proctor, Schauer had to sign a confidential disclosure agreement, which included maintaining the confidentiality of the exams and not duplicating any of the testing materials. The December 10, 2015 exam produced extremely abnormal results for the students’ test scores. Of the twenty-six candidates, fifteen had identical or similar response strings while the remaining candidates response strings differed by a maximum of four responses out of 120. All of the candidates obtained a “passing” score. Due to the abnormalities in the results, NFPT voided the results and required all candidates to retake the examination with new questions on August 26, 2016. Only six candidates chose to retake the exam and of those, only two obtained a passing score.
After further investigation, NFPT discovered that employees of Carrington, including Schauer had made copies of the NFPT examinations and distributed them for their students to memorize. NFPT also found that Schauer had a criminal history including fraud, false statements, and theft by misrepresentation, which was overlooked or never looked into by Carrington. In response to the results of their investigation, NFPT sent Carrington a demand letter on September 12, 2017. Included in that letter, NFPT informed Carrington that they would no longer be providing educational or certifying examination materials to the school. Further, NFPT demanded all NFPT materials remaining on campus be collected and returned to NFPT immediately. Carrington failed to respond to that letter and this suit was filed in response.
Indianapolis, Indiana – Attorneys for Plaintiff, FOTOHAUS, LLC (“Fotohaus”) of Tallahassee, Florida filed suit in the Southern District of Indiana alleging that Defendant, OFS BRANDS, INC (“OFS”) of Huntingburg, Indiana infringed its rights in United States Copyright Registration No. VA 1-832-736 photograph titled “Light Collector” (“Photograph”). Plaintiff is seeking statutory damages, actual damages, Plaintiff’s costs, and attorneys’ fees.
The Photograph in question was first captured by Daniel Foster, Manager of Fotohaus, in Shanghai, China on July 1, 2010. Foster posted the Photograph to his Flickr account on July 13, 2010 and later registered the Photograph with the United States Copyright Office on July 17, 2012. Fotohaus was assigned the copyright to the Photograph on March 8, 2017. On or about June 2, 2016, OFS copied the Photograph and posted it to their commercial website accompanying a post advertising the design of a product they offered. Defendant also posted a copy of the Photograph on their Twitter page on June 6, 2016.
Fotohaus mailed their first letter identifying the infringement of the Photograph to OFS on September 5, 2017 demanding among other things that OFS remove the infringing material. At least ten communications between the Plaintiff and Defendant occurred between October 17, 2017 and February 19, 2018. The offending Twitter post was not removed by OFS until February 19, 2018. Plaintiff claims the Defendant not only violated their exclusive rights of reproduction and distribution, but the act of infringement was willful, intentional, and without regard to the rights of the Plaintiff. For this, Plaintiff is requesting a declaration that Defendant’s unauthorized conduct violated Plaintiff’s rights under the Federal Copyright Act, maximum allowable statutory damages, and actual damages.
Fort Wayne, Indiana – Attorneys for Plaintiff, North American Van Lines, Inc. (“NAVL”) of Fort Wayne, Indiana filed suit in the Northern District of Indiana alleging that Defendant, North America Moving & Storage, Inc. of Miami Beach, Florida infringed its rights in United States Trademark Registration No. 917,431 for the mark “NORTHAMERICAN”. Plaintiff is seeking damages, exemplary damages, punitive damages, attorney’s fees, pre-judgment and post-judgment interest.
Counts one and two of the Plaintiff’s Complaint allege Federal Trademark Infringement and Federal Unfair Competition, both under the Lanham Act. Plaintiffs allege that the Defendant’s use of “NORTH AMERICA” and “NORTH AMERICA MOVING SYSTEMS” (“Infringing Marks”) has caused and will continue to cause confusion, deception, and mistake by giving the impression that the Defendant’s services originate from the Plaintiff or are associated with the Plaintiff. Further, Plaintiffs claim there has been actual consumer confusion as to the source of transportation services sold and advertised by the Defendant. NAVL also asserts that Defendant has taken part in multiple deceptive acts including making false representations, false descriptions, and false designations of origin of its services, providing for unfair competition.
Count three claims that Defendant registered and is using the northamericamoving.com domain name in bad faith under the Anticybersquatting Consumer Protection Act. NAVL alleges that Defendant is using the name without their permission and that Defendant’s intent in registering and using the domain name was and is to divert consumers from NAVL’s own websites. Count four of the Complaint alleges Indiana Trademark Infringement for Defendant’s use of a reproduction, colorable imitation, or copy of NAVL’s marks in connection with the sale, or offer of, distribution, and advertising of goods and services. Finally, Count five alleges Common Law Unfair Competition for consumer confusion and deception by Defendant’s use of the Infringing Marks.
Indianapolis, Indiana – Attorneys for Plaintiff, Secure Cam, LLC of Sheridan, Wyoming originally filed suit in the Northern District of California alleging that Defendant, Project Nursery, LLC of San Francisco, California infringed its rights in United States Patent No. 7,257,158, (“the ‘158 Patent”) for “System for Transmitting Video Images over a Computer Network to a Remote Receiver”. As of June 21, 2018 this case has been transferred to the Southern District of Indiana. Plaintiff is seeking damages, costs, expenses, pre-judgment and post-judgment interest.
Plaintiffs allege that the Defendant’s face recognition readers and license plate recognition cameras that they manufacture, import into the United States, or offer for sale, and/or sell infringe at least Claim 12 of the ‘158 Patent. Other products alleged to infringe the ‘158 Patent include: Project Nursery 5” HD Dual Connect Wi-Fi Baby Monitor System, Project Nursery 4.3 Baby Monitor System with 2 Digital Zoom Cameras, Project Nursery Video Baby Monitor System with Digital Zoom Camera, Project Nursery 5” High Definition Baby Monitor System with 1.5” Mini Monitor, Project Nursery 4.3” Baby Monitor System with 1.5” Mini Monitor, and Project Nursery 4.3” Baby Monitor System. In the Complaint, plaintiffs point out seven separate elements included in the allegedly infringing products that are all elements in Claim 12 of the ‘158 Patent.
Indianapolis, Indiana – Attorneys for Plaintiff, Eli Lilly and Company of Indianapolis, Indiana filed suit in the Southern District of Indiana alleging that Defendants, Dr. Reddy’s Laboratories, LTD. of Hyderabad, Telagana, India, and Dr. Reddy’s Laboratories, Inc,. a New Jersey corporation, infringed its rights in U.S. Patent No. 7,772,209 (“the ‘209 Patent”).
The ‘209 Patent at issue here is a method patent for administering pemetrexed disodium, a chemotherapy drug, with vitamins, the combination of which is marketed as ALITMA® by Lilly. This invention helps to solve the toxicity issue in chemotherapy patients being treated with pemetrexed. The particular regimen of vitamin and folic acid are important for the pretreatment of these patients. As of December 2015, Dr. Reddy’s informed Lilly that it had submitted a FDA New Drug Application for a product that would be marketed as a competing product to ALITMA®.
The first issue the Court had to decide was whether Lilly was barred from asserting the doctrine of equivalents under prosecution history estoppel. The Court held that Lilly had not surrendered the equivalent in question because their decision to use the choice pemetrexed salt was tangential to the reasons for the amendment. The choice to narrow was simply to overcome a rejection in view of a prior art article about a different antifolate, methotrexate.
The second issue was the disclosure-dedication doctrine rule. When a patentee discloses, but does not claim certain subject matter, the disclosure-dedication rule bars a doctrine of equivalents claim. Dr. Reddy’s claimed that because the ‘209 Patent referenced U.S. Patent No. 4,997,838 (“the ‘838 Patent”) and pemetrexed ditromethamine was disclosed as an alternative in that patent, Lilly should be barred from asserting a doctrine of equivalents claim. However, the Court found that because the ‘838 Patent was not expressly incorporated in the ‘209 Patent and the ‘838 Patent did not specifically disclose pemetrexed ditromethamine as an alternative to pemetrexed disodium, the doctrine of equivalents claim was not barred.
The main issue for this case was whether the use of pemetrexed ditromethamine product on Dr. Reddy’s label infringed the ‘209 Patent’s use of pemetrexed disodium, under the doctrine of equivalents. First, the Court needed to determine if the definition for a relevant POSA would be a chemist, as Dr. Reddy’s would prefer, or an oncologist, Lilly’s preferred definition. The Court found that the “relevant POSA who works to mitigate the toxicities of chemotherapy would be an oncologist.” Next, the Court had to determine if the function, way, result test, or the insubstantial differences test should be applied to the facts at hand. The Court decided that because the equivalency was based on chemical properties, the insubstantial differences test was more appropriate. Finally, under the context of this situation, the Court found that the pemetrexed ditromethamine and pemetrexed disodium treat a patient’s cancer in exactly the same way and that Dr. Reddy’s product was equivalent to Lilly’s product.
Finally, because the Court found that Dr. Reddy’s product infringes the ‘209 Patent, Dr. Reddy’s would induce and contribute to the infringement of the ‘209 Patent. Dr. Reddy’s product does not have any substantial use that would be noninfringing, so a physician administering the product would directly infringe the ‘209 Patent.
Practice Tip: Disclosure-Dedication Rule:
A generic reference to a written specification does not automatically dedicate all members of a particular genus to the public. “Rather, the ‘disclosure must be of such specificity that one of ordinary skill in the art could identify the subject matter that had been disclosed and not claimed.’Additionally, in Pfizer Inc. v. Teva Pharmaceuticals, USA, Inc., 429 F.3d 1364 (Fed. Cir. 2005), this court further clarified that ‘before unclaimed subject matter is deemed to have been dedicated to the public, that unclaimed subject matter must have been identified by the patentee as an alternative to a claim limitation.’” See SanDisk Corp. v. Kingston Technology Co., Inc., 695 F.3d 1348, 1363 (Fed. Cir. 2012).
Overhauser Law Offices the publisher of this site, assists with US and foreign trademark searches, trademark applications and assists with enforcing trademarks via infringement litigation and licensing.
In 2017, Arla Foods launched a $30 million advertising campaign focused on expanding its cheese sales in the U.S. These advertisements included ads featuring a seven-year-old girl describing recombinant bovine somatotropin (“rbST”), an artificial growth hormone used to treat cows, as a type of monster. The ads implied that milk from cows that were treated with rbST was unwholesome and unnatural, therefore not good for your family.
Elanco makes the only FDA-approved rbST supplement, marketed under the name Posilac®. After the Arla campaign launched, Elanco filed suit alleging that Arla was in violation of the Lanham Act and simultaneously moved for a preliminary injunction with supporting copies of ads, evidence that a major cheese distributor decreased its purchasing of rbST in response to the ad campaign, and scientific literature pertaining to rbST’s safety. The district judge issued the requested injunction and later modified the injunction to cure technical deficiencies.
Arla then appealed to the Seventh Circuit Court of Appeals arguing that because Elanco did not conduct consumer surveys, failed to submit other evidence of actual consumer confusion, and did not submit enough evidence to link the ad campaign and the decrease demand for rbST, the preliminary injunction was improper. Arla also claimed the injunction, even after modified, was vague, overbroad, and lacking adequate factual findings.
The Seventh Circuit affirmed the district court finding that consumer surveys and other hard evidence are not necessary at the preliminary injunction stage. Further, the harm was easily traceable from the advertisement as Elanco is the only FDA-approved rbST provider on the market. Finally, the court found the modified injunction to be adequately supported and sufficiently definite.
Practice Tip: The Lanham Act provides for a national system of trademark registration and protects owners of registered marks against the use of similar marks that are likely to result in customer confusion or trademark dilution.
Plaintiffs asserting a legal claim for deceptive-advertising under the Lanham Act must establish that (1) the defendant made a material false statement of fact in a commercial advertisement; (2) the false statement actually deceived or had the tendency to deceive a substantial segment of its audience; and (3) the plaintiff has been or is likely to be injured as a result of the false statement. See Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813, 819 (7th Cir. 1999).
The initial Complaint for this case was filed on April 8, 2015. Defendant served their invalidity contentions in October 2015 and deposed the ‘327 patent’s inventor in January of 2016. During the deposition, the inventor stated in regards to an addition to overcome an examiner’s rejection, “I realize there is nothing novel about it.” Defendant then petitioned the U.S. Patent and Trademark Office for inter partes review (IPR) of all the claims. The District Court case was stayed pending the outcome of the petition for an IPR based off a joint motion.
After the IPR was instituted in September 2016, Plaintiff offered to license the ‘327 patent to Defendant for $150,000.00. Negotiations fell through and the settlement did not occur. Plaintiff then filed a motion requesting an adverse judgment in the IPR proceeding in December 2016 and moved to dismiss the District Court case with prejudice, both of which were granted.
Defendant filed its § 285 Motion in March 2017, but the motion was denied as the District Court determined the case was not “exceptional.” Defendant appealed the decision, but the decision was affirmed after it was reviewed for abuse of discretion by the United States Court of Appeals for the Federal Circuit (CAFC). The CAFC found that the substantive strength of the Plaintiff’s litigation position did not warrant an award of fees even though they were the non-prevailing party. Further, they found the Plaintiff’s conduct in other litigation did not rise to the level of “exceptional” to justify an award of fees for filing suits and forcing nuisance settlements.
Practice Tip: A “court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285. “[A]n ‘exceptional’ case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. .1749, 1756 (2014).
This lower court case was assigned to District Judge Larry J. McKinney and Magistrate Judge Tim A. Baker in the Southern District of Indiana, and assigned Case No. 1:16-cv-00858-LJM-TAB. The appeal was before Chief Circuit Judge Sharon Prost, Circuit Judge Evan J. Wallach and Circuit Judge Richard G. Taranto with Judge Wallach writing the Opinion, Court of Appeals for the Federal Circuit Court of Appeals, Case. No. 2017-2330.
Indianapolis, Indiana – Attorney for Plaintiff, Linda Matlow of Chicago, Illinois filed suit in the Southern District of Indiana alleging that Defendant, Rodgers Broadcasting Corp. of Richmond, Indiana, infringed its rights to the “Parr Photo” registered on December 7, 2011 with the U.S. Copyright Office, Registration NumberVAu 1-085-861. Plaintiff is seeking actual and/or statutory damages, costs, attorney’s fees, an injunction, and any other relief as is just and proper.
Plaintiff’s Attorney, Bell, has filed many lawsuits on his own behalf asserting copyright infringement in Indiana federal courts. Bell has been unsuccessful as a plaintiff in many of his own infringement cases and has been ordered to pay the Defendant’s fees as a result. See:
According to the complaint, the Plaintiff took the photograph in question in the 1980’s and proceeded to register the photograph with the U.S. Copyright Office in 2011. Plaintiff alleges that the Defendant infringed on her copyright when its subsidiary KMIX 106.9 published the photograph on their Twitter account in 2017.
In addition to alleging copyright infringement, the Plaintiff alleges that the Defendant allowed third parties to copy the photograph from their Twitter account. Therefore, the Plaintiff alleges that the Defendant is vicariously liable for every instance that the photograph was downloaded from their account by a third party. Plaintiff is further seeking damages for all profits resulting from the third-party downloads.