Maryland Intellectual Property Law Blog : Maryland Intellectual Property Lawyer & Attorney : Brian Wm. Higgins : Serving Baltimore, Columbia, Frederick

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     Below is a summary of the IP-related cases filed in the the U.S. District Court for the District of Maryland during the week beginning October 11, 2007 (source: Justia). This time, two patent cases and a trademark case make up the week's docket:

• American Silver LLC v. General Resonance LLC, No. 07 Civ 02807, filed Oct. 15, 2007

     Plaintiffs are American Silver LLC and its subsidiary American Biotech Labs LLC, both Utah companies. ABL owns U.S. Patent No. 7,135,195 and several other patents directed to silver products used in the life sciences field.

     Defendant General Resonance LLC is a Nevada company with its corporate headquarters located in Havre de Grace, MD. Defendants Juliana Brooks and Mark Mortenson are reportedly residents of Maryland. Ms. Brooks is allegedly the Senior Managing Director of General Resonance. Mr. Mortenson is allegedly a lawyer licensed to practice in Virginia and registered to practice before the PTO. According to court papers, Mr. Mortenson acts as General Resonance's general counsel.

     Plaintiffs seek to quiet title to the ownership interests of an invention and related patent applications, including PCT/US05/047699. Other counts in the complaint include fraud, misrepresentation, breach of fiduciary duty, fraud by concealment, constructive fraud, breach of contract, conversion, misappropriation of scientific ideas, negligent misrepresentation, tortious interference, legal malpractice, and civil conspiracy.

     George Ritchie of Venable filed the complaint on behalf of the plaintiffs. 

• Raymond Geddes & Company, Inc. v. J. Rousek Toy Co. Inc.,No. 07 Civ 02818, filed Oct. 16, 2007

     On October 11th, Raymond Geddes & Co., Inc. a Maryland company with its headquarters in Baltimore, MD, sued Los Angeles, CA-based Nakajima USA, Inc. for alleged infringement of its U.S. Patent No. 6,158,871, which is directed to an "Illuminated Ball-Point Pen" (advertisement). Infringement allegations were based on Nakajima's sale of the Hello Kitty light up pen. (Related post).

     In the present case, Raymond Geddes has sued J. Rousek Toy Co., a Bishop, CA company apparently doing business as Giggletime Toy Co.  In this matter, however, Raymond Geddes is asserting its U.S. Des. Patent No. 550,772, which is directed to a design for an "eraser cap for a writing instrument."

     Infringement allegations in the complaint are based on Rousek's sale of an eraser cap advertised as the "Extendo" cap. 

     Sterne Kessler's Tracy-Gener Durkin filed the complaint on behalf of Raymond Geddes.

• Nutramax Laboratories, Inc. v. Newton-Everett, L.L.C.,  No. 07 Civ 02833, filed Oct. 18, 2007

     This is a false advertising action under the Lanham Act against Newton-Everett, which Nutramax Labs alleges manufactures, markets, and sells a joint health supplement for cats and dogs called COSEFLEX that competes directly with Nutramax's COSEQUIN. Nutramax is a Maryland corporation based in Edgewood, MD, and claims to have "started the glucosamine/chondroitin sulfate revolution." Newton-Everett is a Scottsdale, AZ company (jurisdiction is predicated on website sales in the Maryland forum).  The single count in the complaint is for violation of Sec. 43(a) of the Lanham Act (false advertising).

     Robert Bowie of Bowie & Jensen LLC filed the complaint on behalf of Nutramax.

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New PTO Rules

Patent practitioners and others are keenly aware of the looming effective date for the new "claims and continuation" practice rules (November 1st, in case you forgot). Here are what people are saying about the pending rules.

• Peter Weissman at Blank Rome suggests that "[i]t may be prudent to describe patentably “distinct” subject matter in separate applications rather than combining common subject matter in a single application. This could support an argument that the claims are truly patentably distinct"
  
  
• Dr. Charles F. Louis, Vice Chancellor for Research, University of California, Riverside said in testimony before the Senate Judiciary Committe "any rules promulgated by the U.S. Patent and Trademark Office that make it more burdensome and expensive for universities to obtain patents on their inventions, such as the new claims and continuation rules, would be detrimental to university technology transfer." (Source: IPWatchdog)
  
  
• Hal Wegman at Foley notes that "[i]f cloture is voted by the Senate on patent reform and ultimately patent reform includes the House-passed version on delegation of rulemaking authority, whatever happens in the near term on Continuation Rules will be superseded by the new law. Yet, the great bulk of the focus of the patent community is on the sideshow in Alexandria." (Source: PatentHawk)
  
  
• That "sideshow" includes GlaxoSmithKline's Motion for Temporary Restraining Order and Preliminary Injunction to halt implementation of the new PTO rules. A hearing on GSK's motion is set for October 31, 2007.

Favorable Patent Lawsuit Forums

Move over Eastern District of Texas, more and more other districts are being eyed as the place to file patent lawsuits, especially since patent reform will make it harder to go forum shopping. Take the Western District of Wisconsin, for example, mention of which continues to be linked with terms like "speedy justice."  The Wisconsin court boasts a filing-to-trial time of 11.3 months, which compares to a pokey 12 months at the Eastern District of Virginia (the average, in case you're wondering, is about 22 months, so says Dewey Ballentine co-authors last year in an IPToday article).

Patent Reform

It's no secret that the bio industry is against patent reform. At last week's 2007 Mid-Atlantic Bio Conference, held in Bethesda, MD, a representative from the Biotechnology Industry Organization (BIO) made the organization's views plainly clear in a presentation about patent reform legislation. Saying that bio was being thrown in front of the bus to save the IT industry, BIO urged member organizations to call their Senators to fight passage of the legislation.

Tired of Trademark Oppositions? Call Your Senator

In an opinion issued last week relating to a lawsuit against the PTO, the Fourth Circuit Court of Appeals overturned an Eastern District of Virginia decision, effectively sanctioning the practice used by Montana Congressmen of using the political appropriations process to halt the registration of the trademark THE LAST BEST PLACE, which was being sought by a Nevada company. Hopefully, I'll have more on this later (here's a preview: "Senate approves ‘Last Best' measure").

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Summary:  Seeking only minimal recognition for his Baltimore Ravens logo design, Baltimore amateur artist ends up seeking certiori from the Supreme Court in his copyright infringement case, winds up with no damages award

     So how much is an NFL franchise team logo worth? Just ask Frederick Bouchat, who sued the Baltimore Ravens and the National Football League Properties (NFLP) over their use and licensing of a logo that closely resembled a drawing Bouchat faxed the Ravens back in 1995. All Bouchat asked in return was a letter of recognition and an autographed helmet, a small reward from a team and League making millions in revenues at the time.

     After a lengthy bifurcated copyright infringement trial, the District Court for the District of Maryland found that the Ravens had infringed Bouchat's copyrighted work. The Court of Appeals for the Fourth Circuit affirmed the trial court decision. His damage award, however, was zero (and he's still waiting for his recognition letter and autographed helmet). Bouchat then sued the NFL's licensees, and won again. However, he was not so lucky when it came to seeking damages.

     Under 17 U.S.C. § 504(a)(1), a copyright owner may seek actual damages plus any additional profits of the infringer. Under 17 U.S.C. § 504(c)(1), an award of statutory damages may be made "in a sum of not less than $750 or more than $30,000."

     In this case, Bouchat had little actual damages (he was not making any products using the logo himself), so he sought profits from the Ravens and dozens of NFLP licensees who were selling myriad items containing the "Flying B" logo. The jury found that defendants' income from products containing the Flying B were attributed completely to factors other than the artwork itself, and therefore did not award Bouchat any damages. Moreover, Bouchat was not entitled to an award of statutory damages because he had not registered his copyrighted work before the Ravens' and licensees' infringing conduct began:

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     Below is a summary of the IP-related cases filed in the the U.S. District Court for the District of Maryland during the week beginning October 11, 2007 (source: Justia). This time, two patent cases make up the week's docket:

• Raymond Geddes & Company, Inc. v. Nakajima USA, Inc., No. 07 Civ 02771, filed Oct. 11, 2007.

     Raymond Geddes & Co., Inc. is a Maryland company with its headquarters in Baltimore, MD.  It alleges that Los Angeles, CA-based Nakajima USA, Inc. has infringed its U.S. Patent No. 6,158,871, which is directed to an "Illuminated Ball-Point Pen" (advertisement), by making, using, and/or offering to sell the Hello Kitty light up pen.  Sterne Kessler's Tracy-Gener Durkin filed the complaint on behalf of Raymond Geddes.

• Simon Systems, Inc. v. Corel Corporation, No. 07 Civ 02765, filed Oct. 12, 2007.

     Rockville, MD-based Simon Systems, Inc., filed this patent infringement suit against Delaware entity Corel Corporation (which allegedly has a regular place of business in Annapolis, MD, for purposes of asserting personal jurisdiction). The patent at issue is U.S. 5,559,562, which is entitled "MPEG Editor Method and Apparatus." SSI's complaint includes a bare allegation that Corel has infringed the patent by its "manufacture, use and/or sale of MPEG editing equipment."  Ward & Ward's Daniel Ward of Washington, DC filed the complaint on behalf of Simon Systems.

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Summary:  Patent Reform Act of 2007 would require courts to forward the identify of registered patent practitioners to the Patent Office if practitioners' conduct is linked to an act of inequitable conduct.

     It's not everyday that patent agents and attorneys registered to practice before the U.S. Patent & Trademark Office are found to have committed inequitable conduct by a court of law, despite the fact that inequitable conduct is "indiscriminately pled in nearly every case" as a defense to patent infringement (AIPLA Reports 2007). Nevertheless, patent reformers in Congress have proposed new provisions to the Patent Act, as shown below, which require the Patent Office to consider "appropriate disciplinary action" under 35 U.S.C. § 32 where inequitable conduct is attributed to a registered patent attorney:

"ATTORNEY MISCONDUCT- Upon a finding of inequitable conduct, if there is evidence that the conduct is attributable to a person or persons authorized to practice before the Office, the court shall refer the matter to the Office for appropriate disciplinary action under section 32, and shall order the parties to preserve and make available to the Office any materials that may be relevant to the determination under section 32."

That excerpt is from Section 12 of the Patent Reform Act of 2007, H.R. 1908.

     In case you're a patent practitioner and haven't read section 32 since your patent bar exam days, it says:

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Summary:  The U.S. Patent Office issues guidance and revisions to its "claims and continuations" practice rules.

• Revised rule permits filing "one more" continuing application on or after Nov. 1, 2007, without a petition or showing, in certain circumstances.
  
  
• For certain CIP applications, depending upon filing date and issuance or not of a first office action on the merits (FAOM), the requirement of 37 C.F.R. 1.78(d)(3) than applicant identify the claim or claims in the CIP for which the subject matter is disclosed in the manner provided by 35 U.S.C. § 112, first paragraph, in the prior-filed application is either waived or postponed until Feb. 1, 2008 (a three-month compliance deadline extension).
  
  
• Disclosing the identify of other pending or patented applications is not required for certain applications filed before Nov. 1, 2007, depending on the filing dates and priority filing dates for the other applications. Disclosure is not required for applications filed on or after Nov. 1, 2007, in limited enumerated circumstances.

     The complete requirements are found in the guidance document "Clarification of the Transitional Provisional Relating to Continuing Applications and Applications Containing Patentably Indistrinct Claims," which is available here.

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     Below is a summary of the IP-related cases filed in the the U.S. District Court for the District of Maryland during the week beginning October 1, 2007 (source: Justia), beginning with an IP NIMBY case: 

• Invenergy Wind North America LLC v. John Doe Numbers 1 Through 10, 07civ02643, filed Oct. 1, 2007. 

     According to the complaint, this case arises from an email that plaintiff Invenergy, a Delaware entity based out of Chicago, alleges that opponents to its proposed Moresville Energy wind turbine energy project sent to landowners and leaseholders of land Invenergy needs for its project. The complained of email, which included Invenergy's logos and trademarks, was allegedly designed to look like it originated from Invenergy itself. The complaint includes claims of trademark and copyright infringement, trademark dilution, tortious interference, and libel.

     Although the planned facility is to be located in Delaware County, New York, Maryland was chosen as the venue for the litigation, apparently because the permit applicant for the wind energy facility is Rockville, MD-based Moresville Energy LLC (a wholly-owned subsidiary of Invenergy), and because the email was allegedly sent by ten unidentified "John Does" (or "Jane Does") over networks owned by Hughes Network Systems , LLC, which is a Germantown, MD-based company.

     Thelen Reid's DC office filed the complaint, which did not identify local Maryland counsel.

     In the "old days," someone with a NIMBY (not in my backyard) issue would simply lie in front of a bulldozer, chain themselves to a Redwood, maneuver a boat in front of a fishing vessel, organize a protest rally, or file a lawsuit against the federal or state agency that issued a permit for a project they disagreed with (or all of the above). Apparently, if the above complaint is true, surreptitious emailing can now be added to the list of protest tactics.

     Three more interesting cases after the jump...

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Summary:  The U.S. Patent & Trademark Office today issued a press release concerning long-awaited Examination Guidelines to help Examiners make appropriate decisions regarding the obviousness of claimed inventions in light of the Supreme Court’s decision in KSR International Co. v. Teleflex Inc.

     Mention "KSR" and "obviousness" to patent practitioners and you'll get a wide range of responses, with some claiming the Supreme Court's decision in KSR International Co. v. Teleflex Inc., 550 U.S. __, 82 USPQ2d 1385 (2007) will lead to fewer inventions being patented, and others predicting the opinion will eventually jeopardize the validity of many previously-issued patents.

     One thing most practitioners will agree upon, however, is that uniform and concrete guidance is needed from the PTO (and eventually the courts) to remove the guesswork out of predicting how the PTO and courts will deal with inventions under the KSR standard. After all, when it can cost upwards of $50,000 to $100,000 to prosecute a patent application (U.S. and internationally), inventors and their employers are understandably wary about making the investment in today's uncertain environment. 

     The PTO took steps today to alleviate some of that concern. Today, the PTO issued its long-awaited PTO Examination Guidelines concerning KSR, which had been tied up in the Office of Management and Budget (OMB) through much of the summer and early fall (see related post here). Below is a summary of the Guidelines.

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     There is so much IP news to talk about these days, it's hard to keep up.  Although a lot of what's going on in the IP world and online blogosphere only indirectly affects Marylanders, it is nontheless still interesting, informative, and often very useful to IP practitioners in this state. So, here is a brief roundup, as it were:

Patent Troll Tracker: the anonymous, often-attacked blogger who runs the Troll Tracker (who are you?!) has an interesting post today called "Patent Troll Sues Fish & Richardson," which describes how a BigLaw lawyer can get into hot water when bitten by the invention bug (I'll be adding Troll Tracker to the blogroll on this blog soon; always an interesting read).

Patently-O: popular, prolific, and not anonymous blogger Dennis Crouch over at long-running Patently-O posted some comments from patent practitioners yesterday, which he collectively entitled "Rule Changes Triage: Dealing with already pending claims prior to November 1." I've already put some of those informative comments to good use.

Recording Industry vs. The People: The good people running the Recording Industry vs. The People blog posted "Jammie Thomas to Appeal!!!" yesterday. For those not following the Record Industry Association of America (RIAA) legal blitz (23,000 sued/threatened so far), Ms. Thomas' case was the first to make it through to a trial verdict (she lost), and so the case was watched by many in the industry. See my related post here. The blog is run by veterans Ty Rogers and Ray Beckerman over at Vandenberg & Feliu, LLP.

Copyright Office:  The Copyright Office (not the blog) issued an announcement yesterday that should appeal to those thirsty for copyright news. Entitled "Copyright Office Announces Customized Email Subscription Services," it describes an optional email-based news source. Subscribe here. Let's just hope that service is more timely than the announcement, which is shown with an October 2, 2007, date, but my feedreader didn't pick it up (i.e., it wasn't posted on-line) until October 8, 2007.

The Big Lead: Okay, so this site, which I warn you is at times a bit, how should I say this?-salacious, is not an IP blog, but a colleague turned me on to this increasingly-popular sports blog run by two anonymous, self-described "twenty-somethings," and it serves to make a point. As blogs and blogging in general become more and more popular (replacing traditional web sites in many cases), I'm betting that law firms and lawyers, including IP practitioners, will increadingly view this as an opportunity to market a niche practice area, one devoted to legal issues affecting blogs and bloggers. Such a practice area would involve specialty IP issues--copyrights, trademarks, domain disputes, and (to a lesser extent) patents--as well as general areas of the law, like corporate, first amendment, defamation, privacy, and employment law, to name a few.  Hmm, that gives me an idea...

     I'll be back later this week (hopefully, tomorrow) with coverage of last week's flurry of new litigation cases filed in the Federal District Court here in Maryland (all trademark cases). Plus, I have some new patent filing statistics for Maryland.

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Summary: A judicial opinion involving environmental-related patents that was issued as “not available for publication” limits what could be an important decision by the Federal District Court for the District of Maryland

     I have to admit that I was eager to post a summary of Judge Catherine Blake’s memorandum opinion in the matter of Contech Stormwater Solutions, Inc. v. BaySaver Technologies, Inc. and AccuBid Excavation, Inc., No. 07 Civ. 358 (D. Md. Sep. 26, 2007). After all, the opinion is at the crossroads of patent law and environmental technologies, two of my favorite topics (check out my bio, and you’ll understand).

     After summarizing the case, however, it became apparent that the Contech opinion concerns an issue of importance beyond just the merits of the two environmental-related patents-at-suit: the opinion was issued as “not available for publication,” meaning it has limited authority in the District Court for the District of Maryland where it originated, as well as in other Fourth Circuit courts (and possibly in the Federal Circuit), despite Rule 32.1 of the Federal Rules of Appellate Procedure which says:

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     During the floor debate in Congress over H.R.1908, the Patent Reform Act of 2007, on September 7, 2007, Maryland’s 6th District Representative, Roscoe G. Bartlett, a Republican, rose to criticize last-minute efforts by colleagues whom he contends pushed amendments to the proposed legislation through the House of Representatives.  Apparently, those amendments found their way into the legislation in the late evening hours the night before the full House vote (no doubt by overworked staffers). Dr. Bartlett knows a few things about patents: a scientist himself, one of only three in the House of Representatives, he is the named inventor or co-inventor on several U.S. patents, including those listed below. Of the eight Maryland Representatives in Congress, Bartlett was the only one to vote against passage of H.R.1908 (see related post here). For those interested, the amendments to H.R. 1908 may be viewed here (then scroll down to the 1:33 pm entry).

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     The following interesting and informative blawgs, which focus on patent issues, were added to the blog roll (see "Blogs" at right):

Chicago IP Litigation Blog

Delaware IP Law Blog

E.D. Tex. Fed. Court Practice Blog

I/P Updates Blog

Orange Book Blog

PHOSITA Patent Blawg

Patent Baristas Blog

Patent Docs Blog

Patent Infringement Updates

The Patent Prospector

Patently-O

Promote the Progress

The Invent Blog

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     Earlier this week, several sources reported that the Justice Department had announced an indictment of two Silicon Valley engineers who allegedly tried to steal trade secrets for computer chip designs (the indictment also included counts of economic espionage) (see details at the Ethisphere blog or the National Security Crimes Blog by Douglas McNabb). The indictment underscores the need for companies to go beyond just calling something a trade secret: steps must be taken to implement a comprehensive program to identify and adequately protect a company's most sensitive data (90% of which is usually in an electronic form according to published literature). However, even with the best safeguards, employees may try to steal trade secrets for personal gain. Fortunately, those who take trade secrets will usually leave behind a trail that electronic forensic experts can find.

     In Maryland, trade secrets are covered under the Maryland Uniform Trade Secrets Act (MUTSA). For purposes of the MUTSA, a trade secret is something that derives independent economic value from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use. A company believing its trade secrets have been stolen by employees or other entities may seek relief in civil court by asserting one or more of the following causes of action in Maryland:

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     The first nine months of 2007 saw an increase in the number of federal trademarks registered to Maryland entities and/or individuals, compared to the same period in 2006. U.S. Patent & Trademark Office (PTO) searchable records show that for the period January through September 2007, the PTO registered 45 federal trademarks to Marylanders (based on a search of "owner address" records using TESS). The PTO registered 35 federal trademarks to Marylanders for the same period in 2006 (a 29% difference). 


     

      In terms of filed applications, the PTO received 71 applications for trademarks from Maryland entities and individuals for the first nine months of 2007, compared to 65 applications received during the same period in 2006 (a 9% increase).

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     The U.S. District Court for the District of Maryland was chosen as the forum for litigating the following cases, as published by Justia:

• Moulin Rouge, S.A. v. Moulin Rouge Caterers, Inc. et al, 07 civ 02482 (D. Md. 2007), filed Sep. 18, 2007.

According to court papers, Plaintiff Moulin Rouge, S.A., is a Belgian corporation having its principal place of business in Paris, France. It owns the famous French trademark MOULIN ROUGE, which, in English, means "red windmill."  The mark has allegedly been in use in France continuously since 1889 when the famous Parisian cabaret first opened (first use in commerce in the U.S. since 1981). Moulin Rouge reportedly owns several U.S. trademark registrations covering live music stage shows and theater productions.  Defendants are Gaithersburg, MD-based Moulin Rouge Caterers and its owner Mohammad Taghi Yahyavi. Moulin Rouge, S.A., which is represented by Robert Bowie, Jr. of BOWIE & JENSEN LLC, is alleging trademark dilution, infringement, and unfair competition.

• Allegis Group, Inc. v. Bizet Human Asset Management, 07 civ 02497 (D. Md. 2007), filed Sep. 18, 2007.  

In court papers, Plaintiff Hanover, MD-based Allegis Group, Inc., which provide human capital services, alleges it has used the mark "PEOPLE. SERVICE. PERFORMANCE" in commerce before Pittsburgh, PA-based Bizet Human Asset Management began using  its federal trademark "PEOPLE.  PROCESS.  PERFORMANCE."  When Bizet allegedly failed to cease using its trademark on its website, despite canceling its registration, Allegis sued for infringement under 15 U.S.C. § 1051.  Allegis Group is represented by Sherry Flax of Saul Ewing LLP.

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