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

     I received a Tec Stretch Ear Warmer over the recent holiday season, just in time for last week's cold spell. Made by Baltimore-based 180s, the Tec Stretch product combines ear warmer and headphones in one simple device, so you can listen to your MP3 player and protect your ears from the cold at the same time. In addition to patents covering the ear warmer product, 180s has a portfolio containing over 50 utility and design patents covering a wide range of sports-related apparel and accessories. And it is not afraid to assert those patents: the company has filed no less than eight patent infringement lawsuits in just the last fours years. 

     Which leads me to today's lawsuit summary (source: Justia). 

• #5: 180s, Inc. et al v Gordini U.S.A., Inc., No. 1:2008cv00177, filed January 22, 2008

This patent and trade dress infringement lawsuit involves plaintiffs 180s, Inc. and 180s, LLC (reportedly the licensee of 180s' patents) and defendant Gordini U.S.A., Inc., a Vermont company based in Essex Junction, VT, which, according to its website, develops and manufactures cold weather apparel and accessories. The patents at issue are utility patent 6,978,483 and design patent D545,001; the trademark at issue is Registration No. 3,089,225 for the design shown below. 180s contends that Gordini's Lobz® earmuff product and packaging are similar to 180s' ear warmer product. In its complaint, 180s alleges patent infringement of the '483 and '001 patents, federal trade dress infringement of the '225 registration, and common law trade dress infringement. The company is seeking an injunction, undisclosed monetary damages, and a finding of willful infringement.

Cooley Godward Kronish LLP filed the complaint on behalf of 180s.

     Whether it is successful or not in this lawsuit, this case highlights how different forms of intellectual property protection--utility patents, design patents, and trade dress--can all be used in combination to protect various aspects of a single good or service.

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     Granted, this post isn't directly related to the subject matter of this blog, but since the worldwide headquarters for Discovery Communications is in Silver Spring, MD, and a lot of visitors to this blog are scientists, engineers, and other professionals, I thought I'd pass this along. The Discovery Channel is looking for hosts for "its next long running hit series" called "Hidden Cities." According to a release, show producers are searching for "talented individuals who have a strong background" in any of the following areas: science, engineering, urban water/power/transportation, wilderness survival, do-it-yourself, and animal science. If you've ever watched Danny Forster on Build it Bigger (formerly Extreme Engineering) on Discovery, then you have a sense of what producers are probably looking for. There are several audition tapes on YouTube; this one seems to have the highest "Views" count. 

     And, no, I already have a day job.

     FYI, Discovery owns a bunch of patents, including U.S. Patent No. 7,298,851, which is directed to "A method for encrypting, sending and receiving electronic books upon demand."

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Summary: The U.S. District Court for Distict of Maryland denied motion to stay on abstention grounds in favor of a pending state court action in the Circuit Court for Montgomery County, MD, pursuant to Colorado River Water Conservation Dist. v. United States, 424 U.S. 800 (1976). In doing so, the Court found that Defendants had not overcome the “heavily weighted” balance in favor of retaining jurisdiction, and therefore Defendants had failed to establish the “extraordinary circumstances” necessary to justify Colorado River abstention. Memorandum Opinion published January 15, 2008.

Parallel proceedings

      This trademark dispute, captioned Extra Space Storage, LLC v. Maisel-Hollins Development Co. et al, No. 1:2007cv02351, involves two concurrent lawsuits arising out of the parties’ desire to use their respective service marks in Maryland.

     Extra Space registered its service mark, EXTRA SPACE STORAGE, with the United States Patent and Trademark Office in 1998 or 1999. Defendants’ predecessor in title registered its service mark, “EXTRA SPACE SELF STORAGE,” with the Maryland Office of the Secretary of State in 2003.

     On June 26, 2007, Maisel-Hollins filed its state court lawsuit against Extra Space Storage, a Delaware entity based in Salt Lake City, Utah. The lawsuit alleged violation of Maisel-Hollins’s common law and state registration rights.

     Extra Space filed its answer on September 5, 2007, but without counterclaims. Instead, also on September 5, 2007, Extra Space filed the above-captioned federal lawsuit, alleging infringement of its EXTRA SPACE STORAGE mark. Extra Space named the lone plaintiff in the state case, Maisel-Hollins, and five of its affiliates as Defendants.

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• IPO Predicts Senate May Attempt to Pass Patent Reform Bill in February

According to the Intellectual Property Owners Association website earlier this week, the "IPO believes Sen. Patrick Leahy (D-VT) will attempt to pass a revised version of S. 1145 [the Patent Reform Act of 2007] in the Senate in February. Major amendments likely will not be available more than a few days in advance of Senate consideration. It is unclear whether the Senate has the votes to pass a bill. If the Senate does pass a bill, it likely will be sent to the House for swift passage by the House without amendments, eliminating the need for a Senate-House conference." 

See this earlier post that discusses some of the obstacles to major patent reform.

• Chart Compares Senate and House Versions

Thanks to lawyer Mark Walters over at the Washington State Patent Law blog for pointing out a useful side-by-side comparison of the House and Senate versions of patent reform legislation currently pending in Congress. The comparison, in the form of a chart, was apparently put together by Foley Hoag last year (so it does not benefit from the Senate's recent Judiciary Committee report) and is available from the Licensing Executive Society website.

• Patent reform comparisons on this blog

     For coverage and comparisons of the patent reform legislation on this blog, see the following previous Patent Reform Act posts: Part 8: Attorney misconduct; Part 7: Submission of prior art search reports; Part 5: 35 U.S.C. § 103(a) (Part II); Part 4: 35 U.S.C. § 103(a) (Part I); Part 3: 35 U.S.C. § 102(a).

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     Below are summaries of the first four IP-related lawsuits filed in the the U.S. District Court for the District of Maryland in 2008 (source: Justia). These lawsuits involve allegations of patent, copyright, and trademark infringement, misappropriation of trade secrets, defamation, and a host of other state law claims. We begin with an interesting case involving Maryland's business trade/company name statute.

• #1:  Nationwide Handyman, LLC v. Nationwide Handyman & Remodeling, Inc., No. 1:2008cv00019, filed Jan. 3, 2008

    This lawsuit pits two Maryland entities and their owners against each other. Plaintiff Nationwide Handyman, LLC alleges ownership of the federally-registered NATIONWIDE HANDYMAN trademark, the same being registered with the State of Maryland as a corporate name. Plaintiff contends that Defendant Nationwide Handyman & Remodeling, Inc., led by principal Joe Butts, violated Maryland Code Annotated § 1-504, which states the following (source: Michie's Legal Resources):

"An entity name must be distinguishable upon the records of the Department [of Assessments and Taxation] from:

(1) The entity name of an entity organized or authorized to transact business in the State;

(2) An entity name reserved or registered under this subtitle; and

(3) The disclosed assumed name adopted by a foreign entity authorized to transact business in this State."

     Plaintiff further alleges that Defendant violated Maryland Code Annotated § 13-301, which defines unfair or deceptive trade practices in Maryland as "false, falsely disparaging, or misleading oral or written statement, visual description, or other representation of any kind which has the capacity, tendency, or effect of deceiving or misleading consumers." Other allegations include violations of the Lanham Act. Plaintiff is seeking an injunction and monetary damages.

     This case highlights one advantage of registering a company name in Maryland: § 1-504 is available as a cause of action to those who register their business name. Thus, companies should register their business name in addition to registering their trademarks with the U.S. Patent & Trademark Office and the Maryland Secretary of State.

     Shawn Whittaker of The Law Offices of Shawn C. Whittaker PC filed the Complaint on behalf of the Plaintiff.

     Three more cases after the jump...

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     Maryland tops the nation in research and development spending at universities, government laboratories, and other private entities and institutions, so it should come as no suprise that Maryland has lots of intellectual property that is available for commercialization. The Maryland Technology Development Corporation (TEDCO), a Maryland State government corporation, is tasked with the responsibility of trying to transfer all of that technology into the private sector in Maryland and elsewhere. 

     Enter Invenio-IP®, a database developed by the University of Maryland through a grant from TEDCO.  Invenio is a free, web-based, searchable access point containing patented and non-patented technologies available for commercialization. The database includes not only technologies developed by Maryland entities and institutions, but those developed outside the state (for now, only Virginia and DC):

• Avanti Therapeutics
• College of William and Mary
• Georgetown University
• Johns Hopkins Applied Physics Lab (Laurel, MD)
• Johns Hopkins University (MD)
• US Army Medical Research & Materiel Command
• University of Maryland Baltimore County
• University of Maryland Biotechnology Institute
• University of Maryland, Baltimore
• University of Maryland, College Park
  

     Don't expect to find only state of the art technologies in the Invenio database. I ran a search for "drug" and was presented with 291 technologies, some of which was patented several years ago. The web interface is not the best I have seen, but it gets you the information quickly. One nice feature is that you can set up an alert that will ping you when technologies matching your keywords are added to the database.

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     Several sources (see 271 Blog, for example) are reporting that another obstacle facing patent reform was overcome yesterday when the Senate Judiciary Committee reported on S. 1145, the Patent Reform Act of 2007. According to the Intellectual Property Owners Association (IPO), the "106-page draft report explains in depth the provisions of the bill as approved by the Senate on July 19, 2007, but does not contain any new or compromise provisions."

     So, will patent reform actually happen this year, as some predict? Gene Quinn over at the PLI Blog notes that "patent legislation usually has a gestation period of between 2 to 3 years, and given that Congress began working seriously on some form of patent reform in 2005 the timing is right." On the other hand, industry associations, individuals, and other stakeholders have been pulling Congressional ears in different directions as long as patent reform legislation has been around, so I'm not sure that we'll see significant patent reforms, especially when you consider that several contentious provisions are still present in the Senate bill. However, it seems likely that at least some reforms will be seen this year, as long as Congress doesn't wait too long and get distracted by the election cycle, and some of those anticipated "compromise provisions" make their way into the legislation before the Senate votes.

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     In 2007, the major music recording companies, led by the Recording Industry Association of America (RIAA), filed more copyright lawsuits in the U.S. District Court for the District of Maryland than any other group or individual. RIAA accounted for 16 of the 30 copyright lawsuits filed last year (53%). In 2006, RIAA accounted for an estimated 22 of 54 copyright lawsuits (41%). All of the RIAA lawsuits involved individual defendants accused of illegally downloading or sharing copyrighted music. The 30 copyright lawsuits involved a total of 168 plaintiffs (64 unique entities/individuals). Of those 168 plaintiffs, 85 were RIAA members, including the following:

• Sony BMG Music Entertainment (plaintiff in all 16 of the RIAA lawsuits);
• UMG Recordings (plaintiff in 14 of the RIAA lawsuits)
• Arista Records (plaintiff in 12 lawsuits)
• BMG Music (12 lawsuits)
• Virgin Records America (9)
• Capitol Records (9)
• Warner Brothers Records (8)
• Interscope Records (8)

     Twelve U.S. District Court Judges presided over the 30 copyright lawsuits in 2007: Bennett (3), Blake (2), Chasanow (1), Cullinane (1), Davis (4), Dorr (1), Garbis (2), Legg (2), Messitte (6), Quarles (2), Titus (3), and Williams (3). All 6 of Judge Messitte's cases involved RIAA lawsuits (in 2006, Judge Messitte presided over an estimated 21 of the 22 RIAA lawsuits).

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     If you're in the D.C.-Maryland-Virginia area and would like to learn more about managing patent infringement litigation, don't forget about the 2008 Advanced Patent Law Institute being held in Alexandria, Virginia, starting today, January 10, 2008. My colleague, Keeto Sabharwal, a partner in Blank Rome’s Washington, DC, office, will be discussing the law of induced patent infringement tomorrow.  The session will include advice on how to effectively litigate a claim of active inducement from both the plaintiff’s and the defendant’s perspectives, and it will offer a discussion of the most recent federal circuit case law addressing the issue. Here is a link to the course for more information.

     Update:  The presentation mentioned above was switched in the schedule and presented this morning. If you're interested in a copy of the presentation materials, please email me.

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     Thirty-four plaintiffs filed 39 trademark infringement lawsuits in the District Court for the District of Maryland in 2007 (see a list of the lawsuits and the parties involved after the jump). The 39 lawsuits involved 63 defendants (individuals and entities).  By comparison, in 2006, 37 patent infringement lawsuits were filed in Maryland. 

     Topping the list of companies filing the most trademark infringement lawsuits in Maryland in 2007 were Nutramax Laboratories, Inc., the Edgewood, MD, company that specializes in nutritional supplements (4 lawsuits), and Young Again Products, Inc.,the Maryland company that describes itself as being "in the business of production and sale of health and nutritional supplements" (3 lawsuits). Nutramax also topped the list of companies filing the most patent infringement lawsuits in Maryland in 2007 (see related post here).

     The 39 lawsuits filed last year were assigned to 11 Maryland District Court Judges: Bennett (3), Blake (2), Chasanow (1), Davis (4), Garbis (3), Legg (4), Motz (5), Nickerson (1), Quarles (5), Titus (1), and Williams (4).

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    Twenty-six plaintiffs filed 24 patent infringement lawsuits in the District Court for the District of Maryland in 2007 (see a list of the lawsuits and the parties involved after the jump). The 24 lawsuits involved 181 defendants (individuals and entities) from all over the world. If you don't count the Technology Patents LLC v. Deutsche Telekom AG case, which involved 131 defendants, the total number of defendants sued in Maryland in 2007 was 50.

     One notable change in 2007 compared to 2006 is the apparent increase in the number of patent infringement lawsuits involving life-sciences technologies (e.g., pharmaceuticals, biologics, and medical devices).

     In 2006, 21 plaintiffs filed 23 patent infringement lawsuits in Maryland involving 25 defendants. Thus, while the total number of patent infringement lawsuits in 2007 increased only slightly over 2006 figures, the total number of defendants sued in 2007 compared to 2006 increased significantly. Several factors could push the number of lawsuits even higher in 2008, including a rise in biotechnology litigation, which could involve the 300+ biotechnology companies that call Maryland home, and changes in laws brought about by patent reform legislation, which if enacted could close off certain jurisdictions outside Maryland to plaintiffs that might then consider Maryland as an alternative venue.

     Topping the list of companies filing the most patent infringement lawsuits in Maryland in 2007 were Nutramax Laboratories, Inc., the Edgewood, MD, company that specializes in nutritional supplements, and Israel's Teva Pharmaceutical Industries, Inc. (with its Teva Pharmaceuticals USA, Inc., subsidiary), both of which filed two patent infringement lawsuits in Maryland last year.

     The 24 lawsuits filed last year were assigned fairly evenly among Maryland's District Court Judges: Bennett (2), Blake (3), Chasanow (4), Davis (1), Garbis (3), Legg (1), Motz (2), Nickerson (3), Quarles (1), Titus (1), and Williams (3). 

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