A Trademark Opposition, Patent Infringement Lawsuit, and Military Award Protest: Nacre AS v. Silynx

Posted on March 27, 2008 by Brian Wm. Higgins
  • Nacre AS v. Silynx Communications, Inc., No. 07-cv-02676, filed Oct. 2, 2007.

     Update:  Rockville, MD-based Silynx Communications and Norway's Nacre AS have been facing off on all fronts in their battle to gain control of the U.S. military tactical hearing protection and communications headset market, including the intellectual property front. In September 2007, Nacre, which owns the QUIETPRO trademark, filed a trademark opposition proceeding against Silynx's QUIETOPS mark before the U.S. Trademark Trial and Appeal Board. That proceeding was stayed when, in October 2007, Nacre filed a trademark and patent infringement lawsuit against Silynx in the U.S. District Court for the District of Maryland, which is pending (additional counsel for Nacre just recently motioned for pro hac admission to the Maryland court). In January 2008, Silynx lost its protest of an award from the Dept. of the Navy to Nacre to acquire a quantity of combat radio headsets from the company.

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Nacre v. Silynx (or QuietPro v. QuietOps): Garnering Lots of Attention

Posted on December 5, 2007 by Brian Wm. Higgins

     Of the many IP cases summarized on the Maryland IP Law blog recently, two have garnered the most attention from site visitors: Technology Patents LLC v. Deutsche Telekom, which I summarized in November, and Nacre v. Silynx Communications, which I discussed in October. I can understand why the Technology Patents case has received attention: the patent infringement allegations involve popular text messaging technology, and the number of defendants that have been sued (131) makes the lawsuit one of the largest ever filed in the District Court for the District of Maryland.

     It is not as apparent, however, why the Nacre v. Silynx case has received the attention that it has. Perhaps it is the subject matter of the lawsuit, which, according to Nacre's complaint involves “two-way radios and wireless communicators for use in combat, in battlefield conditions, in military, military special forces, and law enforcement activities.” This would seem to be a huge market today.

     Or perhaps it is the competitiveness between the parties, both of which claim on their respective websites to be the "world's leader" in communications equipment that incorporates sophisticated noise canceling/noise protection technology. Nacre sells to the U.S. and foreign governments. Rockville, MD-based Silynx Communications states on its website that its headsets are used by the U.S. Special Operations Command (USSOCOM), U.S. Army, USMC and the world’s elite Special Forces.

     I'll track the docket and maybe learn other reasons why many are drawn to the case.

Update:

  • Silynx filed is answer to Nacre’s complaint on November 28, 2007. In it, Silynx makes the standard denials of Nacre’s allegations, affirmative defenses, and counterclaims (i.e., declaration of trademark and patent non-infringement, trademark and patent invalidity, and patent unenforceability).

  • Silynx also asserted a defense of “government contractor immunity” under 28 U.S.C. § 1498 (that statute has been used by private parties to establish that they cannot be held liable for infringement for any goods “used or manufactured by or for the United States”).

  • Silynx’s unenforceability allegation is based on claims that “those involved in patent prosecution failed to disclose to the U.S. Patent and Trademark Office at least one publication by one of the inventors entitled “Active Noise Reduction In An Ear Terminal” given on March 18, 1999 at the Technical University of Berlin as part of the 137th Regular Meeting of the Acoustical Society of America 2nd Convention of the European Acoustics Association: Forum Acousticum 99 integrating the 25th German Acoustics DAGA Conference.”

Comments:

  • Plaintiff Nacre AS is a Norwegian company that claims to own the U.S. registered trademark QUIETPRO, U.S. Patent No. 7,039,195 (“Ear Terminal”) and U.S. Patent No. 6,567,524 (“Noise Protection Verification Device”).

  • Silynx is reportedly seeking a federal trademark for its QUIETOPS mark

  • Nacre is represented by Andrew Kopsidas of DC's Fish & Richardson (with Gregory A. Madera, Ahmed J. Davis, Adam J. Kessel, and Charles Hieken admitted pro hac).

  • Silynx is represented by Paul J. Lambert of DC’s Bingham McCutchen (with Robert C. Bertin, Timothy A Molino, and Richard S. Taffet admitted pro hac)

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Maryland IP Litigation Cases for the Week of October 1, 2007

Posted on October 15, 2007 by Brian Wm. Higgins

     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...

  • Nacre AS v. Silynx Communications, Inc. et al, 07civ02676, filed Oct. 2, 2007.

     Plaintiff Nacre AS is a Norwegian company with a principal place of business in Trondheim, Norway. It claims to own the U.S. registered trademark QUIETPRO, which it uses in connection with “two-way radios and wireless communicators for use in combat, in battlefield conditions, in military, military special forces, and law enforcement activities,” among other uses. It also owns U.S. Patent No. 7,039,195 (“Ear Terminal”) and U.S. Patent No. 6,567,524 ("Noise Protection Verification Device").

     Defendant is Rockville, MD-based Silynx Communications (cool website), which claims to be “a world leader in miniature software defined tactical hearing protection communication headsets. Our innovative headsets are used by the US Special Operations Command (USSOCOM), US Army, USMC and the world’s elite Special Forces. Silynx specializes in the design, development and manufacturing of advanced and innovative software based noise protection communication headsets that provide Special Forces with an unparalleled operational edge while enhancing survivability, lethality and situational awareness.” Also named as defendant is Gil Limonchik, Silynx's CEO (who, according to court papers, is a former Nacre consultant).

     Nacre contends that Silynx’s QUIETOPS mark, which is the subject of Silynx’s trademark application, is confusingly similar to its QUIETPRO mark. It also contends that defendants are infringing the ‘195 and '524 patents.

     The complaint was filed by Andrew Kopsidas of DC's Fish & Richardson; local counsel was not identified.

  • Stars-N-Bars Entertainment, Inc v. Golzar et al., 07civ02675, filed Oct. 3, 2007.

     This case is one of "breach of contract, trademark infringement, unfair competition, and passing off," and involves the alleged use of plaintiff's STARS-N-BARS registered trademark by defendants during "Texas Hold'Em poker tournaments at various entertainment establishments throughout Maryland and Virginia." Plaintiff Stars-N-Bars Entertainment alleges it was owed money under a contract that provided for the licensed use of the Stars-N-Bars trademark. The complaint was filed by Timothy Guy Smith, P.C., of Glenwood, MD.

  • The Compassionate Friends, Inc. v. The Compassionate Friends of Maryland, Inc., 07civ02679, filed Oct. 4, 2007.

     The case caption is fairly suggestive of what this case is about, and indeed it involves the U.S. registered trademark THE COMPASSIONATE FRIENDS. Plaintiff The Compassionate Friends, Inc., an Illinois not-for-profit company that owns several trademarks, has sued The Compassionate Friends of Maryland, Inc., which is based in Baltimore. The Maryland entity was allegedly formerly one of Plaintiff's unincorporated chapters (organized in 1978). The complaint alleges likelihood of confusion, infringement (of the aforementioned federal trademark, as well as plaintiff's Maryland state registered trademark), false designation of origin, and federal statutory and Maryland common law unfair competition. The complaint is signed by Michael Yang and  Charles Simmons of the Gorman & Williams law firm (Baltimore).
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