BLOGS: Georgia IP Litigation



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Friday, October 31, 2014, 9:42 AM

Gutter Battle Reignites With New Action

In the latest salvo exchanged between two competing drainage product companies, Invisaflow, LLC ("Invisaflow"), based in Alpharetta, Georgia, filed a complaint in the Northern District of Georgia against competitors Euramax International, Inc. and Euramax Holdings, Inc. (collectively "Euramax"), both based in Norcross, Georgia, alleging that Euramax infringes its patent directed to gutter downspout extension attachments.

Invisaflow asserts U.S. Patent No. 8,556,195 ("the '195 Patent"), entitled "Low Profile Attachment For Emitting Water," which issued on October 15, 2013.  As reported here, in August 2012 Invisaflow filed a similar action based on a parent patent of the '195 Patent, U.S. Patent No. 8,251,302.  Invisaflow voluntarily dismissed that action in November 2012 (see here).

The complaint alleges that Euramax's "Extend-A-Spout v2 Low Profile Drainage System" product infringes the '195 Patent, and further alleges that Invisaflow met with Euramax on May 22, 2014, to notify Euramax of its infringement and requested that Euramax cease and desist from further production and sale of the accused product.  Representative Figure 1 of the '195 Patent is shown below:

On October 27, Invisaflow filed an amended complaint, which revised some details regarding giving notice of the patent, but also added three new counts to the action for alleged trade dress protection relating to the StealthFlow downspout extension product.  The amended complaint added counts for federal trade dress infringement and unfair competition under Section 43(a) the Lanham Act (15 U.S.C. 1125(a)), and violation of the Georgia Deceptive Trade Practices Act (O.C.G.A. 10-1-370 et seq.).

Invisaflow alleges that the StealthFlow product incorporates a distinctive and nonfunctional "long low-profile shape beginning with a gradual transition that emanates from a round-shaped piping." Invisaflow claims that the StealthFlow trade dress has acquired secondary meaning among the consuming public and further alleges that Euramax purposefully designed the accused "Extend-A-Spout" product to replicate the unique look and feel of the StealthFlow product.  Invisaflow alleges that it has "received numerous inquiries from consumers who believe that the "Extend-A-Spout" product originates from, or is sponsored or approved by, Plaintiff Invisaflow."  A comparison of the two extension products is depicted below:

Invisaflow seeks injunctive relief, damages, including trebled damages for willful infringement, and attorneys' fees and costs.

The case is Invisaflow, LLC v. Euramax Int'l, Inc. et al., Case No. 1:14-cv-03026-WSD, filed on September 19, 2014 in the Northern District of Georgia, Atlanta Division, and is assigned to U.S. District Judge William S. Duffey, Jr.

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Thursday, October 30, 2014, 1:15 PM

Solo Inventor Files Two Suits Over Allegedly Infringing Uninterruptible Power Supply Systems

Walter Farmer, of Atlanta, Georgia, filed separate suits against Alpha Technologies, Inc, ("Alpha"), of Bellingham, Washington, and Aspin Kemp & Associates ("Aspin Kemp"), of Owen Sound, Ontario, Canada, alleging that each company infringes Farmer's patent directed to uninterruptable power supply systems.

Farmer is the sole named inventor of U.S. Patent No. 7,362,007 ("the '007 Patent"), entitled "Hybrid Uninterruptible Power Supply System."  The claimed system allows for a telecommunications system to alternate between AC and DC power systems based on unplanned interruptions and other events. Representative Figure 5 of the '007 Patent is reproduced below:


Alpha Micro 1000 UPS System

The complaints do not state whether Farmer practices the invention or licenses the patent to any other entities.  The complaints allege that Alpha and Aspin Kemp infringe the '007 patent by "developing, using, offering to sell and/or selling in the United States or importing into the United States" their Alpha Micro 1000 UPS System and Omni B System, respectively.[1]  The complaints allege, without detail, that Alpha and Aspin Kemp had "actual knowledge and/or notice of the '007 Patent from a time prior to the filing of the present Complaint," and thus are liable for willful infringement.  The complaints also allege that Farmer will suffer immediate and irreparable harm in the absence of an injunction.

The complaints request preliminary and permanent injunctions -- although no motion for preliminary injunctive relief has been filed in either case -- damages, including trebled damages for alleged willful infringement, and attorneys' fees and costs under 35 U.S.C. § 285.

The first case is Farmer v. Alpha Technologies, Inc., Case No. 1:14-cv-02958-SCJ, filed September 15, 2014 in the Northern District of Georgia, Atlanta Division, and is assigned to U.S. District Judge Steve C. Jones.  The second case is Farmer v. Aspin Kemp & Associates, Case No. 1:14-cv-02959-RWS, filed September 15, 2014 in the Northern District of Georgia, Atlanta Division, and is assigned to U.S. District Judge Richard W. Story.  One assumes that the two cases will be handled by the same judge, should they proceed, but no reassignments have been docketed to date.
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[1] The Alpha complaint calls the allegedly infringing system the "Micro 1000 USB System," but after inspection of Alpha's website and the '007 Patent, it is evident that this is a typographical error and is intended to refer to the "UPS," or "Uninterruptible Power Supply," system.

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Monday, October 27, 2014, 10:59 AM

Court Crushes Krush’s Motions for Preliminary Injunction on Patent Infringement and Trade Secret Misappropriation

Krush Communications, LLC (“Krush”) brought suit in New Jersey in 2013 against Lunex Telecom, Inc., a Georgia corporation (“Lunex”), for patent infringement and misappropriation of trade secrets.  After the case was transferred to the Northern District of Georgia, Judge Jones considered Krush motions for a preliminary injunction on its trade secret and patent claims and a motion to strike inequitable conduct allegations from the complaint.  In a 45-page opinion, Judge Jones deconstructed Krush’s arguments and the factual basis for its position.

Both Krush and Lunex are in the pre-paid telephone charges business.  They provide customers with a highly automated system that does not require a card and utilizes the phone number of the purchaser to track the balance remaining and a SMS Text messaging system to confirm purchases of prepaid time.  Krush obtained patent U.S. Patent No. 8,295,805 relating to its system and initiated this action based on Lunex’s product, as well as the conduct of an individual who had a brief (less than 3 month) relationship with Krush in 2010.
Krush efforts to strike inequitable conduct allegations were rebuffed on the following grounds: (1)  Lunex met the threshold higher pleading requirement s of Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009) by disclosing the who, what, when, where , and how of Krush’s conduct and evidence of Krush’s deceptive intent.  [Krush failed to disclose information gathered about Lunex’s system to the PTO and “intentionally refrained from circulating a detailed letter of patent counsel until the day after the ‘805 Patent issued.”  Order, at p. 11]; (2) the material is related to whether or not the matter will be found to be an exceptional case, a prosecution estoppel claim, or a sufficiently pleaded inequitable conduct defense; and (3) the Court rejected Lunex’s assertion that Krush advanced “generalized and gratuitous facts, none of which correspond to a particular Defense.”  Id., at 13.

The patent infringement claims failed to meet the likelihood of success requirement based on the Court’s preliminary construction of the claims.  Under the Court’s preliminary analysis two limitations of the patent were not met by the Lunex system.  Specifically the Court found (1) the patent required that each individual phone number have a unique pin number, while the Lunex system allowed different phone numbers to use the same pin; and (2) the patent required that the unique pin for each phone number be the phone number itself, while the Lunex system used a randomly generated 12-digit pin number.

The thorough analysis of the ruling on the trade secret injunction motion reviews the elements required and details Krush’s failures to prove those elements.  The general allegations were not sufficiently supported by details to enable the Court to determine what was alleged stolen, how or when it was accessed, at what level of security the allegedly stolen materials resided, or what differed from materials in the public domain.  What is not entirely clear from the record or apparently to the Court is whether the failure to prove the case was due to a failure to present all the relevant facts or whether there were no additional relevant facts that could have been offered as evidence in support of the motion.  While there are references to different levels of security, the Court was unable to determine how the information at each level differed or which level information was allegedly misappropriated from.  Similarly, references were made to confidentiality and nondisclosure agreements, but none were produced and the allegedly misbehaving third-party was not shown to have signed any of them.

This ruling is an important lesson to all attorneys in two key ways: (1) before bringing a motion, assemble receivable evidence of each and every element necessary to prevail on the motion; and (2)  when the motion is filed ensure that evidence of each and every element necessary to prevail is clearly and effectively presented to the Court for consideration.

Krush Communications, LLC v. Lunex Telecom, Inc.., Case No. 1:13-cv-03167-SCJ, Dkt. No. 89 (Sep. 12, 2014).

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Friday, October 10, 2014, 1:08 PM

Order Pierces Allegations Unsupported By Receivable Evidence In Granting Summary Judgment To All Parties In IP Dispute

This blog post is authored by Kirk Watkins and posted by the Womble Carlyle Team.

In 2011 EarthCam, Inc. (“EarthCam”) brought suit against Richard Hermann (“Hermann”), OxBlue Corporation, Chandler McCormarck, John Paulson, and Brian Mattern (collectively “OxBlue”) asserting corporate espionage to misappropriate trade secrets.  OxBlue filed counterclaims for copyright infringement, trademark infringement, false advertising, false designation of origin, unfair competition, and violation of the Georgia Uniform Deceptive Trade Practices Act.

EarthCam is a New Jersey privately held company in the high-end web-based cameral system business.  OxBlue is an Atlanta based company in the same business focusing primarily on the construction industry.  Hermann is an independent contractor for OxBlue who was formerly employed by EarthCam as a product technician and camera installer.
Judge Duffey addressed summary judgment motions filed by all the parties and granted all of them.  How did that happen?  Read on.

Read more »

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Tuesday, September 30, 2014, 1:30 PM

11th Circuit: Award of Fees Affirmed in "Objectively Unreasonable" Copyright Action Where Plaintiff No Longer Possessed a Copy of the Copyrighted Material

On September 24, 2014, in an unpublished opinion the 11th Circuit denied the appeal of InDyne, Inc. (“InDyne”), which asked the Court to vacate an award of attorneys’ fees to Defendants Abacus Technology Corporation, Jerry Reninger, and Matthew Boylan (collectively, "Abacus") in a copyright infringement action in Middle District of Florida.

According to the opinion, Abacus copied portions of InDyne's Program Information System (“PIMS”) software in setting up a website for NASA.  The District Court held that InDyne failed to present evidence sufficient for a reasonable jury to find that the copied portions of the software were “original and thus deserving copyright protection.”  This District Court finding was previously affirmed by the 11th Circuit in InDyne, Inc. v. Abacus Tech. Corp., 513 F. App’x 858 (11th Cir. 2013) (unpublished).
The case was back before the 11th Circuit after the District Court awarded attorneys' fees based on three findings: (1) InDyne was “objectively unreasonable” in filing a copyright infringement claim while no longer possessing “a copy of the copyrighted material;” (2) InDyne’s motivation for bringing suit was “questionable;” and (3) the purposes of the Copyright Act would be furthered by a deterrence of future litigants suing for infringement without being able to produce the software code.
The 11th Circuit noted that under 17 U.S.C. § 505 an award of attorneys' fees was in the court’s discretion.  In reviewing the decision for an abuse of discretion, the panel noted that encouraging objectively reasonable claims “the boundaries of copyright law are demarcated as clearly as possible.”[1]  Factors considered include frivolousness, motivation, objective unreasonableness, and considerations of compensation and deterrence.
The 11th Circuit declined InDyne's invitation to revisit the facts with allusions to “massive copyright infringement” and that Abacus “got away with it,” citing the law-of-the-case doctrine which “bars relitigation of issued decided by necessary implication, even if they are not addressed explicitly.” [2] 
The 11th Circuit also affirmed the objectively unreasonable standard as InDyne had neither a copy of the copyrighted version of PIMS “or even a clear software revision history.”  Without this evidence no reasonable jury could find in InDyne’s favor.  With “chameleon-like,” “constantly morphing” software, InDyne had no copyrighted material to point to for its claim.
The District Court’s comment on the questionable motivation did not constitute a finding of bad motivation, but it did constitute a finding that this factor did not weigh in InDyne's favor.
Although unpublished, this case serves to reinforce the principle that ill-advised copyright infringement claims face consequences, thus serving to imprint on the bar the importance of giving weight to the appropriate demarcation between a reasonable copyright claim and an expensive one.
The case is Indyne, Inc. v. Abacus Technology Corporation, Jerry Reninger, and Matthew Boylan, Case Number 14-11058, decided September 24, 2014, by the Eleventh Circuit, panelists Carnes, Tjoflat, and Rosenbaum.
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[1] Citing MiTek Holdings , Inc. v. Arce Eng’g Co., Inc., 198 F.3d 840, 842-43 (11th Cir. 1999)
[2] Opinion at p. 4, n. 1.

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Monday, September 29, 2014, 10:41 AM

Gilligan’s Island Remake Awash with Copyright Controversy

Travis P. Dunson (“Dunson”) filed suit for copyright infringement, money damages, injunctive relief, attorneys’ fees, as well as damages for breach of implied contract, conversion, unjust enrichment, and quantum meruit against Time Warner Co., Warner Bros. Entertainment, Inc., Warner Bros. Pictures, Atlanta Entertainment, Inc., Doug Frank, Brad Copeland, and Lloyd J. Schwartz (“Defendants”).

Original Gilligan's Island (1964) Poster
(Source: www.imdb.com)
Dunson’s complaint alleges his creation in 1999 of an original adaptation screenplay of the 1960’s Gilligan’s Island television show, which he registered with the U.S. Copyright Office, effective March 18, 2004, Certificate No. Pau2-846-399 (“Dunson’s Screenplay”).  On that same date, according to the complaint, Dunson’s Screenplay was registered with the Writers Guild of America (Registration No. R15376).

According to the complaint, Dunson’s Screenplay was reviewed in 2008 by Defendant Doug Frank who “loved it.”  However, Dunson’s agents became unhappy with his direct contact with Frank and announced “the deal is off.”  In 2010, Dunson learned that the owners of the original Gilligan’s Island franchise were working on a remake of the television series.  By 2011, Dunson learned a synopsis of the proposed adaptation was disclosed on Defendant Warner Bros. website.

The complaint relates that Dunson determined from the synopsis that the remake was substantially similar, if not identical, to Dunson’s Screenplay.  In January 2013, Dunson confronted an attorney for Warner Bros. Pictures who ultimately conceded that a remake had been done.  Dunson’s suit seeks compensation for any use of the remake as a work infringing on Dunson’s Screenplay.

The case is Travis P. Dunson v. Time Warner Co., Warner Bros. Entertainment, Inc., Warner Bros. Pictures, Atlas Entertainment, Inc., Doug Frank, Brad Copeland, and Lloyd J. Schwartz, 1:14-CV-02743, in the United States District Court for the Northern District of Georgia, Atlanta Division, filed August 24, 2014, before Judge Timothy C. Batten, Sr.

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Friday, September 26, 2014, 2:11 PM

Specialty Surfaces Alleges Patent Infringement by Deluxe Athletics

On August 21, 2014, Pennsylvania-based Specialty Surfaces International, Inc. (“SSI”) filed a complaint against Georgia-based Deluxe Athletics, LLC (“Deluxe Athletics”) alleging infringement of U.S. Patent No. 5,976,645 (the “‘645 Patent”) for a “Vertically draining, rubber-filled synthetic turf and method of manufacture.”

Sample from Deluxe's website
According to the complaint, Deluxe Athletics responded to a request for proposal from the Paulding County Board of Commissioners to install turf at two local high school football fields.  Deluxe Athletics was awarded the project, which allegedly included specifications calling for supply and installation of a complete vertical draining, infill synthetic turf surfacing system consisting essentially of resilient particles with a woven/non-woven primary backing.

SSI alleges that the turf product Deluxe Athletics offered for sale to the Paulding County Board of Commissioners contains each limitation set forth in at least one claim of the ‘645 Patent.  The language of the ‘645 Patent’s claim 1 is specifically repeated in the complaint.  Claim 1 and Fig. 1 of the ‘645 Patent are reproduced below.

1. A synthetic turf comprising:
a sub-surface layer;
a porous aggregate layer over said sub-surface layer;
a pile fabric over said porous aggregate layer, said pile fabric comprising a plurality of pile elements tufted to a backing, said backing comprising a woven layer and a non-woven layer bound together; and
an infill for said pile fabric, said infill consisting essentially of resilient particles.

SSI seeks a judgement of willful infringement or bad faith, treble damages, and attorney's fees.

The case is Specialty Surfaces International, Inc. v.Deluxe Athletics, LLC, Case No. 1:14-cv-02717-TCB, filed August 21, 2014, in the United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Timothy C. Batten Sr.

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