BLOGS: Georgia IP Litigation

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Friday, September 12, 2014, 11:50 AM

Python Safety Files Trade Dress and Patent infringement Complaint Against Ty-Flot

On June 18, 2014, Python Safety, Inc. (“Python”), of Woodstock, GA filed a complaint against Ty-Flot, Inc. (“Ty-Flot”), of Manchester, NH, alleging federal trade dress infringement and unfair competition, infringement of US Patent No. 8,646,768, violation of Georgia Deceptive Trade Practices, Georgia statutory and common law unfair competition, and Georgia common law trade dress infringement and unjust enrichment.

Python Safety sells a variety of products relating to drop prevention solutions including items such as hard hat tethers, single tool holsters, safe buckets and dual tool holsters.  Examples of these products are depicted below.  According to the complaint, Python Safety has developed an inherently distinctive trade dress for its products which is essential to its business and to customers’ identification of Python Safety as the source of the products and includes a particular appearance and color contrast.

According to the complaint, Ty-Flot offers virtually indistinguishable products to each of the Python Safety products depicted above.  Examples of products offered by Ty-Flot are depicted below.

Python is also the owner by assignment of US Patent No. 8,646,768 (the 768 patent) which was filed on March 16, 2010, claimed priority to a provisional application filed on March 16, 2009, and issued on February 11, 2014.  The ‘768 Patent describes a novel quick spin holder for tools and accessories. Additionally, the ‘768 Patent describes methods for using the novel holder. Figure 1 of the ‘768 Patent is reproduced to the right.

According to the complaint, Ty-Flot sells tool holders which infringe one or more claims of the '768 patent under its Grip-Fit line. An example of a Grip-Fit holder (“Accused Product”) is shown to the left.  Still according to the complaint, Ty-Flot’s Grip-Fit line also comes in six sizes, two of which have the exact diameter and four of which have a diameter approximately within a tenth of an inch of Python Safety's products.  Accordingly, Python alleges that the case is an “exceptional case” pursuant to 35 U.S.C. § 285 because of excessive copying.

The complaint goes on to allege that Ty-Flots unauthorized use of the Python trade dress constitutes deceptive trade practices under the Georgia Deceptive Trade Practices Act, O.C.G.A. §10-1-370, has been with the intention of deceiving and misleading the public, and thereby attempting to encroach upon the business of Python Safety in violation of O.C.G.A § 23-2-55, has been for the calculated purpose of passing off Ty-Flotproducts as those of Python, constitutes copying and imitation of the Python trade dress, falsely designates the origin of Ty-Flotproducts, causes confusion, mistake and deception in the marketplace, and is likely to cause further confusion, mistake, or deception in the marketplace and therefore infringes Python’s common law rights in the Python trade dress in violation of the common law of the State of Georgia, and that the unauthorized use in connection with the advertising, promoting, and sale of Ty-Flots goods and services has unjustly enriched Ty-Flot.

Accordingly, Python seeks judgement that Ty-Flot has directly or indirectly infringed one or more claims of the ‘768 patent in violation of 35 U.S.C. § 271, an injunction restraining Ty-Flot from using the Python trade dress or doing any act that might cause confusion as to the source of products, including a compliance report and surrender or destruction of infringing materials, judgement and an order for accounting and payment of all damages for infringement of the ‘768 patent, to be trebled because of allegedly willfulness and deliberateness, ,judgement in the amount of Python’s damages for trade dress infringement, and judgement for enhanced damages, punitive damages, reasonable attorneys fees, and costs.

The case is Python Safety, Inc. v. Ty-Flot, Inc., Case No. 1:14-cv-01918-WSD, filed June 18, 2014, in the United States District Court for the Northern District of Georgia, Atlanta division, and is assigned to Judge William S. Duffey, Jr..

Thursday, August 14, 2014, 9:21 AM

Blue Force Seeks to Cut Off Supply of Infringing Weapon Slings to U.S. Marines (and others)

Blue Force Gear, Inc. (“Blue Force”), brought two patent infringement actions in June 2014 against Raine, Inc. (“Raine”), an Indiana corporation, and Savvy Sniper , LLC (“Savvy Sniper”), an Ohio corporation, relating to United States Patent No. 8,733,601 B2 (the ‘601 Patent) entitled “Systems, Methods, and Apparatus for Supporting a Firearm from a Person,” which issued on May 27, 2014 – a few weeks before the suits were filed.  Figure 1 from the ‘601 Patent is depicted below:

Raine is accused of selling the following slings for firearms that infringe the ‘601 Patent through a dealer in Columbus (Commando Military Supply / Maneuver Center) and one in the Ft. Benning PX (Patriot Outfitters, LLC), as well as to the Defense Logistics Agency (“DLA”), government purchaser for the U.S. Marines, in Albany: “the General Purpose Quick Adjust Sling; the Ambi Quick Adjust Sling; the COBRA Quick Adjust Sling; and the Heavy Weapon Quick Adjust Sling.  The COBRA Quick Adjust Sling is pictured below:

Similarly, Savvy Sniper is accused of selling the same slings for firearms that infringe the ‘601 Patent through a dealer in Bogart (Clyde Armory), as well as to the DLA.  The Heavy Weapon Quick Adjust Sling is pictured below:

In addition to the patent infringement claims against both companies, Blue Force asserts Tortious Interference with Business Relations.  Blue Force seeks a finding of infringement, damages, for which it requests trebled and punitive damages, a permanent injunction, delivery of all infringing products (or award of a compulsory royalty as an alternative), attorneys’ fees, pre- and post-judgment interest, and such other relief as the Court deems proper.

Note:  A third case brought by Blue Force asserting infringement of the '601 Patent nd tortious interference with business relations was filed on June 16, 2014, and voluntarily dismissed without prejudice by a pleading dated July 24 and filed August 1, 2014.  That case was Blue Force Gear, Inc. v. ATS Tactical Gear, LLC, No. 1:14-cv-93(WLS).

The cases are Blue Force Gear, Inc. v. Savvy Sniper, LLC, No. 1:14-cv-101(WLS), filed in the U.S. District Court for the Middle District of Georgia, Albany Division, on June 23, 2014, and assigned to U.S. District Judge W. Louis Sands; and Blue Force Gear, Inc. v. Raine, Inc., 1:14:CV-99(WLS), filed in the U.S. District Court for the Middle District of Georgia, Albany Division, on June 19, 2014, and assigned to U.S. District Judge W. Louis Sands.

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Wednesday, August 6, 2014, 4:05 PM

Patent Dispute Erupts Over Mobile Digital Recording Devices

Utility Associates, Inc. (“Utility”), a Delaware corporation with a place of business in Tucker, Georgia, filed a patent infringement action on June 12, 2014, against Digital Ally Inc. (“Digital”), a Nevada corporation operating out of Lenexa, Kansas relating to United States Patent No. 6,831,556 (the ‘556 Patent) entitled “Composite Mobile Digital Information System,” which issued on December 14, 2004.  In the Technical Field paragraph the patentee described the system as follows:  “In particular, the present invention is directed to a system for use in public and commercial vehicles to capture video, audio, and related information for surveillance and evidentiary purposes.”

The complaint recites as background information two prior complaints:  (1) a declaratory judgment action filed by Digital in Kansas in October of 2013 [Civil Action NO. 2:13-cv-02550-SAC-KGS (Kansas City Division) – the “Kansas Action”]; and (2) an earlier complaint by Utility on June 3, 2014, which was not actually filed (the “Aborted Filing”).  The Kansas Action was dismissed, although that dismissal is currently under appeal.  Utility explained in its complaint that it was curing the Aborted Filing by refiling the complaint.

According to the complaint, after the Kansas Action was filed, Utility reviewed Digitial’s products in light of the ‘556 Patent and determined that several Digital products infringe the patent.

Utility explains in the suit that it “is engaged in the business of manufacturing, distributing, and selling digital video imaging and storage products and methods.”

The complaint alleges infringement by three Digital products:  the “DVM-500 Plus,” “DVM-750,” and “DVM-800” in-car video systems.  The “DVM-500 Plus” system is pictured below:

Figure 2 of the ‘556 Patent (below) is a diagram of the operation of the patented invention:

Digital is accused of intentional infringement based in part on its knowledge of the ‘556 Patent as disclosed in the Kansas Action.  Utility seeks an injunction, the surrender or destruction of all infringing products, a report on compliance with the injunction, damages, trebled damages as a result of the intentional infringement, and such other relief as the Court deems just and proper.

The case is Utility Associates, Inc. v. Digital Ally, Inc. No. 1:14-cv-01847-RWS, filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on June 12, 2014, and assigned to U.S. District Judge Richard W. Story.

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Thursday, July 31, 2014, 3:06 PM

GDC Seeks to Dock Alumadock for Going Off the Deep End and Committing Patent Infringement

GDC Enterprises, Inc. (“GDC”), a corporation with a place of business in Gainesville, Georgia, filed a patent infringement action on June 3, 2014 against Robco Manufacturing, Inc, d/b/a Alumadock (“Alumadock”), a North Carolina corporation, relating to United States Patent No. 8,668,407 (the ‘407 Patent) entitled “Docking System with Joint Supports,” which issued on March 11, 2014.

The ‘407 Patent begins its section on the Background of the Invention in unconventional fashion, as follows:
Just three days before he died in a plane crash outside of Madison, Wis., Otis Redding recorded the number one hit “The Dock of the Bay” about a person that was fed up with a hectic life in Georgia and traveled to the San Francisco Bay to just sit on a dock.  There is something alluring about docks, some element that captivates our attention, draws us in, and triggers some distant emotion that is embedded deeply within.  The allure may be tied to the merging aspect of a dock that allows us to move from land to sea, to experience the water from a more intimate perspective.

Thus begins a patent that contains two independent claims to a unique and innovative combination of elements that, according to the complaint, captured the imagination and imitation of a competitor.  Below is Figure 1C from the patent.
In this instance the words may be worth a thousand pictures.

After its eloquent beginning, the patent diverges to the more lawyerly, technical claim language that seems to hold allure and fascination for a much more limited body of citizens – patent lawyers.  It was with some difficulty that the author came to accept that the following claim language was written by the same person who penned the introductory prose quoted above.
A dock construction system comprising:
a fascia component defining an interior channel having a particular cross-sectional shape and further comprising one or more integral lips along its length that extend away from the interior channel, wherein an integral lip is configured to receive and support an end of one or more cross beams;
a corner connector component including a first side and a second side joined at a desired angle, wherein at least one of the first side and the second side includes a support insert having a cross-sectional shape that corresponds to the particular cross-sectional shape of the fascia component interior channel, wherein when the support insert of the corner connector is inserted into the channel of the fascia component, the fascia component provides structural support for the corner connector; and
one or more cross beams supported by one of the one or more integral lips of the fascia component.

Upon closer reading, the intimate prose to which the patentee initially ascribed comes through with an unusual sprinkling of claim terms, such as “integral lips along its length,” “desired angle,” and a “fascia component interior channel.”  Perhaps the introductory prose inspires the reader to imagine elements that are not really there.  In any event, the author looks forward to a Markman ruling that will set the record straight as to what the terms mean and how they are appropriately applied.
Alumadock is accused of intentional infringement by selling the infringing aluminum docking products.  GDC seeks an injunction, the surrender or destruction of all infringing products, a report on compliance with the injunction, damages, trebled damages as a result of the intentional infringement, attorney’s fees, and costs.
The case is GDC Enterprises, Inc. v. Robco Manufacturing, Inc. d/b/a Alumadock, No. 1:14-cv-01708-SCJ, filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on June 3, 2014, and assigned to U.S. District Judge Steve C. Jones.

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Wednesday, July 30, 2014, 9:53 AM

Bushwacker Accused of Serial Patent Infringement of Hood Protectors

Lund, Inc. (“Lund”), a Delaware corporation with headquarters in Buford, Georgia, initiated a patent infringement action against Bushwacker, Inc., and Bushwacker Automotive Group, LLC (“Bushwacker), Oregon entities, relating to United States Patent No. 5,755,483 (the ‘483 Patent) entitled “Vehicle Shield Device.”

Lund alleged that Bushwacker acquired molds used to make infringing products from Kalot Industries, Inc. d/b/a Stampede Products, Inc. (“Stampede”).  Although Stampede was licensed to manufacture and sell patented products, the license was not assignable without Lund’s consent, which was neither sought nor obtained by Bushwacker.  Lund asserts that Bushwacker “manufactured, used, sold, and/or offered for sale” infringing vehicle shields, including the Stampede VP (Vigilante Premium) Series Hood Protectors and Stampede LP (Low Profile) Hood Protectors.  Images of the VP and LP Hood Protectectors appear below:
Bushwacker is accused of willful infringement and induced infringement by selling the allegedly infringing hood shield products along with installation instructions.  Lund seeks an injunction, damages, trebled damages, attorney’s fees, and costs.

The case is Lund, Inc. v. Bushwacker, Inc., and Bushwacker Automotive Group, LLC, No. 1:14-cv-01720-TWT, filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on May 22, 2014, and is assigned to U.S. District Judge Thomas W. Thrash.

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Monday, July 7, 2014, 7:14 AM

EZ Products Seeks to Scrub Scrub Buddies Over Cleaning Cloth Design Patent

On May 8, 2014, EZ Products of South Florida, LLC (“EZP”), filed a patent infringement lawsuit against Dollar Tree Stores, Inc. (“Dollar Tree”), a Virginia corporation.  EZP asserts patent infringement of United States Design Patent No. D674,566 (the ‘566 Patent) for a cleaning cloth, which was issued on January 15, 2013.   The ‘566 Patent covers the following design:

According to the complaint, Dollar Tree sells a product identified as Scrub Buddies, UPC #3937710913, pictured below.

EZ Products asserts one count of patent infringement and seeks an injunction, Dollar Tree’s profits, attorney's fees for willful infringement and under 35 U.S.C. 285, the surrender of destruction of infringing products, a report of compliance within 30 days of the injunction, and costs.

The case is EZ Products of South Florida, LLC v. Dollar Tree Stores, Inc., No. 1:14-cv-01398-TWT, filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, and is assigned to U.S. District Thomas W. Thrash, Jr.

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Wednesday, July 2, 2014, 5:37 PM

Supreme Court Issues Landmark Rulings in Two Patent Cases, Further Admonishes Federal Circuit and Lowers the Bar for Patent Challenges

This post, authored by Kirk Watkins and Christy Dupriest, was first published here on June 3 as a Womble Carlyle Case Alert.

In two decisions with immediate and potentially far-reaching consequences, the Supreme Court yesterday unanimously overturned two Federal Circuit decisions.  These decisions continue the trend of the Roberts Court, which has repeatedly overturned or vacated Federal Circuit jurisprudence.[1]  These decisions demonstrate the Court’s apparent intent to pull back on the protection offered by patents, and make it easier for alleged infringers to successfully challenge the validity of patents.  With a more exacting indefiniteness standard and a more limited induced infringement doctrine, competitors and accused infringers now have even more arrows in the quiver to challenge patent owners in litigation.
Nautilus, Inc. v. Biosig InstrumentsInc.
In Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, the Court unanimously struck down the Federal Circuit’s long-standing rule that a claim passes the indefiniteness standard set forth in 35 U.S.C. § 112, ¶ 2 so long as the claim is “amenable to construction” and the claim, as construed, is not “insolubly ambiguous.”  The Supreme Court replaced this amorphous standard with a new “reasonable certainty” test, stating as follows:
[W]e read §112, ¶2 to require that a patent’s claims, viewed in the light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.
Id., at 11 (emphasis added). 
In doing so, the Court recognized that “the definiteness requirement must take into account the inherent limitations of language,” and that a “modicum of uncertainty . . . is the ‘price of ensuring the appropriate incentives for innovation.’”  Id., at 9, citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731-32 (2002).  The Court reasoned, however, that “any person skilled in the art” must be enabled to make and use the invention (Id., at 8) and that precision is necessary to apprise “the public of what is still open to them.”  Id., at 10 (citations omitted).  The Supreme Court reasoned that the newly articulated standard “mandates clarity, while recognizing that absolute precision is unattainable.”  Id., at 11.
Nautilus has an immediate effect on patent prosecution and litigation strategies.  The Court specifically stated that it was aware that patent attorneys and applicants were incentivized to inject ambiguity into patent claims and it was eliminating that temptation..
Id. at 10.  Moreover, it appears that this new indefiniteness standard will shift the burden in litigation from the accused infringer (struggling to focus the court on imprecise language and the potential harm of dual meanings) to the patentee to ensure that the court will find the boundaries of the patent reasonably certain. Courts must focus on whether the patentee has been sufficiently clear in expressing claim terms to enable any person of skill in the art to practice the invention.
The business consequences may extend much further than the future approach to prosecution and the current approach to patent litigation.  Business models designed to capitalize on broad imprecise claim language, whether by purchasing or prosecuting patents, may have devalued portfolios and upended plans.  In addition to providing enterprises and experimenters with a compass to navigate the sea, there may be a number of submarines that have suddenly lost bearings or realized their torpedoes may have been disarmed.
Limelight Networks v. Akamai Techs.
In Limelight Networks v. Akamai Techs., No. 12-786, the Court unanimously rejected the Federal Circuit’s recent expansion of the inducement doctrine for method patents and lenient standard for proof of induced infringement with a far more rigid one. 
The Patent Act provides that “[w]hoever actively induces infringement of a patent shall be liable as an infringer.”  35 U.S.C. § 271(b).  From this rule, the Federal Circuit developed a permissive standard for proof of induced infringement, stating that “[i]It is not necessary to prove that all the steps were committed by a single entity;” instead, “a party who performs some of the steps itself and induces another to perform the remaining steps that constitute infringement has precisely the same impact on the patentee as a party who induces a single person to carry out all of the steps,” and thus is an equitable expansion of patentees’ avenues for assertions of inducement liability.  Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1306, 1309 (Fed. Cir. 2012).  The Supreme Court disagreed, noting that the Federal Circuit’s own precedent makes underlying direct infringement a prerequisite to a finding of induced infringement.  Limelight Networks at 5. 
Despite reversing this decision, the Supreme Court recognized and concurred with the motivating policy concern underlying the Federal Circuit’s decision – that “a would-be infringer” could evade liability “by dividing performance of a method patent’s steps with another whom the defendant neither directs nor controls.”  Id. at 10.  However, the Supreme Court held that the cause of this concern is the Federal Circuit’s own strict “single actor” rule for determining direct infringement as set forth in Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2009).[2]  Id.  The Supreme Court refused to create a rule that is “untethered to the statutory text and difficult for the lower courts to apply consistently” simply to alleviate this equitable concern.  Id.
On remand, the Federal Circuit may decide to consider a loosening of its strict single-actor rule for direct infringement to bring the principles of induced infringement more in line with the common traditions of respondeat superior liability.
The final word has not yet been spoken on how the doctrine of induced infringement will be practically applied in light of the Supreme Court’s decision in Limelight and whether a reciprocal adjustment to the “single actor” rule for direct infringement under § 271(a) to account for the equitable concerns will result from the Federal Circuit’s review of this case on remand.  In the mean time, the Supreme Court has upped the ante on parties claiming induced infringement.

[1] To date, the Roberts Court has reversed the Federal Circuit ten times, vacated its decision four times, affirmed but changed the applicable standard twice, and affirmed three times.   See Herman, Barry and Christine Dupriest, Viewpoint: Roberts Court Reins in the Federal Circuit, The Recorder, May 29, 2014.

[2] There, the Federal Circuit held that a method’s steps have not been performed as claimed by the patent unless all are attributable to the same defendant, either because the defendant actually performed the steps or because he directed or controlled others who performed them.  Muniauction, 532 F. 3d at 1329-30.

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