BLOGS: Georgia IP Litigation

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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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Monday, June 30, 2014, 2:49 PM

CTP Innovations LLC Files Patent Infringement Complaint Against Atlanta-Based Geo Graphics, Inc.

On May 8, 2014, CTP Innovations, LLC (“CTP”), a Delaware LLC, filed a complaint against Geo Graphics, Inc. (“Geo”) of Atlanta, Georgia, alleging infringement of U.S. Patent Numbers 6,611,349 (“the ‘349 Patent”) and 6,738,155 (“the ‘155 Patent”).

The complaint comes less than a year after a slew of similar complaints filed in the Northern District of Georgia, in Texas, and in Tennessee last June.  More information regarding those complaints can be found in a July 30, 2013 entry from our blog here.

The ‘349 Patent for “System and Method of Generating a Printing Plate File in Real Time Using a Communication Network” and the ‘155 Patent for a “System and Method of Providing Publishing and Printing Services Via a Communications Network” relate to systems and methods of providing publishing and printing services via a communication network involving computer to plate technology.  Computer to plate technology involves transferring an image to a printing plate without the middle step of creating a film of the image imprinted on the plate. Such plates can be used in a printing press to transfer an image to different types of media.

Fig. 1 of the '349 and '155 patents
As stated in the patents’ backgrounds, the methods and systems claimed are intended to provide a solution for communicating and managing printing and publishing services without the need to physically transfer copies of design files and proofs by combining prepress, content management, infrastructure (server, storage & distribution) and workflow services.  Prior to the inventions claimed in the ‘155 and ‘349 patents, slides or computer disks containing pages to be printed were sent (via mail or express carrier) to be prepared for creation of a plate.

Both patents at issue have been subjected to an inter partes review proceeding with the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) initiated by Printing Industries of America (“PIA”).

The first case, captioned Printing Industries of America v. CTP Innovations, LLC (Case No. IPR2013-00474) (“IPR2013-00474”) was filed on July 29, 2013.  The petitioner in that case challenged the validity of each and every claim in the ‘349 patent, and on December 31, 2013, the PTAB found that the petition did not demonstrate that there was a reasonable likelihood of invalidating at least one of the claims in the ‘349 Patent.

The second case, captioned Printing Industries of America v. CTP Innovations, LLC (Case No. IPR2013-00489) (“IPR2013-00489”) was filed on August 2, 2013.  The petitioner in that case challenged the validity of each and every claim in the ‘155 patent, and on December 30, 2013, the PTAB found that the petition did not demonstrate that there was a reasonable likelihood of invalidating at least one of the claims in the ‘155 Patent.

Although it had the opportunity to file a motion for rehearing in both IPR2013-00474 and IPR2013-00489, PIA declined to file any motion for rehearing, and the determinations by the PTAB in IPR2013-00474 and IPR2013-00489 are not appealable.  In those cases, Michael Makin, president and CEO of PIA (petitioner in IPR2013-00474 and IPR2013-00489) testified before the Senate Committee on the Judiciary, that the inventions in the ‘349 and ‘155 Patents “relate[ ] to how a digital file, like a PDF file, is handled and manipulated in a print production operation up until the time it is used to image a printing plate. This method of digital workflow and plate imaging was new in the 1990s when the patent was issued but has become ubiquitous in the industry now.”

According to the complaint, “in so making this statement, it is clear that Makin and PIA were able to determine from the face of the ‘349 and ‘155 Patents that infringement of the ‘349 and ‘155 was ‘ubiquitous in the industry now.’”  The complaint goes on to allege that Geo is infringing both the ‘349 Patent and the ‘155 Patent with, at least, its offset sheet-fed and web printing services that involve workflows related to plate-ready files and/or the generation of such files.

Accordingly, CTP is seeking judgment that Geo has infringed the ‘349 Patent and the ‘155 Patent and that such infringement was willful, a permanent injunction enjoining infringement of the ‘349 Patent and of the ‘155 Patent, a judgment and order requiring Defendant to pay CTP its damages in an amount not less than a reasonable royalty, treble damages, costs, expenses, and prejudgment and postjudgment interest for Defendant’s infringement of the ‘349 Patent and the ‘155 Patent, as provided under 35 U.S.C. § 284, and a judgment and order finding the case to be exceptional within the meaning of 35 U.S.C. § 285, and awarding to CTP its reasonable attorney fees and expenses.

The case is CTP Innovations, LLC v. GEO Graphics Inc., Case no. 1:14-cv-01394-SCJ, filed May 8, 2014 in the United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Steve C. Jones.

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Thursday, June 26, 2014, 3:42 PM Files False Advertising Action Over Competitor's Online Dietary Supplement Offerings and Claims

Guest post: This post was authored by summer associate Emily Scheible.  Thanks to Emily for her contribution!

On May 6, 2014 VitaminsOnline, Inc., a Delaware corporation (“VOI”), filed a complaint against Dynamic Industries, LLC, a Nevada limited liability company, and Christopher Wilson, a resident of Georgia (collectively “Dynamic”), alleging false advertising and unfair competition under Section 43 of the Lanham Act, deceptive trade practices under Georgia law, and common law false advertising in regards to the sale of online dietary supplements. 
VOI markets and sells vitamins and dietary supplements over the Internet, including on One of VOI’s products is “Nutrigold® Garcinia Cambogia Gold” (“Garcinia Gold”), which contains 60% Hydroxycitric acid (HCA) and has been shown to suppress appetite and support weight loss. Another product VOI sells is “Nutrigold® Svetol® Green Coffee Gold” (“Green Coffee Gold”), which contains 100% Svetol® green coffee extract and no generic green coffee extracts.
VOI's Nutrigold® Garcinia Cambogia Gold
VOI's Nutrigold® Svetol® Green Coffee Gold
Dynamic also sells vitamins and dietary supplements over the Internet, including on One of Dynamic’s products that is in direct competition with Garcinia Gold is “Dynamic Pure Garcinia Cambogia Extract” (“Pure Garcinia”). Another one of their products, formerly labeled “Pure Svetol® Green Coffee Extract,” now called “Pure Green Coffee Bean Extract” (“Pure Green Coffee”), competes directly with Green Coffee Gold.
Dynamic "Pure Garcinia"
Dynamic "Pure Green Coffee"
VOI alleges unfair competition and false and misleading advertising stemming from Dynamic’s listings and product labels for Pure Garcinia and Pure Green Coffee. The allegedly false representations include: the percentage of HCA in Pure Garcinia, the use of “vegetarian” capsules made of plant cellulose, Pure Garcinia being covered by multiple patents, the “fillers” included in Pure Garcinia, products being “clinically proven,” and the amount of Svetol green extract contained in the product. An independent test laboratory tested Dynamic’s Pure Garcinia capsules and refuted the claims listed above. Further, VOI alleges that Dynamic is posting numerous fake favorable online reviews on about Pure Garcinia and Pure Green Coffee. Lastly, VOI asserts that Dynamic’s product descriptions for both of their competing products are nearly verbatim copies of VOI’s product pages.
VOI brought suit for federal false advertising in violation of 15 U.S.C. § 1125(a)(1)(B), alleging that Dynamic knew, at all relevant times, that their statements were inaccurate. Due to these allegedly inaccurate statements, VOI argues that the public is likely to be deceived and this deception will have a material effect on purchasing decisions. VOI further asserts that Dynamic’s purported false and misleading advertising has caused damage to VOI’s business, reputation and goodwill.
VOI also claimed federal unfair competition under 15 U.S.C. § 1125(a)(1)(A), alleging that Dynamic’s use of nearly verbatim copies of VOI’s advertisements have created, caused and/or contributed to a false association between Dynamic’s and VOI’s products. According to the complaint, these actions constitute a false designation of origin, sponsorship or approval in violation of the Lanham Act that will cause damage to VOI and create confusion for consumers.      
VOI demanded an injunction stopping Dynamic from continued use of the labels and advertisements, an Order requiring Dynamic to circulate corrective advertising, punitive damages and attorney’s fees.         
On May 30, 2014, Dynamic Industries and Christopher Wilson separately moved to dismiss the complaint for failure to state a claim, lack of standing, and lack of personal jurisdiction. The motions are pending.  
The case is Vitamins Online, Inc. v. Dynamic Industries, LLC, Case NO. 1:14-cv-01366-SCJ, filed May 6, 2014 in the United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Steve C. Jones

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Tuesday, June 24, 2014, 10:56 AM

Expanded Technologies Seeks Declaration of Non-Infringement and Invalidity of Wallner's “Expanded Metal” Patent

On May 9, 2014, Expanded Technologies, Inc.  (“Expanded Tech”) filed a complaint against WallnerTooling/Expax, Inc. (“Wallner"), seeking both a Declaration of Non-Infringement and a Declaration of Invalidity of U.S. Patent No.8,696,781 (hereafter, “the ‘781 patent”).

Expanded Tech is an Oklahoma corporation with its principal place of business in Marietta, Georgia, and Wallner is a California corporation with its principal place of business in Rancho Cucamonga, California and with a registered agent in Kennesaw, Georgia.

According to the complaint, both corporations are in the industry of producing expanded metal products for HVAC filters.  Prior to founding Expanded Tech in 1989, Mr. Jean-Luc Liverato was employed by Wallner from about May 1988 until about August 1989.  Mr. Liverato was responsible for opening and managing the operations of Wallner’s manufacturing facility in Kennesaw, Georgia, which continues to operate today.
Fig 4 of the '781 patent

The issue in the complaint involves the ‘781 patent entitled “Expanded Metal and Process of Making the Same,” which issued April 15, 2014 from U.S. Patent Application No. 12/891,606 (the ‘606 Application) which was filed on September 29, 2009.  The patent was duly assigned to Wallner and relates generally to a filter having a filter medium reinforced with expanded metal of a specific form.

According to the complaint, Wallner has a history of suing Expanded Tech.  In 1990, predecessors to Wallner sued Mr. Liverato for alleged trade secret misappropriation in connection with his opening of Expanded Tech (Superior Court of Cobb County, Georgia, Case No. 9012883-99).  The suit was ultimately dismissed with prejudice without recovery to Wallner.

Still according to the complaint, Wallner sued again in February 1996 in the same court, this time naming both Expanded Tech and Jerry Cook, a former Wallner employee then working for Expanded Tech, seeking a temporary restraining order, alleging breach of a “Patent Rights Agreement” between Wallner and Cook, and alleging misappropriation of trade secrets.  Specifically, Wallner alleged that Cook, while still employed by Wallner, “entered Wallner’s Kennesaw, Georgia facility on a weekend and videotaped the machinery used to implement [Wallner’s methodology and technology].”  Wallner’s motion for a temporary restraining order was denied, and the case was ultimately dismissed without recovery to Wallner.

The complaint further alleges that on December 4, 2012, a man entered Expanded Tech’s manufacturing facility without authorization through the loading docks with a camera and tried, perhaps successfully, to take pictures of Expanded Tech’s manufacturing machines in action.

In addition to the history of litigation, the complaint also outlines a series of letters sent back and forth between Expanded Tech and Wallner.  In May 2011, two months after the ‘606 Application was published as U.S. Patent Publication No. 2011/0067372 (the ‘372 Publication), Wallner’s counsel sent a letter to Expanded Tech “to provide [Expanded Tech] with notice pursuant to [pre-AIA] 35 U.S.C. § 154(b) of provisional rights conferred to Wallner by the ‘372 Publication.”  Expanded Tech replied by letter stating that Expanded Tech considered the matter to be closed until the ‘606 application issues as a patent.  Wallner’s counsel then sent another letter asserting that Expanded Tech’s expanded metal, including that used in the PURAFILTER 2000, was infringing and that once the ‘372 Publication issued Wallner intended to enforce it to the full extent of the law.  Expanded Tech again replied in a letter stating “in the absence of an issued patent, there is no need to respond to your assertions.”

Expanded Tech’s counsel also advised Wallner's counsel that they believed Wallner manufactured and sold products including features from the ‘372 publication, and that the manufacture and sales occurred more than one year prior to the filing date of both the ‘371 publication and the provisional application from which the ‘371 publication claimed benefit.  If true, such allegations could invoke the “on sale bar” of pre-AIA 35 U.S.C. 102(b).

Wallner filed a “preliminary amendment” on February 8, 2012, and a “request for republication of patent application” on February 28, 2012.  The ‘606 application was then republished as U.S. Patent Publication No. 2012/0144792 (“the ‘792 publication”).  After the ‘792 publication was published, Wallner's counsel again sent notice to Expanded Tech of rights allegedly conferred by the ‘792 publication.  The patent ultimately issued as the ‘781 patent on April 15, 2014.

According to the complaint, Expanded Tech received another letter from Wallner's council on April 30, 2014, this time with a copy of the ‘781 patent enclosed.  The letter allegedly accused Expanded Tech of infringement and expressly stated an intent to enforce Wallner's alleged rights in regards to the ‘781 patent.

As a result, as Expanded Tech explains in their complaint, Expanded Tech has reasonably inferred that Wallner is presently prepared and willing to seek to enforce the ‘781 patent against Expanded Tech.  Based on these alleged events, Expanded Tech filed for a Declaration of Non-infringement by Expanded Technologies of U.S. Patent No. 8,696,781 and a Declaration of Invalidity of U.S. Patent No. 8,696,781.

The case is Expanded Technologies, Inc. v. Wallner Tooling/Expac, Inc., Case No. 1:14-cv-01421-RWS filed May 9, 2015 in the United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Richard W. Story.

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Monday, June 23, 2014, 6:18 PM

Reflective Apparel Seeks Declaratory Judgment That Safety Vest Does Not Reflect Competitor's Patent Claims

Reflective Apparel Factory, Inc. (“Reflective”), a Georgia corporation headquartered in Marietta, seeks a declaratory judgment against Carolina Safety Acquisition, LLC (“Carolina”), a Delaware limited liability company operating out of North Carolina, that Reflective does not infringe U.S. Patent No. 7,735,151 (the ‘151 Patent).

The complaint was filed after Reflective received a letter dated April 25, 2014, that accused at least three Reflective products of infringing the ‘151 Patent.  Figure 1 from the ‘151 Patent showing a vest detachable at the sides and shoulders is shown below:

According to the complaint, Reflective is in the business of supplying “high-visibility garments to various industries in order to enhance” employee safety.  An image of one of the accused products – the VEA-552 Public Safety Vest is pictured below:

Reflective alleges that Carolina has engaged in a series of assertions of patent infringement against industry participants since the ‘171 Patent issued on June 15, 2010.  The complaint alleges that patent suits relating to the ‘171 Patent have been brought and dismissed with no known payments to Carolina involving industry participants M.L. Kishigo Manufacturing Company, Fechheimer Brothers Company, and W. W. Grainger, Inc.

Reflective alleges that in each instance that Carolina sent a cease and desist letter (including the one to Reflective), it knew or should have known that the accused products did not actually infringe any claim of the ‘151 Patent.

The case is Reflective Apparel Factory, Inc. v. Carolina Safety Acquisition, LLC, No. 1:14-cv-01376-TCB, filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on May 7, 2014, and assigned to U.S. District Judge Timothy C. Batten, Sr.

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Wednesday, June 11, 2014, 8:02 AM

Dollar Tree's "Scrub Buddies" Cleaning Cloths Targeted for Alleged Design Patent Infringement

On May 8, 2014 EZ Products of South Florida, LLC of Boca Raton, Florida ("EZ Products") filed a complaint against Dollar Tree Stores, Inc. of Chesapeake, Virginia ("Dollar Tree"), alleging patent infringement of United States Patent No. D674,566 ("the '566 patent") for a "Cleaning Cloth."

The '566 patent issued on January 15, 2013 to Joseph Colangelo from an application filed April 11, 2012.  EZ Products received the '566 patent by virtue of an assignment from Mr. Colangelo.  The claim of the '566 patent covers the ornamental design for a cleaning cloth, as shown in Figs. 1-3 of the '566 patent (below).

EZ Products alleges Dollar Tree's "Scrub Buddies" products are infringing the '566 patent, and specifically alleges that product UPC# 3937710913 is infringing.

According to the complaint, EZ products contacted Dollar Tree and informed it of the alleged infringement by a letter dated April 9, 2014, but Dollar Tree has refused to stop selling and continues to sell the allegedly infringing products.

According to the complaint, Dollar Tree does business, has a registered agent, and has committed acts of willful patent infringement in the Northern District of Georgia.  EZ Products seeks a judgment that Dollar Tree has infringed the '566 patent, that Dollar Tree be permanently enjoined from further infringing the '566 patent and ordered to surrender all infringing products, that EZ Products be awarded lost profits or a reasonable royalty, treble damages, attorney's fees, and costs.

The case is EZ Products of South Florida, LLC v. Dollar Tree Stores, Inc., Case No. 1:14-cv-01398-TWT, filed May 8, 2014 in the United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Thomas W. Thrash, Jr.

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