BLOGS: Georgia IP Litigation

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Wednesday, August 12, 2015, 11:47 AM

Atlanta Rapper Rich Homie Quan Seeks Cancellation or Transfer of Trademarks and Over $2,000,000 in Damages

Think It's A Game Entertainment, LLC ("TIG"), an Atlanta-based production company, Fly Merchandise Enterprises, LLC ("Fly"), and Girvan Henry ("Henry"), have left Atlanta rapper Rich Homie Quan feeling "some type of way."

Dequantes Lamar, better known by his stage name "Rich Homie Quan" ("Quan"), filed suit in the Northern District of Georgia against TIG, Fly, and Henry, alleging he incurred over $2,000,000 in damages based on a number of causes of action, including breach of contract, trademark infringement, and unfair competition.

Quan has achieved notoriety in recent years for his recording singles, "Type of Way" (certified Gold by the RIAA according to the complaint) and "Flex," among others.  The complaint alleges that Quan and TIG signed a "memorandum purporting to be a recording agreement," which called for Quan to receive a $19,200 advance and 50% of all profits from sales of Quan's records.  Quan alleges that the advance and the 50% split have not been paid.  According to the complaint, Quan "did not have the benefit of legal representation at the time he entered into the TIG Memorandum, nor was he advised to seek counsel."  Further, the complaint states that without Quan's consent Defendants entered into separate agreements with other record labels, including Def Jam.  Under those separate agreements, the Defendants were paid several hundred thousand dollars as an advance and further royalties from sales of Quan's music, which the complaint alleges were never passed on to Quan.

According to the complaint, Henry and Fly also filed and obtained trademark registrations for "RICH HOMIE QUAN" and a corresponding logo, shown below, which issued as U.S. Reg. No. 4,483,756 and U.S. Reg. No. 4,746,133, respectively.  Quan alleges that these applications were filed without his consent or knowledge, and that he is not listed as a "creator, author, or owner" of the marks, despite his use of the "Rich Homie Quan" stage name in connection with his career in entertainment.  The complaint seeks a finding that the Defendants committed fraud on the PTO, and asks the Court to cancel the registrations or, in the alternative, to transfer ownership of the marks to him.  The complaint alleges that Defendants' conduct also amounts to unfair competition under the Lanham Act, and seeks redress for damages incurred in connection with Defendants' use of the marks.

"Rich Homie Quan Logo" - U.S. Reg. No. 4,746,133

The complaint also seeks to have the "memorandum" declared unenforceable for lacking "material terms" and that the agreement be rescinded, or in the alternative, for breach of contract.  The complaint further contains counts for breach of fiduciary duty, unjust enrichment, conversion, and violation of the Georgia Deceptive Trade Practices Act (O.C.G.A. 10-1-370).  Quan seeks equitable title to assets purchased with "funds due Artist" relating to the agreement, recovery of damages, and attorneys' fees and costs.

The case is Lamar v. Think It's A Game Entertainment, LLC et al., Case No. 1:15-cv-2775-TCB, filed August 5, 2015 in the Northern District of Georgia, Atlanta Division, and is assigned to Judge Timothy Batten.

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Tuesday, August 11, 2015, 10:23 AM

Court Recognizes Alice Decision Potentially Impacts Case by Allowing Late Motion for Judgment on Pleadings

Mobile Telecommunications Technologies, LLC (“Mobile”)[background on company], initiated a patent infringement case against United Parcel Service, Inc. (“UPS”), in 2012 on U.S. Patent No. 5,786,748 on a method and apparatus for giving notification of express mail delivery.

UPS filed a Motion for Summary Judgment [Dkt. 95], which was submitted to a Special Master for consideration.  The Special Master issued a Report and Recommendation (“R&R”) [Dkt. 139] on July 8, 2015, recommending that the motion be granted in part and denied in part.  Both parties filed objections to the R&R [Dkts. 142 and 143].  In addition to its objection, UPS filed a motion for judgment on the pleadings [Dkt. 145] arguing that the asserted patent should be found invalid under 35 U.S.C. 101 in light of the Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, et al., 134 S.Ct. 2347, 2350 (2014).  In Alice, the Supreme Court emphasized that “a patent-ineligible concept” or “abstract idea” is not made patentable by “generic computer implementation” described as a method claim. Id.

Judge Totenberg agreed with UPS that the resolution of this motion could obviate the need for deciding the summary judgment motion, and she therefore decided to allow the motion despite its lateness in the procedural timeline.  She ruled that it presented a threshold question of validity, which, “in the interest of judicial economy and efficiency,” was not appropriately deferred to trial.

The Court removed the pending summary judgment motion from the docket by denying it without prejudice, but committed to reviving the motion herself if UPS’s motion for judgment on the pleadings is denied.  This action achieved the removal of a decision on the summary judgment motion from the Court’s time tracking requirements, while avoiding adding a burden on either party to resurrect the summary judgment motion.

The case is Mobile Telecommunications Technologies, LLC v. United Parcel Service, Inc., Docket No. 148, decided August 4, 2015, in 1:12-cv-032223-AT, in the United States District Court for the Northern District of Georgia, Atlanta Division, assigned to Judge Amy Totenberg.

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Tuesday, August 4, 2015, 10:36 AM

Judge Ross Examines Morass of Pleadings and Refines Dispute to Supported Claims of Patent, Copyright, and Trade Dress Infringement

In an earlier post today we reported on the Third Amended Complaint filed by Lisa Duer (“Duer”), a resident of Woodstock, Georgia, alleging patent infringement, trademark infringement, copyright infringement, and trade dress infringement action against Bensussen Deutsch & Associates, Inc. (“BDA”), a Washington corporation, and Eli Lilly and Company (“Lilly”), an Indiana corporation (collectively the “Defendants”).  This post addresses Judge Eleanor L. Ross’s Order of July 8, 2015, which gave rise to that filing.

On July 8, Judge Ross ruled on three motions, one filed by Defendants and two by Plaintiffs.  The Court granted in part and denied in part the motion to dismiss of the Defendants and the motion to allow a Second Amended Complaint by Duer and denied Duer’s motion to file the Third Amended Complaint “as currently submitted.”  However, the Court allowed a more limited Third Amended Complaint – “limited to the inclusion of Plaintiff’s additional trademark infringement claim.”
Read more »

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Individual Inventor Alleges Eli Lilly and BDA Overdosed on Patented Dosage Adherence Tool

In the latest chapter of a year-long battle between an individual inventor and two companies, Lisa Duer (“Duer”), a resident of Woodstock, Georgia, filed her Third Amended Complaint alleging patent infringement, trademark infringement, copyright infringement, and trade dress infringement action on July 24, 2015 against Bensussen Deutsch & Associates, Inc. (“BDA”), a Washington corporation, and Eli Lilly and Company (“Lilly”), an Indiana corporation.  The amendment was filed pursuant to an Order entered by Judge Eleanor L. Ross on July 8, 2015, which is discussed in a parallel post.

The amended complaint paints a picture of systematic corporate abuse of a small business owner by BDA and Lilly in which they recognized the value of Duer’s established product, negotiated to license the product, and then, when Duer found some terms unacceptable, discontinued negotiations and began using the product anyway.  According to the complaint, the repeated demands that improper and infringing activity cease were uniformly ignored.
Duer’s Take-n-Slide™ product is a “dosage adherence tool” to remind prescription users on a daily basis as to their last prior dosage intake.  The product, simple and effective in its functionality, is pictured below:
Duer obtained U.S. Patent No. 7,614,358, issued on November 10, 2009, relating to the dosage adherence tool and also copyrighted the instructions included with the product (Reg. Nos. VA0001911109, VA0001431705).  The complaint further alleges that the product “consists of an inherently distinctive combination of design, shape and color scheme.”  Before a dose is taken for a day the color green appears to the right of the slider.  After taking a dose the user moves the slider for that day and the color red appears on the left.
Discussions between Duer, on the one hand, and Lilly and BDA on the other occurred in 2010 and 2011 through Duer’s distributor, Richard Cosgrove of Anatomed, Inc.  Lilly wanted Duer to license the product to BDA, as BDA was already a Lilly approved supplier.  According to the complaint, when Duer informed BDA that a proposed two-year non-solicitation provision was objectionable, BDA abruptly ended discussions and later stated Lilly had decided not to move forward with the product.  Two years later in 2013, Duer learned that Lilly was using the product.  The complaint alleges that even the insert sheet was substantially copied and inserted with the product.  Finally, BDA and Lilly are accused of using the Take-n-Slide™ trademark or confusingly similar marks.
The suit seeks an injunction, damages, enhanced damages, attorney’s fees, costs, and other “relief as the Court may deem just and equitable.”
The case, originally filed in May 2014, is Lisa Duer v. Bensussen Deutsch & Associates, Inc., and Eli Lilly and Company, No. 1:14-cv-01589-ELR, and the Third Amended Complaint was filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on July 24, 2015.  The case is assigned to U.S. District Judge Eleanor L. Ross.

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Monday, August 3, 2015, 10:53 AM

Southern Mills Files Patent Suit Against Int’l Textiles over its Glide™ Product

Southern Mills, Inc. (“Southern Mills”), a Georgia corporation doing business as TenCate Protective Fabrics, filed a patent infringement action on July 15, 2015 against International Textiles Group, Inc. f/k/a Safety Components International, Inc. (“Int’l Textiles”), a Delaware corporation, relating to U.S. Patent No. 8,898,821 (the ‘821 Patent) directed to a flame resistant directionally-dependent fabric.

Southern Mills accuses an Int’l Textiles product marketed under the Glide™ trade name of infringing the ‘821 Patent.  The complaint explains that the face of the Glide™ product is made of a flame resistant fabric, with the fibers of the fabric comprising, on the one hand, para-aramid[i] Kevlar® filament fibers (the “Kevlar® Fiber”), and, on the other hand, meta-aramid[ii] Nomex® fibers and flame resistant viscose/rayon FR® staple fibers spun together (40% of the total Glide™ product) (the “Blend Flame Resistant Fiber”).

The complaint alleges that warp and fill weaving techniques are used to present the Kevlar® Fiber toward the wearer and the Blend Flame Resistant Fiber away from the wearer (toward any external source of heat or flame) infringing claims of the ‘821 Patent.  An image depicting the Glide™ product was included in the complaint and is reproduced below:
The complaint alleges repeated communications with Int’l Textiles before and after the ‘821 Patent issued.
In addition to direct infringement, the complaint alleges indirect infringement by inducement, alleging that Int'l Textiles touts the infringing uses and provides instructions on how to use the product in an infringing manner.  Further, Southern Mills claims that Int'l Textiles contributes to direct infringement by end users and garment manufacturers, pointing specifically to marketing materials. 
The complaint alleges that Int’l Textiles' actions are willful and seeks a finding of infringement, an injunction, damages, including enhanced damages under 35 U.S.C. § 284, attorney’s fees and expenses under 35 U.S.C. § 285, and prejudgment interest and costs.

The case is Southern Mills, Inc. v. International Textiles Group, Inc. (f/k/a) Safety Components International, Inc., LLC, No. 1:15-cv-02588-WSD, filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on July 15, 2015, and assigned to U.S. District Judge William S. Duffey, Jr.

[i] Para-aramids are high density fibers in demand for tensile strength and grip. 
[ii] Meta-aramids are high density fibers though with less tensile strength and grip than para-aramids.

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Friday, July 31, 2015, 10:08 AM

Markman Ruling Construes “Network” Rejecting Parties' Proposals

Plaintiff Microwave Vision, SA (“Microwave Vision”), owner of U.S. Patent No. 7,443,170 (the “‘170 Patent”), brought an action for patent infringement along with MVG Industries, SAS, and MVG, Inc. (collectively “Plaintiffs”) against ESCO Technologies Inc. and ETS-Lindgren Inc. (collectively the “Defendants”).

The ‘170 Patent covers systems used “to measure various parameters relating to antennas used in wireless devices.”  P. 2.  The system uses the same array of probes to obtain multiple measurements by rotating the probes or the antenna to achieve different perspectives.  One of Plaintiffs’ devices is depicted below:
Judge Steve C. Jones provides a thorough exposition of the relevant legal standard for construing claims at pages 3 - 6 of his 52-page Order.  The nexus of the parties' claim construction dispute centers on the construction of the term “network of probes.”  The parties agreed that the ‘170 Patent improved on prior art, which used a similar set of probes, by allowing pivoting of the probes and the tested antenna to garner additional data points.  Greater measurement resolution is achieved by the system through obtaining more measurement points than the number of probes.  Microwave Vision argues its ‘170 Patent claims protect its system of achieving this increased resolution from infringement by Defendants.
Divergent claim constructions of the key term “network of probes” were proffered by Plaintiffs and Defendants.  Plaintiffs argued that the term should be construed to require probes that “can each send signals to a common receiving device,” while the Defendants argued the probes must be “communicatively interconnected.”  Pp. 11-12.  The Court focused on the thrust of the dispute – “what it means for a given set of ‘probes’ to be ‘networked.’”  P. 12.
In its examination of the claims,[i] the Court found no mention of sending signals to a common receiving device or communicative interconnectivity.  Thus the functional limitations proposed by each side was not mandated by the claim language. P. 13.  The Court further found that the patentee had not acted as lexicographer to define the term in the specifications.  P. 13.  The Court found the arguments of each side effective against the other and thus neither proposed construction had specification support.  P. 13.  Similarly, the Court dissected the extrinsic evidence offered by each side in support of its proposal and found that evidence lacking.
The Court found fault with the premise of both sides that a “network” must involve communications, noting the reference to a network of trains in “Newton’s Telecom Dictionary.”  P. 15, n. 4.  The Court did not find dictionary references to “nodes” in communication systems to be synonymous with “probes” as used in the ‘170 Patent.  Apparently, Judge Jones did not feel the compulsion that the parties felt that communications of some kind must be included as a limitation, probably based on the probes as manifested in real-life employing communication of the measurements taken.  “This is not to say that Claim 12 could not include such features.  But they are not required limitations.”  P. 16, supported by n. 7.
The Court’s independent approach to deriving a proper construction offers a lesson to IP litigators both on how to systematically arrive at a supportable construction and on how to persuasively document that process.   Judge Jones followed the process he described in his Legal Standard section first looking to the claim language (including the language of non-asserted independent claims).  P. 18, n. 9.  That examination of claims led Judge Jones to conclude that the “network of probes” require a particular structure. 
First the probes must be in a single plane.  Pp. 18-20.  This requirement was further supported by repeated terminology in the specifications, which in turn was further supported by the prosecution history.  P. 20.  The term Judge Jones chose to describe this relationship was “coplanar.”  P. 21, n. 10.
Second, the probes must “have a fixed relation to one another.”  P. 21.  Pointing to language that requires the pivoting of the network of probes, Judge Jones noted they must move “as a single unit, which in turn necessitates a fixed relationship.”  P. 22.  Dependent claim references to distribution of the probes at a given pitch along an arc further require a fixed relationship between the probes.  P. 22.  Similarly, multiple references to pivoting, tilting, moving, and pitch distribution in the specifications were cited for additional support.  P. 23.  The Court next points to the prosecution history where the patentee distinguished other prior art measuring probes for not involve pivoting, moving, or specifying an angular pitch.[ii]  P. 24.
While stating that extrinsic evidence was unnecessary to support the Court’s construction, Judge Jones nevertheless delivered the coup de grȃce to the parties’ constructions, pointing out the ‘170 Patent was filed pursuant to the Patent Cooperation Treaty based on a French Application.  Judge Jones then noted that the translation of the French application included the term at issue:  “network of probes.”  P. 26  The Court’s exegesis of the French term translated – réseau de sondes – supplied almost poetical support for his construction.  Réseau means a system of lines forming small squares of standard size forming a network to facilitate measurements or detect changes (in film), and sonde means various devices of testing physical and meterological conditions (above the earth’s surface) and the Middle French word sonde referred to a nautical “sounding line.”  Pp. 26-27.  Thus, as Judge Jones noted, the terms from which “network of probes” derived referred to probes with a particular physical arrangement rather than signal sending or other electronic communication characteristics.  P. 27.  Despite the Court’s repeated disavowing of reliance upon the historical genesis of the term at issue, one can almost see the Judge’s smile upon its discovery.
Thus, the Court, relying only upon the claims, specifications, and prosecution history, found “network of probes” to mean “multiple probes having a fixed and coplanar relationship to one another.”  P. 28-29.
The remaining constructions relating to the structure required for means-plus-function claims.  In determining the precise structures required, Judge Jones relied primarily on the disclosures in the specifications, noting that the first step was to identify the claimed function and next to determine what structures correspond to that function and examine the specification or prosecution history for a clear link of that structure to the recited function.  P. 31.  The Court again took a minimalist approach.  With regard to the first construction of a means-plus-function claim, the Court found the structure disclosed in the specifications that was required to perform the claimed function but refused to import additional limitations that were unnecessary for the claimed function.  The required structure does not need to include limitations already in the claim, but only those necessary to perform the claimed function that appear in the specification but not the claim.  While the Court decided not to adopt either side’s argument, a structure was found but without all of the limitations proposed by Plaintiffs.
However, with the final means-plus-function claim, the Court found that Plaintiffs had only disclosed one structure in the specification and thus the structure must “be limited to the single disclosed structure and equivalents.”  P. 48, citing Mettler-Toledo, Inc., v. B-Tek Scales, LLC, 671F.3d 1291, 1296 (Fed. Cir. 2012).
This Order demonstrates a sophistication of claim construction analysis extending beyond the arguments of counsel, yet bound by precedent and restraint.
The case is Microwave Vision, S.A., MVG Industries, SAS, and MVG, Inc. v. ESCO Technologies, Inc., and EST-Lindgren Inc., Dkt. 59, decided July 15, 2014, in 1:14-cv-01153-SCJ, in the United States District Court for the Northern District of Georgia, Atlanta Division, assigned to Judge Steve C. Jones.

[i] Although only Claim 12 was in dispute.  The Court looked at all the claims to see if their wording informed the correct finding.
[ii] Given the Court’s multiple references to a “given pitch” or “set pitch,” it is interesting to note that the Court’s ultimate construction required fixed positions but included no requirement of a symmetry of pitch in the locations.

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Thursday, July 30, 2015, 10:28 AM

Sugartown Takes on Old Navy in Copyright Infringement Action over Lilly Pulitzer Fashion Designs

Sugartown Worldwide, LLC (“Sugartown”), a Delaware limited liability company with its principal place of business in Pennsylvania, filed suit for copyright infringement, money damages, injunctive relief, seeking destruction of infringing materials, costs, and attorneys’ fees against Old Navy (Apparel), LLC, Old Navy, LLC (collectively “Old Navy"), and The Gap (“Gap”) (altogether the “Defendants”).

Sugartown owns the Lilly Pulitzer trademarks under which it markets and distributes Lilly Pulitzer apparel and accessories, including within the Northern District of Georgia.  The district is also home to Sugartown’s parent company and many of its executives and corporate officers.  The Defendants are California based companies registered in Delaware and sell products throughout the country, including in this District, through retail outlets and over the Internet.

According to the complaint, Lilly Pulitzer began designing, manufacturing, and selling bright and colorful prints on distinctive fashion apparel in the 1950’s.  In 1959 Lilly Pulitzer, Inc., was founded and the rights to the brand were purchased by Sugartown in 1993, which continued the creation of distinctive designs with its own design team.  There are over 100 Lilly Pulitzer retail stores in the United States operated by Sugartown or through licensing agreements.  In addition, Lilly Pulitzer designs are sold over the Internet and by major department stores and individually owned stores.

The Lilly Pulitzer design team creates original artwork, often printed on canvas, which are then registered with the United States Copyright Office.  This artwork is then used with color modifications on fabric which comprises Lilly Pulitzer products.  The complaint establishes the credentials of the original artwork for two designs identified as the High Tide Design and the Sparks Fly Design, both of which were duly copyrighted.  

Derivations of these patterns were designed in 2013 and introduced on Lilly Putitzer products in 2014.  The advertising and wide distribution serves as the basis for allegations that Defendants had access to the patterns.  The gravamen of Sugartown’s complaint is that these patterns were copied by Defendants and substantially similar designs were introduced by Defendants thereafter as their own products.  The complaint highlights consumer comments on social media as to the close similarity of the designs and depicts in the complaint itself side-by-side comparisons, two of which are shown below:

By its complaint Sugartown seeks to stem the tide of Defendants’ alleged copying and let the sparks fly where they must (and not fly where they must not).
Sugartown Worldwide, LLC v. Old Navy (Apparel), LLC, Old Navy, LLC, and The Gap, Inc., 1:15-CV-02633-ELR, United States District Court for the Northern District of Georgia, Atlanta Division, filed July 24, 2015, before Judge Eleanor L. Ross.

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