BLOGS: Georgia IP Litigation



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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

VitaminsOnline.com 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 Amazon.com. 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 Amazon.com. 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 Amazon.com 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 Amazon.com 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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Thursday, June 5, 2014, 4:27 PM

AcryliCon Accuses Silikal Of Trademark Infringement and Misappropriation of Trade Secrets

On April 10, 2014, AcryliCon USA, LLC, (“AcryliCon” or “Plaintiff”) filed a complaint against Silikal GmbH & Co. and Silikal Industries GmbH, (“Silikal”), Hubert Weimann, and Harold Schmidt (collectively, “Defendants”) alleging misappropriation of trade secrets, trademark infringement in violation of the Lanham Act, federal unfair competition, trademark infringement and unfair competition under Georgia law, violation of the Georgia Unfair and Deceptive Trade Practices Act, violation of the Georgia Trade Secrets Act, and violations of Georgia common law.

AcryliCon is a limited liability company formed under Delaware law, with its principal place of business in Alpharetta, Georgia. Both Silikal GmbH & Co. and Silikal Industries GmbH are corporations organized and existing under the laws of Germany with principal places of business in Mainhausen, Germany.  Hubert Weimann is managing director of Silikal, also residing in Mainhausen, Germany, and Harold Schmidt is an owner and managing director of Silikal, also residing in Mainhausen, Germany.

According to the complaint, AcryliCon markets and installs an industrial flooring system which has been sold throughout the world for more than 30 years.  The system is marketed under the trademarked “AcryliCon®” name and referred to generally as the “AcryliCon System.”  Variations of the name are also used, such as the “AcryliCon Décor [or Dekor] System,” the “AcryliCon Flake System,” the “AcryliCon Granite System,” the “AcryliCon Lacquer System,” the “AcryliCon Variant System,” and the “AcryliCon Microban System.” The term “SW” is also used to describe the system.

Still according to the complaint, Acrylicon has filed trademark applications with the United States Patent and Trademark Office for the word mark “AcryliCon” and for the stylized word mark “AC AcryliCon” in both black-and-white and in color – for use regarding the goods and services of “commercial and industrial flooring, namely, floors formed from acrylic resin,” and for the “installation, maintenance and repair of floor and wall coverings.” These three marks were registered in the United States Patent and Trademark Office under registration numbers 2,666,813, 2,669,542, and 3,564,938.  The complaint alleges that these marks are suggestive and accordingly inherently distinctive, have acquired secondary meaning and public association, and are incontestable pursuant to 15 U.S.C. § 1115.

In addition to allegations of trademark infringement, AcryliCon also alleges misappropriation of trade secrets regarding a product known as “1061 SW," a modified methacrylate (or “MMA”) resin. The resin is applied and then covered with a sealer to comprise an AcryliCon System floor. According to the complaint, the 1061 SW resin is one of the most important parts of the AcryliCon System, and the unique, confidential and exclusive nature of the 1061 SW formula is critical to the success of the AcryliCon System.  The complaint further alleges that until recently, the AcryliCon resin had been manufactured by Silikal, but, as a result of business disputes and quality control issues, AcryiliCon was forced to locate an alternative source for the manufacture of this proprietary resin.

The Plaintiff and Defendants have a prior history of litigation, including two previous lawsuits, (Case No. 1:08-cv-00119-CC (N.D. Ga.) and Case No. 09-cv-23451 (S.D. Fla.)). In the first, plaintiffs alleged that the defendants were misappropriating the AcryliCon Companies’ trademarks and other proprietary, confidential, and trade secret information in connection with their marketing of Silikal products.  The second lawsuit was allegedly filed to protect trade secrets related to the 1061 SW formula and resulted in a Stipulated dismissal including a agreement to the exclusive jurisdiction of the Northern District of Georgia for future disputes.

The complaint alleges, among other things, that the defendants are “(a) making statements and representations, directly and indirectly, regarding 1061 SW Resin, the AcryliCon Systems and its components; (b) making statements, representations and claims, directly and indirectly, that Silikal Products and AcryliCon Systems are the same; (c) improperly comparing Silikal Products to AcryliCon Systems; and (d) using, directly and indirectly, references of floors installed by AcryliCon.” Further, the defendants have allegedly threatened to misappropriate the formula for 1061 SW.

AcryliCon seeks a preliminary and permanent injunction, an award of damages, including exemplary damages for allegedly willful and malicious misconduct, as well as attorneys' fees and costs.

The case is AcryliCon USA, LLC v. Silikal GmbH & Co. et al., Case no. 1:14-cv-01072-WSD , filed April 10, 2014 in United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge William S. Duffey, Jr.

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NewPoint Media Seeks Declaration of Non-Infringement of Easy IP Patent and Copyrights Covering Custom Advertisement Creation

NewPoint Media Group, LLC (“NewPoint Media”), filed a complaint in the Northern District of Georgia seeking a declaratory judgment against Easy Intellectual Property Licenses, LLC (“Easy IP”) declaring that NewPoint Media does not infringe software electronic advertising copyrights of Easy IP or U.S. Patent No. 8,234,174, which published on July 31, 2012 (the ‘174 Patent).

According to the complaint, NewPoint Media is headquartered in Lawrenceville, Georgia, and Easy IP is a West Virginia corporation.  Jurisdictional allegations were based on assertion of copyright and patent rights in the Northern District of Georgia and licensing within Georgia for both the software and patent.  NewPoint Media provides print and digital media services, including The Real EstateBook – an online website and printed publication listing real estate properties and services.

The complaint relates that Easy IP markets software which allows customers to easily create custom advertisements, and which it claims is based on the ‘174 patent.  On March 4, 2014, Easy IP filed suit in the Southern District of West Virginia against seven defendants, including NewPoint Media, alleging infringements of software copyrights and the ‘174 patent.  The West Virginia complaint, attached as Exhibit A to the complaint asserted NewPoint had “adopted” the patented process and “imitated” the software.  Figure 3 from the ‘174 patent is reprinted below:
The West Virginia complaint was voluntarily dismissed without prejudice on May 9, 2014.

According to NewPoint Media, the filing and dismissal of the West Virginia complaint has created “a substantial controversy between NewPoint and Easy IP of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”

NewPoint Media does not seek a declaration that the ‘174 patent is invalid or unenforceable, but only that it is not infringed by NewPoint Media.  The complaint does further seek to have the case declared exceptional resulting in an award of attorney fees to NewPoint Media.

The case is NewPoint Media Group, LLC v. Easy Intellectual Property Licenses, LLC, No. 1:14-cv-01436-WBH, filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on May 12, 2014, and assigned to U.S. District Judge Willis B. Hunt, Jr.

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