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Georgia IP Litigation: March 2014

BLOGS: Georgia IP Litigation

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Monday, March 31, 2014, 11:57 AM

Case Filed in 2006 Deemed to be in "Early Stages" and Stayed for Second Time Pending PTO Review

IP Co., LLC's ("IPCO") patent infringement suit against Tropos Networks, Inc. ("Tropos") has a long and tortured, albeit uncomplicated, history. IPCO filed its complaint back in March 2006, alleging infringement of U.S. Patent Nos. 6,249,516 ("the '516 patent") and 6,044,062 ("the '062 patent").  Tropos soon thereafter filed ex parte reexamination requests with the PTO and moved to stay the litigation pending the outcome of the proceedings. The court granted the motion to stay, and the district court action was dormant for four years.  In 2011, the PTO confirmed the patentability of ten claims, cancelled four claims, and determined that several other claims were patentable in amended form.  The Court lifted the stay in September 2011, but discovery was delayed while the parties briefed a motion to transfer the action to the Eastern District of Texas, where IPCO had several related actions pending.  As we reported here, the Court denied IPCO's motion to transfer in October 2012.  Since that time, the parties have engaged in limited discovery and claim construction briefing, but no hearing has been set.

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Court Delivers Markman Order in UPS Case On Order of Text Message Deliveries

Judge Amy Totenberg rendered a Markman decision in a patent infringement action brought by Mobile Telecommunications Technologies, LLC (“MTel”), against United Parcel Service, Inc. (“UPS”).  MTel alleged UPS infringed U.S. Patent No. 5,786,748, issued July 28, 1998, by using the protected method to track packages and provide status information with text messages.

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Thursday, March 27, 2014, 3:58 PM

Airport Restaurant Service Provider Seeks to Ground Hijacked URL

OTG Management, LLC (“OTG”), seeks to enjoin unnamed defendants from anonymously continuing “a misleading uniform resource locator (“URL”) and corresponding email services,” posing as an OTG employee and using OTG service marks and trade names.  Defendants are alleged to be using OTGMANAGEMENT.CO to divert business and gather information about OTG and its customers by posing as an employee of OTG in communications with OTG customers.  The complaint notes that OTG filed a motion requesting expedited discovery with its complaint.

OTG operates over 200 restaurants and eateries in ten airports across the United States.  OTG owns and utilizes the URL “OTGManagement.com” (the “OTG URL”) as its online location and for email.  OTG further owns the marks “OTG Management” – United States Trademark Reg. Nos. 2,908,809, 3,511,478, and 4,478,385 (first used in commerce in 1999) - and the mark “OTG” - United States Trademark Reg. Nos. 3,498,678, and 4,003,677 (first used in commerce in 2007).
The complaint alleges that defendants registered an almost identical URL (missing only the "m" of ".com") in May 2013 (the “Fraudulent URL”).  OTG learned of the fraud when an OTG customer (the Denver International Airport) sent an email to OTG in January 2014 that contained an email address from the Fraudulent URL in the email chain (the “Fake Email”).  The Fake Email posed as an OTG employee involved in a request for proposal (“RFP”) process with the airport.
According to the complaint, the Fake Email demonstrated knowledge of substantial details of OTG’s business relationships and the industry in general, as well as specific identities of individuals involved in the RFP process.
As OTG began investigating the source of the Fake Email, defendants are alleged to have switched to a new host provider and redirected emails, apparently in an effort to remain anonymous and continue the activities.
Below is an image of home page of the legitimate OTG website:
OTG alleges violations of 15 U.S.C. § 1114(l), federal common law trademark infringement, cyberpiracy (15 U.S.C. § 1125(D)), Georgia Computer Systems Protection Act (O.G.C.A. § 16-9-70), unfair competition, and Georgia Deceptive Trade Practices Act (O.C.G.A. § 10-1-372).  OTG seeks lost profits and treble damages pursuant to 15 U.S.C. § 1117(b), attorneys’ fees, costs, and injunctive relief.
The case is OTG Management, LLC v. John Doe and XYZ Corp., No. 1:14-cv-00618-WSD, filed 02/28/14 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, and has been assigned to U.S. District Judge William S. Duffey, Jr.

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Wednesday, March 26, 2014, 2:06 PM

Wish Atlanta Files Complaint To Make ContextLogic Wish For A Different Trademark

Wish Atlanta, LLC, (“Wish Atlanta”) asserts trademark infringement of U.S. Trademark Registration Nos. 3783165 (IC025 and IC035) and 4242361 (IC035) (the “Wish Mark”) against ContextLogic, Inc. (“CLI”) in its complaint filed in the Middle District of Georgia on February 25, 2014.

Wish Atlanta alleges use of the Wish Mark in connection with goods and retail services since 2004 and on-line retailing since February 2010.  CLI is alleged to have infringed the Wish Mark under Lanham Act, 15 U.S.C. §§ 1125 (a) (false designation of origin) and 1125(c) (dilution), and to be subject to substantial state law claims (O.C.G.A. §§ 10-1-451, 10-1-452, 10-1-372, 10-1-373[1]).  Wish Atlanta seeks cancellation of CLI's registered, but allegedly infringing, mark pursuant to 15 U.S.C. §§1064 and 1119.
Below is an image from the home page of the Wish Atlanta website.

The complaint alleges that CLI opened www.wish.com as an online marketplace in November 2011 selling goods substantially similar to Wish Atlanta goods, using the name “Wish.”  Wish Atlanta asserts that many unhappy customers of CLI are contacting Wish Atlanta in confusion over the origin of goods and services.  In obtaining the CLI mark [Trademark Registration No. 4340974], the complaint alleges that CLI amended its application in response to a rejection removing “references to ‘promoting the goods and services of others via a global computer network’ and ‘contests and incentive aware programs to promote the sale of products and services of others.’”  Wish Atlanta argues that CLI’s marketing and sale of goods on its website suing the CLI mark “constitutes fraud on the Trademark Office.”

Below is an image from the CLI website.
Wish Atlanta seeks lost profits, an injunction, and attorney fees for willful infringement by ContextLogic.
The case is Wish Atlanta, LLC v. ContextLogic, Inc., No. 4:14-cv-00051-CDL, filed 02/14/14 in the U.S. District Court for the Middle District of Georgia, Columbus Division, and has been assigned to U.S. District Judge Clay D. Land.

[1] The complaint further cites Eckles v. Atlanta Tech Group, Inc., 267 Ga. 801, 485 W.E.2d 22 (1997), which the author notes, for historical perspective, the author successfully argued before the Georgia Supreme Court.

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Thursday, March 20, 2014, 2:14 PM

Toshiba & Samsung Argue - Technology Evolves, Patent Claims Don't

Judge Steve C. Jones entered a Markman Order (full order here) in the dispute between Synchrome Technology Inc. (“Synchrome”), as plaintiff, and Toshiba America Information Systems, Inc. (“Toshiba”), and Samsung Semiconductor, Inc. (“Samsung”), as defendants.  The Court construed the disputed terms of U.S. Patent No. 6,304,925 (the ‘925 patent), titled “Method and Apparatus for Allowing Communication Between a Host Computer and At Least Two Storage Devices Over a Single Interface.”  The patent issued on October 16, 2001, claiming priority to November 13, 1990.
Judge Jones’ Order assesses the parties’ positions on seven disputed claim terms where Synchrome seeks to ensure that its patent claims cover evolving technologies within the claim language and Toshiba and Samsung seek to ensure that the patent is not extended to technologies unknown to the person or ordinary skill at the time of the original invention. 
This case is a study in the boundaries of patents in fields of rapidly progressing technologies, where the landscape looks entirely different toward the end of the patent term than it did at the time of the patent's issuance.  Judge Jones takes a careful, analytical approach that provides different results on different terms and may serve to guide current prosecutors in drafting patents and inspire inventors to describe anticipated future technologies in their patents. The approach implemented by Judge Jones, while highly specific to the circumstances of the technologies at issue, is broad in its applicability to broadly worded claims.
The Specific Circumstances of the Case
The Synchrome ‘925 patent solved a peculiar limitation of computer storage connectivity prevalent in the late 1980’s (and early 1990’s).  In that period computers had a limited number of card slots available for connecting data storage devices (floppy disks, tape drives, etc.).  The floppy disk interface allowed two separate device connections but at a slow rate.  In the late 1980’s the rate was greatly improved by the development of the Intelligent Device Electronics (“IDE”), which could also support two data storage devices.  However, the IDE only allowed access to one device at a time, setting a bit (the “BUSY bit”) that prevented communication with the second device until communications with the first device were complete.  The ‘925 patent solved this problem by allowing quicker access through the IDE (by putting the execution of the communicated instructions in the first device off-line – turning off the BUSY bit after the instructions were sent but before execution).  The IDE therefore only blocked communications between the computer and a storage device when communications were actually taking place between the computer and the other storage device.
The claims of the ‘925 patent were drawn to cover the solution.  The patent was asserted against Toshiba and Samsung relating to their use of resetting the BUSY bit to communicate with CD and DVD drives using IDE as it evolved over the years.
Below are Figures 15 and 16 from the patent showing the innovation to the prior art:
The claims in dispute were listed by the Court as: 
(1)   storage device;
(2)   separate storage device
(3)   storage medium
(4)   to couple to
(5)   IDE interface
(6)   controller circuit
(7)   formatting circuit
With regard to “storage device” and “separate storage device,” Synchrome argued for ordinary meaning and Samsung and Tohsiba proposed that the terms be limited to a tape drive[1] and a floppy disk drive.[2]  In adopting Synchrome’s proposed construction, the Court noted that the specification does not compel the distinction proposed by Toshiba and Samsung.  The Court found that “a person of ordinary skill in the art would recognize that the term ‘storage device’ as used in the ‘925 patent could apply to more than a tape drive.”  The Court refused to restrict the claim to the preferred embodiment, also pointing to dependent claims identifying a tape drive under the claim differentiation doctrine. 
The principle of claim differentiation also served Synchrome in the Court’s adoption of its position that storage devices not be required to both read and write data.  Again the preferred embodiment did not restrict a broader application of the claim terms.  This analysis led to the Court’s adoption of Synchrome’s position on the construction of  “storage medium.”  Similar analysis controlled the Court’s construction of the term “formatting circuit,” which was not limited to formatting for writing to tape drives.
The construction of the term “to couple to” was construed by recognizing that defendants’ proposed construction required an existing electrical connection, while the term “to couple” indicated a capability of connection rather than an existing connection.
In considering construction of the term “IDE Interface,” the Court noted that the patent specifications referred to the specific IDE Interface existing at the time of the invention and that is how a person of ordinary skill in the art would have understood the term at the time.  The Court noted:  “There have been a number of revisions to the IDE/ATA specification since the time the grandparent application of the ‘925 Patent was filed in November 1990.”   The Court followed the rationale of PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1363 (Fed. Cir. 2005) regarding “terms with ‘implicit time-dependence’ as imposing a limitation to ‘technologies existing at the time of the invention.’”  As further support of this approach, the Court noted:  “During the prosecution of the ‘925 Patent, the examiner noted that ‘the term ‘IDE’ is a trade name describing an industry standard which is revised from year to year’ and that ‘the examiner continues to understand the claimed IDE interface as being the IDE interface or interfaces that were known at the time of the applicant’s  invention.”  The construction of the term was not controlled by the inventor’s subjective intent but by “what one of ordinary skill in the art at the time of the invention would have understood the term to mean.”  Markman v. Westview Instruments, Inc., 52 F.3d 967, 986 (Fed. Cir. 986) aff’d, 517 U.S. 370 (1996).
Construction of the term “controller circuit” similarly relied heavily upon the specifications “use of standard, off-the-shelf disk controller circuits [as] a necessary part of the technology disclosed.”  The Court concluded that “because the specification refers to ‘standard’ disk controller circuits, it is appropriate to limit the controller circuits to those that were available at the time of the invention.”  It appears that this result leaves Synchrome to rely on the doctrine of equivalents to support its infringement position.
The Principles Employed with Potential Wide Application
The Court’s Order presents two sides of the same coin – one result coming up “heads” and the other “tails.”  Patent claims only cover technologies disclosed in the specifications and reasonably contemplated by the inventor as capable of being perceived at the time by one of ordinary skill in the art.  Describing standard products and existing standards as components of the invention and including those components by reference in the claims will restrict those claims to the technology of the date of the invention as understood by one of ordinary skill in the art.  Would the result have been different if the specification had contemplated a developing IDE standard continuing to employ the BUSY bit communication functionality, or if the term IDE was left out and a more general reference to the BUSY bit concept had been utilized instead?  Is hindsight 20/20?
Synchrome Technology Inc. v. Toshiba America Information Systems, Inc., and Samsung Semiconductor, Inc., No. 1:09-cv-01736-SCJ, Dkt. No. 284, entered in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on February 28, 2014, by Judge Steve C. Jones.

[1] The full term proposed by defendants was “[a] tape drive for reading and writing data.”
[2] The term defendants proposed was “[a] disk drive for reading and writing data.”

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Tuesday, March 18, 2014, 3:27 PM

Rolex Says "Time is Up" for alleged Craigslist Counterfeiter

On February 5, 2014, Rolex Watch U.S.A.,Inc. (“Rolex”) of New York, New York, filed a complaint against Nicholas Peter Karettis (“the defendant”) of Tyrone, Georgia, alleging Trademark Counterfeiting and Infringement under 15 U.S.C. § 1114.
The complaint alleges Mr. Karettis sold, offered for sale, distributed, promoted, and advertised merchandise that was counterfeit and infringing upon Rolex’s federally registered trademarks.
Rolex owns numerous trademarks and trade names including at least the following:
CROWN DEVICE (design) Registration no. 657,756 Registered on 1/28/1958 for timepieces of all kinds and parts thereof.
DATEJUST Registration no. 674,177 Registered on 2/17/1959 for timepieces and parts thereof.
DAY-DATE Registration no. 831,652 Registered on 7/4/1967 for wrist watches.
DAYTONA Registration no. 2,331,145 Registered on 3/21/2000 for watches.
EXPLORER Registration no. 2,518,894 Registered on 12/18/2001 for watches.
EXPLORER II Registration no. 2,445,357 Registered on 4/24/2001 for watches.
GMT-MASTER Registration no. 683,249 Registered on 8/11/1959 for watches.
GMT-MASTER II Registration no. 2,985,308 Registered on 8/16/2005 for watches and parts thereof.
OYSTER Registration no. 239,383 Registered on 3/6/28 for watches, movements, cases, dials, and other parts of watches.
OYSTER PERPETUAL Registration no. 1,105,602 Registered on 11/7/1978 for watches and parts thereof.
PRESIDENT Registration no. 520,309 Registered on 1/24/1950 for wristbands and bracelets for watches made wholly or in part or plated with precious metals, sold separately from watches.
ROLEX Registration no. 101,819 Registered on 1/12/1915 for watches, clocks, parts of watches and clocks, and their cases.
ROLEX DAYTONA Registration no. 1,960,768 Registered on 3/5/1996 for watches.
ROLEX DEEP SEA Registration no. 3,703,603 Registered on 10/27/2009 for watches.
SEA-DWELLER Registration no. 860,527 Registered on 11/19/1968 for watches, clocks and parts thereof.
SUBMARINER Registration no. 1,782,604 Registered on 7/20/1993 for watches.
TURN-O-GRAPH Registration no. 2,950,028 Registered on 5/10/2005 for watches and parts thereof.
YACHTMASTER Registration no. 1,749,374 Registered on 1/26/1993 for watches.

The Rolex Crown Device design
According to the complaint, Rolex discovered a classified advertisement appearing on the website “www.craigslist.org” (“Craigslist”) advertising for sale watches bearing counterfeits and infringements of the Rolex Registered Trademarks. These watches were allegedly advertised as “AAA Quality Replica” watches and listed for sale at a price of $200. 
Also according to the complaint, Rolex forwarded the Craigslist add to its private investigator who then called the number provided on the advertisement and arranged a meeting with a man identifying himself as “Nick.”  Rolex’s investigator also arranged for members of the Douglas County Sheriff’s Department to be present at this meeting.  At the meeting, members of the Douglas County Sheriff’s Department arrested the defendant and seized five (5) watches identified by Rolex’s investigator as bearing counterfeits and infringements of the Rolex Registered Trademarks.
Thereafter, the defendant was charged with forged or counterfeited trademarks, service marks, or copyrighted or registered designs, constituting unauthorized reproductions as defined in O.C.G.A. § 10-1-454. Defendant’s vehicle was impounded and the Douglas County Sheriff’s Department seized $14,800.00 in cash found on the defendant’s person at the time of his arrest.
The complaint further alleges irreparable harm, unjust enrichment, willful and malicious infringement, and that the case is exceptional under 15 U.S.C. § 1117(a) because of the defendant’s alleged reckless disregard or willful blindness in connection with unlawful activities.
Rolex seeks an injunction and treble damages or statutory damages under 15 U.S.C. § 1117(c).  Rolex also seeks legal and investigative fees along with any further relief as the court deems just and proper.
The case is Rolex Watch U.S.A., Inc. v. Karettis No. 3:14-cv-12-TCB filed in United States District Court for the Northern District of Georgia, Newnan Division on February 5, 2014, and is assigned to Judge Timothy C. Batten.

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Complaint Seeks To Fence Competitor Out Of Field

Barrette Outdoor Living, Inc. (“Barrette”), an Ohio corporation with a place of business in Jefferson, Georgia, brought a patent infringement action against Porcelen, Limited, Connecticut, LLC, for patent infringement of the following patents:

            U.S. Patent No. 8,413, 332 (the ‘332 patent)
U.S. Patent No. 8,413,965 (the ‘965 patent)
The complaint alleges that Barrette provides “high quality fencing and railing products, including extruded metal fencing and railings, both for residential and commercial applications.”
The ‘332 patent addresses a fencing apparatus and method of manufacturing.  Below are two figures selected from the patent showing its connection concealing feature:
 The ‘965 patent addresses a sliding pivotal connection that permits the attachment of fence posts at greater elevation differences than accomplished by the prior art.  Below are two figures selected from the patent showing the great angles permitted by the invention.
Barrette alleges that Porcelen’s SpecRail brand of fencing infringes the two patents.  The two patents issued on April 9, 2013, and Barrette sent written notice of the patents to Porcelen on or about August 7, 2013.  Thereafter, according to the complaint, Porcelen changed its design by adding rubber bands.  However, Barrette alleges this addition failed to avoid direct infringement of the two patents.
Barrette seeks an injunction, damages, and a finding of willful infringement pursuant to 35 U.S.C. §§ 283, 284, and 285.
The case is Barrette Outdoor Living, Inc. v. Porcelen, Limited, Connecticut, LLC, No. 2:14-cv-00045-WCO, filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on March 5, 2014, and is assigned to Judge William C. O’Kelley.

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Wednesday, March 12, 2014, 3:39 PM

TransCardiac's State Court Complaint Avoids Raising Federal Question

Judge Totenberg remanded the case brought by TransCardiac Therapeutics, Inc. (“TransCardiac”), against Ajit Yoganathan, Ph.D, Jorge H. Jiminez, Ph.D., Vinod H. Thourani, M.D., Emory University, Georgia Tech Research Corporation, and Georgia Tech Foundation, Inc. (“Defendants”).  The removal of this case from the State Court of Fulton County was the subject of a previous blog.

In the Order, Judge Totenberg reviewed the facts and allegations made by the removing party, Emory University (“Emory”), and determined that no substantial federal question is presented by TransCardiac’s complaint.

A salient fact from the history as related by the Court is the uncontroverted creation of the TransCardiac’s intellectual property by Dr. Lattouf (identified in the Order as “the Release IP”).  The initial conception of the Release IP was described in U.S. Patent Application No. 60/340,062 (“the ‘062 application”) relating to minimally invasive therapeutic procedures for patients with congestive heart failure, the ownership of which was transferred back to Dr. Lattouf (and then later to TransCardiac) in accordance with Emory’s IP Policy.  Pursuant to the agreement Emory was to receive a 2% royalty.  The Release IP grew, by agreement, to include improvements as captured in over two dozen additional patent applications.  TransCardiac was formed in 2003 and received assignment of the Release IP.  Complete disclosure of the Release IP to Emory was encouraged and the agreement covered Emory obligation of confidentiality.

In 2005 Dr. Yoganathan (including his assistant, Dr. Jiminez) was hired TransCardiac for $10,000 to build and test the Release IP using labs at Georgia Tech.  TransCardiac received oral assurances of confidentiality but a promised non-disclosure agreement was never delivered.  Dr. Yoganathan, at the invitation of TransCardiac, joined its Scientific Advisory Board in 2005 (as did Dr. Thourani, another named defendant and employee of Emory).  Dr. Thourani also agreed to the confidentiality terms.  Thereafter, Dr. Thourani failed to disclose to TransCardiac that he joined a competitor’s Scientific Advisory Board in 2007.  During this time period, “Dr. Thourani ultimately took over for Dr. Lattouf by directing the research and development efforts that took place at the Georgia Tech labs.”

According to the Order, TransCardiac received a $45 million dollar offer for the Release IP plus a 3% royalty in 2010 from a venture capital group.  This offer was disclosed to Emory and a meeting occurred shortly thereafter.  Less than two months later, Transcardiac alleged that Defendants “began a misleading public relations campaign to portray the individual Defendants as the owners and inventors of specific parts of Dr. Lattouf’s IP.”  The Complaint went on to allege this action “confused, if not destroyed, the market for the IP in question.”

TransCardiac accused the Defendants of improperly licensing technology to a competitive rival of TransCardiac alleging “1) breach of contact; 2) breach of oral contract; 3) breach of duty of confidential relations; 4) tortious interference with business relations; 5) tortious interference with contract; 6) breach of legal duties and contract; 7) fraud; 8) conspiracy; and 9) false advertising.”

The Court recited the four-part test from  Gunn v. Minton, 133 S. Ct. 1059, 1065 (2013), that summarized the required elements to find a federal patent issue if the patent was “(1) necessarily raised, (2) actually disputed, (3) substantial, and (4) capable of resolution in federal court without disrupting the federal-state balance approved by Congress.”  The Court noted that Emory as the removing party had the burden of establishing all four parts of this test.  Emory argued that TransCardiac’s claims necessarily required proof of Lattouf’s inventorship of the Release IP.  The Court addressed each of the parts of the Gunn test.

With regard to necessity, the Court noted that inventorship was not involved in all of TransCardiac’s claims.  With regard to claims that involved ownership of the Release IP, the Court noted that Release IP was specifically defined to include issued patents, which are presumed valid and TransCardiac “may rely on that presumption without raising an inventorship issue.”  The Court cited Bd. Of Regents, Univ of Texas Sys. Ex rel. Univ. of Tex. at Austin v Nippon Tel. & Tel. Corp., 414 F.3d 1358, 1363 (Fed. Cir. 2005); Speedco, Inc. v. Estes, 853 F.2d 909, 913 (Fed. Cir. 1988).  Nevertheless, the Court gave Emory the benefit of the doubt that the Release IP included applications for which no patent had as yet issued.  Thus, the Court moved on to the next element of the Gunn test. 

The Court found that no “actual inventorship dispute” was presented by the complaint.  TransCardiac alleged “Defendants falsely described themselves as inventors of some particular technology, without reference to inventorship.”  The Court notes that TransCardiac “alleges that it has never received a claim of co-ownership or co-inventorship of the Release IP by Defendants.”  Despite the conclusiveness of this test element, the Court addressed the final two elements as well.

The Court expressed doubt that the complaint presented a “substantial inventorship issue.”  This conclusion was based on the Court’s opinion that determination of the issues would not alter patent rights or require a party to challenge the validity of any patents.  In addressing the federal-state balance, the Court noted that TransCardiac’s state court claims sounded in contract and tort and did not otherwise meet the threshold of federal litigation.

Thus, the Court found that the matter could be resolved in state court without a substantial patent issue necessarily being handled by federal courts.  Further, the Court denied Emory's request to grant supplemental jurisdiction over the state law claims as there were no claims supporting federal jurisdiction to which such claims could be appended.  

The case is TransCardiac Therapeutics, Inc. v. Yoganathan et al., No. 1:13-cv-03089-AT, Dkt. No. 27 (Order granting remand) in the U.S. District Court for the Northern District of Georgia, Atlanta Division, assigned to U.S. District Judge Amy Totenberg.

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Tuesday, March 4, 2014, 11:17 AM

Glock Takes Aim At Moving Target Of Airsoft Pistol Replicators

On February 26, Glock, Inc. (“Glock”) filed a 44-page complaint against Kent De-Hui a/k/a Kent Wu a/k/a Keat D. Wu a/k/a Kenneth Wilson, May-Fong Chu, a/k/a May Chu a/k/a May Fun Chu, a/k/a Mian Chu a/k/a Mary Schwarz, The Wuster, Da Wuster, Inc., Da Wuster Corp., Wuster & Chewy LLC (California), Wuster & Chewy LLC (Washington), The Wuster Inc., XYZ Corporations 1-10, and ABC Limited Liability Companies 1-10 (collectively “AirSplat”), alleging patent infringement, federal trade dress infringement, federal trademark infringement, federal false designation of origin and false advertising, federal dilution, common law trade dress and trademark infringement, unfair competition, deceptive trade practices, and unjust enrichment, disgorgement and constructive trust for Airsplat's manufacture, importation, and sale of unauthorized replica airsoft guns.  Glock seeks injunctive relief, damages, treble damages, and attorneys’ fees.

The complaint alleges that Glock created “the first commercially successful polymer-frame semi-automatic pistol, the GLOCK 17,” in 1982.  The pistol was regarded as “a radically new design in virtually every respect.”  Thereafter, 25 additional models were added to the family and by 1996 over 65% of all federal, state, and local law enforcement agencies in the United States (including the FBI, Drug Enforcement Agency, and Federal Bureau of Prisons) had adopted or approved the GLOCK pistols for duty use.  “All of the various GLOCK pistols share the same distinctive design and appearance as the original Model 17.”  A picture and review of the Model 17 Generation 4 GLOCK is pictured below:
Paragraph 28 of the complaint contains the following detailed description of the unique features of the GLOCK:

GLOCK pistols include a polymer-frame with a slide top lever built flush into one side of the frame and a small slide lock positioned in an angled groove on both sides of the frame above the trigger.  The slide and the upper part of the polymer-frame on GLOCK pistols have a distinctive blocky and squared-off shape, with polymer sights carrying a white dot on the top of the slide and serrations on each side of the rear portion of the slide.  The serial number plate is embedded on the underside of the front part of the frame.  The interface between the slide and the frame on GLOCK pistols include a distinctive gap.  The bottom portion of the frame includes both the handgrip and trigger guard.  The handgrip of GLOCK pistols includes distinctive serrations on the front and rear faces and both sides of a GLOCK pistol grip are slightly raised and textured.  The front face of the handgrip includes two raised finger ridges.  At the transition between the rear of the gun and the handgrip is a slightly projecting down-turned lip.  The trigger guard of a GLOCK pistol is also a blocky and squared-off shape with distinctive serrations on the front face. 

Glock outlines the extensive advertising it has employed to promote the pistols and points out the existence of numerous articles featuring the GLOCK.  The pistols have regularly appeared in movies (Die Hard II, The Fugitive) and television shows (NYPD Blue, CSI, The Sopranos) , as detailed at http://www.imfdb.org/wiki/Glock.   Defendant AirSplat allegedly claims that some films are actually using its replicas of Glocks as detailed in paragraph 68 of the complaint:

Often, people would watch movies and TV and say, “Wow, that gun is awesome, I’d like to get me one of those”.  Actually, what you may be seeing in those movies and TV shows, ARE, in face, Airsoft guns. . . . They simply digitally alter the images to incorporate the muzzle flash, sound and effects to mimic the real firearms.

Glock asserts infringement of U.S. Patent and Trademark (USPTO) Trademark Registration No. 2,807,747 (for its trade dress), USPTO Trademark Registration No. 1,691,390 (for its GLOCK logo), USPTO Trademark Registration No. 2,440,268 (for “GLOCK PERFECTION”), USPTO Trademark Registration No. 1,381,064 (for GLOCK logo in IC 008 and in IC 013), USPTO Trademark Registration No. 4,038,822 (for “airsoft guns”), and USPTO Trademark Registration No. 4,204,831 (Gen 4 for “firearms”).

Glock also asserts patent infringement of United States Patent No. 8,156,677 (‘671 Patent) covering a removable backstrap that can be mounted and elongated to increase grip size and which uses a trigger housing pin securing it to the trigger mechanism.  Figure 2 from the ‘671 Patent is pictured below:

In paragraph 88, Glock lists 12 Airsplat products that infringe the backstrap claims of the ‘671 Patent.

The complaint in paragraph 50 alleges AirSplat claims “to be the ‘Nation’s Largest Airsoft Retailer.’”  Among its advertised products, Glock asserts that 12 are unlicensed and unauthorized replica copies of the GLOCK Model 17; 2 are unlicensed and unauthorized replica copies of the GLOCK Model 17L; 13 are unlicensed and unauthorized replica copies of the GLOCK Model 18, 123 are unlicensed and unauthorized replica copies of the GLOCK Model 19; 7 are unlicensed and unauthorized replica copies of the GLOCK Model 23; 7 are unlicensed and unauthorized replica copies of the GLOCK Model 26; 1 is an unlicensed and unauthorized replica copy of the GLOCK Model 30; 2 are unlicensed and unauthorized replica copies of the GLOCK Model 33; 3 are unlicensed and unauthorized replica copies of the GLOCK Model 34; and 1 is an unlicensed and unauthorized replica copy of the GLOCK Model 35.

As a sample of AirSplat’s alleged use of Glock’s goodwill to market its products, in paragraph 64 of the complaint Glock quotes from a website description of the G17 (after noting that the G followed by a number relate to the precise Glock model replicated):

The G17 is one of the most highly regarded pistols in the world.  This spring replica captures the look and feel of the world famous pistol.  The HFC G17 is weighted to nearly match the exact weight of the actual thing.  The locking slide will alert you when your magazine is empty, just like the real thing!

Glock backs its allegations of willful infringement us with allegations in paragraphs 79 and 80 as follows:

The [infringing] KSG G19 Gas Airsoft Blowback Gun Pistol prominently features GLOCK’s federally registered logo at the front of the slide, adjacent to the number, “19”; a reference to the GLOCK Mode 19 pistol.  Defendants have deceptively concealed the infringement by placing black electrical tape over both the GLOCK logo and “19.”  This tape can be easily removed by customers.

Defendants have attempted to deceive Customs and Border Protection by shipping airsoft pistols in unmarked boxes.  These boxes are either white or plain cardboard and are inverted such that all advertisements pertaining to the products and all references to GLOCK pistols, i.e. G Series 17 and G 19, are featured on the interior of the boxes. [Emphasis added.  Paragraph numbers omitted.]

From the looks of the complaint, Glock has arrived fully loaded with the authorities and is firing on automatic at all targets.  It is apparent that a number of as-yet-unidentified defendants may soon be in range and under fire.

The case is Glock, Inc. v. Kent De-Hui Wu, et al., No. 1:14-cv-00568-AT, filed in the U.S. District Court for the Northern District of Georgia, Rome Division, on February 26, 2014, and assigned to U.S. District Amy Totenberg.

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