Articles Posted in Patent Litigation

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Los Angeles, CA – Activision, the maker of the popular video game “Guitar Hero,” filed a declaratory judgment complaint asking the Court to rule that the video game does not infringe on Gibson Guitar’s patent. Gibson is the owner of U.S. Patent No. 5,990,405 (“the ‘405 Patent”), titled “System and Method For Generating and Controlling a Simulated Musical Experience.” In January of 2008, patent attorneys for Gibson informed Activision that the Guitar Hero video-game infringed the ‘405 Patent and offered a license. Apparently Activision was already licensing trademarks owned by Gibson and the parties had a continuing business relationship for several years.

guitar-hero-patent.jpgLicensing negotiations hit a sour note and Activision filed the instant complaint asking the District Court in Los Angeles to rule that the ‘405 Patent is invalid and/or not infringed by the Guitar Hero video-game. Activision also alleges that because Gibson has been aware of the Guitar Hero video-game for many years and has encouraged its sale, that Gibson should be estopped from asserting the patent. Also, because Gibson has encouraged the sale of the games, Activision argues that it has an implied license under the ‘405 patent. Further, Activision alleges that because Gibson has been fully aware of the Guitar Hero video-game for several years, it should not be able to enforce the patent under the doctrine of laches. The case is titled Activision Publishing, Inc. v. Gibson Guitar Corporation, CV08-01653 PSG (C.D. California).

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Pasadena, CA – Patent attorney files patent infringement lawsuit on behalf of Mobile Hi-Tech Wheels, Inc. over USPTO issued design patents covering custom wheels against Custom Wheels Unlimited, Inc. in Los Angeles District Court. Mobile has designed and distributed custom wheels for automobiles since 1996, and its products are sold to automobile dealers and retail distributors of custom wheels. Its Condo wheel design was issued U.S. Design Patent No. 497,583. Its Big Homie wheel design was issued U.S. Design Patent No. 514,052. The complaint alleges patent infringement because Custom Wheels Unlimited “manufactured, imported, offered for sale and/or sold vehicle wheels which are copies of the patented Condo and Big Homie designs. The complaint seeks monetary damages and a preliminary and permanent injunction barring Custom Wheels Unlimited from infringing on the patents. The case is titled Mobile Hi-Tech Wheels, v. Custom Wheels Unlimited, Inc., CV08-01599 MMM (C.D. California).
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Santa Ana, CA – Watson Laboratories, Inc., through its biotechnology patent attorneys, filed suit in Santa Ana District Court seeking declaratory relief of patent non-infringement and patent invalidity against Barr Pharmaceuticals, Inc. and Duramed Pharmaceuticals, Inc. The pharmaceutical companies own U.S. Patent No. 7,320,969, which they listed “with the Food And Drug Administration (FDA) in the Approved Drug Products with Therapeutic Equivalence Evaluations (“Orange Book”), as a patent that could reasonably be asserted against anyone marketing or seeking to market a generic version of [their] SEASONIQUE® female contraceptive product.” Watson “previously filed an Abbreviated New Drug Application (ANDA) with the FDA seeking approval to market a generic form of SEASONIQUE®.” After the patent was filed with the FDA, Watson “filed an amendment to its ANDA containing a certification pursuant to 21 U.S.C. § 355(j)(2)(A)(vii)(IV) and that the ‘969 patent is unenforceable, invalid and/or not infringed by Watson’s ANDA product.”

watson-patent-pic.gifWatson has beaten the patent owners to the punch and filed a declaratory judgment action because it believes that it will be sued for patent infringement. Watson seeks a declaration from the Court that the patent is “is invalid, unenforceable and/or not infringed by the commercial manufacture, use or sale of the drub product described in Watson’s ANDA.” The case is titled Watson Laboratories, Inc., v. Duramed Pharmaceuticals, Inc., SACV08-0243 JVS (C.D. California).

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Los Angeles, CA – North Hollywood based Air Dimensional Design, Inc. instituted a patent infringement, trademark infringement, and unfair competition lawsuit against several competitors for allegedly infringing on its promotional and marketing inflatable toy figures. Plaintiff is the assignee of U.S. Patent No. 6,186,857, which relates to an inflatable form, usually human, made from an ultra-light, thin fabric or sheet material that is sewn or otherwise formed into tubular sections that are connected together to form the full figure. The inflatable bendable figure is connected to an air blower that constantly blows air into the fabric. Holes in the head and arms of the figure and the dynamic air flow cause the figure to undulate like it’s dancing. Plaintiff has used the trademark “Fly Guy” on its promotional product and has registered it with the U.S. Patent & Trademark Office.

air-dimensional.jpgPlaintiff alleges that several defendants are infringing its patent by making, selling, and using undulating figure products embodying the patented invention. Plaintiff also states that defendants are infringing on its “Fly Guy” trademark by using the confusingly similar “Fly Guys” trademark. In addition, Plaintiff contends that the defendants are using its “Fly Guy” trademark as a Google adword to redirect consumers to defendants’ websites. The complaint asserts causes of action for infringement; federal trademark infringement of registered trademark (15 U.S.C. §§ 1114-1117; Lanham Act § 32); federal unfair competition (false designation of origin and false description (Lanham Act 43(a) and 15 U.S.C. 1125); trademark infringement under California law; California unfair competition under section 17200; and trademark dilution. Plaintiff alleges that the infringement is willful and intentional and requests that the damages be trebled. The case is titled Air Dimensional, Inc., v. Action Sky Dancers, CV08-01121 GW (C.D. California).

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Los Angeles, CA – Patent infringement and copyright litigation complaint over toy helicopters was filed in Central District Court of California, Los Angeles, by Hong Kong based Silverlit Toys Manufactory, LTD. and its Canadian distributor. Plaintiffs design, manufacture, develop, and market toy product for children and sell the toy under its federally registered trademark Air Hogs® Havoc Heli™ Helicopters, in addition to track racing systems, robot toys, and water toys. Plaintiffs have issued United States Patents on the toy helicopter: U.S. Design Patent No. 546,269; U.S. Design Patent No. 552,531; U.S. Design Patent No. 554, 040, and U.S. Design Patent No. 544,825. They also have a registered copyright certificate with the U.S. Copyright Office, Copyright Registration No. VAu694-351. Plaintiffs claim that “the Air Hogs® Havoc Heli™ Helicopters is an original decorative design that is easily distinguishable from traditional remote control toy helicopters” and has been recognized by “the Guinness Book of World Records as the world’s smallest commercial toy remote control helicopter.” Plaintiffs further allege that Air Hogs® Havoc Heli™ Helicopter was the number one best selling remote control toy of 2007.

Helicopter%20Pic.jpgThe defendants, Soft Air USA, Inc. and a subsidiary of Sports Authority, are accused of copying and selling toy helicopters that infringe on Plaintiffs’ Air Hogs® Havoc Heli™ Helicopter’s patents and copyrights. Plaintiffs allege that Defendants’ helicopters are identical to the Air Hogs® Havoc Heli™ Helicopter that “Defendants’ knock off helicopters were recently recalled after an investigation by the Consumer Product Safety Commission in response to consumer complaints that the rechargeable battery packs were catching fire.” Plaintiffs continue that they were “bombarded with calls from customers who mistakenly believed that Defendants’ inferior and dangerous knock off product was made by Silverlit.” Plaintiffs allege that customers believed that the Defendants’ voluntarily recall included the Air Hogs® Havoc Heli™ Helicopter and returned the genuine product to Plaintiffs. The case is styled as: Silverlit Toys Manufactoy, LTD v. Soft Air USA, Inc., CV08-01053 JFW (C.D. California).

PRACTICE NOTE: In order to preserve their good will and reputation with their customers and the public, it is important for intellectual property owners to immediately enforce their rights against infringers to stop the influx of unauthorized product of inferior quality.

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A jury awarded patent infringement damages of $41,083,853.00 to Rembrandt Vision Technologies, L.P. in its patent infringement trial against CIBA Vision Corporation. Rembrandt Vision Technologies, L.P. v. CIBA Vision Corporation, 2:05-CV-491 (E.D. Texas). The patent infringement lawsuit commenced in 2005 when Rembrandt originally accused both Bausch and Lomb – which settled before going to trial – and CIBA of infringing on U.S. Patent No. 5,712,327. The asserted patent relates to long-term extended wear contact lenses which are more gas permeable, allowing for oxygen exchange, and retain moisture.

ciba-logo.gifRembrandt is a non-practicing patent holding company – i.e. they don’t manufacture products, they merely file patent infringement lawsuits. As Forbes.com reports, Rembrandt’s parent “has raised $150 million to purchase patents and sue companies it claims infringe on them.” Forbes also reports that numerous patent assertion companies are being funded by institutional investors and hedge funds.

PRACTICE NOTE: Rembrandt’s strategy in settling with Bausch & Lomb raised concerns for co-defendant CIBA. In eBay, Inc. v. MercExchange, LLC, 126 S. Ct. 1837 (2006), the Supreme Court limited the ability of non-practicing patent holders from obtaining permanent injunctions. In an attempt to overcome the eBay decision, Rembrandt – because it is non-practicing patent holder – has reportedly given Bausch & Lomb – who manufactures the product – the right to seek a permanent injunction against infringers.

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Litigation commenced in Central District Court of California, Santa Ana Division, alleging unfair competition under the Lanham Act 43(a), 15 U.S.C 1125. Plaintiffs, Orthopedic Development and MinSURG Corp., are the owners of a patent-pending TruFUSE® medical device product which is a spinal facet fusion system invented by Dr. David A. Petersen, M.D., “that offers a low-risk and minimally invasive surgical solution to back pain resulting from facet joint degeneration and from mild spinal instability.” The complaint alleges that the TruFUSE® surgery can be completed in less than an hour and the patient usually needs one night of hospital stay. Although the invention is patent-pending and cannot be currently asserted in a patent infringement lawsuit, Orthopedic Development currently owns a registered trademark with the USPTO for the TruFUSE® trademark.

us20060111782-fig3.jpgThe Plaintiffs discovered that one of their own distributors, Nutech Medical, Inc., was allegedly developing and marketing a “TruFUSE® knock-off” facet fusion product. The complaint alleges that Plaintiffs discovered that the infringing product was going to be marketed under a confusingly similar name of “NUFUZE” and that the product incorporates Plaintiffs’ proprietary information and trade secrets, which were provided under the Plaintiffs’ distribution agreement with NuTech. Upon learning of NuTech’s application to the USPTO to register the NUFUZE trademark, Plaintiffs filed an opposition to the application before the Trademark Trial And Appeal Board (“TTAB”). NuTech filed an answer in the TTAB proceeding and abandoned its NUFUZE and BIOFUZE trademarks, and allegedly began marketing the product under the “NuFix” trademark. The case is titled Orthopedic Development Corp. v. Vikingcraft Spine, SACV08-01888 (C.D. California)

The complaint alleges that numerous surgeons that use Plaintiffs’ TruFUSE® product began receiving solicitations from NuTech and its distributor, Vikingcraft, offering the NuFix product at a reduced price. Plaintiff filed suit against NuTech and other defendants in Florida and sent notice to Vikingcraft, putting it on notice of the patent application and the Plaintiffs’ unfair competition and false advertising claims. Plaintiff claims that Defendant falsely asserts “that (a) the TruFUSE® Allograft has a tendency to pop out after it is implanted and that the ridge design of NuFix reduces this occurrence; and that (b) NuFix is designed to be used with TruFUSE® Instruments held on consignment by hospitals.”

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Patent infringement litigation commenced against The DIRECTV Group, Inc. in Los Angeles District Court on February 14, 2008. The patent holder, Phoenix Solutions, Inc., is accusing DIRECTV of infringing four of its patents (Patent Nos. 6,615,172, 7,139,714, 7,050,977, and 7,225,125). The patents relate to computer-based speech recognition technology and allow for “virtual customer service agent” responses to incoming phone calls from a live person.

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The complaint alleges that DIRECTV’s customer support lines and website, “including movie and/or event ordering lines and installer activation lines, that employ a natural language interactive voice response (IVR) system that includes a virtual agent” infringes on the four patents. The complaint asserts that customers/installers can speak with DIRECTV’s ordering system in a conversational manner, which ability has saved DIRECTV $9.2 million over touch-tone answering devices. The complaint states that Plaintiff contacted DIRECTV almost a year ago in an attempt to settle the dispute, but DIRECTV did not provide the requested information. Plaintiff alleges that the patent infringement is willful and seeks treble damages and attorneys’ fees and costs under 35 U.S.C. §§ 284 and 285.

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Pharmaceutical company Sanofi-Aventis filed a complaint in Los Angeles, California District Court seeking a declaratory judgment that three medical device patents are invalid and not infringed by Sanofi’s syringes. The three United States patents at issue, which cover syringes having needle shield safety devices and may be used with pre-filled pharmaceutical injection syringes, are owned by Saftey Syringes, Inc.

Sanofi-pic-syringe.jpgSafety Syringes asserted the same three patents, Nos. 6,613,022, 7,101,355, and 7,300,420, in Los Angeles District Court in April of 2007 against Plastef. That case is titled: Safety Syringes, Inc. v. Plastef Investissements, 07-CV-2307 (C.D. CA 2007). Sanofi alleges that it imports and uses a needle safety shield device that is similar to the device in the Plastef case. Thus, because Safety Syringes has asserted claims of inducement and contributory patent infringement in the Plastef case, Sanofi-Aventis believes that it is being accused of infringing the three patents and that an actual controversy exists between the parties. Sanofi alleges that Safety Syringes has put Sanofi in a “position of pursuing behavior that [Safety Syringes] would allege constitutes an infringement or of abandoning a course of action which Aventis believes it has a lawful right to pursue.”

PRACTICE NOTE: Sending a cease and desist letter to a potential infringer may subject a patent holder to a declaratory judgment complaint in the potential infringer’s backyard. Careful wording in a cease-and-desist letter may divest the court of jurisdiction in the infringer’s home town and, thereby, eliminate defendant’s “home court” advantage.

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A patent infringement lawsuit was filed by tax preparation company H&R Block against Jackson Hewitt on February 8, 2008. Click To Read Complaint. H&R Block is the owner of US Patent No. 7,072,862 and US Patent No. 7,177,829 and asserts that Jackson Hewitt is infringing both patents.

The ‘862 and ‘829 patents are business method patents that cover providing a tax refund to a tax payer through debit cards, credit cards, or credit at a retailer. The patents also cover the ability to assign other governmental payments, social security payments for example, to creditors that in turn credit the funds to a tax payer via debit cards or credit cards. The complaint alleges that Jackson Hewitt’s ipower CashCard infringes on H&R Block’s two tax refund patents. The complaint seeks three times the actual damages because Jackson Hewitt’s conduct was allegedly intentional and willful.

PRACTICE NOTE: As of February 14, 2008, there are 63 issued patents that are classified by the US Patent & Trademark Office as “tax strategy” patents, with an additional 107 published applications. There have been discussions in Congress to ban tax strategy patents, but until there is a change in the law, tax advisors need to be aware of the tax patent landscape. Follow these steps in order to search for tax strategy patents by classification number:

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