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Friday, September 9, 2011


New Northern District of Georgia Patent Cases

Hidden Image Technology Solutions, Inc. v. Barnhart, 1:11-cv-02415 (N.D. Ga. July 22, 2011) (Carnes, J.)

Complaint to correct inventorship and ownership of U.S. Patent Nos. 6,629,888; 7,747,472; 5,984,367; and 6,296,900, relating to hidden image game pieces.

Plaintiff is represented by the Office of Larry C. Oldham of Cumming, GA.


Order on Motions to Dismiss

ERBE USA, Inc. v. Byrne Medical, Inc., 1:11-cv-01480 (N.D. Ga. July 22, 2011) (Totenberg, J.)

The Court denied Defendant Byrne’s motion to dismiss Plaintiff ERBE’s false marking and false advertising claims. The Court found that such claims were not barred by the parties’ arbitration settlement agreement, under which ERBE released Byrne from claims that were alleged or could have been alleged in the parties’ former arbitration over a distribution agreement. According to the Court, Byrne failed to show that the false marking and false advertising claims arose out of or related to the distribution agreement itself and therefore could not have been brought in the arbitration.

Further, the Court held that ERBE adequately pled its claims for false marking and false advertising. ERBE alleged that Byrne falsely marked two of its products with knowledge that such products were not covered by its patent. ERBE’s complaint included specific statements made during the patent’s prosecution regarding claim limitations and allegations that Byrne’s products did not meet those limitations. The Court found that such facts were sufficient to reasonably infer that Byrne had the requisite knowledge and intent to deceive when it marked its products and advertised its products as being protected by the patent.

Finally, the Court granted Byrne’s motion to dismiss ERBE’s claim for a declaratory judgment of patent invalidity. ERBE alleged that it planned to introduce a product that Byrne claimed is covered by Byrne’s patent. According to the Court, such allegations fell short of establishing that a case or controversy existed between the parties.


New Northern District of Georgia Patent Cases

Global Cellular, Inc. v. Otter Products, LLC, 1:11-cv-02260 (N.D. Ga. July 11, 2011) (Pannell, J.)

Complaint for declaratory judgment of noninfringement of U.S. Design Patent No. D617,784 relating to a case for a mobile device.

Plaintiff is represented by the Office of Sanford J. Asman of Atlanta.

Defendant is represented by Kilpatrick Townsend & Stockton of Atlanta.


New Northern District of Georgia Patent Cases

Performance Systems Group, Inc. & LW Acquisitions, LLC v. Kroy IP Holdings, LLC, 1:11-cv-02161 (N.D. Ga. July 1, 2011) (Story, J.)

Complaint for declaratory judgments of noninfringement and invalidity involving U.S. Patent 6,061,660 entitled “System and Method for Incentive Programs and Award Fulfillment.”

Plaintiffs are represented by Lilenfeld, PC of Atlanta.


New Northern District of Georgia Patent Cases

Khoshnood v. Bear Archery, Inc., 1:11-cv-02144 (N.D. Ga. June 30, 2011) (Vining, J.)

Complaint for breach of patent license agreement involving U.S. Reissue Patent No. RE39,686 entitled “Ambient Light Collecting Bow Sight.”

Plaintiff is represented by Kent Law P.C. of Alpharetta, GA.


New Northern District of Georgia Patent Cases

G H Strickland, LLC v. Federal Signal Corporation, et al., 1:11-cv-02073 (N.D. Ga. June 24, 2011) (Jones, J.)

Patent infringement suit involving U.S. Patent No. 6,511,216 entitled “Interior-Mounted Emergency Vehicle Signal Device.”

GH Strickland, LLC – represented by Kent Law, P.C. of Alpharetta, GA

Federal Signal Corporation
Whelen Engineering Company, Inc.
Thomas J Madden & Associates, Inc.
Star Headlight and Lantern Co., Inc.

Cherry Sales Associates, Inc. – represented by Thompson Hine of Atlanta
Code 3, Inc. – represented by Jones Day of Atlanta
144th Marketing Group, LLC
Trans Comm Services, Inc.
Emergency Technology, Inc. (d/b/a Soundoff Signal)
Brooking Industries, Inc. (d/b/a Axixtech)
Rontan North America, Inc.


Order on Motion for Attorney Fees

GP Ltd v. Willis Electric Co., Ltd., 1:09-cv-03378 (N.D. Ga. June 24, 2011) (Batten, J.)

PIn March 2011, the Court granted Plaintiff GP’s motion for contempt, finding that Defendant Willis violated a permanent injunction through retail sales of pre-lit Christmas trees that contained lighting systems covered by GP’s patent. The Court awarded Willis to pay sanctions to GP based on the amount of profit attributable to the infringing light strings and stated that it would entertain GP’s request for attorneys’ fees and costs. Thereafter, GP submitted an affidavit setting forth the amount of fees incurred in connection with the motion for contempt. Willis filed a response challenging the reasonableness of the requested amounts.

Upon consideration of GP’s request for approximately $94,000 in attorneys’ fees and costs, and Willis’ specific objections, the Court declined to award certain of the fees and costs, including computer research costs. The Court then reduced the resulting amount by thirty percent, in part because GP’s motion “did not present complex, novel or particularly difficult questions of law or fact,” did not require extensive new drafting, and could have been prepared by a more junior litigator with a lower billing rate.

GP was within its rights to enforce the Preliminary Injunction through its motion for contempt, and it is entitled to recover the fees and costs easonably incurred in so doing. The Court concludes that deducting the specified line items and reducing the remaining sum by thirty percent based on the factors described above yields a reasonable amount of costs and fees properly recoverable by GP. (Page 21.)


Order Denying Motion to Dismiss Complaint for Declaratory Judgment

GKemira Chemicals, Inc. v. Nalco Company, 1:11-cv-00718 (N.D. Ga. June 20, 2011) (Batten, J.)

Upon consideration of Defendant Nalco’s alleged conduct with respect to Plaintiff Kemira and two of Kemira’s potential customers, the Court found that a substantial controversy existed between the parties sufficient to provide subject matter jurisdiction for Kemira’s declaratory judgment action.

USpecifically, Nalco (a direct competitor of Kemira in the sale of chemicals used to manufacture paper) sent letters to Kemira and its customers that identified and enclosed Nalco’s patent and allowed patent application and mentioned a particular Kemira product that the customers expressed an interest in purchasing. Even though Nalco’s communications did not explicitly threaten litigation, the Court determined that “the totality of the circumstances showed that [Nalco’s] conduct can reasonably be inferred as threatening litigation.” (Page 11.) Accordingly, the Court held that Kemira met its burden to demonstrate the existence of an actual case or controversy and denied Nalco’s motion to dismiss the complaint.


New Northern District of Georgia Patent Cases

International Business Corporation v. Panacea Products Corp., 2:11-cv-00149 (N.D. Ga. June 17, 2011) (Story, J.)

Patent infringement action involving U.S. Design Patent No. D523,736 entitled “Bracket for Plant Hangers.”

Plaintiff is represented by Smith Gambrell & Russell of Atlanta.


Order Denying Motion for Summary Judgment of Invalidity – Evidence Insufficient to Establish On Sale Bar

Southern Mills, Inc. v. Polartec, LLC, 1:07-cv-00893 (N.D. Ga. May 26, 2011) (Forrester, J.)

Plaintiff Southern Mills brought this suit against Defendant Polartec for alleged infringement of a patent relating to thermal barriers for use in fire resistant garments. In defense, Polartec argued that its predecessor manufactured and sold fleece fabrics, known as Style Nos. 7225 and 7219, having the same construction as the accused products more than one year before Southern Mills’ filed for its patent. Polartec contended, therefore, that Southern Mills’ patent was invalid for anticipation under the “on sale bar” of 35 U.S.C. § 102.

To support its defense, Polartec relied on (i) declarations and deposition testimony from an executive who testified that there was a “high probability” that the fleece fabrics were sold in the late 1980s, (ii) 1984 and 1987 Knitting Specification Sheets containing developmental instructions on how to manufacture the fabrics, and (iii) a 1988 Price List that included Style Nos. 7225 and 7219. Noting that the executive had “no personal knowledge of what products were sold to whom and when” and that the Specification Sheets and Price List were internal documents that did not evidence an actual sale or offer for sale, the Court found that Polartec’s evidence was insufficient to meet the clear and convincing standard for proving patent invalidity:

In sum, the court finds that the Specification Sheets themselves provide no evidence of an offer for sale. They are marked as experimental and even in conjunction with [the executive’s] testimony, there is no indication that these specific fabrics were ever offered for sale. As for the Price List, while this gives some kind of indication of the potential for commercial use, it does not rise to the level of clear and convincing proof that Style Nos. 7225 and 7219 were ever offered for commercial sale. (Page 9.)

Accordingly, the Court denied Polartec’s motion for summary judgment.

THURSDAY, MAY 20, 2010

New Northern District of Georgia Patent Cases

Hubbard/Downing, Inc. (d/b/a Hans Performance Products) v. Kevin Heath Enterprises et al., 1:10-cv-01131 (N.D. Ga. Apr. 16, 2010) (Duffey, J.) – Patent infringement suit involving U.S. Patent No. 6,009,566 (Head and Neck Support for Racing). Plaintiff is represented by Ballard Spahr of Atlanta.