Here is a survey of recent patent cases filed in the Northern District of Georgia. A similar survey of recent trademark and copyright cases will be published soon.
Medical Device Patent Suit
On May 23, 2013, Ivera Medical Corporation (“Ivera”), based in Carlsbad, California, filed suit against The Bimeco Group, Inc. (“Bimeco”), based in Peachtree City, Georgia, alleging that Bimeco’s DualCap Solo product, a device for disinfecting and protecting the entry port of IV valves to prevent bloodstream infections in hospital patients, infringes three Ivera patents directed to cover its Curos® Port Protector product. Ivera asserts U.S. Patent Nos. 7,780,794, 7,985,302, and 8,206,514, all titled “Medical Implement Cleaning Device.”
|Bimeco’s DualCap product|
On July 10, Bimeco filed its answer and also filed a motion to transfer the action to the Southern District of California, where two related actions are pending. In a somewhat atypical situation, Bimeco does not argue for a transfer based on its location and the inconvenience it would bear litigating in Georgia (nor could it, being that it is a Georgia corporation based in the Northern District), but rather it alleges that Ivera improperly filed this “mirror-image” lawsuit in Georgia to avoid the likely results in the California actions. Further, Bimeco argues that every one of the asserted claims have been rejected upon reexamination by the PTO. Bimeco asks the Court to transfer the case to the Southern District of California in order to preserve judicial economy, or in the alternative, to stay the litigation pending the resolution of the California matter and the proceedings at the PTO.
The case is Ivera Medical Corporation v. The Bimeco Group, Inc., Case No. 3:13-cv-00086-TCB, United States District Court for the Northern District of Georgia, Newnan Division, and is assigned to Judge Timothy C. Batten.
Holographic Security Tags
On May 24, J. Patton Sports Marketing, Inc. (“J. Patton”), based in Duluth, Georgia, filed a complaint in the Northern District of Georgia against anti-counterfeiting company OpSec Security, Inc. (“OpSec”), based in Boulder, Colorado, alleging that OpSec’s micro-optic hang tag products infringe U.S. Patent No. 6,952,994 (the ‘994 patent), titled “Identification Devices and Methods for Producing the Identification Devices.”
J. Patton claims to be a “leading provider of brand protection services, specializing in patented holographic security technologies and digital asset management.” According to the complaint, J. Patton has produced over 1.3 billion tags and labels for companies in various industries, including “Sports Marketing, Pharmaceuticals, Manufacturing, and Not-for-Profit Organizations.” J. Patton alleges that it placed OpSec on written notice of the ‘994 patent in August 2012, and that OpSec’s continued manufacture and sale of its security hang tags constitutes willful infringement.
The case is J. Patton Sports Marketing, Inc. v. OpSec Security, Inc., Case No. 1:13-cv-01752-TWT, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Thomas W. Thrash, Jr.
Brinkmann Accused of Infringing Convertible Grill Patent
|Brinkmann’s Model No. 810-3551-0,
one of 17 accused grill models.
On May 28, Spanish companies Corprecitec, S.L. (“Coprecitec”) and Copreci, S. Coop. (“Copreci”), and US subsidiary Mondragon Components U.S.A., Co. (“Mondragon”), based in Marietta, Georgia, filed suit against The Brinkmann Corporation (“Brinkmann”), based in Dallas, Texas, alleging that a number of Brinkmann multi-burner convertible grills infringe U.S. Patent No. 8,449,289 (the ‘289 patent), titled “A Multi-Gas Appliance.” Coprecitec, subsidiary of Copreci, claims to be a leading developer and manufacturer of components for household and professional appliances. Plaintiffs allege that Brinkmann manufactures, uses, sells, offers to sell, and/or imports grills capable of converting between using propane and natural gas, in violation of certain claims of the ‘289 patent.
On June 17, Judge Totenberg issued an order appointing Sumner Rosenberg as Special Master to perform the certain duties, including to preside over discovery disputes and to conduct a Markman hearing. Typically an appointment would not be made until later in the case, but Judge Totenberg reviewed the complaint and determined that the ‘289 patent appeared to be closely related to the patents in suit in another case brought in the Northern District of Georgia by the Plaintiffs against Brinkmann, Coprecitec, S.L. et al. v. The Brinkmann Corp., Case No. 1:12-cv-1480-AT. Further, in correspondence between counsel for the parties and the Court, Brinkmann indicated that it planned to file for inter partes review of the ‘289 patent and that it planned to seek a stay of the action. Plaintiffs indicated that they did not oppose a stay pending inter partes review. In addition to the typical duties of the Special Master, the Court directed Mr. Rosenberg to consider whether to consolidate the two related cases and whether to close or stay the current action pending resolution of an inter partes review.
The case is Coprecitec, S.L. et al. v. The Brinkmann Corp., Case No. 1:13-cv-01781-AT, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Amy Totenberg.
Declaratory Judgment Action Relating to Amino Acid Compound Patents
On June 18, after first filing an original complaint on June 4, John’s Lone Star Distribution, Inc. (“Lone Star”), based in Kennesaw, Georgia, and Purus Labs, Inc. (“Purus”), based in Dallas, Texas, filed an amended complaint in the Northern District of Georgia against Thermolife International, LLC (“Thermolife”), based in Venice, California, requesting that the Court enter a declaratory judgment that Lone Star and Purus do not infringe U.S. Patent Nos. 8,455,531 (the ‘531 patent), issued on June 4, 2013, and 8,466,187 (the ‘187 patent), issued on June 18, 2013, both titled “Amino Acid Compounds,” and that the ‘531 and ‘187 patents are invalid, and further that the ‘187 patent is unenforceable.
According to the amended complaint, Thermolife’s counsel sent several cease and desist letters to Lone Star and Purus alleging that Lone Star and Purus’s activities read on claims of two patent publications that ultimately issued as the ‘531 and ‘187 patents and announcing an intention to sue Lone Star and Purus upon patent issuance. The amended complaint also includes detailed allegations of inequitable conduct with respect to the ‘187 patent and asks the Court to declare it unenforceable. Plaintiffs claim that a letter was sent — presumably by counsel for Lone Star and Purus — to Thermolife’s counsel during the pendency of the two patent applications alerting counsel to a certain prior art reference, U.S. Patent No. 5,543,430 to Kaesemeyer, which the sender claimed anticipated every claim of the pending applications. According to the amended complaint, Thermolife’s counsel cited Kaesemeyer patent in an IDS filed in one of the pending applications but not the other, and therefore that it intentionally withheld the reference from the PTO. Lone Star and Purus asks the Court to declare the case exceptional for these reasons and to award the Plaintiffs their attorneys’ fees and costs.
The case is John’s Lone Star Distribution, Inc. et al. v. Thermolife Int’l, LLC, Case No. 1:13-cv-1857-SCJ, United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Steve C. Jones.