Recent copyright/patent infringement suits filed in U.S. District Courts

Marshall Division, Eastern District of Texas
Oct. 25

- U.S. Foam Inc. et al vs. On Site Gas Systems Inc.

U.S. Foam, a company based in Longview, and On Site Gas Systems were parties to a prior lawsuit which resulted in a compromised settlement agreement. The settlement, executed Feb. 9, 2006, in part prevents On Site from using a foam product chemical formula used by U.S. Foam or using the "Hellfighter" product name.

The product is a foam sealing material that has been injected with an inert gas and is used to extinguish mine fires.

U.S. Foam claims that On Site has breached several elements of the agreement by using the coal mine plug/seal material formula and claiming it is responsible for the material that extinguished the West Elk, Buchanan and Pikeville mine fires.

In question are two patents, U.S. Patent No. 7,104,336 B2 for a Method for Fighting Fire in Confined Areas Using Nitrogen Expanded Foam; and U.S. Patent No. 7,096,965 B2 for Method and Apparatus for Fighting Fires in Confined Areas.

U.S. Foam alleges that On Site has willfully infringed on the patents.

In addition, On Site has advertised a total solution for fire suppression and prevention including that its products or services are "Proven Technology at West Elk, Buchanan, Pikeville Mine Fires."

"On Site does not have the right to manufacture, use, sell or offer to sell products or practices the methods that use the technology that extinguished the � fires," the complaint states.

U.S. Foam is seeking an injunction against On Site, reasonable royalty, treble damages, court costs, interest, attorney fees and additional damages for breach of the settlement agreement and the false advertising as a violation of the Lanham Act.

The plaintiff is represented by Elizabeth DeRieux of Brown McCarroll LLP in Longview.

The case has been assigned to U.S. District Judge Leonard E. Davis.

Case No. 2:07-cv-00466-LED

Oct. 29

- Advanced Technology Incubator Inc. vs. Sharp Corp. et al

Advanced Technology Incubator (ATI) claims to hold the patent for LCD televisions incorporating color filters. In question is U.S. Patent No. RE 37,682 for a Method of Fabricating a Liquid Crystal Display.

Based on an agreement between Dr. Zvi Yaniv and LG Philips LCD Co. Ltd., ATI owns and has rights to the patent, the plaintiff claims.

The original complaint states that Yaniv is a leader in the LCD industry and is a recognized authority in electro-optics. He is the president and CEO of ATI, which serves as the holding company for his patented technologies.

The '682 Patent is directed toward an improved process for manufacturing a light influencing element, or color filter, where the color filter can be made by the injection of color into an opening of a substrate by an inkjet type injection head.

ATI claims that defendants Sharp Corp., Sharp Electronics Corp., Dai Nippon Printing and DNP Color Techno Kameyama Co. Ltd. manufacture LCD televisions at Sharp's Kameyama No. 2 Plant in Kameyama, Japan, for import to the United States.

The plaintiff alleges that defendants had knowledge of the '682 Patent and that they willfully continue to infringe on the patent.

Plaintiff is seeking a permanent injunction, actual damages no less than reasonable royalty, treble damages, costs, expenses, interest, attorney fees and other relief to which ATI is justly entitled.

David B. Weaver of Vinson & Elkins LLP in Austin in representing the plaintiff.

The case has been assigned to U.S. District Judge David Folsom.

Case No. 2:07-cv-00468-DF

Oct. 31

- MacLean-Fogg Co. vs. Eaton Corp.

MacLean-Fogg, an Illinois company, claims it holds the rights to 14 patents relating to valve lifter assemblies, valve lifter bodies and associated components. Among the patents is U.S. Patent No. 6,871,622 for a Leakdown Plunger issued March 29, 2005.

MacLean alleges that Eaton manufactures, offers to sell and sells infringing products to automobile manufacturers like General Motors and Chrysler.

"The automobile manufacturers then incorporate the infringing products into the engines of various models of automobiles," the original complaint states. "For example, General Motors incorporates Eaton's infringing products into at least the following models: GMC Yukon, GMC Yukon XL, Chevrolet Tahoe, Chevrolet Suburban and Chevrolet Avalanche; and Chrysler incorporates Eaton's infringing products into at least the following models: Dodge Minivans and Chrysler Town and Country Minivans."

The plaintiff claims it has suffered damages as a result of the infringement and will continue to suffer damages including lost royalties and lost profits.

MacLean-Fogg is seeking a permanent injunction restraining and enjoining Eaton from further infringement, reasonable royalties, interest, costs and other relief that the court may deem just and proper.

Jennifer Parker Ainsworth of Wilson, Robertson & Cornelius PC in Tyler is representing the plaintiff.

The case has been assigned to U.S. District Judge Leonard E. Davis.

Case No. 2:07-cv-00472-LED