Friday, April 30, 2010
Fenner Investments, Ltd. V. Hewlett-Packard Company, 6-08-cv-00273 (TXED April 28, 2010, Memorandum & Opinion) (Love, M.J.)
Thursday, April 29, 2010
The answer may turn on how the courts define the “public” for purposes of the false marking statute. Although not explicitly addressing the issue, the Federal Circuit appears to view the relevant public as including potential competitors. For example, in Forest Group, Inc. v. Bon Tool Company, 590 F.3d 1295 (Fed. Cir. 2009), the Federal Circuit explained that false marking may “deter innovation and stifle competition in the marketplace” and “cause unnecessary investment in design around or costs incurred to analyze the validity or enforceability of a patent whose number has been marked upon a product.” Defining the public in this manner creates a problem for plaintiffs. Judge Brinkema said it best in Pequignot v. Solo Cup Company, 1-07-cv-00897 (VAED):
When a product is marked with an expired patent number, any person with basic knowledge of the patent system can look up the patent and determine its expiration date, reducing the potential for being deceived.To the extent the relevant public consists of potential competitors, Judge Brinkema’s observation seems right on target. Are potential competitors likely to be deceived by an expired patent number when the fact of expiration can be determined quickly and easily via free online information?
The difficulty of answering this question apparently has not been lost on Mr. Simonian. He recently filed amended pleadings in several of his cases that appear designed to refocus the inquiry from potential competitors to consumers. Specifically, Mr. Simonian has included the following new allegations:
Simonian v. Novartis Animal Health US, Inc., 1-10-cv-01267 (ILND) Amended Complaint filed April 27, 2010.
The expiration date of a U.S. Patent is not readily ascertainable by members of the public at the time of product purchase. The patent number itself does not provide members of the public with the expiration date of the patent. Basic information about a patent, such as the filing, issue and priority dates associated with a particular U.S. patent number are available at, for example, the website of the United States Patent and Trademark Office, (“USPTO”). However, access to the Internet is necessary to retrieve that information (meaning that a consumer may not have the ability to retrieve the information while he is in a store making a purchasing decision) and even after retrieving that information, it does not include the expiration date of a patent. Rather, a member of the public must also conduct a burdensome legal analysis, requiring specific knowledge of U.S. patent laws regarding patent term expiration ... Notably, a correct calculation of the expiration date must also account for at least: a) any term extensions granted by the USPTO, which may or may not be present on the face of the patent, and b) whether or not the Patent owner has paid the necessary maintenance fees.
Mr. Simonian’s new allegations have some initial appeal. Unlike potential competitors, most consumers lack the desire or means to check the expiration date of patent numbers at the point of purchase. Lacking this corrective information, they are vulnerable to being deceived. Problem solved? Maybe not.
Focusing on the consumer at the point of sale might avoid one problem, but it raises another: To what extent, if any, does marking a product with a patent number impact a consumer’s purchasing decision? While this question could no doubt provide fodder for vigorous competing expert opinion, the author submits that the answer in nearly every instance is none. If that’s the right answer, then it’s difficult to see how consumers would be deceived by incorrect patent marking. Traditional notions of fraud and deception generally require some form or reliance and reliance is lacking if consumers don’t care about patent numbers or expiration dates.
As the law of false marking continues to develop, these are only a few of the interesting questions that will be addressed. If nothing else, Mr. Simonian’s new allegations take us one step closer to some answers. To view all currently active False Marking cases, please see our complimentary charts at Gray On Claims.
The Forest Group Inc v. Bon Tool Company et al., 4-05-cv-04127 (TXSD April 27, 2010, Memorandum and Order) (Atlas, J.)
Wednesday, April 28, 2010
1st Media LLC v. doPi Karaoke, Inc. et al., 2-07-cv-01589 (NVD April 23, 2010, Findings of Fact & Conclusions of Law) (Mahan, J.)
This particular complaint comes with a twist though. In addition to dual counts of False Marking with a patent that was out of scope AND expired, the plaintiff also accuses Koehn of “personal injuries arising from the use [of] a Sorting Stix manufactured and distributed by Defendant.” Sorting Stix is, apparently, a flexible fiberglass rod used in handling cattle.
From the complaint:
On or about March 26, 2009, Plaintiff was in the process of working with cattle. Specifically, he was attempting to herd a bull from a pasture through a gate. During this process, Plaintiff was utilizing a Sorting Stix product manufactured and distributed by Defendant. While attempting to herd the bull, Plaintiff threw the Sorting Stix at the bull from a distance of approximately fifteen (15) feet. The Sorting Stix rebounded after striking the bull and struck Plaintiff in the face with sufficient force to rupture and collapse his right eye and cause fractures to the facial bones surrounding his right eye. As a result, Plaintiff has lost his entire right eye.To view this complaint, and all other currently active False Marking case complaints, please see our complimentary charts at Gray On Claims.
Tuesday, April 27, 2010
Pleading Asserting Inequitable Conduct Need Not Allege Non-Cumulativeness if Materiality is Otherwise Sufficiently Alleged
Bone Care International LLC et al v. Pentech Pharmaceuticals, Inc., 1-08-cv-01083 (ILND April 23, 2010, Memorandum Opinion & Order) (Dow, J.)
Monday, April 26, 2010
Openwave Systems, Inc. v. 724 Solutions (US) Inc. et al., 5-09-cv-03511 (CAND, Apil 22, 2010, Order) (Seeborg, J.)
Thursday, April 22, 2010
Seirus Innovative Accessories, Inc. v. Cabela's, Inc., 3-09-cv-00102 (CASD April 20, 2010, Order) (Huff, J.)
Wednesday, April 21, 2010
"Unjustified Delay, Inexcusable Conduct, and Bad Faith" During Discovery Warrants "Serious" Sanction Requiring Plaintiff to Produce All Items Listed
Digital-Vending Services International, Inc. v. The University of Phoenix, Inc. et al., 2-09-cv-00555 (VAED April 16, 2010, Order) (Miller, J.)
Tuesday, April 20, 2010
Damages opinion on related licenses was excluded from evidence where alleged connection with the patents-in-suit was being "in the same field"
Fenner Investments, Ltd. v. Hewlett-Packard Company et al., 6-08-cv-00273 (TXED April 16, 2010, Memorandum Opinion & Order) (Love, M.J.)
In an Amended Complaint, Plaintiff adds a count of False Marking where Defendants Allegedly Marked Products with Plaintiff’s Patent Number
SECOND CAUSE OF ACTION
Violation of 35 U.S.C. §292 [False Marking]
(TriPharma Against Defendants and Does 1 through 10)
78. TriPharma incorporates paragraphs 1 through 70 in support of this claim for relief.
79. Defendants, without TriPharma’s consent, marked and continue to mark, used and continue to use in advertising, offered and continue to offer for sale, and/or sold and continue to sell the Mandura Product in the United States and in this District with “US Patent #6,899,892,” the 892 Patent number, the word “patent, and/or the word “patented” with the intent of counterfeiting or imitating the Original Product and/or deceiving the public and inducing them to believe that the Mandura Product was made, offered for sale, and/or sold by or with the consent of TriPharma. At no time did TriPharma ever consent to allowing Defendants to use or refer to the 892 Patent.
80. Defendants’ false marking of the Mandura Product with the 892 Patent has been and continues to be willful and deliberate.
81. As a direct result of Defendants’ false marking, TriPharma has suffered and will continue to suffer injury and damages for which it is entitled to relief under35 U.S.C. Section 292, including, but not limited to, a fine up to $500 for every such offense. In prosecuting this claim for relief, TriPharma is acting on behalf of the United States of America and is entitled to receive 50% of the damages.
Tripharma LLC v. Solstice International Partners et al, 8-10-cv-00222 (CACD April 16, 2010, Amended Complaint)
Monday, April 19, 2010
First-to-File ANDA Applicant's Loss of 180-Day Market Exclusivity Does Not Justify Stay of Litigation
Millennium Pharmaceuticals Inc. et al v. Teva Parenteral Medicines Inc. et al., 1-10-cv-00137 (DED April 14, 2010, Memorandum & Order) (Joyner, J.)
Friday, April 16, 2010
False Marking Fine Calculated as a Percentage of the Product's Sales Price and Includes Sales of Products Not Falsely Marked
Presidio Components Inc. v. American Technical Ceramics Corp., 3-08-cv-00335 (CASD April 13, 2010, Order) (Gonzalez, J.)
Read more about false marking cases here.
Thursday, April 15, 2010
Soverain Software LLC v. J.C. Penney Corporation, Inc. et al., 6-09-cv-00274 (TXED April 13, 2010, Order) (Davis, J.)
Wednesday, April 14, 2010
In Determining Proper Venue, Court "Declines to Scrutinize Litigants’ Business Decisions" to Locate Office in the Eastern District of Texas
MedIdea, LLC v. Smith & Nephew, Inc., 2-09-cv-00378 (TXED April 12, 2010, Memorandum Opinion & Order) (Ward, J.)
Tuesday, April 13, 2010
Defendant Precluded From Relying on Prior Art Mentioned -- But Not Fully Explained -- in Summary Judgment Motion
Taser International Inc. v. Stinger Systems, Inc., 2-07-cv-00042 (AZD March 31, 2010, Order) (Murguia, J.)
Monday, April 12, 2010
Aten International Co. Ltd.. v. Emine Technology Co., Ltd., 8-09-cv-00843 (CACD March 29, 2010, Order) (Guilford, J.)
Friday, April 9, 2010
May an inventor previously employed by plaintiff's predecessor-in-interest serve as an expert for defendant?
Everpure, LLC v. Selecto, Inc., 2-09-cv-02844 (CACD April 6, 2010, Minutes) (Matz, J.).
No. Plaintiff's motion to disqualify defendant's expert consultant who was an inventor of two of the patents-in-suit was granted. "It is undisputed that [defendant's expert] signed a confidentiality agreement with [his former employer]. . . . However, [defendant] argues that [its expert] never had a confidential relationship with [plaintiff] because [he] had left [his former employer] three years before [plaintiff] purchased [his former employer's] assets. . . . Although most of the disqualification cases involve employees who previously worked for the moving party, the Court sees no reason why the same principles should not apply to a prior employer’s successor-in-interest. . . . The focus is on whether the disclosure was reasonable at the time; it is irrelevant that the subsequent successor-in-interest never directly employed the party."
Broadcom Corp. v. Emulex Corp., 8-09-cv-01058 (CACD April 5, 2010, Minutes) (Selna, J.).
Thursday, April 8, 2010
CleanCut v. Rug Doctor et al., 2-08-cv-00836 (UTD April 6, 2010, Memorandum Decision) (Warner, M.J.)
As of 04/08/2010, Docket Navigator contained at least:
100 orders on this legal issue: Monetary Sanction/Attorney Fees
300 orders on this cause: Mot. for Discovery Sanctions -- Monetary
Docket Report subscribers have access to Docket Navigator during beta testing
Wednesday, April 7, 2010
Gator Tail, LLC v. Mud Buddy, LLC d/b/a Mud Buddy Manufacturing, 3-08-cv-00125 (LAMD April 5, 2010, Order) (Lemmon, J.)
Tuesday, April 6, 2010
Asserting Infringement in Counterclaim Does Not Excuse Patentee's Obligation to Conduct Pre-Filing Investigation
Highmark, Inc v. Allcare Health Management System, Inc., 4-03-cv-01384 (TXND April 1, 2010, Opinion & Order) (Means, J.)
Monday, April 5, 2010
Non-Practicing Entity Entitled to Permanent Injunction Where Infringed Patent Was The Subject of Prior Exclusive License
Judkins v. HT Window Fashions Corp., 2-07-cv-00251 (PAWD March 31, 2010, Memorandum & Order) (Lancaster, J.)
Friday, April 2, 2010
Saint Gobain Autover USA, Inc. et al v. Xinyi Automobile Glass Co. et al., 1-06-cv-02781 (OHND March 31, 2010, Memorandum Opinion) (Lioi, J.)
Thursday, April 1, 2010
AstraZeneca AB et al. v. Dr. Reddy's Laboratories, Ltd. et al., 1-07-cv-06790 (NYSD March 30, 2010, Decision & Order) (McMahon, J.)