FLIR Moves to Strike Answer
This case began when FLIR brought a declaratory judgment action against Thomas L. Gambaro and Motionless Keyboard Co. (MKC), who had demanded payment from FLIR, alleging that certain FLIR handheld thermal imagers infringed U.S. Patent No. 5,332,322 (reported here).
Acting pro se, Gambaro filed an answer [PDF] on behalf of himself, MKC and a third company called Patent Enforcement Co., which was not named in the complaint. Because Gambaro is not an attorney, FLIR filed a short motion to strike the answer [PDF], arguing that Gambaro, as a non-attorney, cannot answer on behalf of either MKC or Patent Enforcement Co. FLIR's motion seems like a no-brainer. It is well settled hornbook law that corporations must be represented in court by counsel.
FLIR's motion is set for oral argument before Judge Anna J. Brown at the same time as the Rule 16 Conference on June 24, 2010 at 1:30 PM ,
FLIR Brings DJ Action Against Motionless Keyboard
Motionless Keyboard Co. (MKC) owns U.S. Patent No. 5,332,322 [PDF], entitled "Ergonomic Thumb-Actuable Keyboard for a Hand-Grippable Device." MKC's principal and the inventor of the '322 Patent is Portland resident Thomas L. Gambaro.
Several years ago MKC tried to enforce the '322 patent against Microsoft, but the Oregon district court granted summary judgment of noninfringement (case No. Civ. 04-180-AA), and the Federal Circuit affirmed. Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007).
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More recently, MKC tried to convince Wilsonville-based FLIR Systems, Inc. to take a license to the '322 Patent, but FLIR refused, arguing noninfringement based on the claim construction from the prior litigation. In his last letter to FLIR, Gambaro said he was "An Army Of One," and asked "Does FLIR and the Board of Directors want to be at war with 'An Army of One'?" FLIR answered in the affirmative by filing a complaint [PDF] asserting the following DJ claims:
- Noninfringement
- Invalidity
- Patent Misuse
The case is No. 3:10-cv-00231-BR, assigned to Judge Anna J. Brown.
Expired Patents and False Marking
Oregon-based Lightspeed Aviation sued Bose Corp. in the District of Oregon for false patent marking (see complaint [PDF]). According to the complaint, Bose marks a number of its headphones as "patented" even though the corresponding patents are expired, and, according to Lightspeed, this constitutes false patent marking. Lighspeed and Bose are also involved in another patent lawsuit in the District of Massachusetts.
This is not the first false patent marking case that involves expired patents. Recently, Matthew Pequignot, a Washington D.C. patent attorney, sued Solo Cup and Gillette under the false marking statute (35 U.S.C. § 292) for marking their products with expired patent numbers. The court in the Solo Cup case dismissed Pequignot's claim finding that Pequignot did not prove that Solo Cup marked its products "for the purpose of deceiving the public" as required in § 292. The Solo Cup case is pending before the U.S. Court of Appeals for Federal Circuit. The Gillette case is stayed pending the outcome of the Solo Cup case.
Construing Claims in the Epson vs Inkjet Cartridge Sellers Cases
The parties have filed a joint claim construction statement in advance of the upcoming Markman hearings.
Previously Epson had reduced the number of asserted patents from eighteen to four: U.S. Patent Nos. 5,622,439 ("the '439 patent"), 5,158,377 ("the '377 patent"), 6,502,917 ("the '917 patent"), 
and 7,008, 053 ("the '053 patent") and now they assert definitions of certain terms as summarized in the joint claim construction chart (pdf). There are also some interesting assertions. For example, several of the claims refer to a dot matrix printer. Wikipedia defines a dot matrix printer or impact matrix printer as "a type of computer printer with a print head that runs back and forth, or in an up and down motion, on the page and prints by impact, striking an ink-soaked cloth ribbon against the paper, much like the print mechanism on a typewriter . . . Although nearly all inkjet, thermal, and laser printers print closely-spaced dots rather than continuous lines or characters, it is not customary to call them dot matrix printers." Nonetheless, the parties appear to concur that the claim language dot matrix printer includes ink jet printers.
QSIndustries Attempts to Derail Broadway's Decoders
QSIndustries, Inc., Frederick Severson, and Patrick Quinn (collectively “QSI”) sued Broadway Limited Imports, LLC, Precision Craft Models, Inc., and Robert Grubba (collectively “Broadway”) in the U.S. District Court for the District of Oregon alleging that Broadway contributorily infringes and induces infringement of various claims of U.S. Patent Nos. 5,448,142 (the ’142 patent) and 5,896,017 (the ’017 patent) by importing, offering for sale, and selling model trains that contain sound and control systems and controllers specially designed to operate those systems.
The ’142 and ’017 patents relate to control systems for model railroads that use polarity reversals (“PR”) and polarity reverse pulses (“PRP”) of a DC power signal to trigger and control special effects in a model train locomotive, such as sound effects.
Continue Reading...Ninestar Strikes Back with Counterclaims in the Epson Inkjet Case
Epson continues to aggressively assert its patents against manufacturers and resellers of inkjet cartridges, but some of the defendants are fighting back.
In its Second Amended Answer (pdf), Ninestar - or more precisely Defendants Ninestar Image Co. Ltd. (now known as Ninestar Technology Co., Ltd.), Technology Company, Ltd., Town Sky, Inc., and Dataproducts USA LLC - in addition to its antitrust claims, also asserted the usual defenses of non-infringement, invalidity and inequitable conduct. As a further defense, Ninestar asserts that the replacement of ink cartridges, even with new compatible cartridges, constitutes permissible repair essentially extinguishing any patent infringement claim under a first sale (patent exhaustion) doctrine.
Epson sought to dismiss the Ninestar counterclaims, but the Court denied Epson's motion to dismiss Ninestar's Walker Process antitrust counterclaim (§ 2 Sherman Act) but granted Epson's motion to bifurcate the antitrust claims pending outcome of the infringement case. See the Opinion and Order (pdf) from January 19, 2010.
The parties continue to spar over the scope of the court's order, so stay tuned.
Epson Inkjet Case Not Transferred: Green Project Fails To Persuade Court to Transfer Case to California
In Seiko Epson v. Abacus 24-7 , et al., (No. 3:08-cv-00452-BR), defendants Green Project, Inc. and Joseph Wu moved to sever Epson’s patent infringement claim and its own counterclaims from the remainder of this case and transfer to the United States District Court for the Central District of California, Western Division, where Green Project’s principal place of business is located. Green Project contended (1) that severance was appropriate because it is the only party in the case that exclusively sells recycled (as opposed to new compatible) inkjet cartridges, and (2) accordingly, it has a defense to Epson’s patent-infringement claims based on patent exhaustion that none of the other defendants share and that may cause confusion and thus prejudice in the minds of the jury. Green Project also asserted that transfer of the severed claim to California was appropriate because Green Project has few advertising contacts with the District of Oregon and its witnesses are all located in California, which makes it inconvenient to defend this action in Oregon.
In its Order (pdf), the Court made short work of Green Project's motion, concluding that Defendants, Green Project and Joseph Wu failed to establish good reason for the Court to exercise its discretion to sever the claims against them in order to facilitate the transfer to another district. The Court reasoned that the Green Project matter involves closely related and complex patent claims and defenses that have been and continue to be litigated in multiple cases in the Oregon court for nine years. Judge Anna Brown explained that the Oregon Court’s "long-standing familiarity with each of the related cases militates against a transfer, particularly in light of the commonality of many of the issues including the issues relating to the alleged sale of Seiko Epson’s recycled ink cartridges." The Court further did not foresee any likelihood of confusion or prejudice to Defendants Green Project or Wu.
Telefonix, Inc. and Vanguard Products Group, Inc. Appear to Prevail in Last Minute Settlement
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Telefonix, Inc. and Vanguard Products Group, Inc. filed an infringement action in the U.S. District Court for the Northern District of Illinois against Hillsboro-based Merchandising Technologies, Inc., alleging infringement of U.S. Patent No. 6,799,994, owned by Telefonix and exclusively licensed to Vanguard. The ’994 patent, entitled “Cord Management Apparatus and Method” concerns a retail display stand for powered-up consumer electronic devices that includes a “cord management apparatus” for storage and retraction of power supply cables.
The infringement action was transferred from the Northern District of Illinois to the District of Oregon on September 21, 2007. After over 18 months of very active litigation (final docket [pdf]) that resulted in entry of a Markman claim construction order [pdf] and partial summary judgment of, among other things, infringement, the parties announced their agreement to a consent decree and permanent injunction at a pretrial conference just one week before a scheduled bench trial on validity. Not unexpectedly, the patent owners, after prevailing on summary judgment of infringement and after withstanding the defendant’s motion for summary judgment on invalidity and other defenses, obtained what appears to be a favorable consent decree, including an admission of validity and a permanent injunction against infringement of the '994 patent.
Interlocutory Rulings Had Favored Telefonix and Vanguard Products
Earlier in the case, Judge Brown had dismissed [pdf] Merchandising Technologies’ Lanham Act counterclaim based on an allegation that Vanguard had intentionally overstated the scope of its patent rights in a letter to Wal-Mart. Telefonix and Vanguard Products won a greater victory on December 31, 2008, when the court granted them partial summary judgment on infringement, one counterclaim, and one affirmative defense. The court also denied Merchandising Technologies’ motion for summary judgment of noninfringement and invalidity.
The public version of the court’s lengthy opinion [pdf] indicates that the court rejected Merchandising Technologies' affirmative defense that an equitable estoppel against assertion of the ’994 patent had arisen from an earlier patent infringement action in which Telefonix, Vanguard Products, and Merchandising Technologies were all co-defendants. The court also rejected Merchandising Technologies’ counterclaim for false marking. On the issues of infringement and validity, the court granted partial summary judgment that each of Merchandising Technologies’ accused products directly infringed every claim of the ’994 patent except dependent claim 3. The court considered defendants' assertions of invalidity based on obviousness and indefiniteness and a defense of judicial estoppel, but declined to grant summary judgment, holding that each of these issues raised material questions of fact requiring a trial.
A Last Minute Settlement
At a pretrial conference on May 11, 2009, just one week before a scheduled May 18, 2009 bench trial, the parties announced that they had reached a settlement. In the Final Judgment By Consent and Permanent Injunction [pdf] entered by the court the same day, Merchandising Technologies admitted that the ’994 patent was valid and enforceable and agreed to be enjoined from making, using, selling, offering for sale, or importing its four accused product models, the “Freedom Universal,” “Freedom A,” “Freedom A+,” and “Freedom C” product displays, for the life of the ’994 patent after an initial “transition and service period” (the length and terms of which are not described in the court’s publicly filed order). Merchandising Technologies also agreed that its prior stipulated dismissal without prejudice of separate action against Vanguard and Telefonix would be treated as a dismissal with prejudice. However, Vanguard and Telefonix acknowledged that other Merchandising Technologies products, including its “Freedom LP3” product, did not infringe the ’994 patent.
This outcome demonstrates how the narrowing of issues through pretrial procedures, and the uncertainty and expense of an impending trial, can create strong pressure to settle at the last minute.
