Mohawk Industries, Inc. & Shaw Industries, Inc. v. Interface, Inc., Case No. 4:07-cv-0212 (N.D. Ga. Nov. 6, 2008) (Murphy, J.)*
Plaintiffs Mohawk and Shaw claim that Defendant Interface falsely marked certain of its carpet tile products as being covered by Defendant’s patent. Defendant asserts that its marking of non-covered products was the result of mistake. In a previous Order (discussed here), Judge Murphy concluded that Defendant had waived the attorney-client privilege as to certain communications between Defendant’s employee, Jones, and its in-house counsel that may have led to Jones’ understanding as to which products were covered by the patent and needed to be marked. As a result, the Court granted Plaintiffs’ motion to compel discovery on this topic.
After the Court’s Order, Plaintiffs redeposed several of Defendant’s witnesses. During these depositions, Defendant’s counsel objected to a number of questions as exceeding the scope of the Court’s Order. Plaintiffs, believing that such questions were within the scope of the Court’s Order, filed this Motion seeking an order compelling the witnesses to answer.
The Court denied Plaintiffs’ Motion, finding that because (1) Plaintiffs had had several opportunities to question the witnesses, (2) the witnesses had testified that they could not recall key facts about the communications at issue, and (3) the parties’ history of discovery disputes indicated that further depositions would likely only result in more motions to compel, an order compelling additional discovery was not warranted.
*Disclosure: My firm, Alston & Bird, represents Plaintiff Mohawk in this case.
Sunday, January 18, 2009
Claim Construction Order
Sothern Mills, Inc. v. Polartec, LLC, Case No. 1:07-cv-0893 (N.D. Ga. Nov. 25, 2008) (Martin, J.)
Judge Martin construed a number of disputed claim terms from U.S. Patent No. 5,727,401, relating to a fire resistant fabric for use in firefighters’ uniforms. The construed terms included “3-end knit,” “stitch yarns,” “tie yarns,” “nap yarns,” “intermediate moisture barrier layer,” “face side,” “to form a fleece,” “knitted face layer,” “napped back layer,” and “face yarns.”
Judge Martin construed a number of disputed claim terms from U.S. Patent No. 5,727,401, relating to a fire resistant fabric for use in firefighters’ uniforms. The construed terms included “3-end knit,” “stitch yarns,” “tie yarns,” “nap yarns,” “intermediate moisture barrier layer,” “face side,” “to form a fleece,” “knitted face layer,” “napped back layer,” and “face yarns.”
Saturday, January 17, 2009
Order Consolidating Cases
Wiseframe International Ltd. & IFM International, Inc. v. FKA Distributing Co. (d/b/a Homedics-U.S.A., Inc.), Case Nos. 1:08-cv-0641 & 1:08-cv-2468 (N.D. Ga. Nov. 6, 2008) (Duffey, Jr., J.)
Plaintiffs filed two actions against Defendant, the first to correct the inventorship of U.S. Patent No. 7,128,721 ("the '721 patent") and the second to seek a declaratory judgment of non-infringement of the ‘721 patent. Using the discretion provided under Federal Rule of Civil Procedure 42(a), Judge Duffey ordered that the cases be consolidated because they involve identical parties and common questions of law and fact.
Specifically, the Court noted that the first action, which seeks to establish Plaintiffs as co-owners of the ‘721 patent, has a direct bearing on adjudication of, and would involve similar discovery as, the second action. Accordingly, the Court consolidated the cases and ordered that all future proceedings be filed in the first-filed action (Case No. 1:08-cv-0641).
Plaintiffs filed two actions against Defendant, the first to correct the inventorship of U.S. Patent No. 7,128,721 ("the '721 patent") and the second to seek a declaratory judgment of non-infringement of the ‘721 patent. Using the discretion provided under Federal Rule of Civil Procedure 42(a), Judge Duffey ordered that the cases be consolidated because they involve identical parties and common questions of law and fact.
Specifically, the Court noted that the first action, which seeks to establish Plaintiffs as co-owners of the ‘721 patent, has a direct bearing on adjudication of, and would involve similar discovery as, the second action. Accordingly, the Court consolidated the cases and ordered that all future proceedings be filed in the first-filed action (Case No. 1:08-cv-0641).
Friday, January 16, 2009
Motion for Summary Judgment on False Marking Claims Denied
Mohawk Industries, Inc. & Shaw Industries, Inc. v. Interface, Inc., Case No. 4:07-cv-0212 (N.D. Ga. Nov. 6, 2008) (Murphy, J.)*
Plaintiffs Mohawk and Shaw claim that Defendant Interface falsely marked certain of its carpet tile products as being covered by Defendant’s patent. A claim for false marking under 35 U.S.C. § 292 requires proof that an unpatented article was marked as patented “for the purpose of deceiving the public.” Defendant asserts that its marking of non-covered products was the result of a mistake and not an intentional act. Arguing that Plaintiffs cannot show that Defendant acted with the requisite intent to deceive, Defendant sought summary judgment as to Plaintiffs’ claims.
Intent to Deceive May be Evidenced as Part of a Scheme to Gain a Competitive Advantage: Upon review of the evidence, the Court concluded that genuine factual issues remained as to whether Defendant acted with intent to deceive. First, the Court noted that the Defendant had changed its explanation for the false marking several times over the course of the litigation, and found that this presented a genuine issue of fact for a jury to resolve. Second, the Court found that the Plaintiffs presented at least some evidence that could lead a jury to conclude that Defendant “intended to present an image to the public that it was the sole legal retailer of randomly installable carpet tiles, and, therefore, that any mismarking was part of this overall scheme.” Third, the Court found that even if Defendant’s initial decision to mark was based on an inadvertent mistake, a question of fact remained regarding the reasoning behind Defendant’s decision to continue marking tiles after it was placed on notice that doing so could be improper.
For these reasons, the Court denied the Defendant’s Motion for Summary Judgment.
*Disclosure: My firm, Alston & Bird, represents Plaintiff Mohawk in this case.
Plaintiffs Mohawk and Shaw claim that Defendant Interface falsely marked certain of its carpet tile products as being covered by Defendant’s patent. A claim for false marking under 35 U.S.C. § 292 requires proof that an unpatented article was marked as patented “for the purpose of deceiving the public.” Defendant asserts that its marking of non-covered products was the result of a mistake and not an intentional act. Arguing that Plaintiffs cannot show that Defendant acted with the requisite intent to deceive, Defendant sought summary judgment as to Plaintiffs’ claims.
Intent to Deceive May be Evidenced as Part of a Scheme to Gain a Competitive Advantage: Upon review of the evidence, the Court concluded that genuine factual issues remained as to whether Defendant acted with intent to deceive. First, the Court noted that the Defendant had changed its explanation for the false marking several times over the course of the litigation, and found that this presented a genuine issue of fact for a jury to resolve. Second, the Court found that the Plaintiffs presented at least some evidence that could lead a jury to conclude that Defendant “intended to present an image to the public that it was the sole legal retailer of randomly installable carpet tiles, and, therefore, that any mismarking was part of this overall scheme.” Third, the Court found that even if Defendant’s initial decision to mark was based on an inadvertent mistake, a question of fact remained regarding the reasoning behind Defendant’s decision to continue marking tiles after it was placed on notice that doing so could be improper.
For these reasons, the Court denied the Defendant’s Motion for Summary Judgment.
*Disclosure: My firm, Alston & Bird, represents Plaintiff Mohawk in this case.
Motion to Dismiss False Marking Claim for Lack of Standing Denied
Mohawk Industries, Inc. & Shaw Industries, Inc. v. Interface, Inc., Case No. 4:07-cv-0212 (N.D. Ga. Nov. 6, 2008) (Murphy, J.)*
Plaintiffs Mohawk and Shaw claim that Defendant Interface falsely marked certain of its carpet tile products as being covered by Defendant’s patent. Defendant filed this Motion to Dismiss the suit for lack of standing. Defendant argued that the Plaintiffs do not have standing to sue because they cannot demonstrate that they have sustained any injury as a result of Defendant’s false marking. Plaintiffs contended that they have offered sufficient facts to prove that Defendant’s false marking gave it a competitive advantage in the carpet tile market and subjected Plaintiffs, as competitors of the Defendant, to changed economic conditions that resulted in injury.
Competitor Standing for False Marking Claim Based on Economic Injury: The Court found no relevant precedent addressing the question of competitor standing in the context of a false marking claim, only cases finding competitor standing in the context of government action. In those cases, business plaintiffs were held to have standing to sue to stop government action that would necessarily alter economic conditions by benefiting a competitor. The Court found the reasoning of such cases persuasive, and applicable here where the Plaintiffs had submitted evidence that Defendant’s false marking allowed it to realize a competitive advantage in the market:
*Disclosure: My firm, Alston & Bird, represents Plaintiff Mohawk in this case.
Plaintiffs Mohawk and Shaw claim that Defendant Interface falsely marked certain of its carpet tile products as being covered by Defendant’s patent. Defendant filed this Motion to Dismiss the suit for lack of standing. Defendant argued that the Plaintiffs do not have standing to sue because they cannot demonstrate that they have sustained any injury as a result of Defendant’s false marking. Plaintiffs contended that they have offered sufficient facts to prove that Defendant’s false marking gave it a competitive advantage in the carpet tile market and subjected Plaintiffs, as competitors of the Defendant, to changed economic conditions that resulted in injury.
Competitor Standing for False Marking Claim Based on Economic Injury: The Court found no relevant precedent addressing the question of competitor standing in the context of a false marking claim, only cases finding competitor standing in the context of government action. In those cases, business plaintiffs were held to have standing to sue to stop government action that would necessarily alter economic conditions by benefiting a competitor. The Court found the reasoning of such cases persuasive, and applicable here where the Plaintiffs had submitted evidence that Defendant’s false marking allowed it to realize a competitive advantage in the market:
Plaintiffs are direct competitors of Defendant in the market for non-directional carpet tiles. Plaintiffs expert report states that Defendant’s actions allowed it to capture a larger portion of the market for carpet tiles – a portion that, presumably, otherwise would have been captured by one of Defendant’s competitors. Under those circumstances, the Court finds that Plaintiffs have produced sufficient evidence to demonstrate that they have suffered an injury, and, therefore, will prosecute the case with the diligence necessary to ensure an adequate outcome.Accordingly, the Court denied Defendant’s Motion to Dismiss.
*Disclosure: My firm, Alston & Bird, represents Plaintiff Mohawk in this case.
Thursday, January 15, 2009
Motion to Dismiss Granted After Limited Discovery Showed That Accused Process Did Not Infringe Patent-in-Suit
Welding Services, Inc. v. Welding Technologies, Inc., Case No. 2:08-cv-00017 (N.D. Ga. Oct. 27, 2008) (Story, J.)
Plaintiff filed this suit for infringement of a patent relating to a welding process that uses a mixture of nitrogen and other gases to prevent cracking. Early in the case, Defendant filed a motion to limit discovery to the “threshold issue” of whether the accused process used nitrogen as required by the asserted claims.* The Court granted Defendant’s motion.
After Plaintiff tested Defendant’s accused process and deposed Defendant’s employee, Plaintiff filed this Motion to Dismiss with prejudice. In support, Plaintiff submitted a declaration stating that it had confirmed that the accused process did not infringe. Finding that Plaintiff’s declaration removed any justiciable case or controversy between the parties, Judge Story dismissed the case for lack of subject matter jurisdiction.
*Note: The parties were unable to agree upon a suitable confidentiality agreement that would have permitted Plaintiff to inspect Defendant’s accused process prior to filing suit.
Plaintiff filed this suit for infringement of a patent relating to a welding process that uses a mixture of nitrogen and other gases to prevent cracking. Early in the case, Defendant filed a motion to limit discovery to the “threshold issue” of whether the accused process used nitrogen as required by the asserted claims.* The Court granted Defendant’s motion.
After Plaintiff tested Defendant’s accused process and deposed Defendant’s employee, Plaintiff filed this Motion to Dismiss with prejudice. In support, Plaintiff submitted a declaration stating that it had confirmed that the accused process did not infringe. Finding that Plaintiff’s declaration removed any justiciable case or controversy between the parties, Judge Story dismissed the case for lack of subject matter jurisdiction.
*Note: The parties were unable to agree upon a suitable confidentiality agreement that would have permitted Plaintiff to inspect Defendant’s accused process prior to filing suit.
New Northern District of Georgia Patent Cases
- Zoltek Corp. v. Lockheed Martin Corp., Case No. 1:09-cv-00096 (N.D. Ga. Filed Jan. 13, 2009) (Forrester, J.) - Patent infringement suit involving U.S. Patent No. RE 34,162 (Method of Manufacturing a Carbon Fiber Sheet Product”). Plaintiff Zoltek is represented by Morris Manning & Martin of Atlanta.
Tuesday, January 13, 2009
E.D. Wisconsin Applies Exception to First-to-File Rule and Grants Motion to Transfer Case to N.D. Georgia
Berry Floor USA Inc., Alloc Inc., & Berry Finance NV v. Faus Group Inc., Case No. 1:08-cv-00315 (N.D. Ga. Oct. 17, 2008) (Thrash, Jr., J.)
On January 11, 2008, Berry Floor and Alloc filed suit against Faus Group in the Eastern District of Wisconsin for declaratory judgments of non-infringement and invalidity (“the Wisconsin Action”). Less than three weeks later, on January 29, 2008, Faus Group filed this patent infringement action against Berry Floor and Alloc in the Northern District of Georgia (“the Georgia Action”).
Appropriate Forum Decided by First-Filed Court: In a battle over preferred venues, Faus Group filed a motion in the E.D. Wisconsin seeking to transfer the Wisconsin Action to Georgia and Alloc filed a motion in the N.D. Georgia seeking to transfer the Georgia Action to Wisconsin. In June, 2008, Judge Thrash determined that because the Wisconsin Action was filed first, the judge in that case should decide the appropriate forum, and held Alloc’s motion to transfer the Georgia Action in abeyance until Judge Stadtmueller in the E.D. Wisconsin ruled on Faus Group’s competing motion. (Read my summary of Judge Thrash’s Order here.)
Forum Selection Clause Showed Relative Convenience of Georgia: In a thorough opinion, Judge Stadtmueller granted Faus Group’s motion to transfer the Wisconsin Action, despite that action being filed first. The court concluded that any presumption for retaining venue in Wisconsin was overcome because (i) none of the typical convenience factors favored Wisconsin and (ii) as evidenced by a forum selection clause in a previous license agreement, the parties had previously agreed that Georgia would be a convenient forum.
As a result, Judge Thrash accepted transfer of the Wisconsin Action, then dismissed it without prejudice in favor of the Georgia Action.
On January 11, 2008, Berry Floor and Alloc filed suit against Faus Group in the Eastern District of Wisconsin for declaratory judgments of non-infringement and invalidity (“the Wisconsin Action”). Less than three weeks later, on January 29, 2008, Faus Group filed this patent infringement action against Berry Floor and Alloc in the Northern District of Georgia (“the Georgia Action”).
Appropriate Forum Decided by First-Filed Court: In a battle over preferred venues, Faus Group filed a motion in the E.D. Wisconsin seeking to transfer the Wisconsin Action to Georgia and Alloc filed a motion in the N.D. Georgia seeking to transfer the Georgia Action to Wisconsin. In June, 2008, Judge Thrash determined that because the Wisconsin Action was filed first, the judge in that case should decide the appropriate forum, and held Alloc’s motion to transfer the Georgia Action in abeyance until Judge Stadtmueller in the E.D. Wisconsin ruled on Faus Group’s competing motion. (Read my summary of Judge Thrash’s Order here.)
Forum Selection Clause Showed Relative Convenience of Georgia: In a thorough opinion, Judge Stadtmueller granted Faus Group’s motion to transfer the Wisconsin Action, despite that action being filed first. The court concluded that any presumption for retaining venue in Wisconsin was overcome because (i) none of the typical convenience factors favored Wisconsin and (ii) as evidenced by a forum selection clause in a previous license agreement, the parties had previously agreed that Georgia would be a convenient forum.
As a result, Judge Thrash accepted transfer of the Wisconsin Action, then dismissed it without prejudice in favor of the Georgia Action.
Monday, January 12, 2009
Final Judgment of Invalidity and Stipulated Final Judgment of Non-Infringement
CBT Flint Partners, LLC v. Return Path, Inc. & Cisco IronPort Systems, LLC, Case No. 1:07-cv-1822 (Oct. 8, 2008) (Thrash, J.)
CBT asserts that Return Path and IronPort infringe two patents (U.S. Patent Nos. 6,192,114 and 6,587,550) relating to a method and system for hindering the proliferation of unsolicited email messages (i.e., “spam”). In July, 2008, the Court entered an Order construing several claim terms and ruling that claim 6 of the ‘114 patent was invalid for indefiniteness. (Read my summary of the Claim Construction Order here.) The Court also entered an Order granting Defendants’ Motion for Summary Judgment that claim 13 of the ‘550 patent was invalid for indefiniteness due to a drafting error. (Read my summary of the Order here.)
So that CBT may appeal aspects of these Orders to the Federal Circuit Court of Appeals, Judge Trash entered final judgments of invalidity as to claim 6 of the ‘114 patent and claim 13 of the ‘550 patent and entered final judgments of non-infringement as to the asserted claims based on the parties’ stipulation that Return Path and IronPort do not infringe under the Court’s claim constructions.
CBT asserts that Return Path and IronPort infringe two patents (U.S. Patent Nos. 6,192,114 and 6,587,550) relating to a method and system for hindering the proliferation of unsolicited email messages (i.e., “spam”). In July, 2008, the Court entered an Order construing several claim terms and ruling that claim 6 of the ‘114 patent was invalid for indefiniteness. (Read my summary of the Claim Construction Order here.) The Court also entered an Order granting Defendants’ Motion for Summary Judgment that claim 13 of the ‘550 patent was invalid for indefiniteness due to a drafting error. (Read my summary of the Order here.)
So that CBT may appeal aspects of these Orders to the Federal Circuit Court of Appeals, Judge Trash entered final judgments of invalidity as to claim 6 of the ‘114 patent and claim 13 of the ‘550 patent and entered final judgments of non-infringement as to the asserted claims based on the parties’ stipulation that Return Path and IronPort do not infringe under the Court’s claim constructions.
Saturday, January 10, 2009
New Northern District of Georgia Patent Cases
- Georgia-Pacific Consumer Products LP v. DEB IP, Ltd. & DEB SBS, Inc., Case No. 1:09-cv-00014 (N.D. Ga. Filed Jan. 5, 2009) (Batten, J.) - Suit for declaratory judgment of non-infringement and invalidity of U.S. Patent Nos. 5,445,288 (Liquid Dispenser for Dispensing Foam) and 6,082,586 (same). Plaintiff is represented by Kilpatrick Stockton of Atlanta.
New Northern District of Georgia Patent Cases
- Shandy Graphics, Inc. v. Professional Filing Systems, Inc., Moore, & Inhealth Record Systems, Inc., Case No. 1:08-cv-03916 (N.D. Ga. Filed Dec. 30, 2008) (Duffey, Jr., J.) - Patent infringement suit involving U.S. Patent No. 7,264,278 (Customer Registration System). Plaintiff is represented by Carlock Copeland & Stair, LLP of Atlanta.
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