In March 2019, Lillebaby sued Columbus Trading Partners in this district, accusing the company of infringing two patents, U.S. Patent Nos. 8,172,116 and 8,424,732, directed to child carriers having adaptive leg supports. The same day, Lillebaby filed 22 additional suits around the country, accusing other entities of infringing the same patents (including, for some reason, redundantly suing Columbus Trading Partners in Connecticut), and filed a complaint regarding the same companies with the International Trade Commission (ITC) seeking to obtain an order preventing importation of the accused products into the United States. The Columbus Trading Partners suit appears to have settled in August, which resulted in the termination of the ITC complaint with respect to Columbus, but the ITC case pressed forward with respect to parties who did not reach a settlement.
The ITC case was eventually narrowed to a single claim of the ‘116 patent. The ITC has now deemed the patent invalid and unenforceable. To disqualify asserted references as prior art, LilleBaby sought to claim an earlier priority date than the filing date, relying on a declaration by inventor Lisbeth Lehan. This was rejected, however, as uncorroborated. The ITC then determined that the prior art both anticipated and rendered obvious the asserted claim of the ‘116 patent.
Additionally, the ITC determined the claim to be unenforceable due to inequitable conduct that occurred during prosecution of the patent. At the time of filing, Lisbeth Lehan and her husband, Stephen Lehan, both signed a declaration stating that each was an inventor. But at trial, both acknowledged that Lisbeth was the sole inventor, and that Stephen made no inventive contribution, and Stephen testified that he knew he was not an inventor at the time he signed the declaration. The ITC found this to be unmistakably false and per se material. The Lehans testified that they named Stephen because they believed (albeit incorrectly) that having a U.S. citizen on the application would bolster the strength of the patent, and Lisbeth was not a citizen. While the Lehans corrected the inventorship to remove Stephen just before filing suit, which would save the validity of the patent, such correction does not erase the intentional misleading of the Patent Office.
Judge Sorokin sua sponte bifurcated Rolling Optic’s inequitable conduct defense from the impending jury trial, noting that submitting it to the jury would require consideration of evidence not relevant to anything else before the jury. Judge Sorokin apparently believes the jury will have more than enough on its hands in dealing with the remaining issues in the case, which involves patents covering micro-optic foils that produce a 3-D holographic image, as he also indicated that, while he would not automatically exclude jurors lacking a certain level of education, he would inquire as to potential jurors’ education and interest in learning about the technology. The bifurcation order is Judge Sorokin’s second sua sponte decision in this case; in January, he sua sponte granted summary judgment of definiteness in favor of Crane Security.
Judge Woodlock ruled in Exergen’s favor on the issue of inequitable conduct in connection with its 7,787,938 patent, which relates to measuring a person’s internal temperature externally via the temporal artery. Judge Woodlock had previously found the asserted claims invalid for claiming unpatentable subject matter; following this, both parties initially pressed the court to address inequitable conduct on summary judgment, although Exergen subsequently sought to have the inequitable conduct claims dismissed as moot. Judge Woodlock examined Federal Circuit caselaw on the issue of mootness of inequitable conduct counterclaims on patents that had already been deemed invalid, and determined that such claims are not moot where attorney’s fees are being sought based on the alleged inequitable conduct. Looking to the allegations of inequitable conduct, Judge Woodlock determined that Brooklands had failed to show by clear and convincing evidence that any of the alleged omissions or misrepresentations demonstrated an intent to deceive the PTO. He determined that any inequitable conduct relating to references that were not disclosed during prosecution of a parent application was cured by being affirmatively disclosed during the prosecution of the ‘938 patent. Also, with respect to allegations that the prosecuting attorney had misrepresented positions taken by Exergen as to the claim scope of other Exergen patents in a different litigation, Judge Woodlock found this to be mere attorney argument that did not raise to an intent to deceive because all of the litigation documents were put before the examiner, who is free to reach his own conclusions as to their import.