Lillibaby Update.

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.

Crane Security Technologies, Inc. et al. v. Rolling Optics AB (14-cv-12428).

Crane sued Rolling Optics, asserting infringement of five patents relating to micro-optics systems that project synthetically magnified images. They accuse Rolling Optics of infringing directly and inducing infringement through sales of micro-optic foils that are formed into 3-D holographic-style labels.  The patents cover planar arrays of image icons and focusing elements, with an optical spacer or substrate therebetween.  Judge Sorokin ruled in Crane’s behalf on a series of summary judgment motions filed by the parties.  He denied Rolling Optics’ argument that two claim terms were indefinite, finding that the claims, specification and prosecution history provided enough specificity to survive.  Instead, he sua sponte granted summary judgment that the terms are definite, despite Crane not having so moved, noting that the briefing provided adequate notice to Rolling Optics, there was ample discovery on the issue, and there were no factual disputes relevant to the issue.  Judge Sorokin denied summary judgment of invalidity over prior art, in part because assumptions of Rolling Optics’ expert regarding spacing of critical elements taken from figures in the prior art were disregarded because the prior art figures were not drawn to scale.  While finding the patents in suit were not entitled to claim priority to a provisional application that was not specifically referenced in the patent applications, Judge Sorokin denied summary judgment of invalidity due to the on-sale bar due to the existence of fact issues relating to whether potentially prior uses were experimental or were on-sale bars.  Summary judgment of infringement was granted as to certain products that Rolling Optics failed to provide evidence of non-infringement due to the low volume of potentially infringing sales, and as to other products on which Rolling Optics’ claim construction arguments did not prevail.  Rolling Optics’ motion for summary judgment was denied with respect to induced infringement, because the evidence laid forth a factual dispute over whether Rolling Optics knew that labels it sold were being applied to products sold in the United States.  Finally, Judge Sorokin found factual issues in dispute regarding the language of an early notice letter regarding the patents and denied Rolling Optics’ motion for summary judgment with respect to notice and damages.

Sophos Inc. v. RPost Holdings, Inc. et al. (13-cv-12856).

Sophos brought suit in 2013, seeking summary judgment that it did not infringe certain of RPost’s patents and that the patents were invalid. Only one patent remained in issue following last year’s claim construction decision in the case, U.S. 8,504,628.  The ‘628 patent covers third party verification of the content and delivery of electronic messages.  Following a hearing on December 7th, Judge Casper issued a decision on the 8th, finding the asserted claims invalid.  Sophos challenged the standing of RPost to pursue infringement claims because co-defendant RPost Communications Ltd. (RComm), RPost’s parent corporation, is the patent owner and no written license between RComm and RPost was produced and RComm’s corporate designee was unable to say with any certainty that RComm directly sold any software services in the United States.  Judge Caper denied the motion on standing, finding that the corporate designee’s deposition testimony that RPost was an exclusive licensee must be credited at the summary judgment stage, thus creating an issue of material fact.  As to validity, Sophos had asserted that the earliest priority date for the ‘628 patent was July 27, 2000, based on responses of RPost and RComm to an interrogatory.  While not finding RPost and RComm estopped from asserting a priority date back to 1999, based on provisional applications, she determined that Sophos’ argument had “introduced sufficient evidence” to put anticipation at issue, at which point the defendants had the burden of coming forward with evidence and argument to the contrary.  Because the defendants had put nothing in the record to show that the claims were entitled to rely on the provisional applications for priority, the July 2000 date was deemed to be the priority date.  The claims were then found to be anticipated by two patents that predated the July 2000 date but fell after the provisional filings.