Defendant Sanctioned for Improper Motion to Dismiss Based Upon Defense of Res Judicata

Posted on January 26, 2010 by Robert Angle

In Heinz Kettler Gmbh v. Little Tikes Co., Civil Action No. 2:09cv500 (E.D. Va.), Judge Doumar denied Little Tikes’ motion to dismiss Kettler’s claims for patent infringement and awarded sanctions against Little Tikes for filing the motion to dismiss in the first place.  The case against Little Tikes follows an earlier case that Kettler brought against Rand International and Little Tikes, Heinz Kellter GmbH v. Rand International, Case No. 1:08cv679 (E.D. Va.), for infringement of Kettler’s patents by certain tricycles sold by Rand International and Little Tikes.  In that case, Kettler agreed to dismiss its claims against Little Tikes relating to the Ofrat Model No. 129H tricycle at issue based upon Little Tikes’ multiple representations, in discovery responses and correspondence from Little Tikes’ counsel, that Little Tikes and did not manufacture, sell or distribute the Ofrat Model No. 129H tricycles, and that Little Tikes was nothing more than a trademark licensor.  Kettler later learned that these representations were, “at best, misinformation” (according to Judge Doumar), and brought suit against Little Tikes and its parent, MGA Entertainment, Inc., for patent infringement by Little Tikes’ Product No. 615221. 

Little Tikes and MGA thereafter moved to dismiss the Complaint on the grounds that Kettler’s claims were barred by the doctrines of res judicata and implied license arising from Kettler’s dismissal of Little Tikes in the earlier Randcase.   The Court soundly rejected these arguments, finding that Kettler's Complaint was directed to Little Tikes Product No. 615221, not the Ofrat Model No. 129H that was the subject of the Rand case., thus making Defendants' assertion of res judicata "unnecessary, and therefore, improper."  For this reason, the Court awarded Kettler its reasonable fees and costs in "answering the totally unnecessary Motion to Dismiss as a sanction against the Defendants since they were responsible for the misinformation [in the Rand case] and the Motion."  Kettler was represented by Troutman Sanders' John Lynch and Ethan Ostroff.  Here is the full opinion. 
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False Marking Penalties Dramatically Increased by Recent Federal Circuit Decision

Posted on January 26, 2010 by Robert Angle

 On December 30, 2009, the Federal Circuit in The Forest Group, Inc. v. Bon Tool Company, issued a unanimous decision establishing a new standard for assessing the size of the penalty in an action for false patent marking.  This is a potentially significant development in the area of false patent marking. A full discussion of Forest Group, authored by James Moore Bollinger, George B. Snyder and Laura E. Krawczyk, can be found here.

In Pequignot v. Solo Cup Co., No 1:07cv897-LMB/TCB (E.D. Va.), which we discussed in April 2009 (see link), Judge Brinkema initially denied Solo Cup’s motion to dismiss, but later granted summary judgment to Solo Cups upon finding that Solo lacked an intent to deceive the public given its reasonable reliance on advice of counsel in deciding to replace patent-marking molds with non-marking molds in a gradual fashion. See Pequignot v. Solo Cup Co., 646 F. Supp.2d 790, 2009 U.S. Dist. LEXIS 76032 (E.D. Va. August 25, 2009). Significantly, Judge Brinkema also held that an "offense" under the statute is the overall decision to mark improperly and rejected Pequignot’s argument that Solo should be penalized for each and every lid it marked. This decision by Brinkema may not stand given the logic of the Federal Circuit’s decision in Forest Group.

 

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Netbook Nitpicking?

Posted on March 2, 2009 by Rob Brooke

Psion Netbook Pro

An interesting trademark showdown has erupted over NETBOOK, a trademark originally registered in November, 2000 by Psion PLC, and now owned by Psion Teklogix Inc.  On February 17, Dell Inc. filed a cancellation action against the mark in the TTAB, alleging that Psion committed fraud on the PTO when Psion filed its Section 8 & 15 affidavits in November, 2006, alleging that it had used the mark NETBOOK in commerce for the five years preceding November, 2006.  Dell also claims that Psion abandoned the mark by not using it since 1999. Dell's cancellation petition may be seen here.

Not to be outdone, Intel has jumped on the bandwagon and filed a lawsuit in the U.S. District Court for the Northern District of California, also asking for Psion's trademark to be canceled because the mark has become the generic term for small, inexpensive, low power laptop computers. Intel also throws in a fraud claim as well. Intel claims that Psion discontinued the last Netbook in 2003. Based on Intel's allegations, it seems that Psion started the mess when it sent a cease and desist letter to Intel accusing the chip manufacturer of aiding and abetting manufacturers and retailers to use the mark.

Psion's nastygram campaign also included enthusiast websites that were using the mark NETBOOK. Psion also convinced Google to tell its ad customers to stop using the mark in their Google ads.

Stay tuned for more fireworks. Intel should have filed its action in the Rocket Docket so the result would be known sooner. Expect these sorts of trademark wars to break out with more frequency as consumers (and manufacturers) adopt early computing trademarks as generic terms.

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