A Free Speech Proper to Accuse Others of Patent Infringement

by Dennis Crouch

Rule 1 of the Federal Guidelines of Civil Process units out a daring purpose for civil litigation: “the simply, speedy, and cheap dedication of each motion.”  Patent litigation isn’t speedy; fairly costly; and, many would argue, typically unjust.  Within the case beneath, one occasion tried some fast aid by way of preliminary injunction, however the Federal Circuit has vacated on free-speech grounds.

Mild-Netics owns U.S. Patent Nos. 7,549,779 and eight,128,264 that cowl easy-to-hang Christmas lights. These lights embody a magnetic backing that may connect simply to metallic surfaces (equivalent to a metallic roof).  Mild-Netics sued after discovering competing merchandise on sale from Vacation Vibrant Lights (HBL).  And, as well as, Mild-Netics despatched a discover to varied gentle shops warning them that HBL lights had been infringing. Lite-Netics LLC v. Nu Tsai Capital LLC (DBA Holiday Bright Lights), — F.4th — (Fed. Cir. 2023). 

Mild-Netics sued for infringement, HBL responded with unfair competitors counterclaims. The district courtroom shortly issued a TRO followed-up with a preliminary injunction in opposition to the patentee.  Choose Buescher (D.Neb.) ordered the patentee to (1) cease publicly stating that HBL copied the invention and (2) cease telling HBL clients that they may be accountable for infringement.   A part of the district courtroom’s justification right here was a preliminary consideration of the deserves of the lawsuit: narrowed declare development eradicated literal infringement; and a discovering that the patentee was estopped from asserting DOE.   At base, the problem has to do with the that means of the article “a”: can “a” be plural? Right here, the declare requires a light-weight socked with “a neodymium magnet [having] a pull energy of at the very least 5 kilos” whereas the accused system makes use of a number of magnets.

On attraction, the Federal Circuit has vacated and remanded — holding that the district courtroom went too far in limiting the patentee’s protected speech.

Objectively Baseless: The Federal Circuit has given patentees a fairly-wide berth with regard to public accusations of infringement and buyer cease-and-desist letters. Specifically, the courtroom has held that state courtroom tort claims related to out-of-court patent enforcement actions are preempted by federal legislation until the patent holder “acted in dangerous religion.” Breaking this down, the courtroom requires that the infringement allegation be “objectively baseless” and that the patentee performed its affairs with subjective dangerous religion. Though the courtroom doesn’t conduct a full First-Modification evaluation, the excessive burden is justified by our particular person liberty curiosity (that features company business speech).

In its choice, the Federal Circuit concluded that it’s not-unreasonable for a patentee to claim {that a} claimed “magnet” may very well be infringed by two or extra magnets.

Selections of this courtroom lend robust assist to the proposition that, “in patent parlance,” at the very least in an open-ended “comprising” declare, use of “a” or “an” earlier than a noun naming an object is known to imply to “a number of” until the context sufficiently signifies in any other case. . . .

The patent makes use of “the” or “mentioned” when referring again to an antecedent “a” phrase, however that utilization doesn’t itself suffice to demand the singular that means as a result of if the “a” phrase means “a number of,” so would the next reference-back phrases.

Slip Op.  The courtroom notes that the patentee’s embodiments all simply present a single magnet, however the courtroom discovered nothing within the specification that limits the declare to that embodiment.

There isn’t a “current invention” or different specification language that restricts the invention to a single (or single-piece) magnet, and there aren’t any structural limitations within the claims that implicitly demand such a configuration. Importantly, and extra usually, nothing within the ’779 patent signifies that the evident objective of the magnet on the socket base (to connect the sunshine string to a metallic floor) could be achieved solely, or with specified effectiveness, by way of a single (or single-piece) magnet, quite than a plurality of magnets collectively having the desired pull pressure.

Id.  Likewise, the Federal Circuit additionally concluded that the doctrine of equivalents may very well be pursued. The patentee had argued that “two semicircular magnets within the Magnetic Twine light-fixture bases are equal to the one [claimed] magnet.”  The Federal Circuit discovered “nothing unreasonable” about that allegation.  Additional, Lite-Netics didn’t make any amendments or statements throughout prosecution regarding the variety of magnets in a method that will create estoppel.

On remand, the patentee could search a narrower preliminary injunction — specializing in the patent not mentioned by the Federal Circuit.  Nonetheless, the Federal Circuit’s dialogue offers a giant enhance to the patentee’s case.