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 is never speedy; fairly costly; and, many would argue, typically unjust.  Within the case under, one social gathering tried some fast aid through preliminary injunction, however the Federal Circuit has vacated on free-speech grounds.

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

Gentle-Netics sued for infringement, HBL responded with unfair competitors counterclaims. The district court docket shortly issued a TRO followed-up with a preliminary injunction in opposition to the patentee.  Decide 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 responsible for infringement.   A part of the district court docket’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 difficulty has to do with the which means of the article “a”: can “a” be plural? Right here, the declare requires a lightweight socked with “a neodymium magnet [having] a pull power of at the very least 5 kilos” whereas the accused system makes use of a number of magnets.

On enchantment, the Federal Circuit has vacated and remanded — holding that the district court docket 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 court docket has held that state court docket tort claims related to out-of-court patent enforcement actions are preempted by federal regulation until the patent holder “acted in unhealthy religion.” Breaking this down, the court docket requires that the infringement allegation be “objectively baseless” and that the patentee carried out its affairs with subjective unhealthy religion. Though the court docket doesn’t conduct a full First-Modification evaluation, the excessive burden is justified by our particular person liberty curiosity (that features company industrial speech).

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

Selections of this court docket 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 “stated” when referring again to an antecedent “a” phrase, however that utilization doesn’t itself suffice to demand the singular which means as a result of if the “a” phrase means “a number of,” so would the following reference-back phrases.

Slip Op.  The court docket notes that the patentee’s embodiments all simply present a single magnet, however the court docket 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 typically, nothing within the ’779 patent signifies that the evident goal of the magnet on the socket base (to connect the sunshine string to a steel floor) may be achieved solely, or with specified effectiveness, by way of a single (or single-piece) magnet, moderately than a plurality of magnets collectively having the required 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 manner that may 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 provides an enormous enhance to the patentee’s case.