Trainman Lantern Company Wins Summary Judgment of Non-infringement
Some of you may remember my post about this case in March involving US 7,118,245 for a Trainman Lantern. The Plaintiff in this case, A.G. Design & Associates, LLC, sells patented lanterns to Burlington Northern Santa Fe and other railroads for use by trainmen and engineers. They sued Trainman Lantern Company and initially won a preliminary injunction from Judge Burgess, ordering TLC to cease marketing the accused device. This injunction was vacated by the Court of Appeals for the Federal Circuit and TLC has now won summary judgment of non-infringement. The primary argument was prosecution history estoppel for the element “a plurality of ports in said reflector that permit light from said primary source to pass through in a lateral direction so as to augment said light source from at least one secondary source,” a limitation added to the broadest independent claim during prosecution. There was no dispute that TLC did not literally infringe, so the only question before the court on summary judgment was whether the plaintiff had sufficient evidence to rebut the presumption of surrender for application of prosecution history estoppel. Judge Leighton found they could not, and granted Summary Judgment for TLC.Trainman143%20Order%20granting%20part%20denying%20part%20defendants%20summary%20judgment.pdf
Labels: patent attorneys seattle, patent litigation seattle, patent litigation tacoma, trainman lantern
posted by Mark P. Walters @ 5:57 PM
4 Comments:
At July 7, 2008 at 10:43 AM ,
Anonymous said...
Great update, Mark! Thank you for sharing. Defendants have filed a motion for sanctions (attorneys fees). Defendants allege Plaintiff's attorney, Robert Christie, didn't conduct the requisite pre-filing analysis before filing his client's patent infringement claim. It will be interesting to see how Judge Ronald Leighton rules on this one, but the more interesting claim is plaintiff's false marking of its lanterns beginning in 1999. Plaintiff didn't file its application until 2004. There's so little case law on 35 USC sec. 292 cases and that alone makes it a case worth following! Thanks again for keeping us posted.
At July 11, 2008 at 2:56 PM ,
Anonymous said...
Mark, it will be interesting to see if TLC's attorneys press the court for fees under Rule 11 or inequitable conduct. Now that the CAFC and District Court, Tacoma have ruled against AG Design over patent infringement (finding that there was no evidence of infringement in this case), it is increasingly clear that AG's attorney did not conduct any pre-filing analysis of his client's assertion that his patent had been infringed. Keep up the good work...you're one of the top 3 patent blog sites that I (and our office staff) enjoy reading!
At August 15, 2008 at 11:28 AM ,
Anonymous said...
To update your readers, on July 21, 2008 Judge Leighton entered an order (at Docket 156) denying TLC's motion for attorneys fees, finding that " A.G. Design has acted in good faith to protect its valid patent." (p.3. ll 26-27) "In this case, A.G. Design consulted a patent attorney from a distinguished firm and retained an expert, Dr. Jorgensen, who took a kitchen sink approach to his analysis of the two devices--he considered every aspect of them. This thoroughness is in stark contrast to TLC's cited case . . . " (p.2, ll 16-18) Judge Leighton also noted that: "The simple fact is that this is a close case involving a complex area of the law. To ask A.G. Design to undergo this complex decision-making process prior to instituting suit and to reach the same result ultimately reached by this Court is not consistent with the intent of Section 285." (p. 3, ll 15-18)
In a separate order entered by Judge Leighton on July 1, 2008 (at Docket 148), he granted A.G. Design's motion for summary judgment against defendant Marcus Mukai, ruling that he violated the covenant not to compete that is contained in a Non-exclusive Sale Representation Agreement entered into by the parties in April 2003, stating, "Under the undisputed facts, Defendant violated the April 1 Agreement covenant not to compete and Plaintiff's motion for summary judgment on that issue is GRANTED. The issue of damage, including the date the covenant expired, is reserved for determination at a later time." (p. 6, ll 22-24).
Robert Christie
Christie Law Group
Seattle
Counsel for A.G. Design
At August 15, 2008 at 11:30 AM ,
Anonymous said...
To update your readers, on July 21, 2008 Judge Leighton entered an order (at Docket 156) denying TLC's motion for attorneys fees, finding that " A.G. Design has acted in good faith to protect its valid patent." (p.3. ll 26-27) "In this case, A.G. Design consulted a patent attorney from a distinguished firm and retained an expert, Dr. Jorgensen, who took a kitchen sink approach to his analysis of the two devices--he considered every aspect of them. This thoroughness is in stark contrast to TLC's cited case . . . " (p.2, ll 16-18) Judge Leighton also noted that: "The simple fact is that this is a close case involving a complex area of the law. To ask A.G. Design to undergo this complex decision-making process prior to instituting suit and to reach the same result ultimately reached by this Court is not consistent with the intent of Section 285." (p. 3, ll 15-18)
In a separate order entered by Judge Leighton on July 1, 2008 (at Docket 148), he granted A.G. Design's motion for summary judgment against defendant Marcus Mukai, ruling that he violated the covenant not to compete that is contained in a Non-exclusive Sale Representation Agreement entered into by the parties in April 2003, stating, "Under the undisputed facts, Defendant violated the April 1 Agreement covenant not to compete and Plaintiff's motion for summary judgment on that issue is GRANTED. The issue of damage, including the date the covenant expired, is reserved for determination at a later time." (p. 6, ll 22-24).
Robert Christie
Christie Law Group
Seattle
Counsel for A.G. Design
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