Free Request - District Court of Arizona - Arizona

1 E01 F.Supp. 164 t_N.D. Ill. August 13, 1992) in suppert ef this prepesitien and twe dated district
2 cases which the Federal Circuit in Scesche did net fellew, and Mixing Eguipmcnt and Crardper, here.
3 . . . .
Key—c1t1ng er shepardtztng Braridt andter the ether case Plainti IT relies en, Spetless
4 I
5 Erttegpriscs, weuld have revealed that the Federal Circuit even·iding ease ef Zenith Electrenics Cerp.
1
E v. Exxec, Inc., 1S2..F.3d 1340 {Fed. Cir. 1999] did net buy Brandt er the ratienale ef a feurth case
y n cited in ether papers by Skyline, Spetless Entegprises Inc. v. Carlisle Plastics, Inc., 56 F. Supp. 2d
13 I ET4 {FZ.1'J.1\I.Y. 1999).] The Federal Circuit in Zenith leng age vitiated SkyIine’s Ceunt I:
l
9 I Accerdingly, we eenelude that, befere a patentce may be held liable under Sectien
1 In I 43[afl fer marketplace activity in suppert ef its patent, and thus he deprived ef the
I right te make statements abeut petential infringement ef its patent, the marketplace
11 · mt
= ‘tivity must have been undertaken in bad faith.
12 132 ]i.3d at 1353. Zenith ferees a dismissal efCeunt I, which is friveleus.
12. The enly law cited by Plaintiff te suppert the cententien that threatening future patent
14 l litigatien when a patent issued en a pending patent certstitutes unfair cernpetitien are the dated, pre-
15 , . . . .
I Zenith eases eflvltxmg Egurment Ce. v. Inneva—Tech, Inc., 223 USPQ 221 [ED. Pa. 19S5} and
16
Gardiner v. Crcndgl, T2? F.Supp. 799, 14 USPQ2d 2043 {E.[}.l*~l.Y. 1989]. These cases were tiled
17
18 after the patents in questien had issued.
19 _ lvlixing Fgui[gn1entCe..lnc. v. Inneva-Tech, Inc., 1935 WL 2'J·’t5·¤l, 2211 U.S.P.Q. 221, 1935
20 1 LEXIS 15529 [El]. Pa. 1935} is cited fer the alleged prepesitien that a party`s tltreats ef litigatien
21 I based en a pending patent applicatien was actienable. Review ef Mixing Eguiprncnt shews that
22 ·¤
23 3 Setless dees net remedy the lack ef justiciahility preblerns that Plaintitfhas; [1) a patent had already issued in
Spetless, unlike this case, [2} the inhinger was specitically identified in the Setlass cemmunicatien, unlike this case, I
24 ' [3} in Spgtless, the letter was sent eut by the lay client, net a trial lawyer with an abselute Iitigatien privilege, {4} I
Spetlesg was net decided under Califemia and Ninth Circuit law, {5} the precise representatien in Spettess by patented
25 . as te indingement was preven false [in eur case Skyline was never accused in the cemrnunicatien ef infringement], [6}
· misrepresentatiens as te a speciiied det`endar1t*s geeds were present in Spetless, unlike eur case, and [7} caimatien was
25 1 preven in Sgtless as te damages having eceurred in the jurisdietien iri suit [net eur ease}. Shepa.rd1z;l.t‘tg er Insta-citing
` Spgtless shews that the ratienale efSpgtless was rejected by the Federal Circuit; Sgtless was never reviewed by the
Federal Circuit, and is therefere suspect. Further, in view el`Zen1th, Spptless is just 100% bad law. If a patent—helder
Z? eeuld be sued fer unfair cempetitien every time he er she accused semebedy ef infringement and was later preven
i wreng, ne patent infringement netices weuld ever be sent eut as required by the patent law {35 Ll.S.C. §2it?j. This
Q3 1 Ceurt sheuld take judicial netice that appreximately 50% er mere efthc patent infringement suits breught end in a
I judgment efg-infringement.
5
` Case 2:03-cv-OOO67-SIVII\/I Document 131 -9 Filed O4/28/2006 Page 1 of 3

1 concrete threats were made by Defendant based on a pending patent application as though
2 “infringentent" of a pending patent application was possible, which it is not. Here Fish, F.C. in the
3
March 22nd letter went out of his way not to be concrete, not to identify specific infringers, and not to
4 I
5 . say that "infringement" of claims of a pending patent application was actionable. Plaintiff fails to
5 bring to, the attention of this Court the negative reaction to Mixing Eguipment, the Federal Circuit
y l had in Scosche, supra:
E The only authorities that Scosche [party alleging unfair competition] invokes in
. support of its argtunent with respect to that Tandy letter are Gardiner v. Gt;r;i_i§, 227
9 - F. Supp. H9, 14 USPQ2d 2*343 ·[E.l}.N."i’. 1939}, and lvliiting Equipment Co. v.
. Iru‘iova—Tech, Inc., 22S USPQ 221 {ED. Fa. 1935}. l'v'ei.iltet· cose supports iS'c·o.tclte 's
1D I legal contention that it is actionalilefor a part]: to nrlvise otlters that it has a patent
Q application pending and tltat it believes that anotlter party 's products will injiinge
1 'l ` the patent pfanrl when the patent i.tsi.te.·t.
12 121 F.3d at 636 {emphasis supplied). 1-lence, Plaintiff has cited in its brief several old cases for
13 - . . . .
exactly the proposition which was rejected tn properly interpreting those cases by the Federal Circuit
14 ‘
1 in Seoschc, and Plaintiff failed to bring to the attention of this Court the Scosche comments on
6
15 Gardiner and lvlixing Eguipmerit.
ry Plaintiff also misuses Gardiner et al. v. Gendel. et al., ?2'l F. Supp. T99, 14 U.S.F’.Q. 2d 21343
13 [E.D.l*~l.Y. 1989]. Review of Gardiner, the second case indicated above eschewed by the Federal
lg Circuit in Seosche, shows that patentee Gardiner had committed multiple acts of fraud on the patent
2*.] 1
l office {witliholding anticipatory prior art] and additionally threatening defendant’s customers with
21 i
s ecilic letters identifying defendant and transrnitted prior to die issuance of the patent, and
22 E F
23 additionally misrepresented that “infringement" of a patent application was actionable. Those facts
A 24 are clearly not present here. Fish, P.C.`s letller does not identify Skyline or maintain infringement
25 E exists prior to issuance.
26 Plaintiff attempts to distinguish one of the controlling cases of Seosche Industries, lnc. v.
27
Visor Gear Inc. [Fed. Cir. 1992} 121 F.3d 675, 43 USPQ 2d 1659 on the ground that ‘"*·lisor did g
28
6
Case 2:03-cv-OOO67-SIVII\/I Document 131 -9 Filed O4/28/2006 Page 2 0i 3

'l threaten tc sue Tandy far patent infringement, hut instead merely respcnded te a specific written
2 inquiry hy Tandy." In the case at har Se-Lite did nct threaten tc sue Skyline cr any cue else far
3 . .... .
patent infringement; it merely infcrmed its custcmers nf the existence nf a pending applieaticn as did
4
5 "·r'iscr. Plaintiff ceniplains that three afthc eases cited hy Defendants relate te issued patents hut
,6 fails tc cite any cases that suppart its pasitinn that inliimiing custcmers cf a pending applicatien is
y samehcw aeticnahle. The reascn fcr this amissicn is siniplp, nc such cases exist.
8 As stated ahnye Plainti I`1"s stile attempt tc distinguish this ease frcm CrA.1·` Building Materials
Q y. Elk Cc;. nfDallas, PU P.3d 425* {Ped. Cir. 1996} was the t1at,unsuppcrted statement that this is
1 Cl
net a patent-related case when it clearly is. Each case cited hy each party is a patent~re|ated case and
'l 'l
12 the facts all reyclye arcund patents. Cygnus Therapeutics Sys. y. ALZA Cam., 92 I—`.3d 1 l53_, 1159,
13 39 USPQ2d 1666, 16211 {Fed. Cir. 1996} was cited hy Sn—Lite fcr its clear statement pf the standard
'I4 fcr a Declaratcry Judgment acticn. Plaintiff has dcne ncthing tc detncnstrate that the rule therein
1 5 stated is invalid er distinguishable. ·
1E
I1]. THE CAFCIS HUNTER DOUGLAS CASE IS FATAL TD CU UNT Ill, PARS. 23.2-
1? 23.4 UF PLAINTIFF‘S ·CDMPI.AINT.
IB LEQHTQI Dcuglas, Inc. y. I-Iarmcnic Design, lne., 153 F.3d 1313, 43 liSPQ2d 1369 [Fed. Cir.
lg 1993} in~.·n1~.»ed a case where a plaintilfinstituted a Declaratnry Judgnent actien against a defendant
2U
whe as in the case at har had unt threatened the plaintiff widi suit. Ne distineticn is eyen attempted
E1
22 hy Plaintiff here}
23 At page 12 ef its Ctppcsitien, Plaintiff intentienally misstates the relevancy here ef the
24 standard required fct ripeness andjusticiahility under Hunter Dcuglas, Inc. ir. I-Iarmnnic Design.
25 @, 153 F.2d 1313 {Fed. Cir. 1993]. The llunter Dcuglas ripeness standard fcllews the federal
215
E? `l Hunter Deuglas was riverruied in part nrt anplitcr paint nnt pertinent here ·· as ter which [aw pfwhich circuit applies.
Eg fj‘1i@(,`I__2E_!_D_·l'.I§[1'lE.3 1nc,_y_. Karayan Trailers, 175 F.3d 1356 [Perl. Cir. May 5, IEFEJQ}. Qygg was likewise
QB cyerniled in part an the sarne issue irrelevant here. Nabelphamie AB v. Implant lrutavatiehs, 141 P.3d 1059 {Fed. Cir.
March 2|I1,199S}. _
T
Case 2:O3—cv-OOO67—SI\/II\/I Document 131-9 Filed O4/28/2006 Page 3 of 3

Case 2:03-cv-00067-SMM

Document 131-9

Filed 04/28/2006

Page 1 of 3

Case 2:03-cv-00067-SMM

Document 131-9

Filed 04/28/2006

Page 2 of 3

Case 2:03-cv-00067-SMM

Document 131-9

Filed 04/28/2006

Page 3 of 3