Magic Tan Patent Litigation in Full Swing
10-31-03

Complaints are being filed across the US against a network of groups and individuals associated with the manufacture, sale and use of Magic Tan spray booths. The complaints, filed by Laughlin Products, allege that Magic Tan and its associates infringe on three of its patents involving spray-booth tanning.

 
The three patents cited in the complaints all disclose the use of stationary nozzles in spray booths designed for human use. The three patents are US patent # 5,922,333 (1999), # 6,298,862 (2001) and # 6,474,343 (2002). Dr. Tom Laughlin is the inventor on all three patents.
Click the patent number below to view a copy of the patent

#5,922,333
#6,298,862
#6,474,343

These complaints represent the third round of suits filed against Magic Tan groups. The first suit was filed in July 2003 against Magic Tan, Inc, its Texas distributor and Texas establishments offering Magic Tan services to the public. The second round of suits was filed in September 2003 against additional Texas-based salons offering Magic Tan.

The most recent filings were by far the most extensive. It extends the litigation to include several more distributors, establishments across the US offering the alleged infringing services, the contract manufacturer of the unit and the solution provider.

Laughlin Products contends that the three patents have claims disclosing stationary-nozzle type spray booths sold by Magic Tan. The Magic Tan booth has 8 rows of 5 horizontally-aligned nozzles that spray sequentially from the bottom to the top. The nozzles are aligned on a flat panel, so the tanner must turn one or more times each session.

The 5,922,333 patent is the broadest and most well-known of the Laughlin Products patents. It has been the key patent in three series of litigation that have yielded settlements resulting in the alleged infringing units being withdrawn from the market. There is also ongoing patent infringement litigation based on this patent between Laughlin Products and Hollywood Tans Inc., a New Jersey based tanning-salon franchisor. That litigation has been stayed as Laughlin Products attempts to validate its patent through a reexamination process (rather than through the courts) available through the US patent office. Laughlin Products has issued the following statement regarding that action:
There appears to be a lot of misunderstanding and confusion about the reexamination of U.S. Patent No. 5,922,333 (the '333 patent) by the US Patent Office. Much of this is due to recent press releases and statements by Hollywood Tans. The response below sets the record straight.

First, in case there is any doubt, Laughlin Products Inc holds the dominant patent position in sunless spray-booth technology through the '333 patent and 10 other patents (none of which are subject to reexamination). That position has not been shaken or affected by the reexamination. Laughlin Products and its counsel are confident that the patent office will not only affirm the validity of the patent but that the outcome of the reexamination will be to strengthen the patent. As stated by Dr. Laughlin, president of Laughlin Products and sole inventor on all 11 patents, "we are confident that our patent position will be even stronger after the patent office issues its final decree."

Second, it was Dr. Laughlin - not the accused infringers - that took the initiative in requesting the patent office to reexamine the '333 patent. This procedure is normal when a relevant earlier patent unknown to the patent office or the patentee at the time of the original application comes to light. The reexamination process gives the inventor the opportunity to show the patent office that the earlier patent covers a different invention than the newer one.

The decision by Dr. Laughlin to bring the earlier patent to the attention of the examiner - far from undermining the '333 patent - demonstrates their conviction in the strength of the patent. It was an intelligent and bold strategic move designed to take the patent review process out of the court room and back into the patent office. The patent office is viewed by most, including most courts, as the more suitable and qualified forum for determining the validity of a patent and the effect of prior art on the patent. Furthermore, this patent reexamination is governed by the ex parte patent reexamination rules, which provide that third parties can communicate with the patent office only through their initial request for reexamination. After that, all communications are between the patent office and the inventor. Third parties cannot even appeal any intermediate or final decisions.

Third, it was only after Dr. Laughlin requested the reexamination that other accused infringers - ETS and Hollywood Tans - submitted additional requests for reexamination of the patent. The patent office promptly merged all three requests into one proceeding. These proceeding could be concluded by the end of the year or could extend for months or years.

Finally, according to U.S. patent law, the '333 patent is valid and binding throughout the reexamination process. It will remain so unless the patent office rules otherwise. While the reexamination is pending, Laughlin Products remains fully committed to enforcing its '333 patent rights, along with the rights granted by the other 10 patents, against any infringers. This commitment was demonstrated once again by the extensive litigation recently initiated by Laughlin Products against Magic Tan, Inc.

The Magic Tan litigation differs from the Hollywood Tans case in that two additional patents have been brought into play by Laughlin Products. According to Dr. Laughlin, "It is possible that the Magic Tan litigation will quickly move ahead of the Hollywood Tans litigation. In any case, the patent litigation process is a slow one, and the process will likely extend over a significantly long period."