Here’s Doc Laughlin’s take on a recent ruling by the judge of his patent infringement cases against Hollywood Tans and Magic Tan. One of the key effects of this ruling is that the ‘333 patent will continue to be litigated in these cases.
Background: Laughlin Products filed numerous patent infringement suits across the United States in 2002 and 2003 against alleged infringers of one or more of its sunless spray booth patents. These suits involve the manufacture, distribution or use of either Magic Tan or Hollywood Tans spray booths. In April, 2004, a US federal multi-district litigation panel ruled that all these cases would be prosecuted simultaneously in the US District Court for the Eastern District of Pennsylvania. Judge Michael Baylson was selected to preside over these cases.
This Motion: Laughlin Products asked the judge to allow two more of its 17 patents involving sunless spray booths to be included with the two it has already sited against Hollywood Tans. Hollywood Tans did not oppose the addition of these two patents to the case, but argued that the ‘333 patent should be thrown out of the case.
The Decision: The court ruled that Laughlin Products would be allowed to add the two additional patent to the case against Hollywood Tans, and that the ‘333 patent would continue to be prosecuted in the case.
The Actual Ruling: The ruling can be read below or downloaded as an Adobe file . |
Plaintiffs Laughlin Products, Inc. and Thomas J. Laughlin, (collectively “LPI”), have moved for leave to file a Fourth Amended Complaint, contending that doing so will ensure a complete resolution of all disputes between LPI and Hollywood Tanning Systems Inc., (“HTS”) and other defendants, referred to collectively as “the HTS Defendants”. In this motion, LPI seeks to add two additional patents as the subject matter of this case, U.S. Patent No. 6,474,373 (“the ‘343 Patent”) and U.S. Patent No. 6,468,508 (“the ‘508 Patent”).
Although counsel for the HTS Defendants do not oppose the addition of the 343 patent and the 508 patent to this lawsuit, they do assert that a motion to amend should be denied because LPI insists on including in this Complaint claims it has been making since the initiation of this lawsuit on U.S. Patent No. 5,922,333 (“the ‘333 patent”), even though Plaintiffs have submitted the ‘333 patent to the U.S. Patent and Trademark Office (“PTO”) for reexamination, and have amended the claims of the originally granted ‘333 patent in their proceedings before the PTO. Nonetheless, the Plaintiffs assert that they intend to continue to allege infringement of the ‘333 patent, notwithstanding the reexamination proceedings before the PTO.
From the very beginning of this litigation, Defendants have asserted that because the ‘333 patent was submitted to the PTO for reexamination, this fact should have adverse legal consequences at the pleading stage of this case. The Court has rejected these requests by the Defendants before, and continues to reject them. The Court emphasizes that it is only ruling on the contents of the Complaint, and concludes that the Plaintiffs should have the right to assert and pursue whatever claims it can reasonably contend, consistent with the requirements of Rule 11, it has the right to enforce. In doing so, the Court makes no ruling on the merits, and Defendants retain all of their rights to seek a judgment in their favor on this issue either at summary judgment or at trial. The Court believes that it would be improper to deny Plaintiffs the right to pursue the claims, and to preclude the ‘333 patent from being the subject matter of this litigation.
The Defendants have relied on Software International Inc. v. Healthcare Technologies, Inc., 1995 WL 267184 (S.D.N.Y. 1995); however, the Court finds that case is inapposite because first, it was decided on summary judgment, and second, the plaintiff itself withdrew the claim of the infringement of Claim 1 of the patent in suit in that case, and the Court found that the other claims were dependent on Claim 1, and had no independent basis for validity after Claim 1 had been withdrawn. In this case, Plaintiffs have not withdrawn any claims.
Because the Defendants do not contest the appropriateness of the amendment for its specific purpose, adding two additional patents (which would provide symmetry as to the patents at issue in both these cases in MDL 1498 and also in the newly consolidated Magic Tans Multidistrict Litigation, MDL Docket No. 1594), the Courts believes that the Fourth Amended Complaint should be allowed. It is hereby ORDERED that Plaintiffs’ Motion for Leave to File a Fourth Amended Compliant is GRANTED. |
