Pioneer Spray-Booth Patent Upheld
1-22-04

The USPTO issued an office action last week in the re-examination of Laughlin Products’ patent 5,922,333 (‘333). The PTO confirmed the patentability of 21 of the claims currently under consideration.

The requests were prompted by the discovery of potential prior art that had not been considered in the original patent filing. The potential prior art included two patents issued to Edward McClain in 1995 and 1997.

Dr. Laughlin’s invention of the sunless spray booth and his struggles bringing his invention to market have been the subject of numerous articles and television documentaries. Many of these stories focus on how he, like many other independent inventors, had to put his entire life savings on the line to pursue his dream, and of the sacrifices and support required of his family. The first feature article still can be read on sunless.com. Television features were shown on Extra, The Other Half, and Invent This. The most recent coverage, by Life and Leisure TV, began airing last week.

Dr. Laughlin has been the president of Laughlin Products since its inception in 1997. Laughlin Products has granted non-exclusive licenses to its sunless spray booth technology to Mystic Tan, Inc (Texas), Mist-On Tan, Inc. (Texas) and Jean Paul’s Tanning LTD (Ireland). These licensees have collectively installed over 3,000 spray booths worldwide.

But not all groups interested in utilizing this patented technology have sought licenses. Laughlin Products has filed over 130 suits alleging infringement of several of its patents, including the ‘333, against manufacturers, owners and distributors of alleged infringing booths.

Settlements have been reached in 32 of the cases. Two were settled when possession of the alleged infringing booths was given to Laughlin Products. The other 30, which all involved the Sunless Express spray booth, were part of an overall settlement agreement with the manufacturer of the booth, ETS.

The remaining suits have been consolidated in the Federal Court of Eastern Pennsylvania by the Multi-District Litigation panel. Those suits involve booths manufactured by Hollywood Tans and Magic Tan (Ohio). Laughlin Products has also requested that the MDL panel “tag-along” a recent suit filed against Laughlin Products by Paul Spivak and Intelligent Tanning System, Inc. (Ohio).

The confirmation of the amended ’333 claims for sunless spray-booth tanning significantly strengthens Laughlin Products’ position in this litigation. In October, 2003, Laughlin Products issued a statement about Dr. Laughlin’s decision to subject the ‘333 to re-examination, “ 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.” That strategy appears to have paid off.