By Dabney Carr
If you thought passage of the America Invents Act would end the flood of false patent marking claims, think again. In
December, Judge Turk in the Western District of Virginia ruled that a
false marking plaintiff could proceed under state consumer protection
laws and that such claims were not preempted by the patent laws or the AIA. Sukumar v. Nautilus, Inc., Case No. 7:11CV218, 2011 U.S. Dist. LEXIS 145960 (W.D.Va. Dec. 19, 2011) found here.
Sukumar alleged that Nautilus had falsely marked a number of products in violation of 35 U.S.C. 292. After
enactment of the AIA, Sukumar amended its Complaint to allege that it
had suffered a competitive injury and that Nautilus acted in bad
faith. Sukumar also added state-law claims of false advertising and
unfair competition under California law and unfair competition under
Nautilus moved to dismiss the state law claims as preempted by federal patent law and the AIA. While acknowledging that "the patent grant is within the exclusive purview of federal law," Judge Turk denied the motion holding:
Judge Turk's opinion contains two important limitations on state-law unfair competition claims for false marking.
First, citing Hunter Douglas, Judge Turk held that federal law would preempt Sukumar's claims if Nautilus did not act in bad faith. In
effect, Judge Turk added an element of bad faith to Sukumar's claims by
judicial fiat and allowed this new "unfair competition plus bad faith"
claim to go forward. Second, Judge Turk left open the possibility of preemption if a plaintiff did not allege competitive injury.
Two days after his ruling, Judge Turk heard argument on Sukumar's motion for partial summary judgment on liability on both its false marking claims under Sec. 292 and its unfair competition claims. Judge Turk took the motions under advisement and has not ruled as of today.
Copyright © 2012, Troutman Sanders LLP
Virginia intellectual property lawyers &
attorneys of Troutman Sanders Law Firm, offering services related to
patent litigation, trademarks, copyrights, trade secrets, service marks
and unfair competition, serving Virginia, Maryland, Washington D.C. and
the Eastern United States.
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