By Dabney Carr
Erick Cherdak brought claims for patent infringement, patent interference under 35 U.S.C. 291 and antitrust violations against several defendants, including Apple and Nike, based on his patent for an "Athletic Shoe with Timing Device." On motions to dismiss, Judge Liam O'Grady of the Eastern District of Virginia dismissed all the claims except the patent infringement claims. Cherdak v. Vock, et al., Case No. 1:11CV1311, 2012 U.S. Dist. LEXIS 57511 (Apr. 23, 2012) (found here).
A summary of Judge O'Grady's rulings follows:
Fraud and Inequitable Conduct
Cherdak alleged fraud and inequitable conduct based on alleged misstatements and omissions made regarding his patent during prosecution of one of the defendant's patents. The Cherdak patent, however, was before the PTO during the prosecution of the defendant's patents. The allegations of misstatements, Judge Grady ruled, amounted to nothing more than permissible attorney argument advocating the attorney's interpretation of its claims and the teachings of the prior art. While not a groundbreaking ruling, Judge O'Grady's decision will be helpful precedent to parties fighting inequitable conduct claims.
25 U.S.C. 291 permits relief to the owner of an interfering patent against another by civil action. A predicate to such a claim, however, is the existence of an interference-in-fact, which requires a showing that each of the inventions at issue is invalidating prior art to the other. Again, Judge O'Grady ruled, the Cherdak patent was before the PTO during prosecution, and the examiner considered the precise claims that Cherdak challenged but ultimately allowed the patent to issue. Judge O'Grady agreed with the PTO, and dismissed the interference claims. Judge O'Grady is probably correct that the PTO got it right, but its questionable whether it was appropriate to make that determination on a motion to dismiss.
Cherdak also sought a declaratory judgment that the defendants' patents were invalid, but there was no evidence that any of the defendants were interested in enforcing their patents against Cherdak. Without any affirmative enforcement-related activity, there was no declaratory judgment jurisdiction. Again, this is not a groundbreaking ruling but may prove helpful to parties contesting declaratory judgment jurisdiction.
Cherdak alleged a Walker Process claim and an illegal tying claim against Nike and Apple. Under Walker Process Equip., Inc. v. Food Mach. & Chem. Corp., 382 U.S. 172 (1965) [enhanced version available to lexis.com subscribers], the enforcement of the patent procured by fraud, may violate § 2 of the Sherman Act. Not only had Cherdak failed to adequately plead fraud, but he alleged injury to his patent rights. The antitrust laws, Judge O'Grady held, "are directed to protecting market competition, not at protecting the inherent monopoly power and benefits provided under intellectual property laws."
Finally, Cherdak's illegal tying claim failed because a person buying Nike's shoes need not buy Apple's sports pack. While Apple contended that its products worked best with Nike's shoes, customers were not precluded from purchasing other shoes to use with Apple's products.
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.
Troutman Sanders LLP - ATTORNEY ADVERTISING. CASE RESULTS DEPEND UPON A
VARIETY OF FACTORS UNIQUE TO EACH CASE. CASE RESULTS DO NOT GUARANTEE OR
Lexis.com subscribers can explore/search Patent Law resources on Lexis.com or access any of these Mathew Bender Patent Law publications:
Non-subscribers can purchase Patent Law
treatises/resources and Mathew Bender publications from the LexisNexis Bookstore
For more information about LexisNexis products and
solutions connect with us through our corporate