By Dabney Carr
In a two-part decision in Heflin v. Coleman Music, Judge Doumar of the Eastern District of Virginia granted summary judgment of non-infringement to Coleman but dismissed Coleman's counterclaims of tortious interference and false advertising that were based on notices of potential infringement Heflin sent to Coleman's customers. Heflin v. Coleman Music and Entertainment, Case No. 2:10CV566, 2011 U.S. Dist. LEXIS 141579 (E.D.Va. Dec. 5, 2011), found here.
Judge Doumar's summary judgment ruling was straightforward. The patent-in-suit claimed a system for dispensing "collector cards." It was undisputed that Coleman's devices did not dispense cards which met the Court's construction of "collector cards," but Heflin argued that the devices still infringed because they were "capable of" dispensing collector cards. Judge Doumar held that the Federal Circuit has expressly disclaimed this logic in High Tech Medical Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551 (Fed. Cir. 1995). There, the Federal Circuit held that "a device does not infringe simply because it is possible to alter it in a way that would satisfy all limitations of a patent claim." Capability of infringement, Judge Doumar found, must be coupled with intent to use the accused devices to dispense collector cards. Moreover, the devices at issue were not capable of dispensing collector cards and even if they were, such an interpretation of the patent would make it invalid over the prior art.
Tortious Interference and False Advertising
Perhaps the more interesting aspect of Judge Doumar's decision is his dismissal of Coleman's claims of tortious interference and false advertising under the Lanham Act. Coleman's counterclaims were based on Heflin's statements in letters, emails and telephone calls to several of Coleman's customers that Coleman's devices potentially infringed its patent. Judge Doumar made clear that Heflin's communications did not rise to the level of intentional misconduct necessary for a claim of tortious interference as long as Heflin had a good faith belief that Coleman's devices infringed.
While the Court ultimately held that the infringement claims were meritless, it could not say that Heflin knew his claims were false when suit was filed or that Heflin's suit constituted an "outrageous act." "[T]he filing of a lawsuit to enforce a patent does not constitute an 'improper method' unless there is bad faith and an improper purpose in bringing the suit."
Likewise, the Court dismissed Coleman's Lanham Act false advertising claims. The Court held that Heflin's statements were not literally false because he only stated that he was investigating a claim of potential infringement, not of actual infringement. Moreover, Coleman failed to produce any evidence that Heflin's statements were intended to mislead or confuse customers.
Copyright © 2011, Troutman Sanders LLP
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