By Dabney Carr
Last week, Judge Turk in the Western District of Virginia granted a plaintiff summary judgment on several elements of his false marking claims as well as on elements of his state law claims of false advertising and consumer protection act violations but held that whether the defendant acted with the intent to deceive was an issue for the jury at trial. Sukumar v. Nautilus, Inc., Case No. 7:11CV00218, 2012 U.S. Dist. LEXIS 16506 (W.D.Va. Feb. 10, 2012) (Turk, J.) (found here).
Sukumar designed several custom exercise machines for medical rehabilitation of the elderly and planned to build the machines himself, but feared that he might violate several patents listed on similar machines sold by Nautilus. In the end, he paid Nautilus $150,000 to manufacture customized equipment and claimed that Nautilus' patent marking prevented him from designing and building his own customized machines.
Sukumar's case was stayed pending Congress' consideration of the America Invents Act (AIA). After passage of the AIA, Sukumar amended his Complaint to assert competitive injury and to add state law false advertising and consumer protection act claims.
Sukumar moved for partial summary judgment on its false patent marking claim and on its claims of violations of California's false advertising law and Washington's consumer protection act. Judge Turk denied summary judgment on any claim, but, interestingly, entered summary judgment on individual elements of each of the claims.
California False Advertising Claim
Washington Consumer Protection Act Claim
Judge Turk's decision illustrates the difficulty proving intent to deceive. Even though Nautilus blatantly mismarked its products and admitted that it had falsely marked its product, Sukumar could not show any direct evidence of deceptive intent. Such evidence is rare, forcing false marking plaintiffs to prove their cases at trial through circumstantial and other indirect evidence. What is more, in most cases, defendants will, as Nautilus did, claim that its mismarking was more a case of inadvertence than intentional deceptive conduct. Trial is set for November 5 to November 9, 2012.
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