Troutman Sanders LLP: Western District of Virginia Court Grants Partial Summary Judgment on False Patent Marking and Consumer Law Claims

Troutman Sanders LLP: Western District of Virginia Court Grants Partial Summary Judgment on False Patent Marking and Consumer Law Claims

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. 

False Marking

  • Nautilus admitted it had mismarked all the machines, and Judge Turk found that it was patently obvious that none of the patents listed on any of the equipment covered the machines. Sukumar claimed that the blatant extent of mismarking combined with Nautilus' knowledge of the mismarking established the necessary intent to deceive.  
  • Judge Turk held, however, that whether Nautilus "evinced a conscious desire that the public be deceived" was a genuine issue of fact for trial. 

California False Advertising Claim

  • Judge Turk granted summary judgment that Nautilus publicly disseminated untrue or misleading statements, but as with the false marking claim, refused summary judgment on whether Nautilus knew or should have known the statements were untrue.

Washington Consumer Protection Act Claim

  • Again, Judge Turk entered summary judgment that Nautilus' false marking was misleading.  Unlike the other claims, no intent to deceive was required, but whether Nautilus' false marking had the "capacity to deceive a substantial portion of the public" was a fact issue.

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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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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