Frequent patent defendants say they're hit by frivolous lawsuits all the time. But it's very rare for a judge to find a patent lawsuit to be frivolous enough to grant sanctions and attorney's fees.
It happened last week in Peoria, Illinois. A company called Triune Star owns patent 6,122,521, which covers a camera with a GPS locator in it. But it only covers infrared cameras, a limitiation that the patent examiner insisted on adding in order to grant a patent. Patent was granted in 2000, and lawsuit was filed in September 2007 against telephone manufacturers LG Electronics and Pantech, as well as Disney, which partnered with them to sell "family phones" with GPS locators that parents could use to track their kids. The service ran from mid-2006 to end of 2007 before it was shut down.
Adding in a limitation, big or small, in order to get a patent is a very common practice. Start broad, and get narrower when the examiner forces you to. But the problem is, the patent assertion doesn't have to be narrow at all. And even though what the patent office granted, after extensive back-and-forth, may actually be a very narrow monopoly, it's not hard to exaggerate the effect of that patented feature and suggest that the limitation isn't such a big deal.
But this time the judge ruled the plaintiffs were just trying to ignore the word "infrared" entirely, and that didn't fly—especially because the plaintiff's lawyers, Keith Rockey and Kathleen Lyons of Chicago-based Rockey, Depke & Lyons, were the same ones who prosecuted the patent. The judge noted they "were directly involved in the amendment of the claims in question to require a miniature infrared camera in order to overcome the obviousness objection." So filing the lawsuit wasn't just a mistake, it was frivolous, ruled Judge Michael Mihm. "Neither of Triune’s constructions pass the red face test," he wrote.
"The word infrared has got to mean something," said Brian Rupp, a Drinker Biddle & Reath partner who represented LG and Pantech. "They were trying to just ignore that and consider this a patent on a conventional camera."
Rupp said there are only a few patent cases in the last decade where a judge awarded such sanctions, which are called Rule 11 Sanctions. Defendants will get reasonable costs and attorneys' fees. Fortunately for them, defense lawyers were able to convince the judge to only move ahead on this noninfringement issue and avoid expensive discovery.
Broad patent application gets rejected, application is narrowed, then a broad assertion saying "well, that's not really what the examiner meant." If the crime here is trying to "read out" a limitation in a patent… I think I've seen that one before. But they don't usually end like this.
Now if anyone is thinking about making a miniature infrared camera with GPS on it, you might need to get in touch with three people in Illinois you've never heard of.
Disney was represented by Morrison & Foerster.
Case No. 07-cv-01256-MMM, C.D. Illinois. Triune Star Inc. v. The Walt Disney Co. et al.
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