Monday, September 20, 2010

First use date in trademark prosecution used as evidence of on-sale date in patent litigation

Takeaway: A patentee's trademark application was used, unsuccessfully, by the accused infringer as evidence of an on-sale bar. (Lampi, LLC v. American Power Products, Inc., 65 F.Supp.2d 757, 761 (N.D.Ill.1999)). According to the district court, the patentee's Micro Lampi fluorescent light product embodied the asserted claims. The patentee filed a product configuration (trade dress) application for this product. During prosecution of the trademark, the patentee submitted sworn statements specifying a date of first use in commerce. This first use date (before the critical date of the patent) contradicted the patentee's evidence about the on-sale date of the product (after the critical date).

The court found that the patentee was not judicially estopped from relying on the on-sale date established at trial, because the contrary position taken in the trademark proceeding was the product of inadvertence and mistake. Therefore, the patent was not invalid for an on-sale bar because the on-sale date established at trial was after the critical date.

The Federal Circuit affirmed this portion of the district court's opinion, finding that the district court did not abuse its discretion. (Lampi Corp. v. American Power Products, Inc., 228 F. 3d 1365, Fed. Cir. 2000.)

Lampi, LLC. v. American Power Products, Inc.
N.D. Illinois, Eastern Division,
August 31, 1999

The accused infringer argued that the statements made in the trademark prosecution prevented the patentee from denying a sale before the critical date. The doctrine of judicial estoppel is an equitable concept that forbids a litigant from obtaining victory in a prior proceeding and then repudiating the grounds for that victory in a different case to win a second victory. Chaveriat v. Williams Pipe Line Co., 11 F.3d 1420, 1427 (7th Cir.1993). However, the doctrine should not be applied when the former position was the result of inadvertence or mistake or when there is only an appearance of inconsistency between the two positions. In Matter of Cassidy, 892 F.2d 637, 642 (7th Cir.), cert. denied, 498 U.S. 812, 111 S.Ct. 48, 112 L.Ed.2d 24 (1990).

The president of the patentee testified that in making statements that the Micro Lampi was "in use in commerce" in 1985 (before the critical date), she misunderstood the meaning of this phrase. She mistakenly believed that submitting preliminary plans for manufacturing the Micro Lampi housing amounted to "use in commerce." The court found this testimony to be credible. The patentee also amended its trademark application to amend the date of first use from July 1985 to September 1986. The court found this to be further evidence that the initial representation was the product of inadvertence and mistake.

In conclusion, the court found that the evidence at the infringement trial showed that the on-sale date was after the critical date, and judicial estoppel did not apply to prevent the patentee's reliance on this date. Therefore, the patent was not invalid.

My two cents: "Use in commerce" in trademark law is not exactly the same as "sale" in patent law — but it's pretty close. The statutory definition of "use in commerce" includes "goods are sold or transported in commerce." Seems to me that if your first use was sale, rather than transport, that qualifies as an on-sale event in patent law. 

That's only half the story. The date of first use in commerce is relevant only if the "Micro Lampi" product which was the subject of the trade dress registration was also embodied in the patent claims. The opinion didn't analyze this, but simply stated that the Micro Lampi was the commercial embodiment of the patents-in-suit, and that "Lampi applied to the PTO to register the external design of the Micro Lampi as a trademark." Perhaps the patentee admitted that the two were the same.

In many cases it could be a lot more work to show that the product for which a trademark application was filed was the claimed product. For example, what if the Micro Lampi had lots of different models, all of which shared the same trade dress / product configuration and thus the same first use in commerce, but which differed in their internals so that only some of the models embodied the claims? In such a case, the first use date is not indicative of an on-sale sale date for a claimed embodiment.

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