Sometimes, it makes more sense for businesses to fight patent infringement cases than to pay licensing fees.
Earlier this month, Vitacost.com, an online vitamin supplement retailer, won a patent infringement case brought by Tawnsaura. Tawnsaura was described by defense lawyers as a non-practicing entity, more commonly called a patent troll, and on June 13 it lost its case with Vitacost after Tawnsaura settled with most of the other defendants it had sued.
In a widely anticipated ruling, U.S. District Court Judge S. James Otero said that Tawnsaura's claims of two nutritional supplement patents for a vitamin supplement called L-citrulline were invalid.
The case was heard in Los Angeles federal court and key in the judge’s decision were arguments relating to prior technology and prior knowledge of the claimed methods – as well as evidence presented during the case, according to Miami intellectual property Attorney William R. Trueba Jr.
“It was a complete defense victory,” Trueba, who represented Vitacost, said on Friday.
Otero, a Stanford Law School graduate who often hears patent cases, ruled from the bench on June 13 on a summary judgment motion, following a two-and-a-half-hour session in his courtroom.
What made the case more interesting was that some 85 defendants were sued by Tawnsaura, which was seeking licensing fees, but most had settled rather than continuing to fight the claims. There are about 20 defendants left that benefited from the judge’s ruling.
Earlier, the judge had consolidated the cases, and the defendants’ attorneys worked together to prepare the case. In the end, however, Trueba basically argued the case himself for the defense.
“This ruling sends a clear message that defending against meritless patent infringement claims may be the better approach over settling,” Trueba said.
In their arguments, the defendants said the methods of administering L-citrulline were practiced and used before the “critical date of the patents. The named inventor of the patents, Dr. William Waugh, had attempted to publish an article on his purported discoveries, but the publication rejected the article on the basis that his disclosure did not provide any information that was not already well known,” according to Trueba. Also, Waugh was allegedly told of the sales of Stimol, an L-citrulline based supplement, by a French company in the early 1990s.
“The defendants asked for judgment in their favor stating that the relevant portions of two patents were invalid in view of the pre-existing knowledge and use of the claimed inventions,” Trueba explained in a statement.
He ended up getting many congratulatory e-mails and texts messages from other lawyers – even though the case was heard on Friday the 13th – often seen as an unlucky day.
It is still possible that Tawnsaura could appeal the judge’s ruling, but Trueba says it would be “very difficult for that side to win on appeal.”
The case also shows how efficiency can be achieved when defense attorneys collaborate on a case. “It’s very helpful to join forces when they [the plaintiff] sue that many defendants,” Trueba said. For instance, the defense can work together in the hiring of defense experts.
Still, nationally, problems associated with patent trolls are likely to continue. A bill that was supposed to address problems associated with patent trolls was scrapped by the U.S. Senate last month, InsideCounselreported.