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Keywords

litigationinjunctiontrialmotionsummary judgmentburden of proofpatenttrademarkbad faithmotion for summary judgmentmaterialityequitable relief
plaintiffdefendantinjunctionmotionsummary judgmentburden of proofpatentdocketmotion for summary judgment

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Johnson & Johnson Associates, Inc. v. R.E. Service Co., Inc., Not Reported in F.Supp.2d, 2005 WL 289978

Facts

This case involves a motion for summary judgment filed by Johnson & Johnston Associates, Inc. (JJA) against RES regarding two patents, the '596 and '315 patents. RES asserted affirmative defenses claiming that JJA's patents were unenforceable due to inequitable conduct and unclean hands, alleging that JJA misrepresented information to the Patent and Trademark Office (PTO). The court examined the history of litigation between the parties, including previous findings of contempt against RES for violating injunctions related to the patents in question.

Issue

Whether JJA's patents are unenforceable due to inequitable conduct and unclean hands as claimed by RES.

Whether JJA's patents are unenforceable due to inequitable conduct and unclean hands as claimed by RES.

Rule

A party asserting inequitable conduct must prove by clear and convincing evidence that the applicant failed to disclose material information or submitted false information with intent to deceive the PTO. Materiality is established if a reasonable examiner would have considered the information important in deciding whether to allow the patent application. The unclean hands doctrine bars a party from seeking equitable relief if their conduct is tainted by bad faith.

A breach of this duty occurs when an individual associated with filing and prosecuting a patent application fails to disclose material information, or submits false material information, with an intent to deceive.

Analysis

The court found that RES failed to provide clear and convincing evidence of inequitable conduct. The statements made by JJA to the PTO were deemed accurate, and there was no evidence of intent to deceive. Additionally, the court noted that RES had previously disclosed JJA's trial position to the PTO, undermining their claims. The unclean hands defense was also rejected for the same reasons, as there was no evidence of bad faith on JJA's part.

Here, no reasonable trier of fact could find clear and convincing evidence of inequitable conduct. The two statements that RES complains of are accurate. Judge Aguilar clearly found that gapped adhesive products violated the injunction, and also found that gapped adhesive products infringe the '050 patent because a continuous seal was not necessary in the '050 patent.

Conclusion

The court granted JJA's motion for summary judgment, ruling that RES's defenses of inequitable conduct and unclean hands were without merit.

Accordingly, IT IS HEREBY ORDERED THAT Plaintiff Johnson & Johnston Associates, Inc.'s Motion for Summary Judgment on Defendant's Inequitable Conduct and Unclean Hands Affirmative Defenses [Docket No. 155] is GRANTED.

Who won?

Johnson & Johnston Associates, Inc. prevailed in this case as the court found that RES did not meet the burden of proof required to establish inequitable conduct or unclean hands. The court emphasized that the evidence presented by RES was insufficient to demonstrate that JJA had acted with intent to deceive the PTO or that any misrepresentation occurred.

Johnson & Johnston Associates, Inc. prevailed in this case as the court found that RES did not meet the burden of proof required to establish inequitable conduct or unclean hands.

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