Troxler Electronic Labs v. Pine Instrument (E.D.N.C. October 6, 2008).
In 2001, Troxler filed a patent infringement action against Pine – alleging infringement of its patent covering equipment for testing the quality of asphalt. In 2002, Pine counterclaimed with its own infringement allegations against Troxler. The two companies were direct competitors in this market and together held most of the market share.
The dates are important here:
- 1996: In a letter, Pine accused Troxler of infringement (pre-issuance).
1997: Pine's patent Issues; In a letter, Troxler opined that Pine's patent was invalid.
- 2001: Troxler sues Pine on another patent
- 2002: Pine counterclaims alleging infringement
In the 1996-2002 interim, it was clear that "Pine had first-hand knowledge that Troxler continued to sell its gyratory compactors. . . Despite this knowledge of Troxler's allegedly infringing activities, Pine did not takeany action against Troxler to defend its patent until February 19, 2002, when it asserted its counterclaim. Nearly five years of allegedly infringing activity occurred before Pine took any legal action to defend its patent." According to deposition testimony, Pine's president explained the delay because he "didn't feel motivated to pursue [the claim]."
Laches & Equitable Estoppel: Looking at these facts, Magistrate Judge Webb found that Pine may well be barred from pursuing its infringement allegations under the doctrines of equitable estoppels and laches.
Under the defense of equitable estoppel, the accused must have relied on the patentee's assurances or non-enforcement activity in choosing to continue infringing. On summary judgment, the Magistrate recommended that the case go to trial to determine reliance:
[T]here is a material issue of fact as to whether Troxler was in fact lulled by Pine into a sense of security. Because of this material issue of fact, neither party is entitled to summary judgment on this prong Troxler's equitable estoppel defense.
Enforcement Laches does not require detrimental reliance. However, the patentee must be shown to have "unreasonably and inexcusably" delayed bringing suit and that the alleged infringer subsequently suffered material prejudice. A six year delay creates a presumption of laches. Here, the delay was only five years – calculated from the 1997 patent issuance to the 2002 counterclaims. Although no presumption exists in this case, the magistrate judge noted that Pine's excuse - lack of motivation – is insufficient.
[A] laches defense exists precisely to prevent patentees from delaying in filing suit simply because they do not feel "motivated to do so." Accordingly, the undersigned hereby finds that Pine's unjustified five year delay was unreasonable and that Troxler is entitled to summary judgment on the unreasonable delay prong of its laches defense
The harm of the delay can be shown in a variety of ways. Here, the magistrate judge focused on evidentiary harms and economic harms.
- Evidence Lost: Troxler founder and CEO died during the interim. He had directed the development of the accused product.
- Evidence Lost: Time delay has probably faded the memory of the Pine inventors.
- Evidence Lost: Many documents have been destroyed. (Troxler is a family business – "When the drawer gets full, you toss something.")
- Economic: In the interim, Troxler has invested millions of dollars in manufacturing facilities and producing the alleged product.
Based on the potential validity of some of these arguments, the magistrate judge recommended they be explored at trial.
Unclean Hands: Because laches and equitable estoppel are both judged in equity, Pine argued that Troxler's "unclean hands" should bar the company from relying upon those defenses. Particularly, Pine noted discovery shenanigans and filing suit without a good faith basis. The magistrate judge agreed that allegations of "egregious behavior" must be included in any equitable decision.
The district court will now decide whether to convert the magistrate judge's recommendations into an order.