NY Patent Decisions Blog

Plaintiff's Infringement Contentions Proved Anticipation of Its Own Patent

On August 16, 2019, U.S. District Judge Alison J. Nathan (S.D.N.Y.) denied Plaintiff Seoul Viosys Co.'s ("SVC") motion for reconsideration of the court's September 2018 summary judgment decision, and, on August 21, 2019, the clerk entered judgment in favor of Defendant P3 International Corp. ("P3").

SVC designs, manufactures, and sells various LED products, including the "violeds UV LED" that is used in mosquito traps.  SVC first sued P3 in August 2016, alleging that P3 imported two bug traps that infringed several of SVC's patents:  U.S. Patents Nos. 7,982,207; 7,951,626; 9,203,006; 8,692,282; 8,168,988; 8,664,693; and 9,269,867.  Following claim construction, the parties stipulated to dismissal of all patents-in-suit except the '207 and '626 Patents. 

In her September 2018 ruling, Judge Nathan granted P3's motion for summary judgment as to the '207 Patent, reasoning that Seoul's infringement contentions proved anticipation of its own patent claims under the on-sale bar.  Specifically, SVC alleged in its infringement contentions that P3 had placed at least two orders for one of the accused bug trappers, one of which was several months before the "critical date," i.e., more than one year before the patent application was filed.  Citing Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363 (Fed. Cir. 2000), the court explained that "a patentee can—unintentionally—carry the alleged infringer's burden in those rare cases in which the patentee alleges that a product on sale prior to the critical sales date infringes its patent."  The Court also granted P3's motion for summary judgment as to the '626 Patent, holding that P3 was protected by the innocent infringer safe harbor under 35 U.S.C. § 287(b) because the accused products were in P3's possession before it received notice of any alleged infringement.  SVC moved for reconsideration as to the '207 Patent.

In her August 16, 2019 ruling, Judge Nathan explained that the on-sale bar applied "[b]ecause Plaintiff alleged only that the P7880 [Bug Trap] product infringed the asserted patent claims, without distinguishing between the pre-and post-critical date orders for that product."   The court rejected SVC's argument that the court had improperly relied on the parties' arguments as to damages in determining liability—the on-sale bar applied because SVC's infringement contentions alleged a product that was on sale before the critical date infringed the '207 Patent.

Case:  Seoul Viosys Co., Ltd. v. P3 Int'l Corp., No. 1:16-CV-6276 (S.D.N.Y.).