Defended Textile Industry Client in Patent Infringement Action
Tannenbaum Helpern successfully defended a textile industry client in a patent infringement action brought by a competitor who owns a patent on a method of forming a scalloped configuration in curtains using a solid bead having a passageway through it that forms the scalloped configuration. During prosecution, the inventor characterized the bead as the essence of the invention and the examiner relied on that characterization in issuing the patent over the prior art. The client’s scalloped curtain product does not use such a bead to form its scalloped configuration.
To seek a prompt resolution at an early stage, without incurring the substantial cost of discovery, we moved to dismiss the case or, alternatively, for summary judgment, urging that because the defendant’s product does not rely on a bead to form the scalloped configuration, and because prosecution history estoppel forecloses an infringement theory based on the doctrine of equivalents, the complaint should be dismissed or summary judgment granted. The court accepted our arguments and dismissed the case.