End Of The Line For Nursing Tank Top Patent?

Posted on | May 28, 2008 | No Comments

2008-1375 Line Rothman v. Target
D/NJ 05-4829

Line Rothman appeals from the judgment and orders of Judge Garrett Brown, Jr. affirming the jury’s verdict that:

• defendants did not infringe claim 12 of 6,855,029;
• claims 1, 5 and 12 of the ‘029 are invalid under anticipation and obviousness;
• Rothman and her patent attorney committed inequitable conduct in prosecuting the ‘029 patent.

The jury reached its verdict after an 11 day trial.  Rothman then filed JMOL’s on the above-issues–which the court subsequently denied.

Infringement:  The ‘029 patent is directed to a stretchable nursing tank-top with invisible breast support.  Claim 12 requires a "nursing breast cup" that was construed to mean "any structure that covers all or part of a nursing mother’s breast."  The dispute apparently turns on whether the claim requires a separate "cup" for each breast or, like the accused product, includes a "flat internal shelf bra construction that does not fit around each breast" but rather both.  Citing testimony, including from Rothman and the prosecuting patent attorney, that the term "cup" from the patent did not include a shelf-style bra, the court found enough evidence to support the jury’s verdict of non-infringement.

Anticipation:  Three pieces of prior art were offered to invalidate claims 1, 5 and 12 of the ‘029.  Two were patents–and both were listed as References in the ‘029.  Despite Rothman’s arguments that these patents did not disclose all of the limitations (especially in light of the presumptions raised by PTO consideration), the court found enough evidence to entitle the jury to find anticipation.  The third piece of art was a product designed by one of defendant’s employees.  Despite some differences between the products, again the court found enough evidence to support anticipation.

Obviousness:  The court also found enough evidence to support obviousness.  Three aspects of this finding are:

enough evidence existed for the jury to find that the ‘029 was simply a combination of known elements with each continuing to perform their known functions;

although defendants’ expert acknowledged that the combination was not obvious to him and was innovative, the question is whether it would have been obvious to a "hypothetical person of ordinary skill in the art."  Thus the jury was free to find contrary to defendants’ expert’s testimony; and

although plaintiff’s evidence of secondary indicia went largely unrebutted, these are only "considerations" and the jury was free to find contrary to them.

Inequitable Conduct:  According to the court, inequitable conduct was tried and submitted to the jury without objection from Rothman–thus, although it is usually decided by the court, Judge Brown treated it as a jury issue and applied the "normal" standard of review under Rule 50(b), i.e., the sufficiency of the evidence in a light most favorable to the non-movant.

The inequitable conduct mostly concerns failed licensing discussion between Rothman and defendants during prosecution of the ‘029: 

defendants sent Rothman’s patent attorney one of defendant’s garments (the 438 garment) that was admittedly "close" to Rothman’s invention.  The attorney thought it just a negotiating ploy and thought the garment’s sufficiently different.  He returned the garment and did not disclose it to the PTO;

defendants subsequently told the patent attorney that they had previously developed and offered for sale the 460 garment and had a pending patent application on it.  The patent attorney again discounted the statements and did not follow-up or disclose the information to the PTO.

In addition, in response to a PCT examiner’s preliminary rejection, the patent attorney made statements concerning nursing garments and the nursing garment market, such as that nursing garment designers would not know to combine certain features of the prior art.  Apparently he had no knowledge or experience in this field and did not consult with any expert before making this and other similar statements.

The court concluded that there was sufficient evidence of materiality and intent to support inequitable conduct.  The materiality was "clear" and intent inferred from the attorney’s decision not to consult with experts.  The court concluded that it would reach the same conclusion independently of the jury:

The Court specifically notes that the present matter was one of the very few where it is convinced that inequitable conduct was proven by clear and convincing evidence. After having heard and evaluated the witnesses’ testimony, the Court found Ms. Johnstone’s testimony to be credible concerning her prior art [460 garment]. The Court however did not so credit the countervailing testimony of Mr. Jacobson [the patent attorney] and finds strong circumstantial evidence of deceptive intent.

The court summarized the inequitable conduct:

Given Mr. Jacobson’s admitted total lack of experience with nursing garments (in addition to Mr. and Mrs. Rothman’s inexperience in the field), the Court notes that despite Mr. Jacobson’s response to the PCT examiner’s initial rejection of the ‘029 patent, where Mr. Jacobson represented that nursing garments are very specialized garments that are not analogous to women’s garments generally, he never consulted an expert in the field before making this statement. The Court also notes that he failed to disclose to the PTO the 438 garment or the alleged existence of the 460 garment, which Defendant maintained was identical to the ‘029 patent. Indeed Mr. Jacobson still failed to inform the PTO of Defendant’s claimed invention, even after Jacobson learned of Defendant’s patent application.

The court concluded:

These failings on the part of Mr. Jacobson, when considered in light of all of the above and of an applicant’s duty of candor and to disclose known prior art, in addition to the demeanor of the witnesses and the inferences drawn from the testimony, support a finding by clear and convincing evidence that the applicant and counsel engaged in inequitable conduct in the prosecution of the ‘029 patent.

More reading:

JMOL Order Anticipation

JMOL Order Obviousness

JMOL Order Infringement

JMOL Order Inequitable Conduct

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