Tuesday, July 04, 2006

Harmonizing patent and false advertising law

Note: the feed problems seem to have been resolved. I hope they stay that way.

Noble Fiber Technologies, LLC v. Argentum Medical, LLC, 2006 WL 1793219 (M.D. Pa.)

Based on defendant’s claims, directed both at plaintiff and at plaintiff’s customers, that its patents covered certain of plaintiff’s medical products, plaintiff sued for a declaratory judgment of noninfringement and for false advertising. Finding that defendant’s statements weren’t enough to create a reasonable apprehension of suit, the court dismissed the declaratory judgment counts.

As for plaintiff’s Lanham Act, tortious interference with contractual relations, and common law commercial disparagement, the court applied the special rule for statements about patent status and scope: such statements must be made in bad faith to be actionable; otherwise, state claims are preempted by the Patent Act, and federal Lanham Act claims are simply construed to have a bad faith requirement to harmonize with the Patent Act. Plaintiff hadn’t pled bad faith with enough particularity to satisfy the heightened pleading requirement, and its claims were thus dismissed.

So, to protect patentees’ rights to make reasonable, if mistaken, claims about their patents – and potentially do great harm to competitors, if their claims are wrong – we rejigger the elements of a Lanham Act claim. Are there other federal statutes to which the same reasoning should apply? Cases about food and drug claims could follow similar arguments; in the FDA arena, though, the same desire to harmonize federal statutes has led courts to make a different accommodation, not using bad faith but rather a careful divvying up of FDA and judicial responsibilities.

I do think it’s sort of odd for federal courts to rewrite state causes of action rather than simply finding them preempted, but that may be because of my copyright background. Patent preemption here isn’t the same as copyright preemption, as to which “bad faith” is not a sufficient extra element to preserve a state cause of action from preemption. If given the choice to avoid complete preemption, it seems reasonable that the states themselves would add a bad faith element to their false advertising laws to effectuate as much state policy as possible.

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