DuPont sued Heraeus for patent infringement. Heraeus counterclaimed for, among other
things, false advertising, based on a DuPont press release, “DuPont Addresses
Patent Protection at Solarbuzz China Conference; Intellectual Property Theft
Growing in Competitive Climate of Photovoltaics.” The press release stated that a DuPont managing
director, as a featured speaker at a conference, said that “Intellectual
Property (IP) theft is widespread and the issue seems to be growing in the current
climate of this industry…. We do not ignore infringement and will pursue
aggressively other points in the PV supply chain where IP infringement of our
PV metallization pastes exists.” The
press release continued:
Cheng indicated this set of actions
continues in the manner of previous DuPont actions involving IP protection in
China and other countries in the world. The company recently filed two lawsuits
against PV metallization paste supplier Heraeus and one against its customer
SolarWorld, for infringing on DuPont patents for DuPontTM Solamet® PV
metallization pastes.
Cheng asked for increased support
from the industry to guard against infringement and stronger opposition to the
use of “infringing” materials in the production and sale of downstream products
by cell and module makers, PV system developers, installers and owners.
Infringing companies expose themselves, and potentially others they do business
with, to the full range of legal remedies.
Heraeus argued that DuPont’s statement that Heraeus engaged
in IP theft was false and misleading.
Though this statement didn’t appear in precisely those words in the
press release, it was a reasonable inference that could be drawn from the press
release, given the juxtaposition of statements about IP theft and statements about
DuPont's lawsuits against Heraeus. “[I]n
stating it has filed two lawsuits against Heraeus alleging patent infringement
(a statement that is true on its face), DuPont is, ipso facto, alleging Heraeus
has committed intellectual property theft.”
While Heraeus argued that DuPont’s statement was false because DuPont’s
lawsuits failed to allege any copying, misappropriation, willfulness or other
conduct that could be reasonably characterized as “theft,” the court thought
that was a mistake. Because a patent is
IP, the distinction between “patent infringement” and “IP theft” is a
distinction without a difference.
(Really? Could Heraeus be
prosecuted for selling stolen property, then?
For purposes of a Lanham Act false advertising counterclaim, I agree
with the court, but that hardly means there’s no difference between theft and
infringement.)
Because the counterclaim depended on a patentee’s assertion
of its patent rights, in addition to the ordinary Lanham Act elements, Heraeus
was also required to allege bad faith, which it didn’t do. The counterclaim was dismissed with leave to
amend.
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