"patented" claim plausibly material to consumers

Eyenavision, Inc. v. EnChroma, Inc., No. 2:21-cv-00246-RJC, 2022 WL 783428 (W.D. Pa. Mar. 15, 2022)

Eyenavision sued EnChroma, the assignee of a patent (the ‘286 Patent) related to optical filters for lenses intended to assist individuals who suffer from color vision deficiency (CVD), aka colorblindness, to differentiate between colors. The parties compete in this market. EnChroma allegedly advertises that its lenses are “patented,” but Eyenavision alleged that EnChroma’s lenses do not practice the relevant patent and therefore brought false marking, Lanham Act false advertising, and unfair competition claims. It also sought a declaratory judgment of noninfringement of the ‘286 patent (the court denied the motion to dismiss the patent infringement counterclaim).

False marking under 35 U.S.C. § 292: This requires competitive injury as the result of false marking. Eyenavision pled sufficient facts to an inference of intent to deceive the public in purportedly falsely marking the EnChroma lenses as covered by the ‘286 Patent, given its allegations of an extensive patent prosecution record and EnChroma’s intimate familiarity with the specific scope and content of the patent’s claims. EnChroma’s own allegations in its counterclaim about the early-2000s breakthrough that eventually led to the technology at issue and its clinical research into the technology at issue for more than a decade prior to the launch of its CVD lens technology supported these allegations. Eyenavision also alleged that EnChroma sold its lenses on its website under a banner that states: “#1 patented lens technology for color blindness.” This was enough to allege intent to deceive.

Further, Eyenavision plausibly alleged competitive injury by alleging that it was commercializing its own CVD lens technology, which was the subject of at least one issued US patent and at least two pending US patent applications, and that they were direct competitors in the CVD lens market, which was a “very specific and relatively new market.”

The same allegations also sufficed for Lanham Act false advertising. The parties’ products were clearly in direct competition, and it was plausible that the “patented” claim was likely to influence consumers’ buying decisions when choosing which CVD lenses to purchase. So too with unfair competition through false advertising under Pennsylvania common law.