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In a battle over patent rights for toothbrushes with flexible heads, a federal judge has ruled that Colgate’s “Navigator” brush did not violate a SmithKline patent but that Colgate is not entitled to attorney fees since SmithKline’s lawsuit was not frivolous. The rulings by Chief U.S. District Judge James T. Giles came in a pair of opinions in SmithKline Beecham Consumer Healthcare v. Colgate-Palmolive Co. handed down in December 1999 and earlier this month. In the suit, the Pittsburgh-based SKB subsidiary claimed that New York-based Colgate was violating its patent covering certain flex-tip toothbrushes. SKB’s lawyers — Arthur Makadon and Jamie B. Bischoff of Ballard Spahr Andrews & Ingersoll in Philadelphia, along with Charles E. Lipsey, Stephen L. Peterson, Gerson S. Panitch and Parmanand Sharma of Finnegan Henderson Farabow Garrett & Dunner in Washington, D.C. — argued that Colgate’s patent infringement was willful and that the company should be hit with treble damages and ordered to pay SKB’s attorney fees. But Colgate’s lawyers — John G. Harkins, Eleanor Morris Illoway, David J. Creagan and Gay Barlow Parks Rainville of Harkins Cunningham in Philadelphia, along with Samuel D. Rosen, George L. Graff, James W. Kennedy and David S. Benyacar of Paul Hasting Janofsky & Walker in New York — moved for summary judgment, arguing there was no infringement of the patent either literally or under the doctrine of equivalents. After Colgate won on the issue of non-infringement, its lawyers argued that SKB engaged in such extreme misconduct throughout the course of the litigation Colgate should be reimbursed for the costs it incurred defending the case. Giles found that to establish literal infringement of a patent, the patent owner “must demonstrate that the accused device contains every limitation in the asserted claims.” If even one limitation is missing or not met as claimed, there is no literal infringement, Giles said. The relevant limitation of SKB’s patent requires that “the opposite face of the [toothbrush's] head hav[e] at least one groove formed therein.” In other words, Giles said, “the limitation is that the side of the toothbrush head opposite the bristle-bearing face must have a groove.” SKB argued that because the Colgate’s Navigator has two semicircular cut-outs at the edges of its bristle-side groove that allows the groove to be filled with an elastomer, it is “formed” at least in part in the non-bristle side of the brush and, therefore, literally infringes the SKB patent. But Giles said SKB’s argument failed. The patent, he said, unambiguously gave SKB the right over toothbrushes whose “opposite face” has “at least one groove formed therein,” but no such groove is present on the opposite face of Colgate’s brush. “The Colgate toothbrush has two furrows which could qualify as ‘grooves.’ However, these channels are conspicuously on the same side of the head as the bristles,” Giles wrote. SKB insisted that Colgate should still be found to have infringed the patent under the “doctrine of equivalents” because its Navigator brush performs “substantially the same function in substantially the same way to obtain the same result” as SKB’s patented brush. Giles again disagreed, saying “courts must be careful not to apply the doctrine [of equivalents] in such a manner that it serves to broaden a limitation whereby the effect is to eliminate that element in its entirety and give the patentee more protection than it should be afforded.” Colgate argued that the groove placement — whether the groove is located on the bristle face or the non-bristle face — necessarily forces the two brushes to flex in opposite directions and, as such, they cannot be said to perform in the “same way.” Giles agreed, saying “SmithKline is effectively asking the court to eliminate the ‘opposite face groove’ limitation by adopting its position that a ‘groove’ on either side of the toothbrush head compels the conclusion that the two brushes must behave in substantially the same way in order to achieve substantially similar results.” But even if the two toothbrushes are designed to promote substantially the same result and serve the same function — promoting better contact between the bristles and the surface of the different users’ teeth — Giles found that the antithetical flex characteristics of the two brush heads cannot logically be said to function in “substantially the same way.” “If SmithKline’s broad construction of the claim were adopted, every flex-tip toothbrush would infringe under the doctrine of equivalents because such a brush, by definition, would necessarily perform the same function in the same general way with the same general results regardless of whether its groove was located on the brush’s ‘opposite face’ or not,” Giles wrote. ATTORNEY FEES In his more recent opinion, Giles found that Colgate failed to show that the case was an “exceptional” one that entitled it to an award of attorney fees under the Patent Act. Courts, he said, have long held that attorney fees “should not be awarded as a matter of course, nor as a penalty against the loser who followed conventional procedure.” Instead, Giles said, the 3rd U.S. Circuit Court of Appeals has held that fees should be awarded only “upon a finding of unfairness or bad faith in the conduct of the losing party, or some other equitable consideration of similar force, which makes it grossly unjust that the winner of the particular law suit be left to bear the burden of his own counsel fees which prevailing litigants normally bear.” Colgate argued that the case was exceptional because SKB failed to conduct a pre-suit investigation to determine whether the action was “well-grounded” prior to filing; made materially false assertions in support of its request for injunctive relief; behaved improperly during discovery; was not always truthful in its representations to the court; breached a cost sharing agreement between counsel; continued the prosecution of this case even after it discovered that its patent may be invalid because of prior art in Europe; and deceived the United States Patent Office. But SKB insisted that its conduct was “objectively reasonable” throughout the litigation. Giles found that Colgate fell short of proving by clear and convincing evidence that the case was exceptional. Instead, he said, SKB established that, prior to filing this suit, it obtained a sample of the Colgate toothbrush; hired an outside materials tester to compare the products; examined the relevant patents and reviewed the applicable caselaw; and generated materials such as graphs and charts, which compared the accused infringing brush to its product. “Here, SmithKline has established that, at a minimum, it attempted to determine the meaning and scope of the patent claims asserted to be infringed, and compared claims, using its construction, to the device accused of infringing,” Giles wrote. “The fact that this court ultimately disagreed with SmithKline’s interpretation of the scope of its patent does not mean that the suit was brought without reasonable grounds.”

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