The U.S. District Court for the Southern District of Ohio ruled on September 24 that U.S. Patent No. 5,830,237 (237), titled “Gel and Cushioning Devices,” held by WillowWood, Mt. Sterling, Ohio, is unenforceable due to inequitable conduct.
The original suit dates back to December 2004 when WillowWood filed a complaint against ALPS South, St. Petersburg, Florida, for infringement of that patent. Litigation has been ongoing since that time. More recently, on November 15, 2013, the U.S. Court of Appeals for the Federal Circuit ruled in favor of ALPS that patent 237 is invalid, and the judge sent the case back to the district court to determine if WillowWood had committed inequitable conduct during reexamination proceedings.
In this latest trial, U.S. District Judge Gregory Frost found that WillowWood misrepresented information to the U.S. Patent and Trademark Office (PTO) during its appeal of the second reexamination of the patent 237, and thus “engaged in inequitable conduct before the PTO”; an inequitable conduct finding renders the entire patent unenforceable. As written in the opinion following the trial, “[t]o prove inequitable conduct, the challenger must show by clear and convincing evidence that the patent applicant (1) misrepresented or omitted information material to patentability, and (2) did so with specific intent to mislead or deceive the PTO.”
The court further found that ALPS is entitled to its attorneys’ fees incurred since September 30, 2011, in this litigation.
WillowWood president Ryan Arbogast issued the following statement: “While understandably disheartened by this ruling, we believe we acted ethically and we stand by our conduct. We are conferring with our legal counsel about what our next actions will be in regard to this ruling. In the meanwhile, we want to reassure our customers that WillowWood remains strong and that we are fully able to meet their product needs.”
A request for a comment was submitted to ALPS, but the company has not yet responded.
