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District Court Uses eBay to Enjoin Patentee From Enforcing Patent

By Two-Seventy-One Patent Blog

Unitronics v. Samy Gharb, Civil Action No. 06-27 (RMC), District Court for the District of Columbia, January 30, 2008

After receiving letters accusing them of infringement, Unitronics filed for a declaratory judgment seeking a ruling of noninfringment, patent invalidity, and a judgment that Gharb had intentionally interfered with Unitronics? contractual relations.

During litigation, Gharb (acting pro se) did not pay his maintenance fees to the PTO, and the patent expired. Additionally, the court found that the allegations of infringement "had no merit."

Undaunted, Gharb continued to assert patent infringement against Unitronics' customers. Unitronics moved for a permanent injunction:

?[o]n October 26, 2007, despite the Court?s ruling of noninfringement and despite the expiration of the Gharb patent, Gharb continued to assert infringement of the Gharb patent by sending copies of Unitronics promotional materials to Unitronics (and perhaps others) marked up to indicate that those products were covered or made in accordance with the disclosures and claims of the Gharb patent"

Citing the four-factor eBay test, the court agreed with Unitronics:

The record shows that Mr. Gharb has, through numerous phone calls, emails, and faxes, repeatedly charged Unitronics and its European and U.S. distributors with infringement of the Gharb Patent and apprehension of suit. . . . This Court has found those charges to have no merit, yet Mr. Gharb continues to advance them, as evidenced by the recent communications sent by Mr. Gharb to Unitronics including marked up copies of Unitronics? promotional materials and asserting that Unitronics PLCs are covered by the Gharb Patent. . . . To be clear: Mr. Gharb has the right to appeal this Court?s decision to the U.S. Court of Appeals for the Federal Circuit and seek a reversal of the decision. Without such a reversal, however, he does not have the right to persist in his accusations of infringement after this Court has ruled against him. The Court finds that his continuing baseless claims constitute irreparable harm to Unitronics.

Read the opinion here (link)

Full post as published by Two-Seventy-One Patent Blog on February 27, 2008 (boomark / email).