Trainman Lantern Company Wins Summary Judgment of Non-infringement

Some of you may remember my post about this case in March involving US 7,118,245 for a Trainman Lantern. The Plaintiff in this case, A.G. Design & Associates, LLC, sells patented lanterns to Burlington Northern Santa Fe and other railroads for use by trainmen and engineers. They sued Trainman Lantern Company and initially won a preliminary injunction from Judge Burgess, ordering TLC to cease marketing the accused device. This injunction was vacated by the Court of Appeals for the Federal Circuit and TLC has now won summary judgment of non-infringement. The primary argument was prosecution history estoppel for the element “a plurality of ports in said reflector that permit light from said primary source to pass through in a lateral direction so as to augment said light source from at least one secondary source,” a limitation added to the broadest independent claim during prosecution. There was no dispute that TLC did not literally infringe, so the only question before the court on summary judgment was whether the plaintiff had sufficient evidence to rebut the presumption of surrender for application of prosecution history estoppel. Judge Leighton found they could not, and granted Summary Judgment for TLC.


Trainman143%20Order%20granting%20part%20denying%20part%20defendants%20summary%20judgment.pdf

Preliminary Injunction in Tacoma Lantern Case Reversed by the CAFC

Note: This post was modified on 3/27/2008 to reflect the fact that the opinion is nonprecedential.

In this case for infringement of US 7,118,245, the USDC, WDWA in Tacoma granted the plaintiff's motion for preliminary injunction on July 3, 2007. In ordering the preliminary injunction, the district court (Judge Burgess) noted that expert testimony provided that the accused device was "identical in all respects (within + or - .005) to the Patented Device, except that the Accused Device lacked the ‘plurality of ports’ in the reflector that would allow the central light to augment the lateral light." Additionally, the district court briefly discussed a covenant not to compete between the parties, concluding that "because a serious question has been raised on the issue of the Covenant Not To Compete . . . another basis for preserving the status quo pending final resolution of the issue has been shown."

Today in a nonprecedential opinion authored by Judge Prost and joined by Judges Rader and Schall, the CAFC reversed finding that substantial questions existed as to whether the accused devices infringed under a doctrine of equivalents analysis, and that even if the covenant not to compete were enforceable, it had expired.