Fig. 1 of Invisaflow’s ‘302 Patent



Accused product as shown in Euramax / Amerimax web page

Exhibit 2 to the Complaint comprises a claim chart detailing Invisaflow’s present contentions that the EXTEND-A-Spout™ system infringes claims 21 and 47 of the ‘302 Patent.  That claim chart depicts not only the above image of the Euramax / Amerimax system but also figures from U.S. Patent Publication No. 2012/0125465, which Invisaflow contends was assigned to Amerimax.  The court’s Patent Local Rules will provide Invisaflow with the opportunity to later augment its contentions should it so choose, and will require Euramax to thereafter state with some particularity any grounds it may have for noninfringement as well as any grounds for specified claims of invalidity.

Invisaflow alleges that it gave pre-issuance notice of its claims to Euramax on July 20, 2012, but that Euramax continued to infringe.  On that basis, Invisaflow alleges that Euramax committed willful infringement of the ‘302 Patent.  Even if Invisaflow ultimately succeeds in establishing infringement liability, it remains to be seen whether its asserted basis for willful infringement will withstand judicial scrutiny.  In Emory University v. Glaxo Wellcome Inc., No. 1:96-cv-1868-GET, 1997 WL 854942 (N.D. Ga. Dec. 16, 1997), the Northern District of Georgia denied Emory’s motion to amend its complaint to add an allegation of willfulness, where Emory (like Invisaflow) filed suit on the same day the patent issued, but where the defendant knew of Emory’s patent application a year and a half before the application issued as a patent.  At the time defendant acquired that knowledge, the claims had been preliminarily rejected by the USPTO.  Invisaflow, by contrast, allegedly gave notice when its claims had already been allowed and their issuance was imminent.  Whether that distinction will matter, though, is an open question.  Another court, citing Emory, held that “the focus of a willfulness determination is generally on post-patent, rather than pre-patent conduct,” and that absent circumstances such as “egregious copying” of the invention, pre-patent conduct cannot predicate a finding of willfulness.  Trading Techs. Int’l, Inc. v. eSpeed, Inc., No. 04 C 5312, 2008 WL 63233, at *1 & *2 (N.D. Ill. Jan. 3, 2008).  Of course, that Illinois court’s decision is not binding on the Northern District of Georgia, but a judge could still regard that decision as persuasive authority, particularly since it cited Emory and followed its reasoning.

The case is Invisaflow, LLC v. Euramax International, Inc. and Euramax Holdings, Inc., No. 1:12-cv-2971-SCJ, U.S. District Court for the Northern District of Georgia, Atlanta Division, assigned to U.S. District Judge Steve C. Jones.

UPDATE:  On October 18, 2012, Invisaflow filed a Notice of Dismissal, terminating the case on that date.  See our November 13 post.