DCT

2:10-cv-00429

Hollander v. Timex Group USA Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:10-cv-00429, E.D. Pa., 01/29/2010
  • Venue Allegations: Venue is based on Defendant Timex conducting business and selling the products at issue to consumers within the Eastern District of Pennsylvania.
  • Core Dispute: Plaintiff alleges that Defendant engaged in false patent marking in violation of 35 U.S.C. § 292 by marking and advertising numerous watch products with patent numbers that had already expired.
  • Technical Context: The patents-in-suit relate to electroluminescent (EL) technology used to illuminate watch faces, a feature famously marketed by Timex as "Indiglo."
  • Key Procedural History: The complaint does not reference prior litigation or administrative proceedings. The central historical facts are the expiration dates of the three patents-in-suit, which occurred in 2004, 2008, and 2009, respectively.

Case Timeline

Date Event
1984-02-08 U.S. Patent No. 4,527,096 Priority Date
1985-07-02 U.S. Patent No. 4,527,096 Issued
1988-01-11 U.S. Patent No. 4,775,964 Priority Date
1988-10-04 U.S. Patent No. 4,775,964 Issued
1989-08-11 U.S. Patent No. 4,912,688 Priority Date
1990-03-27 U.S. Patent No. 4,912,688 Issued
1992-01-01 Timex introduces the Indiglo® watch (approx. date)
2004-02-04 U.S. Patent No. 4,527,096 Expired
2008-01-11 U.S. Patent No. 4,775,964 Expired
2009-08-11 U.S. Patent No. 4,912,688 Expired
2010-01-29 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 4,527,096 - "DRIVE CIRCUIT FOR CAPACITIVE ELECTROLUMINESCENT PANELS"

The Invention Explained

  • Problem Addressed: The patent describes the challenge of powering electroluminescent (EL) panels, which are characterized as "lossy capacitors," from the very low voltage of a standard single-cell timepiece battery (e.g., 1.5 volts) while achieving sufficient brightness for use as a backlight (’096 Patent, col. 1:12-24).
  • The Patented Solution: The invention is a drive circuit that uses a converter to "step up" the low battery voltage to provide high-frequency current pulses. These pulses progressively charge the EL lamp, which itself functions as the storage capacitor. A switching circuit manages the charging process and reverses the lamp’s polarity at a low frequency to create the necessary alternating current for illumination (’096 Patent, Abstract; col. 2:15-37).
  • Technical Importance: This technology provided an efficient method for powering a bright, uniform backlight in a wristwatch from a small, standard battery, enabling the widespread adoption of features like Timex's Indiglo® night-light (Compl. ¶17, 19).

Key Claims at a Glance

The complaint does not assert specific claims for infringement, as this is a false marking action. For technical context, independent claim 1 of the patent describes:

  • A converter electrically connected to a battery and a capacitive electroluminescent lamp for producing current pulses.
  • A switching means responsive to signals for switching a predetermined number of current pulses to the lamp to produce light.
  • The switching means is also responsive to signals for reversing the polarity of the lamp at the end of the predetermined number of pulses.

U.S. Patent No. 4,775,964 - "ELECTROLUMINESCENT DIAL FOR AN ANALOG WATCH AND PROCESS FOR MAKING IT"

The Invention Explained

  • Problem Addressed: The patent addresses the need for an improved illuminated dial for a conventional analog watch that enables reading the time at night (’964 Patent, col. 1:8-11).
  • The Patented Solution: The invention is an electroluminescent device constructed as a multi-layered laminate that serves as the actual watch dial. The structure includes a transparent substrate with time-indicating indicia, a transparent conductive layer, a layer of EL phosphor particles within a binder, an insulating layer, and a final reflective, conductive layer. The entire assembly has a central aperture to accommodate the stems for the watch hands (’964 Patent, Abstract; col. 2:21-49).
  • Technical Importance: This innovation integrated the backlight directly into the physical structure of an analog watch dial, allowing the entire face to illuminate uniformly from behind the hands and markers (Compl. ¶17, 19).

Key Claims at a Glance

The complaint does not assert specific claims for infringement. For technical context, independent claim 1 of the patent describes:

  • A single sheet of transparent insulating substrate shaped like a watch dial with timekeeping indicia printed on one surface.
  • A first layer of electrically conductive material on the opposite surface.
  • A second layer comprising an EL mixture (phosphor particles in an epoxy resin binder).
  • A third layer comprising a thin insulating moisture resistant barrier.
  • A fourth layer of electrically conductive material.
  • The dial defines a center hole through all layers for a rotatable stem.

U.S. Patent No. 4,912,688 - "AUTOMATIC DISPLAY ILLUMINATION FOR A MULTIMODE WRISTWATCH"

The Invention Explained

The patent describes a logic sequence for a multi-button digital watch to improve usability in the dark. It discloses an "automatic" illumination mode, activated by a long press of the light button, in which subsequent actuations of other function buttons (e.g., to change modes or adjust settings) also cause the display lamp to light up automatically for a short period (’688 Patent, Abstract; col. 2:5-20).

Key Claims at a Glance

None asserted for infringement. Independent claims are 1 and 4.

Accused Features

The complaint alleges that numerous Timex watch models, such as the "1440 Sports" and "Ironman Triathlon" series, were marked with the ’688 Patent number after the patent expired (Compl. ¶47-48).

III. The Accused Instrumentality

Product Identification

The complaint accuses a wide array of Timex watch products, including dozens of specific models listed by name, such as the "1440 Sports," "Adventure Tech Digital Compass," "Ironman Triathlon" (in numerous variations), and "Expedition" lines (Compl. ¶28, 38, 48).

Functionality and Market Context

The relevant functionality alleged in the complaint is not patent infringement, but the act of marking the watches or their associated instructional and promotional materials with the numbers of expired patents (Compl. ¶27, 37, 47). The complaint alleges that Timex is the "largest-selling watchbrand in the United States" and that "millions of articles" have been marked with one or more of the patents-in-suit (Compl. ¶12, 29, 39, 49).

IV. Analysis of Infringement Allegations

The complaint does not allege patent infringement, and therefore a traditional claim chart analysis is not applicable. The cause of action is for false patent marking under 35 U.S.C. § 292 (Compl. ¶1).

The core theory is that Defendant Timex continued to mark its products with the numbers of the ’096, ’964, and ’688 patents after their respective expiration dates in 2004, 2008, and 2009 (Compl. ¶24-27, 37, 47). The complaint alleges that each instance of marking an article with an expired patent constitutes a violation of the statute, performed with the "purpose of deceiving the public into believing that such articles are covered" by a valid patent (Compl. ¶34, 44, 54).

Identified Points of Contention

  • Factual Question: A primary factual dispute may concern whether Timex in fact marked the specific products listed in the complaint with the identified patent numbers after the patents expired. This will likely involve evidence related to manufacturing dates, supply chain records, and product packaging cycles.
  • Intent Question: A critical element of a false marking claim is the "intent of deceiving the public." The case may turn on whether the continued marking, if proven, was a deliberate action intended to deter competitors, as the complaint alleges (Compl. ¶36), or whether it can be characterized by the defense as an inadvertent oversight in manufacturing or inventory management, which could potentially negate the requisite intent.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

The complaint does not raise issues of claim construction, as the core allegation is false marking with expired patents, not infringement. The central factual questions revolve around the dates of marking and the expiration of the patents, rather than the meaning of specific claim terms.

VI. Other Allegations

Indirect Infringement

No allegations of indirect infringement are made.

Willful Infringement

The complaint does not use the term "willful infringement," but the "intent to deceive" element of the false marking claim serves a similar function. The complaint alleges facts to support this intent by characterizing Timex as a "highly sophisticated business entity" with extensive patent experience that "knew or reasonably should have known" that patents have a limited duration and that the patents-in-suit had expired (Compl. ¶14, 23, 32, 42, 52). The continued marking is alleged to be for the purpose of deceiving the public and deterring honest competition (Compl. ¶36, 46, 56).

VII. Analyst’s Conclusion: Key Questions for the Case

This case appears to center on the statutory requirements for false patent marking rather than on technical questions of patent infringement. The key questions for the court will likely be:

  • A core evidentiary question of timing and action: Can the plaintiff produce sufficient evidence to establish that Timex marked a significant number of specific products with the expired patent numbers after the patents' respective expiration dates in 2004, 2008, and 2009?
  • A central legal and factual question of intent: Assuming the post-expiration marking is proven, was this action taken with the "intent of deceiving the public" as required by 35 U.S.C. § 292? The resolution will likely depend on whether the evidence suggests a deliberate strategy to deter competitors or a case of corporate or manufacturing oversight.