Truth In Advertising

One of the benefits of obtaining a patent is the right to prevent others from making, using, or selling your invention. Often you collect evidence of infringement by obtaining a sample product and doing some reverse engineering , but is such factual evidence required? What about advertising? Can you reasonably assume that a competitor whose advertising includes your patented invention is an infringer?

Q-Pharma felt it had a strong patent position. Its main patent claim covers "a method of therapeutically treating [damaged skin] which comprises topically administering ... a composition comprising as the principal active ingredient a therapeutically effective amount of Coenzyme Q10..." - in other words, any cream, lotion, or ointment that has enough Q10 to be therapeutic.

Needless to say, when the Curel division of Jergens started to market an "age defying, theraputic" mosturizing lotion which "now contains the natural power of Q10" there was an assumption that the Curel lotion infringed . Q-Pharma obtained consumer samples of the Curel product, examined the label statements regarding Q10, read the ingredients list, and had their patent attorney prepare an infringement analysis. They did not perform a chemical analysis of the Curel product. Based on this guidance Q-Pharma sued Jergens/Curel.

Curel countersued on the "usual" grounds (non-infringement, invalidity, and unenforceability) and threw in anti-trust damages . During discovery Curel had refused to disclose the exact composition of its lotion but, while trying to obtain a summary judgement of non-infringement, revealed that the accused product contained less than 0.00005% Q10 by weight . Upon learning how little Q10 was in the accused product, Q-Pharma withdrew its suit (presumably since it deemed such a small amount of Q10 non-theraputic).

Although Curel was off the (infringment) hook, it wanted to pursue its counter suit for damages and attorneys' fees , claiming that Q-Pharma should have know the suit was baseless and it was a means of harassing Curel. The appeals court examined the case and declared that although Q-Pharma could have found out how little Q10 Curel's product contained by chemical analysis, Q-Pharma, by having its attorneys do a claims interpretation and comparison with Curel's advertising and label statements, was not acting in bad faith when it brought its infringement suit.

This case represents a lose-lose sitution. While Curel might have technically "won" in the sense that the patent infringement suit failed, they had to spend significantly on attorneys' fees and in the larger sense suffered a loss that showed the hollowness of their advertising claims . And Q-Pharma lost too, having to walk away empty handed, perhaps because the emotion of seeing Curel advertse their patented Q10 lotion blinded them to the simple step of reverse engineering the offending product to see if the apparent infringement was real.