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District Court Confirms Demonstration of an Infringing Device at a Trade Show can Constitute Infringing “Use”

Date: May 2, 2017 || Client Successes

McAndrews, Held & Malloy announced today the Honorable Elaine E. Bucklo of the U.S. District Court for the Northern District of Illinois, Eastern Division, ruled in favor of its client Marposs Società per Azioni and Marposs Corporation (“Marposs”), a developer of technology used to measure workpieces during grinding operations, among other technology and products. Judge Bucklo denied defendant Jenoptik Automotive North America’s, LLC, et al., (“Jenoptik”) motion to dismiss Marposs’ claims for patent infringement.

Marposs owns four patents (U.S. Patent nos. 6,298,571; 6,088,924; 7,607,239; and 8,286,361) covering technology for checking diameters of rotating parts, which were incorporated in a device manufactured and distributed by Marposs called the Fenar L In-Process Gauging System for Crankshafts (the “Fenar L System”). Marposs claims the defendants developed a device – the DF500 – that is covered by the four patents-in-suit, and displayed and demonstrated the DF500 device at the International Manufacturing Trade Shows in 2010, 2014, and 2016.

Marposs filed a complaint asserting infringement of its four patents, alleging that the defendants engaged in direct infringement, induced infringement, and contributory infringement by, among other things, offering and demonstrating the DF500 device at the Trade Shows.

On April 7, 2017, Judge Bucklo ruled that Marposs sufficiently alleged that the defendant committed direct infringement of the patents by demonstrating the DF500 at the Trade Shows. The Court also held that lack of a specific price term does not necessarily negate the existence of a potentially infringing “offer for sale,” and therefore denied Jenoptik’s motion to dismiss Marposs’ complaint. Judge Bucklo noted she was “unable to accept the defendants’ contention that their alleged infringing conduct is unlikely to recur,” and she “decline[d] to hold that demonstration of an infringing device at a trade show can never constitute ‘use’ for purposes of § 271.”

McAndrews attorney James P. Murphy served as local counsel to Marposs. Charles W. Saber and Megan R. Wood, of Blank Rome, Washington, D.C., serve as lead counsel for Marposs.