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. (See Curel's advertising) 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
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.