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July 1, 2008

Fishing Expedition

France-based Gillet Outillage sued Taiwan competitor Fisher Tool in central California over 6,189,190, claiming automobile pliers. Gillet suffered a narrow claim construction, so dropped the suit. Fisher lashed out for malicious prosecution under California law, and antitrust. The district court granted summary judgment for Gillet. Fisher appealed.

The Ninth Circuit Court of Appeals affirmed.

The district court granted summary judgment to Gillet on plaintiffs' malicious prosecution claim because Gillet relied on the advice of its lawyers, defendant Mathews, Collins, Shepherd & McKay, P.A. See DeRosa v. Transamerica Title Ins. Co., 213 Cal. App. 3d 1390, 1397 (1989) (no malicious prosecution where defendants show "that they have in good faith consulted a lawyer, have stated all the facts to him, have been advised by the lawyer that they have a good cause of action and have honestly acted upon the advice of the lawyer").

Fisher argued that Gillet knew that its patent was invalid and unenforceable owing to a mistranslation in its patent.

Plaintiffs claim that Gillet knew of a "mistranslation" in its patent. See 35 U.S.C. § 375(b) (courts won't enforce claims that are expanded by a mistranslation). But even assuming that there is mistranslation,1 there's no evidence that Gillet or its lawyers knew or should have known about it. The mistranslation certainly isn't clear on its face, since Frenchto- English dictionaries support it. E.g., J.E. Mansion, Harrap's New Standard French and English Dictionary (D.M. Ledesert & R.P.L. Ledesert eds., rev. ed. 1974) (defining "cliquet" as "catch, pawl . . . ratchet"). And Gillet's application for a U.K. patent uses a similar translation, so the U.K. patent application couldn't have put Gillet on notice of the alleged problem with its U.S. patent.

1The purported mistranslation is this: The patent claims a device for fastening together the pliers' handles using what would, in English, be termed a latch. One end of the latch is fixed to one handle by a hinge; at the latch's end is a hook that catches on a post on the other handle, thereby locking the two handles together. In the French patent, the latch is called a "mécanisme à cliquet;" in the U.S. patent, it is termed a "ratchet mechanism."

The claim construction had been closely fought.

The district court granted summary judgment to Gillet's law firm, Mathews, on a different theory: Plaintiffs haven't shown that Mathews lacked probable cause to bring the suit. See Sheldon Appel Co. v. Albert & Oliker, 765 P.2d 498, 501 (Cal. 1989). To prove a lack of probable cause, plaintiffs must show that the lawsuit was "so completely lacking in apparent merit that no reasonable attorney would have thought the claim tenable." Wilson v. Parker, Covert & Chidester, 50 P.3d 733, 741 (Cal. 2002).

The district court was right: Mathews had abundant probable cause to think that plaintiffs' pliers infringed the Gillet patent. Two of the firm's lawyers performed independent infringement analyses; the firm obtained a third infringement analysis from an outside patent lawyer; all three concluded that plaintiffs' pliers infringed Gillet's patent. Plaintiffs haven't come forward with any evidence that these infringement analyses fell below professional standards or were done in bad faith. Of course the district court ultimately construed Gillet's patent more narrowly than the lawyers predicted, but that doesn't prove that the lawyers' analyses were "completely lacking in apparent merit." Id. Quite the contrary, the district judge who ruled against Gillet at the pre-trial Markman hearing later said the company's arguments of patent infringement were "strong."

Gillet had sent warning letters.

Plaintiffs claim that the letters falsely stated that their pliers infringed Gillet's patent, and therefore violated section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and various California tort laws.

But the Federal Circuit has held that where Lanham Act claims and state tort claims are based on a defendant's representation that someone infringed his patent, plaintiff must show that defendant's representation was made in bad faith. Zenith Elecs. Corp. v. Exzec, Inc., 182 F.3d 1340, 1353 (Fed. Cir. 1999) (Lanham Act claims); Hunter Douglas, Inc. v. Harmonic Design, Inc., 153 F.3d 1318, 1335-37 (Fed. Cir. 1998), overruled on other grounds by Midwest Indus. Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1358-59 (Fed. Cir. 1999) (state tort claims). We adopt these holdings. See Zila, Inc. v. Tinnell, 502 F.3d 1014, 1022 (9th Cir. 2007) (because of the "particularly strong national uniformity concerns" in patent law, we are especially "hesit[ant]" to open up conflicts with other circuits in this area).

Plaintiffs haven't presented any evidence that defendants drafted or forwarded the letters in bad faith.

The antitrust charge was pitched as well.

Plaintiffs' antitrust claims are barred by the Noerr- Pennington doctrine because plaintiffs haven't come forward with evidence that defendants' lawsuit was "objectively baseless," Prof'l Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49, 60 (1993), or that Gillet's patent was procured through knowing and willful fraud, Q-Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295, 1304-05 (Fed. Cir. 2004).

Posted by Patent Hawk at July 1, 2008 12:21 AM | Litigation


The first translation of the term at issue, "mécanisme à cliquet" would be ratchet mechanism. But the translator should have been more attentive to the context (context is everything in translation). Cliquet is a broader term in French than ratchet English, and, had the translator looked closely at the figure -- not just the words -- he would have realized it the cliquet didn't have continuous rotary movement and multiple catches as the term ratchet suggests.

yndigo translations

Posted by: Glenn Cain at July 3, 2008 7:55 AM

Thank you for your analysis of this interesting case.

For additional information on the role of language translation in IP litigation and in the practice of law at large, visit my blog Translation for Lawyers, located at http://www.translationforlawyers.com

Best regards,




Posted by: TranslationforLawyers.com at July 3, 2008 2:58 PM