A judge for the U.S. District Court of Oregon has denied Michael Boyle’s motion to dismiss the alleged patent infringement case filed against him by GlasWeld and has ruled that GlasWeld can amend its complaint to add Christopher Boyle, Michael’s son, to the lawsuit.
“The plaintiff now seeks to add Christopher Boyle as a defendant and allege claims of patent infringement against him based on his role as president and owner of Surface Dynamix and/or Smart Glass Repair,” Judge Ann Aiken writes in court documents. “The plaintiff also seeks to add a claim of unfair competition against both Michael and Christopher Boyle. The plaintiff further requests a protective order from the court regarding depositions conducted by Michael Boyle. In turn, Michael Boyle seeks to dismiss the claims against him.”
In her order denying Michael’s Boyle motion to dismiss, Judge Aiken writes, “Here, the plaintiff’s well-pleaded allegations state claims for patent infringement against Michael Boyle; specifically, the plaintiff alleges that Michael Boyle makes, uses and/or sells products which embody claims of the `180 and `372 patents.
“Whether such allegations will be proven by the evidence is not a question that can be answered on a motion to dismiss,” she continues. “Rather, after the parties engage in discovery and file motions for summary judgment based on the evidence discovered, the court may examine such evidence at that time. Therefore, Michael Boyle’s motion to dismiss is denied.”
The patents referenced in the complaint are U.S. patent No. 5,670,180 (`180 patent), “Laminated Glass and Windshield Repair Device,” and U.S. patent No. 6,898,372 (`372), “Lamp System for Curing Resin in Glass,” issued to GlasWeld in September 1997 and May 2005, respectively. While Boyle was named as an inventor on the `372 patent, GlasWeld officials allege that he assigned all of his rights of ownership to the company and “has no right to practice the technology claimed in the `372 patent.”
In ruling that GlasWeld can amend its original complaint filed back in 2012 to add Christopher Boyle, the judge writes, “… The plaintiff alleges that after [Michael and Christopher Boyle's termination from GlasWeld in 2009] the Boyles formed Surface Dynamix, and on or about December 1, 2010, began unlawfully marketing, advertising and selling products that infringe one or more of the claims recited in the plaintiff’s patents.
“… The plaintiff contends that the Boyles, through Surface Dynamix and/or Smart Glass Repair, continue to unlawfully use plaintiff’s customer lists and other proprietary information to sell or attempt to sell, infringing products to plaintiff’s customers, thereby introducing unauthorized ‘knockoff’ products and decreasing the plaintiff’s market share,” she adds.
“The plaintiff has not sought previous amendments, and the facts in the proposed amended complaint state viable claims for infringement of the `180 and `372 patent against Christopher Boyle and unfair competition against both Michael and Christopher Boyle based on their alleged misappropriation of plaintiff’s customer list. Therefore, the motion to amend is allowed,” Judge Aiken writes.
The judge also ruled that “Any deposition of the plaintiff’s employees shall take place in a place chosen by or agreed to by the plaintiff, and the depositions shall comply with applicable Federal Rules of Civil Procedure.”
Judge Aiken also notes in court documents that the parties involved in the lawsuit have “stated their openness to mediation.”
“I therefore strongly urge the parties to confer and contact the court if they wish assistance in scheduling such mediation, preferably before the parties engage in time-consuming and expensive discovery efforts,” the judge writes.