Volume 15, Issue 2 - March/April 2013
Bend, Ore.-based GlasWeld Systems Inc. has filed a federal suit against former company president Mike Boyle (doing business as Surface Dynamix) alleging patent infringement.
In the complaint, filed on December 17, the company alleges Boyle has engaged in the “unauthorized making, using, selling or offering to sell GlasWeld’s patented technology after his departure from GlasWeld.”
The patents referenced in the complaint are U.S. Patent No. 5,670,180 (“the 18’0 Patent”), “Laminated Glass and Windshield Repair Device,” and U.S. Patent No. 6,898,372 (“the ‘372 Patent”), “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 he assigned all of his rights of ownership to the company and “has no right to practice the technology claimed in the ‘372 patent.”
The suit goes on to allege, “after his departure from GlasWeld, on or about August 5, 2009 Mr. Boyle began unlawfully marketing, advertising and selling products that infringe GlasWeld’s patents, including without limitation, the Halo Pro™ curing light and the DynaVac™ resin injector and/or substantially similar products under the name Surface Dynamix.”
GlasWeld alleges specifically that Surface Dynamix’s DynaVac products embody the claims of the ‘180 Patent and that Boyle “had actual knowledge of the ‘180 Patent and knew or should have known that the ... products embodied the invention claimed in the ‘180 Patent.”
Further, GlasWeld alleges that Surface Dynamix’s Halo Pro products embody the claims of the ‘372 Patent, of which Boyle also is alleged to have knowledge.
In addition, GlasWeld charges Boyle with contributory infringement of the ‘372 Patent, alleging that while the Halo Pro products embody the claims of the patent, they are said to be designed for use without a resin injector.
GlasWeld is requesting that the court place an injunction against Boyle for the alleged offenses and is seeking “all appropriate additional monetary relief, including an award of treble damages …”
While Boyle denies infringing on either patent, he also claims “that the Patents ‘180 and ‘372 are not valid, in that they are not original and lack novelty.” In addition, Boyle alleges that both patents were “obtained fraudulently,” though the response doesn’t include further detail. It also alleges that GlasWeld “cannot claim infringement due to ‘unclean hands’ in that they obtained patents illegally, violated the provisional patents of others, and obtained information, knowledge and patent fraudulently.”
Boyle’s response also asserts “patent misuse” by GlasWeld and alleges that the company “has impermissibly broadened the physical or temporal scope of the patent resulting in an anticompetitive effect.”
Boyle has requested that the complaint be dismissed with prejudice.