Federal Court Sides with St. Petersburg Manufacturer in Patent Infringement Fight

Tampa, Fla. / Oct. 2, 2014 — A U.S. District Court judge has ruled in favor of St. Petersburg, Florida’s innovative high-tech manufacturing company ALPS South in an important decision on patent infringement. The ruling, which was handed down in late September,(case number 2:04-cv-1223 in the Eastern Division of the Southern District of Ohio) comes after a decade of legal wrangling in multiple courts, renders the patent invalid and allows ALPS to collect attorneys’ fees in addition to the $15.5 million in damages a judge and jury in a related case awarded the company in March (case No. 8:08-cv-01893 ALPS South, LLC v. The Ohio Willow Wood Company in Tampa, FL Middle District). Shumaker, Loop & Kendrick, LLP attorney Ronald A. Christaldi represented ALPS in the trial.

The case began in 2004, when an ALPS competitor accused the company of patent infringement. ALPS is an international industry leader in designing and manufacturing prosthetic liners, the gel suspension and cushioning interface that rests between a prosthesis and the residual limb. While the lawsuit threatened the company’s future, ALPS chose to fight back, and the company has spent the last decade preoccupied with the case.

Christaldi led the defense, arguing that ALPS’ competitor fraudulently obtained the patents over which it was suing. U.S. District Judge Gregory L. Frost initially ruled against ALPS, but a three-judge panel overturned that decision, arguing that the competitor had indeed withheld “material information” and made “several misrepresentations” when appearing before the U.S. Patent and Trademark Office. The appeals panel sent the case back to Judge Frost’s court for trial.

That trial began on July 30 in Columbus, Ohio, and concluded two days later. Judge Frost issued his ruling on Sept. 24, finding in favor of ALPS that its competitor had engaged in inequitable conduct while obtaining its patent.

In his 81-page order, Frost found that Christaldi and ALPS had shown that the company’s competitor had acted with “deceptive intent” and had made “misrepresentations” to the Patent and Trademark Office. “ALPS therefore has met its burden in proving deceptive intent by clear and convincing evidence,” Judge Frost wrote, before concluding that ALPS’ competitor had “engaged in inequitable conduct.”

“This decision, coming on the heels of our victory during the appeals process, marks an important shift in how the courts are dealing with inequitable conduct,” says Christaldi. “Federal circuit case law handed down in 2011 made it much more difficult to prove inequitable conduct, but the ALPS decision shows that doesn't mean companies can get away with intentional misrepresentations."

For years, while the case consumed the company’s time and energy, ALPS was forced to limit its research and development. But since winning one of the largest patent infringement judgements in the area in March, the company has hired more than 20 new employees and is once again expanding its range of products. In addition to its prosthetic liners ALPS has designed a one-of-a-kind semi-automatic revolver, an oxygen-injected engine that increases a car’s horsepower, a prosthetic foot, improved sleep apnea masks and a silicone mask that helps facial surgery patients recover more quickly. With this latest round of legal action now concluded, ALPS can concentrate on creating the innovative products that have made it an industry leader.

“This decision is great news for a very worthy Tampa Bay business, but it’s also great news for entrepreneurs everywhere,” says Christaldi, who also serves as the chair-elect of the Greater Tampa Chamber of Commerce.

“The court has sent a strong message that patents must be truthfully obtained and that deceptive companies will be punished.”

About Shumaker, Loop & Kendrick, LLP

Shumaker, Loop & Kendrick is a full-service business law firm with more than 240 lawyers, 60 paralegals and 495 employees in five offices: Toledo and Columbus, Ohio; Tampa and Sarasota, Florida; and Charlotte, North Carolina. In each of its markets, Shumaker is the premier provider of quality legal services to individuals, small businesses, health care providers, nonprofits and Fortune 500 and international corporations.

Shumaker, Loop & Kendrick, LLP Wins with Inequitable Conduct Claim

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