Bose Corp. sued Lightspeed Aviation, Inc. accusing Lightspeed’s Zulu headsets of infringing Patent No. 5,181,252, directed to high compliance headphone driving. Lightspeed counterclaimed asserting that Bose breached a settlement agreement from a previous lawsuit. Later Lightspeed amended its answer to add counterclaims for cancellation of Bose’s QUIETCOMFORT trademark, and for a declaration that the ‘252 patent is unenforceable due to inequitable conduct in the form of material misrepresentations / omissions made before the PTO during prosecution. Bose moved to dismiss these later counterclaims.
Because the mark in question had become incontestable, and because Lightspeed’s counterclaim did not plead any of the grounds set forth in 15 U.S.C. § 1115(b) for challenging incontestable marks (Lightspeed alleged breach of contract as the grounds for cancellation), Judge Young granted the motion to dismiss the trademark cancellation counterclaim. The court denied the motion to dismiss the inequitable conduct counterclaims (one for improperly amending inventorship to avoid prior art, the other for failing to disclose prior public uses) because they stated plausible claims for relief.
Bose Corp. v. Lightspeed Aviation, Inc., 09-10222-WGY (D. Mass. Mar. 4, 2010)
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