District Judge Laura Taylor Swain granted Defendants Spectrum Brands Holdings, Inc.’s, Spectrum Brands, Inc.’s, and Shaser, Inc.’s motion for summary judgment that Plaintiff Harvey H. Jay (“Jay”) is barred from asserting certain claims of his hair removal patent because of an uncorrected material omission in the patent as issued. Jay is the owner of U.S. Patent No. 6,916,316 (“the ’316 patent”), which is directed to techniques of temporary hair removal utilizing light directed at the hair. During the prosecution of the ’316 patent, Jay amended claim 29 to overcome a rejection based on prior art that disclosed a similar technique for the cessation of hair growth. Original claim 29 read in relevant part: “using said device to at least temporarily retard hair growth along said skin surface . . . .” Jay inserted the words “and not stop” after “temporarily retard” to reflect that claim 29 “contemplates hair growth retardation but not cessation.” However, the words “and not stop” were inadvertently omitted when the ’316 patent issued.

The court agreed with defendants that Jay cannot assert claim 29 and its dependent claims in the present infringement suit because the omission of “do not stop” from the patent as issued “represents an error in a material limitation that is not clear from the face of the patent” and the patent had not been corrected. The court concluded that the phrase “do not stop” is material since its insertion distinguished the method in claim 29 from prior art. Jay argued that, despite this finding of materiality, a later reexamination that confirmed the patentability of claim 29 corrects any error in the ’316 patent since the examiner would have rejected claim 29 over prior art had the omitted limitation been material. The court rejected Jay’s contention and explained that “[t]he undisputed record demonstrates . . . that on reexamination, the examiner both relied on the ‘and not stop’ limitation and noted its apparently inadvertent omission from the issued ’316 Patent.”

Case: Jay v. Spectrum Brands Holdings, Inc., No. 13-CV-08137 (LTS) (DCF), 2015 BL 1040621 (S.D.N.Y. May. 12, 2015)