In a recently filed suit, RB Rubber Products, Inc. (“RB Rubber”) seeks to have Encore International, Inc.’s, F/K/A Dodge-Regupol, Inc. (“Encore”) U.S. Patent No. 6,920,723 [PDF] declared invalid and to obtain antitrust relief for Encore’s allegedly wrongful actions related to obtaining and enforcing the ’723 patent.

The independent claims in the ’723 patent are directed to a sub-floor layer that is about 10 mm thick, made of rubber with voids extending from the top to the bottom of the sub-floor layer, and having sufficient strength to support a floor and at the same time provide sound dampening. RB Rubber alleges Encore’s patented product is based on a preexisting sample that Encore obtained from a foreign joint venture partner. Encore’s allegedly fraudulent representations to the U.S. Patent & Trademark Office include intentionally misrepresenting the proper inventorship (by naming only one inventor, an Encore employee, and omitting anyone from the foreign company) and failing to submit known prior art, specifically, the information obtained from the foreign company and the fact that Encore made similar products more than a year before the ’723 patent’s filing date.

RB Rubber also alleges antitrust injury …

stemming from Encore’s fraudulently obtaining the ’723 patent and alleged wrongful enforcement of the ’723 patent. Because patent misuse is not a per se antitrust violation, RB Rubber needs to show that Encore has market power and an antitrust injury related to such market power. Showing market power involves defining a relevant market and proving the share of such a market controlled by Encore.

RB Rubber defines the relevant market as acoustical underlayment for flooring, or alternatively, acoustical underlayment made primarily from recycled tires. According to RB Rubber, Encore’s alleged fraudulent procurement of the ’723 patent and subsequent (1) cease and desist letters to various competitors and (2) infringement lawsuits brought against RB Rubber and one other competitor in Pennsylvania (both of which were dismissed, apparently after discovery led to the other competitor discovering Encore’s withholding material information from the U.S. PTO) has reduced overall competition in the relevant market, raised prices in the relevant market and has caused RB Rubber to lose good will, profits, and reputation in the relevant market. RB Rubber also alleges that Encore attempted to, and did, monopolize the relevant market.

In its third claim for relief, RB Rubber alleges Encore falsely marked its products with the ’723 patent. The basis for this allegation is that the limitation “about 10 mm” was construed to mean between 9 mm and 11 mm by the Pennsylvania court, and Encore’s marked products have thickness of 2 mm, 5 mm, 12 mm, 10 mm, and 15 mm. If this claim is litigated, it will be interesting to see how arguments related to the time-frame during which marking occurred (i.e., before and after the relevant Pennsylvania lawsuit) and dependent claims 7 and 13 (which recite a thickness of 5 mm) affect the false patent marking allegation.

In the complaint [PDF] RB Rubber also alleges antitrust injury under Oregon's antitrust statutes and wrongful initiation of a civil proceeding in violation of Oregon statute (for the January, 2006 infringement lawsuit against RB Rubber in Pennsylvania).