John B. Sganga, Jr.

Things can move quickly in the world of patent law. But rarely as quickly as they did at the start of a case in which his client, Color Match Pool Fitting Inc., was sued.

“The first time there was any public information about this patent is when it issued,” Sganga said. “They sued us the very next day. It really backfired.”

Color Match’s competing pool drain product had been on the market for a year. What’s more, Aquastar filed with the U.S. Patent and Trademark Office using a procedure which prevented the patent application from being published. Sganga said.

The case is ongoing; Aquastar filed an amended complaint in March. But Sganga argued the plaintiffs had “manufactured this emergency,” defeating a preliminary injunction motion and allowing Color Match keep selling their product. Aquastar Pool Products Inc. v. Color Match Pool Fittings Inc. et al., 18-CV00094 (C.D. Cal., filed Jan. 16, 2018).

In another recent case, Sganga’s client was sued by a holding company. Separation Design Group IP Holdings, LLP v. Inogen Inc., 15-CV08323 (C.D. Cal., filed Oct. 23, 2015). Inogen is a company that was started by a trio of UC Santa Barbara students after they won a business plan competition in 2001.

But the triggering event for the lawsuit appeared to be something else, he said: Inogen’s 2014 IPO.

“Because they were publicly traded, their sales figures were available,” Sganga said.

Sganga’s strategy was to file a Daubert motion challenging Separation’s damages expert and his theory of damages. Instead of fighting the patent head on, Sganga set out to show the patented ideas were only marginally important to Inogen signature product, a portable “oxygen concentrator” that allows patients suffering from respiratory diseases to avoid carrying around an oxygen tank.

“What they failed to do was to really focus on what the patented featured added to the value of the product versus all of the other things that made the product work well,” he said.

This meant the expert’s “winner take all” approach wasn’t really valid, Sganga said. With a Daubert motion looming, the case settled shortly before trial in late 2017.

— Malcolm Maclachlan