A Free Speech Right to Accuse Others of Patent Infringement

by Dennis Crouch

Rule 1 of the Federal Rules of Civil Procedure sets out a bold goal for civil litigation: “the just, speedy, and inexpensive determination of every action.”  Patent litigation is rarely speedy; quite expensive; and, many would argue, often unjust.  In the case below, one party attempted some quick relief via preliminary injunction, but the Federal Circuit has vacated on free-speech grounds.

Light-Netics owns U.S. Patent Nos. 7,549,779 and 8,128,264 that cover easy-to-hang Christmas lights. These lights include a magnetic backing that can attach easily to metal surfaces (such as a metal roof).  Light-Netics sued after discovering competing products on sale from Holiday Bright Lights (HBL).  And, in addition, Light-Netics sent a notice to various light stores warning them that HBL lights were infringing. Lite-Netics LLC v. Nu Tsai Capital LLC (DBA Holiday Bright Lights), — F.4th — (Fed. Cir. 2023). 

Light-Netics sued for infringement, HBL responded with unfair competition counterclaims. The district court quickly issued a TRO followed-up with a preliminary injunction against the patentee.  Judge Buescher (D.Neb.) ordered the patentee to (1) stop publicly stating that HBL copied the invention and (2) stop telling HBL customers that they could also be liable for infringement.   Part of the district court’s justification here was a preliminary consideration of the merits of the lawsuit: narrowed claim construction eliminated literal infringement; and a finding that the patentee was estopped from asserting DOE.   At base, the issue has to do with the meaning of the article “a”: can “a” be plural? Here, the claim requires a light socked with “a neodymium magnet [having] a pull strength of at least five pounds” while the accused device uses several magnets.

On appeal, the Federal Circuit has vacated and remanded — holding that the district court went too far in restricting the patentee’s protected speech.

Objectively Baseless: The Federal Circuit has given patentees a fairly-wide berth with regard to public accusations of infringement and customer cease-and-desist letters. In particular, the court has held that state court tort claims associated with out-of-court patent enforcement activities are preempted by federal law unless the patent holder “acted in bad faith.” Breaking this down, the court requires that the infringement allegation be “objectively baseless” and that the patentee conducted its affairs with subjective bad faith. Although the court does not conduct a full First-Amendment analysis, the high burden is justified by our individual liberty interest (that includes corporate commercial speech).

In its decision, the Federal Circuit concluded that it is not-unreasonable for a patentee to assert that a claimed “magnet” could be infringed by two or more magnets.

Decisions of this court lend strong support to the proposition that, “in patent parlance,” at least in an open-ended “comprising” claim, use of “a” or “an” before a noun naming an object is understood to mean to “one or more” unless the context sufficiently indicates otherwise. . . .

The patent uses “the” or “said” when referring back to an antecedent “a” phrase, but that usage does not itself suffice to demand the singular meaning because if the “a” phrase means “one or more,” so would the subsequent reference-back phrases.

Slip Op.  The court notes that the patentee’s embodiments all just show a single magnet, but the court found nothing in the specification that limits the claim to that embodiment.

There is no “present invention” or other specification language that restricts the invention to a single (or single-piece) magnet, and there are no structural limitations in the claims that implicitly demand such a configuration. Importantly, and more generally, nothing in the ’779 patent indicates that the evident purpose of the magnet on the socket base (to attach the light string to a metal surface) can be achieved only, or with specified effectiveness, through a single (or single-piece) magnet, rather than a plurality of magnets collectively having the specified pull force.

Id.  Likewise, the Federal Circuit also concluded that the doctrine of equivalents could be pursued. The patentee had argued that “two semicircular magnets in the Magnetic Cord light-fixture bases are equivalent to the one [claimed] magnet.”  The Federal Circuit found “nothing unreasonable” about that allegation.  Further, Lite-Netics did not make any amendments or statements during prosecution concerning the number of magnets in a way that would create estoppel.

On remand, the patentee may seek a narrower preliminary injunction — focusing on the patent not discussed by the Federal Circuit.  Still, the Federal Circuit’s discussion gives a big boost to the patentee’s case.

28 thoughts on “A Free Speech Right to Accuse Others of Patent Infringement

  1. 5

    In defamation cases, most jurisdictions do not permit a preliminary injunction to restrain speech, even if it is “likely” to be defamatory. But they are permitted after success at trial as part of a permanent injunction.

    What would the CAFC rule if the patent owner lost on the merits — either through a finding of invalidity or non-infringement? I guess at that point it’s objectively unreasonable.

  2. 4

    Its clearly the right overall decision given that underlying fee shifting can achieve the end without burdening speech. That being said, a court can’t decide that “a” in a comprising claim means plural. “A” has a meaning, and it does not mean a plurality. DoE can certainly find a plurality infringing, but “a” is singular. This is another example of poor prosecution being saved by inappropriate court action.

    1. 4.1

      “A” has a meaning, and it does not mean a plurality.

      Huh? Did you read the cited precedents. No word has any meaning except in a context, but in this context (patent claim construction), the ordinary meaning of “comprising a…” is definitely comprising one or more.

      If you were examining a claim that “comprises a rotating blade” and you found a dead-on reference with two rotating blades, would you hesitate to make a §102 rejection? The embodiment described in the reference does comprise a rotating blade.

      1. 4.1.1

        I suspect Random means that

        comprising: … a neodymium magnet [having] a pull strength of at least five pounds

        cannot be properly construed as

        comprising: … one or more neodymium magnets [having] a combined pull strength of at least five pounds.

        Or using your example, an examiner shuld not reject a claim to a system that “comprises a rotating blade with two cutting edges” with a reference that teaches a two-blade system where each blade has a single cutting edge.

        If any single magnet in the infringing product individually had the requisite pull strength there would be no discussion of DoE.

      2. 4.1.2

        Correct. Black letter patent law – ‘a’ means one or more. Without question ‘a’ in an independent claim – with a dependent claim stating a plurality for the element cited as ‘a’ is proper claim form. If we patent lawyers and judges don’t have a common understanding of claim law – we are all in a lot of trouble.


          If we patent lawyers and judges don’t have a…

          You missed an element already “speaking up” here (through Random and Ben):



            “Here, the claim requires a light socked with “a neodymium magnet [having] a pull strength of at least five pounds” while the accused device uses several magnets.”

            Claims do need to be interpreted as a whole instead of in segments. Personally, if I was prosecuting the claim and the prior art used several magnets, and the context supported only a single magnet (based on the written description and figures), I would make the argument that the person of ordinary skill would interpret the claim, in view of the specification, as reciting only a single neodymium magnet (helpful if a dependent claim refers back with “the neodymium magnet”). Again, it depends on the situation. Even then, if it is a sticking point to allowance, in order to advance prosecution, the claim will be amended to recite “a single neodymium magnet” and file a continuation application to pursue a broader claim. It’s situational.


          “Black letter patent law – ‘a’ means one or more.”

          That’s not quite right, is it?

          The “a” in “comprising: … a” can mean one or more, but the “a” in consisting of: … a” does not.

          Again… as fun as you guys seem to think it is to restate the obvious, we all understand that the scope “comprising: … a [element].” includes multiple such elements.

          The issue here is what “a” means in “comprising: … a [element]” when it is followed up with “where said [element] [has property]”.


            No Ben – the consisting only affects other unnamed items.

            You added a different term and still stumbled.


          “If we patent lawyers and judges don’t have a common understanding of claim law – we are all in a lot of trouble.”

          I guess this encompasses “one or more” common understandings of claim law…

    2. 4.2

      Greg is correct on the claim construction issue, unless I’m missing something.

      Also, for what it’s worth, there may very well be instances where a TRO that “burdens speech” relating to patent infringement could be appropriate. An example would be a situation where the patent in question is deemed highly likely to be invalid and/or where the “speaker” appears to be threatening entities without regard to what the entities actually do.

    3. 4.3

      Think about it logically and grammatically and idiomatically: If I asked you if you own a pair of shoes, would you say no because you own two pairs of shoes? If I asked if you had an egg in the fridge, would you say no because you had a dozen? Of course not: You would naturally understand “a” to mean”at least one, and maybe more.”
      “A” competent patent attorney would know your statement is wrong. That does not mean that “one and only one” patent attorney would know your statement is wrong.

      1. 4.3.1

        And if I asked you if you own a shoe with 12 eyelets, would you say “yes” based on owning a pair of shoes, each shoe including 8 eyelets?

        The limiation is:

        “a neodymium magnet embedded in the base wherein said magnet had a pull strength of at least five pounds.”

        I think we all get that a product that has 2 magnets in the base, each magnet having a pull strength of 5 lbs, falls within the claim.

        As I understand it, and I guess I could be wrong, “wherein said [element] ha[s]…” appears to define a per element requirement.

        So “comprising: … a [element], wherein said [element] has [characteristic]” encompasses where at least one element has that characteristic. But it does not encompass where individual elements not having that characteristic, when lumped together have that characteristic.

        Do you disagree?


          Currently, the answer depends on the spec and file history.

          More generally, we should be talking about this case wrt a DoE or means+function analysis (i.e., did the defendant just split a single magnet into two pieces or is it fundamentally a different design). But, since the courts destroyed both of those doctrines, we’re stuck arguing about how many angels can fit on a pin head.


          Certainly agree that generally, A thing with X sub-things requires at least one A thing with at least X sub-things in a lot of contexts (that is, X sub-things per element for at least one A thing). A claim like that would be literally met by a pair of shoes (A things) where the left shoe had 12 eyelets (X sub-things) and the right shoe had only 11 eyelets. To require that each shoe have 12 eyelets would require additional claim language, like “wherein EACH said A thing has X subthings”. (and maybe that would still encompass a threesome of shoes where the third shoe was a loafer). A pair of shoes, each having 6 eyelets, would not literally infringe. But in the magnet example, a pair of magnets both with 2.5 lbs pull strength would be not encompassed literally by claim (a fair bet that they would be equivalent, unless cutting a strong magnet in half and putting the pieces back in the same place would provide a different result, or work in a different way).
          A lot of examples can be envisioned, but I think only in the very odd case would mere recitation of “a thing” be interpreted to mean “one and only one thing” without additional language. Maybe, “a method of noise suppression comprising the step of sticking a finger in an ear” would not encompass sticking two fingers in one ear because I have a hard time doing that, but would encompass sticking a left index finger in the left ear and the right index finger in the right ear, both at the same time?


          As I understand it, and I guess I could be wrong, “wherein said [element] ha[s]…” appears to define a per element requirement.

          I agree, it is a per-element requirement. Since it is an open-ended claim, a device with two magnets would infringe, assuming that at least one of the magnets had a pull strength of at least 5 lb.

    4. 4.4

      “A” has a meaning, and it does not mean a plurality.

      That’s called assuming the conclusion of the point at hand – a logical fallacy.

  3. 3

    Using a magnet to attach something to a metal surface … This is a game changer, folks!

    Brad Twinkletats (my computer) took this information and immediately published 282,462 separate applications of this phenomenon in over 400 distinct fields.

    1. 3.1

      Is that anywhere possible the number that can employ my Big Box of Protons, Neutrons, and Electrons, Malcolm?

      You want to dig up your old nonsense? Then we shall repeat the same replies that shut your trap so many times in the distant past.


          My missing your point is not a sign of any deficiency in me.


          Or perhaps you simply missed the point of my counter

          (much more likely)

          Any “digging” is by you – as you oh so typically are the one with the shovel.

  4. 2

    Are there other potential subsequent legal risks for the patentee in threatening the defendant’s customers if the patent is found invalid or unenforceable and the defendant had in the meantime lost substantial business revenue as a result?

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