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Bentley A. Hollander v. Timex Group Usa

April 13, 2011


The opinion of the court was delivered by: Schiller, J.


Timex Group USA, Inc. ("Timex") marked wristwatch instruction manuals and portions of its company websites with expired patent numbers. This alleged patent mismarking is the basis of Plaintiff Bentley Hollander's qui tam action, brought on behalf of the United States under 35 U.S.C. § 292(b). The parties' cross-motions for summary judgment are presently before the Court. Because Hollander offers no evidence that Timex marked unpatented articles or intended to deceive the public within the meaning of § 292, the Court will grant Timex's motion and dismiss this case.


Timex patented its Inidglo wristwatches' "electroluminescent technology." (See Pl.'s Mem. of Law in Supp. of Mot. for Partial Summ. J. [Pl.'s Mot. for Summ. J.] 9.) Hollander's claims concern three such patents: Nos. 4,527,096, 4,775,964, and 4,912,668 (collectively, the "Indiglo Patents."). The Indiglo Patents expired on February 8, 2004, January 11, 2008, and August 11, 2009, respectively. (Def.'s Statement of Undisputed Facts in Supp. of Mot. for Summ. J. [Def.'s Facts] ¶¶ 2-4; Pl./Relator's Separate Statement of Undisputed Material Facts in Opp'n to Def.'s Mot. for Summ. J. [Pl.'s Facts] ¶¶ 2-4.) Hollander discovered that the Indiglo Patents nevertheless continued to appear on various wristwatch manuals, both in hard copy and on Timex's websites. (Pl.'s Facts ¶¶ 6-8.) Hollander also found references to the Indiglo Patents in the websites' "Terms of Use" sections. (Id. ¶ 28.)

A. Timex Product Manuals

Timex produces instruction manuals for its watches. (Id. ¶ 8.) When Timex develops a new product, the company assigns an employee or contractor to draft text explaining the "operational functions of the watch." (Def.'s Mem. of Law in Supp. of its Mot. for Summ. J., Aff. of Margaret Saleeby [Saleeby Aff.] ¶ 10; see also Pl.'s Facts ¶ 17.) A Timex production designer then formats the "operational text" into a "proper instruction manual style." (Saleeby Aff. ¶ 10; see also Pl.'s Facts ¶ 18.) This process includes adding graphics and standard text from prior manuals. (Def.'s Facts ¶ 19; Pl.'s Facts ¶ 19.)

This boilerplate "standard text" includes references to the Indiglo Patents. (Saleeby Aff. ¶ 10.) A Production Designer simply cut and pasted the patent numbers from old manuals, unaware that the "standard text" contained expired patent marks. (See Def.'s Facts ¶ 20-21.) No one from Timex directed the production designer to include references to the Indiglo Patents. (Id. ¶ 21.) However, Timex also occasionally referred to the Indiglo Patents in the body of its manual text. (Pl./Relator's Mem. of Law in Opp'n to Def.'s Mot. for Summ. J. [Pl.'s Opp'n] Ex. 12, [Helix Manual] 4.)

Timex submits its instruction manuals to its in-house legal department for review before releasing them. (See Pl.'s Facts ¶ 22.) Timex's counsel reviewed the manuals at issue in this case. (See Pl.'s Opp'n Ex. 10 [Instruction Book Tracking Sheet for Manual W-212].) Timex also revised the manuals after the legal department had reviewed them. (Id. [e-mails dated April 8, 2005 and March 2, 2006]; Id. Ex. 11, [Timex Privilege Log].). However, Timex did not remove the expired patent marks. (See Def.'s Facts ¶¶ 20-22.)

B. Dissemination of the Timex Product Manuals

Timex disseminated the product manuals referencing the Indiglo Patents in two ways: in its product packaging and on its company web sites. (Pl.'s Facts ¶ 8; Def.'s Facts ¶¶ 7, 32.)

1. Manuals in product packaging

Timex packages its watches in cardboard boxes for sale. (See, e.g., Def.'s Mot. for Summ.

J. Ex. A [Timex Indiglo Watch packaging] and Ex. B [Tmex Ironman Road Trainer packaging].) These boxes contain one of two types of manuals: a folded "origami" packet or a bound "book-like" manual. (Def.'s Facts ¶¶ 10-13.)

The "origami" manuals consist of a thin sheet of onion paper folded into a small rectangle. (Id.¶¶11, 15.) Timex encloses the folded paper in the box alongside the watch either on its own or in a small pod. (Id. ¶ 15.) The "book-like" manuals are "simply laid separately inside the box" alongside the watch. (Id. ¶ 16.) Hollander characterizes this method of packaging the manual with the watch as sealing the booklet "in the same single-piece plastic enclosure that holds the watch that is contained within the exterior cardboard box." (Pl.'s Facts ¶¶ 14, 16.)

2. Manuals on Timex websites

Timex operates a number of websites through which it sells products to individual consumers and retailers. (Pl.'s Facts ¶ 23; Def.'s Facts ¶ 23.) Its consumer-oriented site,, allows users to obtain product information in a variety of ways, via: (1) an internal search engine; (2) a drop-down menu linked to various categories of products; (3) a gallery of clickable images at the top of the page representing different watch styles; (4) a product selector; (5) a "carousel" of rotating watches below the product selector; (6) red buttons linked to particular classes of watches, such as "Women's Watches" or "Men's Watches"; and (7) a link labeled "Product Instruction Guides & Downloads." (Pl.'s Facts ¶ 25; Def.'s Facts ¶ 25.)

In addition, each watch Timex offers for sale on has its own individual product page. (Def.'s Facts ¶ 26.) These pages feature an image of the watch, consumer reviews, and a brief discussion of the watch's features. (Id.) The product pages do not reference the Indiglo Patents. (See, e.g., Pl.'s Opp'n Ex. 7 [Product Page for Timex Ironman Road Trainer].) However, a link at the bottom of each product page provides access to "Product Instruction Guides & Downloads," including copies of the product manuals which cite the Indiglo Patents. (Id.; see also Pl.'s Facts ¶ 34; Def.'s Facts ¶ 32.) Hollander also discovered that between January 2005 and the present the public could access the product manuals via links on labeled "Watch Instructions" and "Manuals/Downloads." (Pl.'s Facts ¶ 25.) The manuals are all available to the general public online and are not restricted to owners of specific Timex products. (Pl.'s Facts ¶ 9.)

C. Other References to the Indiglo Patents on Timex Websites

In addition to the patent numbers on the product manuals, Timex's websites contain references to the Indiglo Patents in their "Terms of Use" and "Terms and Conditions." A link in the "footer" of provides access to the site's "Terms of Use" page. (Def.'s Facts ¶ 36.) One can also access's "Terms and Conditions" page from individual product pages. (Pl.'s Facts ¶ 26.) Timex-run "micro-sites" dedicated to particular watches also link to the "Terms of Use." (See Def.'s Facts ¶ 37.)

A similar "Terms of Use" page links from Timex's "Business-to-Business" website, The Business-to-Business site advertises Timex products to resellers. (Pl.'s Opp'n 11.) Though Timex removed this language around March 4, 2011, the Business-to-Business site's "Terms of Use" page previously stated that all of its Inidiglo watches were covered by the Indiglo Patents. (Pl.'s Opp'n 12, Ex. 3, [B2B Terms of Use].)

D. Procedural History

Hollander filed this action on January 29, 2010. Timex filed a motion to dismiss on March 2, 2010, arguing that fifty-six counts of mismarking in Hollander's Complaint alleged violations that occurred prior to January 29, 2005, thus falling beyond the five-year statute of limitations governing civil fines under the mismarking statute. The Court granted Timex's motion with respect to these claims. Thus, for the purposes of the instant ...

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