1The combined form of Hypertherm's motion is arguably in

violation of Local Rule 7.1(a)(1). The combination of the two

motions complicated the task of addressing the issues raised. 

ATTC did not object on that basis, however, and the court will

not strike the motion sua sponte after the parties have addressed

the issues in both contexts.

UNITED STATES DISTRICT COURT FOR THE 

DISTRICT OF NEW HAMPSHIRE

Hypertherm, Inc.

v. Civil No. 05-cv-373-JD

Opinion No. 2007 DNH 111

American Torch Tip Company

O R D E R

Hypertherm, Inc. brought patent infringement claims against

American Torch Tip Company ("ATTC"). ATTC filed an amended

counterclaim, consisting of eleven counts, alleging federal

antitrust violations, state law claims, a claim under the Lanham

Act, and a claim under 35 U.S.C. § 292. Hypertherm moved to

dismiss the amended counterclaim or in the alternative for

summary judgment.1 ATTC has responded. 

Standard of Review

The Federal Circuit has exclusive jurisdiction over appeals

in patent cases, and therefore, provides the applicable legal

standards for patent infringement claims. See 28 U.S.C. § 1295. 

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 1 of 21
2

"When addressing a procedural issue, [the Federal Circuit's]

standard of review is the same standard as would be applied by

the pertinent regional circuit, unless the issue pertains to or

is unique to patent law." Walter Kidde Portable Equip., Inc. v.

Universal Sec. Instruments, Inc., 479 F.3d 1330, 1335 (Fed. Cir.

2007). The standards of review on a motion to dismiss and a

motion for summary judgment are purely procedural matters, so

that the First Circuit standards apply. See Gen. Mills, Inc. v.

Kraft Foods Global, Inc., 487 F.3d 1368, 1373 (Fed. Cir. 2007);

Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 480

F.3d 1335, 1339 (Fed. Cir. 2007).

To the extent Hypertherm and ATTC rely on materials

extrinsic to the counterclaim, the motion is treated as one

seeking summary judgment. See Iverson v. City of Boston, 452

F.3d 94, 98 (1st Cir. 2006). ATTC argues, intermittently, that a

lack of discovery precludes judgment on the counterclaim but

failed to file an affidavit under Federal Rule of Civil Procedure

56(f). See Kiman v. N.H. Dep't of Corrs., 451 F.3d 274, 282 n.7

(1st Cir. 2006). The parties also agreed to certain discovery

for purposes of responding to Hypertherm's motion. See Document

no. 85, filed March 3, 2007. Therefore, a lack of discovery on

issues raised in the counterclaim will not preclude dismissal or

summary judgment. 

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 2 of 21
3

Summary judgment is appropriate when “the pleadings,

depositions, answers to interrogatories, and admissions on file,

together with the affidavits, if any, show that there is no

genuine issue as to any material fact and that the moving party

is entitled to a judgment as a matter of law.” Fed. R. Civ. P.

56(c). The party seeking summary judgment must first demonstrate

the absence of a genuine issue of material fact in the record. 

See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). A party

opposing a properly supported motion for summary judgment must

present competent evidence of record that shows a genuine issue

for trial. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242,

256 (1986). All reasonable inferences and all credibility issues

are resolved in favor of the nonmoving party. See id. at 255. 

In considering a motion to dismiss, the court “take[s] as

true all well-pleaded allegations and draw[s] all reasonable

inferences in the plaintiff’s favor.” Ezra Charitable Trust v.

Tyco Int’l, Ltd., 466 F.3d 1, 5-6 (1st Cir. 2006). The claimant,

however, "must allege 'a plausible entitlement to relief.'" 

Rodriguez-Ortiz v. Margo Caribe, Inc., 490 F.3d 92, 95 (1st Cir.

2007) (quoting Bell Atl. Corp. v. Twombly, 127 S. Ct 1955, 1967

(2007). “The court need not accept a plaintiff’s assertion that

a factual allegation satisfies an element of a claim, however,

nor must a court infer from the assertion of a legal conclusion

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 3 of 21
4

that factual allegations could be made that would justify drawing

such a conclusion.” Cordero-Hernandez v. Hernandez-Ballesteros,

449 F.3d 240, 244 n.3 (1st Cir. 2006). 

Background

Hypertherm designs and manufactures plasma arc cutting

systems and replacement parts that are used for cutting carbon

steel and other metals. The systems use a plasma torch with a

nozzle that projects a very high temperature ionized gas to cut

metal. The components of the system are a power supply, gas

delivery, an arc-starting circuit, and a plasma torch. 

Hypertherm also manufacturers replacement parts for the systems.

Hypertherm provides limited warranties on its plasma systems

with a warning that the warranty may be invalid if non-Hypertherm

replacement parts are used in the system. ATTC is in the

business of supplying replacement parts for metal cutting

equipment, including plasma systems manufactured by Hypertherm. 

ATTC and Hypertherm, therefore, are competitors in the business

of replacement parts for Hypertherm's systems.

In 1992, Hypertherm sued ATTC in federal court in Florida,

alleging patent infringement. ATTC responded with a counterclaim

that included antitrust and state law claims. ATTC later moved

to amend to add a claim under the Lanham Act. The court granted

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 4 of 21
5

Hypertherm's motion for summary judgment on the counterclaim

before addressing ATTC's motion to amend the counterclaim. ATTC

then filed a renewed motion to amend the counterclaim. The case

was tried at the end of March, 1994, and the jury returned a

verdict on April 1, 1994, in favor of Hypertherm on the

infringement claims and unfair competition claim. ATTC and

Hypertherm entered a settlement agreement, dated July 22, 1994.

Discussion

Counts I through IV of the counterclaim are brought under

the Sherman Act, alleging unlawful tying, monopoly levering,

monopolization, and attempt to monopolize. Count V is brought

under the Lanham Act, alleging false advertising and unfair

competition. Count VI alleges tortious interference with

contractual relations. Count VII alleges tortious interference

with prospective contractual relations. Count VIII alleges

common law unfair competition. Count IX alleges a violation of

New Hampshire Revised Statute Annotated ("RSA") § 356. Count X

alleges a violation of RSA 358-A. Count XI alleges false marking

under 35 U.S.C. § 292. 

In its motion, Hypertherm mistakenly characterizes counts I

through X as antitrust claims. Because of that error, Hypertherm

did not provide any developed argument to support summary

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 5 of 21
2A reply in support of a dispositive motion is limited to

rebuttal of factual and legal arguments raised in the objection. 

LR 7.1(e)(1). The moving party cannot raise new arguments and

issues in a reply that it failed to address in the original

motion. See Fed. R. Civ. P. 56(c); Wills v. Brown Univ., 184

F.3d 20, 27 (1st Cir. 1999); United States v. Brennan, 994 F.2d

918, 922 n.7 (1st Cir. 1993).

6

judgment on the Lanham Act claim or the state law claims in

Counts V through X, until its reply.2 Therefore, Counts V

through X are not considered in the context of the present

motion. See Higgins v. New Balance Athletic Shoe, Inc., 194 F.3d

252, 260 (1st Cir. 1999). 

ATTC contends that the court has already ruled on the

sufficiency of its counterclaim by allowing the amended pleading

over Hypertherm's futility objection. In support of that theory,

ATTC argues that because the same standard applies in considering

a futility objection and a motion to dismiss under Federal Rule

of Civil Procedure 12(b)(6), the order allowing the amendment has

become law of the case and establishes that the amended

counterclaim states the claims alleged. ATTC asserts that

because Hypertherm raised the same defenses and objections to its

motion for leave to amend to add the counterclaim that it raises

in the pending motion to dismiss or for summary judgment, the

motion is improper.

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 6 of 21
7

ATTC is mistaken. A district court is always free to revise

an interlocutory ruling. United States v. Tejeda, 481 F.3d 44,

57 (1st Cir. 2007); Harlow v. Children's Hosp., 432 F.3d 50, 55

(1st Cir. 2005). To the extent Hypertherm moves for summary

judgment, ATTC's law of the case theory is inapposite. In

addition, the law of the case doctrine does not bar a motion to

dismiss following a ruling granting a motion for leave to amend. 

In re Cabletron Sys., Inc., 311 F.3d 11, 21 n.2 (1st Cir. 2002);

Ashcroft v. Dep't of Corrs., 2007 WL 1989265 at *6 (W.D.N.Y. July

6, 2007) ("The decision to grant leave to amend is in no way a

decision on the ultimate merits of the parties' claims."). 

Further, the amorphous concept of "law of the case," even when it

applies, is discretionary and does not limit the court's power

"'to depart from a prior holding if convinced that it is clearly

erroneous and would work a manifest injustice.'" Harlow, 432

F.3d at 55 (quoting Arizona v. California, 460 U.S. 605, 618

(1983)). Therefore, the court is not bound, in considering

Hypertherm's motion, by the magistrate judge's ruling on the

motion to amend.

A. Sherman Act Claims, Counts I - IV

ATTC's Sherman Act claims are that Hypertherm engaged in

illegal tying, monopoly levering, monopolization, and attempted

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 7 of 21
8

monopolization in its alleged activities related to warranties

for its products. Hypertherm contends that ATTC failed to

properly allege the claims, cannot provide factual support for

its claims, and that the claims are barred by the parties' prior

litigation. ATTC responds that its antitrust claims are valid

and that the prior litigation does not bar the counterclaim.

1. Res Judicata and Release

Hypertherm argues that the principles of res judicata and

release bar ATTC's antitrust claims, based on the parties' prior

litigation. ATTC contends that neither principle applies because

the counterclaim in the prior case did not include the same

claims and the parties did not agree to a prospective release

from antitrust claims. Hypertherm responds with a new argument

of laches, which is not considered as it was raised for the first

time in Hypertherm's reply. Supra at footnote 1.

The Federal Circuit applies the law of the regional circuit

to issues of res judicata. See, e.g., Media Techs. Licensing,

LLC v. Upper Deck Co., 334 F.3d 1366, 1369 (Fed. Cir. 2003). 

"Under the federal law of res judicata, a final judgment on the

merits of an action precludes the parties from relitigating

claims that were raised or could have been raised in that

action." Maher v. GSI Lumonics, Inc., 433 F.3d 123, 126 (1st

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 8 of 21
9

Cir. 2005). For res judicata to apply, however, the claim must

have actually been litigated in the first action. Torromeo v.

Town of Fremont, 438 F.3d 113, 116-17 (1st Cir. 2006).

Although Hypertherm contends that ATTC made broad

allegations about antitrust violations in the prior litigation,

it has not shown that the claims alleged here were actually

litigated or could have been raised in that case. Instead, it

appears that ATTC attempted to add more specific allegations of

illegal tying to its counterclaim, but its motion to amend was

not granted. Therefore, the summary judgment on the

counterclaim, apparently, did not address the claims that are

brought here. In addition, because that litigation ended twelve

years before ATTC raised its counterclaim here, it is unlikely

that the same claims were or could have been raised there.

Alternatively, Hypertherm argues that its settlement

agreement with ATTC in that case released it from liability for

the antitrust claims brought here. When construing a settlement

agreement, the Federal Circuit applies the law the parties have

chosen as provided in a choice of law provision in the agreement. 

Gen. Mills, 487 F.3d at 1373. The parties' 1994 agreement states

that it will be governed by New Hampshire law. 

Under New Hampshire law, written agreements are interpreted

by giving the language used "its reasonable meaning, considering

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 9 of 21
10

the circumstances and the context in which the agreement was

negotiated, and reading the document as a whole." Czumak v. N.H.

Div. of Developmental Servs., 923 A.2d 208, 213 (N.H. 2007). 

"Absent ambiguity, the parties' intent will be determined from

the plain meaning of the language used in the contract." Id.

Although "New Hampshire law generally prohibits exculpatory

contracts, [they will be enforced] if: (1) they do not violate

public policy; (2) the plaintiff understood the import of the

agreement or a reasonable person in his position would have

understood the import of the agreement; and (3) the plaintiff's

claims were within the contemplation of the parties when they

executed the contract." Dean v. MacDonald, 147 N.H. 263, 266-67

(2001). 

In parts nine and ten of the parties' 1994 agreement, they

mutually release each other from all claims, actions, suits,

causes of action, and similar obligations which they "have or

ever had against the released parties." Based on its plain

language, the agreement bars claims that the parties had against

each other in 1994 or prior to that date. The agreement does not

suggest a prospective release of claims that would accrue in the

future. Given the lapse of twelve years between that agreement

and the counterclaim brought in this action, it is unlikely that

ATTC's claims here existed then. To the extent the counterclaim

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 10 of 21
3ATTC's stubborn reliance on its law of the case theory and

arguments made in its previous filings undermine its position and

have required the court to forage back to previously-filed

documents to find ATTC's references. In the future, ATTC would

be well advised to include all pertinent and material matters in

the filings under consideration. 

11

asserts claims that did exist in 1994, those claims are barred by

the release in the 1994 agreement. 

2. Statute of Limitations

The parties agree that a four-year statute of limitations

applies to ATTC's Sherman Act claims and that Hypertherm's

warranty policy was initiated long before the limitations period. 

See 15 U.S.C. § 15(b). Hypertherm moves to dismiss ATTC's

antitrust claims as barred under the statute of limitations

because they allege only a continuation of actions that occurred

long before the four-year limitation period. ATTC responds that

Hypertherm's argument "is simply wrong" based on ATTC's filings

in support of its motion to amend.3

The continuing violation exception to the four-year statute

of limitations has generally been limited to Sherman Act

conspiracies. Midwestern Mach. Co., Inc. v. Northwest Airlines,

392 F.3d 265, 270 (8th Cir. 2004). The exception allows a

claimant to bring an antitrust or monopoly claim that is based on

a pre-existing illegal policy only when "the monopolist actively

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 11 of 21
12

reinitiates the anti-competitive policy and enjoys benefits from

that action." Id. at 271 (interpreting Hanover Shoe, Inc. v.

United Shoe Mach. Corp., 392 U.S. 481, 483-84 (1968)). Stated in

other terms, an "overt act" that causes injury within the

limitations period supports a continuing violations theory. 

Columbia Steel Casting Co., Inc. v. Portland Gen. Elec. Co., 111

F.3d 1427, 1444 (9th Cir. 1997); Nat'l Souvenir Ctr., Inc. v.

Historic Figures, Inc., 728 F.2d 503, 509 (D.C. Cir. 1984).

The allegations in the amended counterclaim state that

Hypertherm's antitrust activities were "[i]nitially implemented

in 1988." ATTC alleges that those activities occurred during the

two-year term of the warranty on Hypertherm's cutting systems and

phrases the allegations in the present tense. Because the

warranty lasts only two years, it would appear that new allegedly

illegal activities occur each time a cutting system with a

warranty is sold. In the context of a motion to dismiss, taking

the allegations as true and inferring in favor of ATTC, the

complaint alleges at least some claims that are not time-barred. 

Whether the statute of limitations applies to bar any of ATTC's

claims would be better addressed in a motion for summary

judgment, which is not the context in which Hypertherm has raised

the issue here.

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 12 of 21
13

3. Antitrust Claims

Antitrust claims that are "based on procuring or enforcing a

patent" and on "the antitrust consequences of patent tying" are

governed by Federal Circuit law, while the law of the regional

circuit applies to other elements of antitrust law. Indep. Ink,

Inc. v. Ill. Tool Works, Inc., 396 F.3d 1342, 1346 (Fed. Cir.

2005) (rev'd on other grounds by Ill. Tool Works Inc. v. Indep.

Ink, Inc., 547 U.S. 28 (2006)). Illegal tying arrangements and

unlawful monopolization that do not implicate conduct protected

under the patent laws is governed by the law in the applicable

regional circuit. See, e.g., Monsanto Co. v. Scruggs, 459 F.3d

1328, 1338 (Fed. Cir. 2006). The parties have not addressed the

choice of law issue but do not rely exclusively on Federal

Circuit precedent to support their arguments on the antitrust

claims, suggesting that the antitrust claims do not pertain to

patent issues that are governed by the Federal Circuit. 

a. Illegal tying.

Section one of the Sherman Act prohibits contracts and

conspiracy in restraint of trade. 15 U.S.C. § 1. A tying

arrangement, in which a seller "ties" the sale of a product to

the purchase of another product to avoid competition on the tied

product, is illegal under § 1. Borschow Hosp. & Med. Supplies,

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 13 of 21
14

Inc. v. Cesar Castillo, Inc., 96 F.3d 10, 17 (1st Cir. 1996). To

prove a per se tying claim, a party must prove: "(1) the tying

and the tied products are actually two distinct products; (2)

there is an agreement or condition, express or implied, that

establishes a tie; (3) the entity accused of tying has sufficient

economic power in the market for the tying product to distort

consumers' choices with respect to the tied product; and (4) the

tie forecloses a substantial amount of commerce in the market for

the tied product." Id. (internal quotation marks omitted). 

Alternatively, under the "rule of reason" theory, the claimant

must prove that the opponent's "conduct had an 'actual adverse

effect on competition.'" Data Gen. Corp. v. Grumman Sys. Support

Corp., 36 F.3d 1147, 1179 n.54 (1st Cir. 1994).

ATTC asserts that Hypertherm has established an illegal tie

between its cutting systems and its own consumable parts for

those systems by threatening purchasers of Hypertherm systems,

after they purchased the systems, that if they do not use

Hypertherm consumable replacement parts, their warranties on the

cutting systems will be void. The result of those threats, ATTC

contends, is that owners of Hypertherm systems are coerced into

buying Hypertherm replacement parts instead of ATTC parts. 

Hypertherm responds that ATTC cannot prove an illegal tying

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 14 of 21
4ATTC relies on Advance Bus. Sys. & Supply Co. v. SCM Corp.,

415 F.2d 55, 64 (4th Cir. 1969), as authority for the proposition

that threats are sufficient to support an illegal tying

arrangement. Advance Bus. Sys., however, involved an allegedly

illegal tying arrangement between a service contract and supplies

for leased copiers, where the service contract was one of the

tied products. Here, Hypertherm provided the warranty with the

cutting system, not as a separately purchased plan. In addition,

to the extent Advance Bus. Sys. supports a theory that threats

are sufficient to support a tying claim, the First Circuit's

opinion in Borschow, which more recently held that mere threats

are not enough to show an illegal tie, is binding in this case. 

Id. at 17.

15

arrangement or that Hypertherm has sufficient economic power in

the relevant market to distort consumers' choices. 

"Antitrust law is designed to protect competition, not

competitors." SMS Sys. Maint. Servs., Inc. v. Digital Equip.

Corp., 188 F.3d 11, 26 (1st Cir. 1999). Only tying arrangements

that are anti-competitive violate the Sherman Act. Lee v. Life

Ins. Co. of N. Am., 23 F.3d 14, 16 (1st Cir. 1994). Mere threats

by a seller to tie one product to another are not sufficient to

show illegal tying arrangements.4 Borschow, 96 F.3d at 17. 

Warranties offered with product sales are similar to

insurance on the product and are generally used as instruments of

competition. SMS Sys., 188 F.3d at 14. When a purchaser of a

product is free to forego the benefits of a warranty and buy

service or replacement parts elsewhere, no tying arrangement

exists. Marts v. Xerox, 77 F.3d 1109, 1112 (8th Cir. 1996). An

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 15 of 21
16

illegal tying arrangement exists only when pricing or

availability limits the purchaser's choice for alternative

sources of the tied product. Id. at 1113.

ATTC offers some evidence that a number of owners of

Hypertherm systems heeded Hypertherm's threats that their

warranties would be void if they bought ATTC parts. That

evidence, however, fails to show that those customers were not

free to choose to forego Hypertherm's warranty, included with the

sale of the cutting system, and buy ATTC or other replacement

parts. See Borschow, 188 F.3d at 17; Marts, 77 F.3d at 1113. 

ATTC's reference to memoranda and statements from 1992, that

suggest that Hypertherm intended to establish a tying mechanism,

are irrelevant as Hypertherm's conduct then precedes the claims

made here, and claims based on that conduct are barred by the

parties' 1994 settlement agreement. Therefore, ATTC failed to

show a material factual issue as to whether Hypertherm's threats

to void its warranties if other replacement parts were used

constituted an illegal tying arrangement.

b. Monopoly.

ATTC alleges three violations of Section 2 of the Sherman

Act: monopoly levering, monopolization, and attempt to

monopolize. "'The usual section 2 [Sherman Act] claim requires

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 16 of 21
5Although ATTC included allegations about Hypertherm's share

of the replacement parts market, the parties appear to agree that

in this case the relevant market is for cutting systems and not

the derivative market for replacement parts. Cf. SMS Sys., 188

17

monopoly or near monopoly power in some market, and a wrongful

exclusionary act designed to enhance such power in that market or

to achieve an improper advantage in another market.'" ArroyoMelecio v. Puerto Rican Am. Ins. Co., 398 F.3d 56, 66 (1st Cir.

2005) (quoting Town of Norwood v. New England Power Co., 202 F.3d

408, 420-21 (1st Cir. 2000)). Hypertherm contends that ATTC

cannot prove that it has monopoly power in the relevant market.

"[M]arket power consists of having sufficient economic

muscle to permit [the monopolist] to raise prices well in excess

of competitive levels without inducing customers to turn

elsewhere." SMS Sys., 188 F.3d at 16. Defining the relevant

market is the first step in determining market power, which is

often based on a company's market share. Id.

ATTC alleges that Hypertherm controls 80% of the market for

high end plasma cutting systems and 75-80% of the replacement

parts market. Hypertherm contends that ATTC has improperly

defined the relevant market which should be expanded to include

all reasonably interchangeable substitute products, such as oxyfuel, abrasive water jet, and laser systems, and products made by

foreign manufacturers.5 Hypertherm also asserts that ATTC lacks

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 17 of 21
F.3d at 17 (addressing issue of whether foremarket or aftermarket

was relevant for determining market power).

18

proof of the alleged 80% market share of even the high end

systems. 

The record is not sufficiently developed to permit a

determination on summary judgment as to whether the relevant

market is limited to high end cutting systems, whether it is

global or limited to the United States, and whether Hypertherm's

share of the relevant market is monopolistic. Therefore, that

issue remains unresolved. Hypertherm has not shown that it is

entitled to summary judgment on ATTC's monopoly claims.

B. False Marking

 In Count XI, ATTC alleges that Hypertherm is violating 35

U.S.C. § 292 by including on packaging of its replacement parts

patent numbers that do not apply to those parts. "[W]hen an

unpatented article is marked with the word 'patent' or any word

or number that imports that the article is patented, and such

marking is for the purpose of deceiving the public, the fine

[imposed by § 292] is invoked." Clontech Labs., Inc. v.

Invitrogen Corp., 406 F.3d 1347, 1352 (Fed. Cir. 2005).

Hypertherm moves to dismiss ATTC's mis-marking claim on the

ground that ATTC has not alleged an intent to deceive the public.

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 18 of 21
6ATTC cites paragraphs 34 and 39 which do not contain the

allegations represented. Review of the counterclaim shows that

ATTC intended to cite paragraphs 83 and 88.

19

No allegation of intent to deceive the public is stated in

Count XI. In its objection, ATTC cites allegations earlier in

the counterclaim to support its mis-marking claim.6 ATTC

alleged:

Hypertherm has engaged in patent misuse by falsely

marking packages of consumables with patent numbers

that do not cover the product in the packages. On

information and belief, the mis-marking was to

intimidate and dissuade competitors in the replacement

market for consumables, such as ATTC, from attempting

to copy the products or under take a design-around of

them, thereby adversely affecting competition in that

market. The mis-marking could also have been for the

purpose and with the intent of leaving the false

impression with potential customers of Hypertherm's

products, that Hypertherm's products are protected by

many patents, indeed many more than those of any of its

competitors, and, therefore, its products must be more

innovative, exclusive, and desirable as a result.

Amended Answer ¶ 83. Several paragraphs later, ATTC alleged that

"Hypertherm has been taking all of the foregoing actions with

specific intent, in order to maintain and/or attain monopoly

power in the sale of consumables to the replacement markets." 

Id. ¶ 88. 

Intent to deceive the public for purposes of § 292 requires

"a state of mind arising when a party acts with sufficient

knowledge that what it is saying is not so and consequently that

the recipient of its saying will be misled into thinking that the

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 19 of 21
20

statement is true." Clontech, 406 F.3d at 1352. Proof of

misrepresentation "coupled with proof that the party making it

had knowledge of its falsity is enough to warrant drawing the

inference that there was fraudulent intent." Id. (internal

quotation omitted). "[I]n order to establish knowledge of

falsity the plaintiff must show by a preponderance of the

evidence that the party accused of false marking did not have a

reasonable belief that the articles were properly marked (i.e.

covered by a patent)." Id. at 1352-53.

Although ATTC did not allege that Hypertherm knew that it

was falsely marking its packages of replacement parts, that may

be inferred from the purposes ATTC alleged for marking the

packages. Whether ATTC can prove a false marking claim should be

addressed, if appropriate, through summary judgment, rather than

in a motion to dismiss. 

Conclusion

For the foregoing reasons, Hypertherm's motion to dismiss or

in the alternative for summary judgment (document no. 43) is

granted in part and denied in part. Summary judgment is granted

in Hypertherm's favor on Count I of the counterclaim. The motion

is otherwise denied. ATTC's request for costs is denied.

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 20 of 21
21

The tone of the parties' filings for purposes of the motion

to dismiss or in the alternative for summary judgment does not

demonstrate the level of civility that the court expects of

litigants in this district. Such conduct is not persuasive and

does little to advance a party's cause. The court expects a more

professional approach from counsel in future filings. 

SO ORDERED.

____________________________

Joseph A. DiClerico, Jr.

United States District Judge

September 11, 2007

cc: Jacob K. Baron, Esquire

Steven M. Bauer, Esquire

Seth M. Cannon, Esquire

Joseph A. Capraro, Jr., Esquire

Myriah M. Gambrell-Glenn, Esquire

Jamie N. Hage, Esquire

Nicholas K. Holmes, Esquire

Jonathan A. Lax, Esquire

Barbara L. Mandell, Esquire

Richard C. Nelson, Esquire

W. Scott O'Connell, Esquire

Jeremy P. Oczek, Esquire

Allan J. Sternstein, Esquire

Adam B. Strauss, Esquire

Case 1:05-cv-00373-JD Document 129 Filed 09/11/07 Page 21 of 21