Fla. Judge Finds Car Photo Patents Unenforceable

A Florida federal judge said the owner of patents on taking photos of cars at dealerships can’t assert three of the patents against an automotive photo booth maker, trimming them from an infringement suit because of deceptive statements made to the U.S. Patent and Trademark Office.

U.S. District Judge Mary S. Scriven on Monday said that three patents owned by inventor Stephen M. Swinford are unenforceable in his case targeting 360Booth, which alleged inequitable conduct.

For two of the patents — U.S. Patent Nos. 8,830,320 and 8,830,321 — Judge Scriven said that 360Booth was able to show that Swinford’s attorney Eric P. Mirabel falsely said that delays in paying certain maintenance fees on those patents was unintentional, and those statements were meant to deceive the USPTO.

In attempting to reinstate those patents after the fees were not paid, Mirabel said the delay wasn’t intentional even though “he knew that Mr. Swinford intentionally chose to wait to pay the maintenance fees until” nearly the end of a deadline to ask to revive the patents and pay their maintenance fee, according to the judge’s decision. That choice to put off paying was “based on Mr. Mirabel’s advice that he could wait two years to pay,” according to Judge Scriven.

“We are happy with this outcome and will continue to move forward in the case,” Kumar Vinnakota, an attorney for 360Booth, said in a statement to Law360 on Thursday.

The patents-in-suit are U.S. Patent Nos. 8,830,320; 8,830,321; 9,438,864; and 11,570,369.

360Booth is represented by Rajkumar Vinnakota, Vishal Patel, Scott Topolski, Ian Ross Phillips and Amanda DeGroote of Cole Schotz PC and Christopher Evans of Offor Evans PLLC.

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