Calgon Carbon Corporation Pays Settlement, Exits the Anti-Tarnish Jewelry Organizer Business, and Sends a Letter of Apology to QVC; Settlement Benefits Lori Greiner ® Jewelry Organizers
Merchant & Gould, an intellectual property law firm, today announced its client For Your Ease Only, Inc. favorably resolved a nearly 9-year patent litigation fight with Calgon Carbon Corporation. Under the terms of the agreement, Calgon Carbon Corporation; 1) paid For Your Ease Only $4.3 million dollars, 2) agreed to exit the anti-tarnish jewelry organizer business, and 3) sent a letter of apology to QVC, Inc. (a major customer of For Your Ease Only). In exchange, For Your Ease Only dismissed its lawsuit which 1) sought a declaration from the U.S. District Court for the Northern District of Illinois that it did not infringe Calgon Carbon's patent, 2) sought a declaration of invalidity of Calgon's patent, and 3) claimed that Calgon Carbon tortiously interfered with the relationship between For Your Ease Only and QVC, Inc. For Your Ease Only also dismissed its pending appeal in the Seventh Circuit Court of Appeals in a related matter, seeking assets of Calgon to enforce a $2.1 million judgment against Calgon's former co-defendants, Mark Schneider and Product Concepts Company.
"We are very pleased with the outcome of this case," said Dan McDonald, lead counsel for For Your Ease Only and a partner with Merchant & Gould. "We sought damages due to lost sales and the damage to the reputation of our longstanding client. The extraordinary monetary and non-monetary terms of this agreement serve as a tremendous vindication of For Your Ease Only's position and the Lori Greiner brand." The litigation was stayed for several years pending the outcome of two reexaminations of Calgon's patent by the U.S. Patent and Trademark Office (USPTO). The USPTO cancelled all of the claims of Calgon's original patent. Calgon eventually withdrew its infringement claim after it exhausted all appeals of the USPTO's decision, including a summary affirmance of the decision by the U.S. Court of Appeals for the Federal Circuit.
As part of the lawsuit, For Your Ease Only alleged that Calgon's U.S. patent, No. 4,612,628, was unenforceable due to inequitable conduct. The federal court in Illinois had granted Merchant & Gould's motion to pierce Calgon's assertion of attorney-client privilege, finding that Merchant & Gould had established a prima facie case of fraud with respect to significant and material prior art suppressed by Calgon and withheld from the USPTO. That prior art provided part of the basis for the USPTO's cancellation of the claims of the '628 patent during reexamination.
The case started when For Your Ease Only sued competitor Calgon Carbon Corp., Product Concepts Company, and Mark Schneider in 2002, alleging tortious interference with business relations arising from Calgon's assertions of patent infringement to QVC, Inc. (a major customer of For Your Ease Only). Subsequently, For Your Ease Only obtained a $2.1 million judgment against co-defendants Mark Schneider and Product Concepts Company (PCC) in 2006. Schneider and PCC had ceased participating in the case when Schneider absconded and moved from the U.S. to Costa Rica. For Your Ease Only collected about $380,000 of this judgment through an action against HSN LLC, which had made payments to a suspect business operated by Schneider's brother-in-law. For Your Ease Only pursued further collections on this judgment against Calgon. For Your Ease Only's claims against Calgon in the underlying lawsuit and in the judgment enforcement efforts ultimately resulted in this $4.3 million settlement.
"I am happy. I feel like justice has been served," said Lori Greiner, President of For Your Ease Only, Inc. For Your Ease Only makes Lori Greiner® anti-tarnish jewelry organizers sold primarily through QVC, Inc. Lori Greiner owns over 100 patents and has her very own show, Clever & Unique Creations by Lori Greiner appearing live each month on QVC TV. Her products can also be found in retail stores and catalogues. Ms. Greiner and her very popular products are regularly featured in top national and international magazines. The case is For Your Ease Only, Inc. v. Calgon Carbon Corp. et al, No. 02-1345 (N.D.Illinois). Also involved in the case from Merchant & Gould were Heather J. Kliebenstein and William D. Schultz.