Plaintiff Prepares Appeal of RFID Case Against Wal-Mart, Target, Gillette

By Mary Catherine O'Connor

March 7, 2008—An RFID-related lawsuit filed more than 18 months ago by a Houston man named Ronald Bormaster has reached a turning point. In his suit, Bormaster has claimed Wal-Mart and Target, as well as Gillette (owned by Procter & Gamble), are infringing on his RFID patent, which describes a generic RFID tracking system and lists its applications, including the tracking of golf clubs, medical devices, children in a defined play area and livestock. The patent does not specifically name the supply chain applications for which the retailers and manufacturer in the case employ the technology (see Patent Holder Sues Wal-Mart, Others).

The suit initially named Home Depot, Pfizer and Michelin North America as defendants. Home Depot, however, was quickly dropped from the case because it was able to prove it was not using technology described in the patent says Edward Goldstein, a partner at Goldstein, Faucett & Prebeg, LLP and Bormaster's lead attorney. According to Goldstein, Pfizer and Michelin are no longer named in the suit because they settled with his client out of court, though the attorney declines to provide details of the settlements.

Early on, the defendants filed motions with U.S. District Court Judge Leonard Davis in the Eastern District of Texas, calling the patent invalid and asking him to dismiss the case, but the motions were denied. However, Goldstein says, based on a court document known as a claim construction, filed by the judge on February 11, Bormaster has now asked the court to dismiss the case because he disagrees with the judge's interpretation of the patent. Goldstein says Bormaster plans to appeal the case if it is dismissed—or if, rather than dismissing the case, the judge rules in favor of the defendants. In either scenario, he adds, the appeal would state that the judge's interpretation of one of the claims is inaccurate.

A judge writes a claim construction to clarify and interpret the specific patent claims that are the basis of a patent case. Bormaster's particular suit is based on two of the 22 claims in his patent for an inventory control system. During early arguments in the case, the defendants asked the judge to construe the term "interrogator/reader" described in the patent. In response, the judge found that the patent describes an interrogator/reader as containing an RF field generator and a receiver.

According to the Bormaster patent, the judge noted, the interrogator/reader does not contain a transmitter. A transmitter is an element of interrogator/readers described in earlier patents awarded to Cato, et al in 1996 and Reis, et al in 1997. Describing an interrogator/reader as not having a transmitter made it novel, Bormaster argued, based on prior art (other, previously issued patents) and, therefore, patentable.