DALLAS, Sept. 12, 2017 /PRNewswire/ -- In May 2014, RegenLab, SA ("RegenLab") published an email alleging that the Eclipse PRP kit contained pyrogens. Eclipse Aesthetics LLC ("Eclipse"), which distributes PRP Kits to a large number of medical providers throughout the United States, sent RegenLab a Cease & Desist Letter demanding that RegenLab issue a public retraction of the false email, pay an amount to cover Eclipse's costs associated with a corrective advertising campaign, and make a $50,000 donation to the American Cancer Society as liquidated damages.
RegenLab failed to respond to the Eclipse Cease & Desist Letter and RegenLab did not make the requested donation to the American Cancer Society. In July 2014, Eclipse reluctantly brought a legal action against RegenLab for slander and defamation, among other claims (Case No. DC14-06990 (116th Judicial District Court in Dallas, Texas)) alleging that RegenLab intentionally made false statements in a marketing email stating that the Eclipse PRP kits contained pyrogen (contaminants) when in fact the Eclipse PRP kits do not contain pyrogen. Eclipse plans to introduce evidence during the litigation that will show that RegenLab fabricated the false information to intentionally damage Eclipse's credibility in the marketplace.
In November 2016, after the lawsuit against RegenLab had been pending for more than two years, RegenLab filed a lawsuit against Eclipse, a sub-distributor at the time, Healeon Medical Inc., and its PRP manufacturer, Estar Technologies, Ltd., for patent infringement (Case No. 16-cv-08771-ALC (SDNY)), claiming that the Eclipse PRP kit infringes its method patent. Then in May 2017, RegenLab sued three of Eclipse's customers in New York (Case No. 1:17-cv-03845-UA (SDNY)) for allegedly infringing the same method patent by using the Eclipse PRP kit.
In a press release published by RegenLab shortly after the lawsuit against Eclipse's customers was filed, RegenLab alleges that the Eclipse PRP infringes the RegenLab '957 patent and that the customers somehow infringe upon that same patent by using the Eclipse PRP Kits. The press release mentions nothing about the requirements to infringe the method claim (Claim No. 20) that is asserted by RegenLab in both lawsuits. Eclipse filed counterclaims in the patent infringement suit alleging that the press release is misleading because the press release alleges that the Eclipse PRP kit infringes the patent when the product itself cannot infringe a method claim as a matter of law.
In a recent order, Judge Carter found that the RegenLab "press release is easily misconstrued by those without significant patent law expertise" and that the "wording of the press release is confusing." Judge Carter further found that "revisions to the press release would be useful to mitigate any potential confusion regarding the nature of the claims." In a hearing in New York leading up to this Order, RegenLab's counsel, Stephen Ball, admitted that the Eclipse PRP does not, in and of itself, infringe the RegenLab patent. RegenLab's counsel went on to admit in his arguments to the court that "if they are using just the PRP without that last step of use in claim 20, then yes, I believe they would not be infringing."
Eclipse CEO, Tom O'Brien, was elated to hear that RegenLab admitted in court what he had known all along - that the Eclipse PRP does not infringe the RegenLab patent. Mr. O'Brien goes on to explain, "RegenLab has a utility patent pertaining to how PRP is mixed and used — their patent specifically requires the admixing of a cell extract after the creation of the PRP. Because the Eclipse PRP is a product, it cannot infringe upon RegenLab's method patent. And even when the kit is used by doctors to create PRP, RegenLab's counsel admits that those doctors do not infringe the asserted claim of the RegenLab patent if they do not admix any cell extracts with the PRP."
Eclipse and its manufacturer, Estar Technologies, Ltd. are currently defending the three Eclipse customers that Eclipse alleges RegenLab wrongly sued. Further, Eclipse has filed counterclaims against RegenLab for the false statements being made by RegenLab. Mr. O'Brien gives a warning to RegenLab representatives and others who are continuing to use the RegenLab press release to sway new customers, "you are warned — the continued use of the confusing press release will be met with swift action."