June 14, 2006 - As announced yesterday, June 13, 2006, M.T.H.
Electric Trains filed suit against Lionel for patent infringement.
Yesterday's press release indicated that a timeline would be released
today detailing the dispute's history between M.T.H. and Lionel.
The following timeline illustrates the developments of patent
infringement issues between M.T.H. Electric Trains and Lionel over the
past four years. Under each date we have included a link to a PDF
document that contains either actual correspondence between M.T.H. and
Lionel counsel or court documents pertaining to the actual issue.
Consumers interested in understanding in more detail the actual
events between the two firms, as they occurred, will find this
information far more helpful than a press release designed to put the
firm's best foot forward. With this information, consumers will be
able to see both company's tactics and concerns so that one can draw a
more balanced impression of what has been occurring in our industry.
It is our hope that when such information is digested, M.T.H.'s
actions will be better understood.
June 21, 2002 - Lionel files a complaint
against M.T.H. for falsely advertising its DCS System. In the
complaint exhibit D is an affidavit by Lou Kovach (developer of TMCC I
and TMCC 2) who Lionel had examine M.T.H.'s DCS System. At that time
Lionel could have added to the complaint any Patent Infringement
claims it may have had against M.T.H.
September 4, 2002 - Lionel sends M.T.H. a letter
claiming DCS infringes TMCC patents. Lionel demands that M.T.H.
immediately cease and desist from selling any more DCS Systems.
September 13, 2002 - M.T.H. responds
to Lionel's claim that Lionel owned the concept of "remotely
controlling model trains" by sending Lionel prior art of a remote
control system built by Marklin.
September 20, 2002 - Lionel asks
M.T.H. to sent proof of the Marklin System.
October 3, 2002 - M.T.H. sends
Lionel the Marklin brochures that predate Lionel's Patent application.
October 15, 2002 - Lionel or its attorneys can't find the
dates on the Marklin brochures (which show the technology predates
Lionel's patents) and ask
M.T.H. to provide the definite dated material.
October 28, 2002 - M.T.H. informs
Lionel where to look on the brochures to find the dates of August 1980
and January 1991 which demonstrate how the Marklin technology predates
Lionel's patent claims.
November 13, 2002 - Lionel asks
M.T.H. for any additional prior art that invalidates Lionel's patent
claims.
January 30, 2003 - Lionel drops
it baseless suit against M.T.H. for its false advertising claims
relating to M.T.H.'s DCS System.
September 18, 2003 - Lionel sends M.T.H. a sends
to tell them that they are still investigating if M.T.H.'s DCS System
is infringing its patents one year after the original letters were
exchanged.
September 26, 2003 - M.T.H. responds
to Lionel's letter with a suggestion to Lionel that it review all the
prior art M.T.H. cites in its DCS Patents.
September 29, 2003 - M.T.H. sends Lionel a letter
pointing out its infringement of M.T.H.'s registered trademark "Ives",
the use of the QSI HO Board that incorporates 1 scale mph increments
for speed control, and M.T.H.'s microprocessor controlled Synchronized
Puffing Smoke feature.
October 10, 2003 - Lionel responds
to M.T.H.'s letter by agreeing not to use the Ives name in its next
catalog and to investigate M.T.H.'s claims of infringement.
October 27, 2003 - M.T.H. responds
to Lionel_s October 10th letter.
November 19, 2003 - Lionel responds
to M.T.H. claiming that a Lionel B&A Hudson steam locomotive
features synchronized puffing smoke which predates M.T.H.'s
synchronized puffing smoke patent.
December 3, 2003 - M.T.H. responds
to Lionel's claim that its B&A Hudson is prior art by pointing out
that the "puffing" action is achieved with a crude "mechanical
apparatus" and thus does not qualify as prior art to M.T.H.'s
microprocessor based method of achieving its synchronized puffing
smoke action.
December 4, 2003 - M.T.H. sends Lionel a copy
of M.T.H.'s just-issued US Patent #6,655,640 covering synchronization
of smoke and sound effects.
February 20, 2004 - M.T.H. writes
Lionel after getting a copy of Lionel's newly issued patent for its so
called Smart Smoke system, which is exactly what M.T.H. had designed
and put out in the market prior to Lionel filing its patent
application. While Lionel was arguing that M.T.H.'s synchronized smoke
system was not patentable as evidenced by their belief that the Lionel
B&A Hudson qualified as prior art, Lionel's own lawyers which had
filed a patent application for the exact same invention.
As of June 14, 2006, Lionel has never responded to M.T.H.'s
Letter concerning the synchronized smoke system.
December 27, 2004 - M.T.H. writes
Lionel once again to introduce Lionel's new lawyers and management
team of Lionel_s continued violation of M.T.H.'s Synchronization Smoke
Patent, Speed Control Patent and use of M.T.H.'s registered trademark
of Ives. M.T.H. offers to settle all disputes with no monetary
damages to Lionel if Lionel agrees to stop using M.T.H.'s
Intellectual Property.
As of June 14, 2006, Lionel has never answered M.T.H.'s letter
and continues to display no regard for M.T.H.'s intellectual property.
If Lionel had prior art to M.T.H.'s patent, at the least, one would
have expected them to at least say they did.
November 7, 2005 - Lionel sends M.T.H. another threat
that M.T.H. is violating Lionel patents in an attempt to leverage
M.T.H. into settling all its claims against Lionel.
Note: portions of the letter contain redacted information not
pertaining to the patent infringement issues discussed in this
timeline.
December 5, 2005 - M.T.H. responds
to Lionel's threat that their request is unfounded and contains
baseless claims of patent infringement on M.T.H.'s part.
Note: portions of the letter contain redacted information not
pertaining to the patent infringement issues discussed in this
timeline.
May 31, 2006 - Lionel files a motion
under Bankruptcy Rule 2004 to conduct discovery to determine whether
to object to M.T.H.'s Patent Infringement Claim.
June 13, 2006 - M.T.H. files suit
against Lionel for patent infringement.
June 13, 2006 - M.T.H. objects
to Lionels discovery using Bankrupty Rule 2004.
Naturally we would prefer that none of the above events ever had
taken place. Indeed, the information shows that we have tried in the
past to terminate these actions upon Lionel's agreement. Alas, no such
cooperation has occurred and in some cases, outright silence has been
Lionel's preferred response.
Regardless of Lionel's stance today, M.T.H. continues to prefer
that, at the very least, the actions of the past few weeks be
terminated on both sides until after the Sixth Circuit Court of
Appeals rules in the theft of trade secrets case. Standing down these
actions until then is the very least our two firms can do to
illustrate to the marketplace of our commitment to the industry and
our customers.