by Kathleen Lynch | Aug 6, 2015 | Entrepreneurship, Innovation, IP Management, Patent Prosecution
(I have to admit I picked this case in part on the name, Fuzzy Babba. )
Walmart sells a similar fuzzy slipper under the mark “Fuzzy Babba™.” Buyer’s Direct sued Walmart and others for infringing their design patent directed to a slipper that Buyer’s Direct sells under the mark “Snoozies”. In their defense, Walmart and others claimed that the patent was invalid because it was an obvious variation on slipper designs in existence at the time the patent application was filed.
A Federal District Court in New York City found in favor of the accused infringers, Walmart, Sears and High Point Design. The court found that the differences between the design patent and other slipper designs were obvious variations and that the patent was invalid.
What’s the take away here? Be very sure of the strength of your patent when you assert it against an alleged infringer. The first defense is often an attack on the patent itself. If the accused infringers prevail, your patent may be invalidated and any rights associated with it are lost.
Advising on intellectual property issues is critical to any organization. Having the right person to help you make that decision is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Jul 29, 2015 | Innovation
I recently came across an interesting article in the Economist on the way in which inventions are developed today and in the past. It raises some intriguing points on how developments are handled today, as well as some insights regarding the scope and breadth of innovation over time.
by Kathleen Lynch | Jul 14, 2015 | Innovation
A California jury awarded a cardiologist $200 million dollars against Boston Scientific. The jury heard the patent infringement and licensing lawsuit filed by Dr. David Jang who developed two cardiac stents for Boston Scientific. The jury found in favor of Dr. Jang and awarded him $200 million dollars in damages. The jury determined that the medical device company breached its contract with Dr. Jang and infringed two patent claims.
In 2002, Dr. Jang licensed two stent patents to Boston Scientific in exchange for $50 million upfront and an additional $110 million contingent on sales of stents that incorporate his patents. In 2005, Dr. Jang sued Boston Scientific for breaching the license agreement and claimed that Boston Scientific failed to make payments required by the terms of the agreement. Dr. Jang alleged the company owed him just under $100 million for using his patented products, and with interest at about 12 percent a year, would bring that amount to more than $200 million.
What’s the take away here? First, a patent is only as good as your ability to enforce it. Here, the good doctor was able to stand his ground against a large opponent and prevail. Second, your ability to prevail in an infringement action may take longer than you would ever want. But patience may be a virtue in patent infringement actions, especially if the facts favor your cause.
Protecting your innovative developments is critical to any organization. Having the right person to help you through that process is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Jun 30, 2015 | Innovation, IP Management
Recently, the U.S. Supreme Court confirmed a lower court ruling for Marvel Entertainment relating to a patent royalty dispute for a Spider-Man toy. The majority, written by Justice Kagen, found that Marvel did not have to pay the agreed to royalties to the inventor of a web-shooting toy after the patent term expired. “Patents endow their holders with certain superpowers,” Kagan wrote, “but only for a limited time.”
The decision is a loss for the Spider-Man toy inventor Stephen Kimble. Mr. Kimble obtained the patent in 1990 for a toy that shoots foam string from a gloved hand, imitating the web spun by a spider person. Kimble sought to market the toy to Marvel’s predecessor, which at the time made its own “Web Blaster” toy without paying Kimble.
In 1997, Kimble sued Marvel and the parties settled for a fixed payment to Kimble, along with a 3 percent royalty on sales of the toy with no cutoff date. Marvel later sought a declaratory judgment that it no longer needed to pay royalties after the end of the patent term in 2010.
What’s the take away here? If you are entering into a license agreement for intellectual property rights, be sure to fully understand your obligations as well as your rights. Capitalizing on innovative developments is critical to any organization. Having the right person to help you make those decisions is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Jun 12, 2015 | Innovation
Google recently filed for patent protection for an interactive toy, such as a teddy bear. In response to the user’s voice or movement, the device can adjust its gaze, or change its expression. In addition to its ability to interact with children, the toy may also be used to control media devices such as a TV, DVD, or the like.
The device, while initially aimed as an interactive children’s toy has taken on the air of a creepy toy. The patent application was filed in 2012 when privacy issues were less of a concern. It has only recently been published. However since the device has the ability to record conversations and log activity, the privacy concerns are heightened, especially since the device is intended for children. There is a petition to request the application be withdrawn. Google noted that “some … ideas later mature into real products or services, some don’t.”
Given the length of the patent process what sometimes starts out like a good idea may not become one in the long run. Generally, good ideas are worth protecting. Protecting your ideas is critical to any organization. Having the right person to help you make that decision is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Feb 3, 2015 | Innovation, Patent, Trade Secrets
Unitherm Food Systems, a food process machinery manufacturer, recently discovered that you cannot seek both patent and trade secret protection for the same innovation. Unitherm filed an action in 2014 against Hormel for disclosing Unitherm’s trade secrets to a competitor. Unitherm’s alleged trade secret focused on a method for pre-cooking sliced bacon.
In 2007, both companies executed a joint development agreement for developing an oven that would produce high levels of steam for cooking. Under the agreement, Hormel would own all intellectual property. In 2008 Unitherm filed a patent application covering the process of cooking food at high steam levels. Hormel withdrew from the agreement with Unitherm and filed for patent protection in 2010 on its own method of cooking bacon. Unitherm alleged that the method claimed by Hormel was that developed by Unitherm during the course of the joint development agreement and was proprietary.
The court threw out Unitherm’s claim for misappropriating its trade secret. The judge told Unitherm that they could not maintain a trade secret on something for which they were seeking patent protection.
Take away: you can’t claim something as a trade secret if you are going to try to obtain patent protection for the same innovation. Best practice: first figure out what is the best avenue for protection for your innovation (i.e. patent, design patent, trade secret, etc.). Then, try to obtain that protection for your innovation to the greatest extent allowed by law.
Protecting your innovative developments is critical to any organization. Having the right person to help you make that decision is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
