Jessie D. Herrera, Jr., Partner

Case Studies

Cisco Systems, Inc. – Flip Video Camera Design Patents

In 2009, Cisco Systems acquired the technology company that pioneered the original “Flip Video” cameras. Cisco turned to Patterson + Sheridan to protect the ornamental appearance of the point-and-shoot video cameras, which were tremendously successful due to their unique design. 

We implemented an aggressive design patent strategy to cover various novel aspects of the camera’s ornamental design. As shown in the images to the right, we obtained multiple design patents covering various combinations of the cameras’ ornamental aspects.

Cisco successfully used the “Flip Video” camera design patent portfolio to file and eventually settle a suit alleging infringement of its design patents. This is described in a 2010 Law360 article (whose link is below).

Resources

World Energy Systems, Inc. – Patent Portfolio Development

oil rig picture

Patterson + Sheridan has secured numerous patents for World Energy Systems, Inc., a developer of enhanced oil & gas recovery technologies. During this process, we  developed an in-depth knowledge of the company’s key technologies, markets, and competitive landscape and came to understand its business goals, including the company’s long-term plan to secure a major private funding partner.

Then, we proactively worked with World Energy Systems, Inc., to develop a robust patent strategy that includes identifying and developing key technologies, obtaining domestic and international protection of these key technologies, and avoiding third-party patent disputes. The portfolio now comprises numerous patents and pending patent applications in countries throughout the world. World Energy Systems, Inc. has also secured a key business relationship for obtaining potential funding partners.

A Global Approach to Serving Clients

puzzle pieces - smaller image

One of our US-based clients is a consumer products company with affiliates in China; the Chinese affiliates produce goods for sale in the US and Chinese markets. Protecting intellectual property originating in China for an international market is challenging and expensive due to differences in culture and languages. Working closely with our client, we’ve crafted a global approach that improves costs, efficiency, and the quality of the client’s patent applications.

For inventions conceived in China, the client files Chinese utility model applications which are inexpensive, rather informal and always result in a Chinese patent since they are not examined for novelty. For inventions deemed important enough to protect internationally, the client files PCT applications which are later extended into a number of jurisdictions, including the US. In the past, the PCT applications were essentially no more than a translated version of the Chinese utility model often having little disclosure in the form of written detail and drawings to provide support for claimed subject matter. In addition, the translations into English were also being prepared by non-technical personnel and errors were common. As a result, US and European applications were often rejected and any allowable subject matter could only be narrowly claimed.

To help the client improve the quality of these non-Chinese applications, we provide a combined translation and revision service prior to international filing. Our English-Chinese bilingual associates translate the original Chinese application to English and at the same time revise and enlarge the application adding additional subject matter and embodiments of the invention based upon discussions with their Chinese- speaking counterparts at the client’s facilities in Shanghai. The result is a high quality application that includes everything from the original Chinese utility model plus any other developments that have taken place during the priority year. The client pays a single, flat fee for the service that includes the translation. Furthermore, at prosecution stage, the same bilingual associate directly communicates with the Chinese inventors in Chinese for prosecution strategies, thereby saving the client costly translation fees for the office actions and English language communications.

Strategic Patent Reviews Help an Oilfield Products Company Cut Costs and Streamline Portfolio

It’s not uncommon for a company to have a sizeable patent portfolio but not have an in-house intellectual property attorney. This was the case for one international oilfield products company that serves various sectors of the oil and natural gas industry. We helped the company cut costs and streamline its portfolio through strategic organization of its various patents. Here’s how we did it.

Managing a patchwork portfolio amid rapid growth and acquisitions

This particular company had grown quickly by acquiring a number of smaller tool companies — and its patent portfolio had grown with it. Many issues had to be addressed on a case-by-case basis as the company inherited numerous domestic and international patents that were often managed in different ways by the acquired company. Among some of the issues: critically analyzing how these new patents fit into their portfolio overall, or if older patents were still relevant as technology and the industry evolved.

For a fast-growing company, having a clear-cut strategy and structure for reviewing and maintaining its portfolio is paramount. A rapidly growing portfolio can become costly very quickly, especially when dealing with international patents.

Assess and organize: Creating a more efficient, streamlined patent portfolio

Our team helped the oilfield products company audit and restructure its portfolio by organizing its patents according to the company’s expanding and evolving product lines. We then partnered with their team to assign decision makers for each corresponding business group and establish quarterly patent committee review meetings.

The initial meeting of each group focused on educating the group about its breadth of patents and discussing next steps for each, such as:

  • Should we maintain this patent?
  • Do we need to pursue additional coverage?
  • Should we abandon this patent because it’s no longer relevant?
  • Are you aware of any third parties infringing on this patent?

Future meetings included examining any newly developed technologies or newly acquired patents to determine how those fit into the company’s portfolio.

Stronger IP protection and strategy

The biggest tangible result for our client was establishing a clear IP strategy, which resulted in a targeted, robust portfolio managed within an established budget that led to significant cost savings. Streamlining its portfolio also allowed the company to better identify potential infringements by third parties. Thanks to this new process, the company’s technologies and the innovative ideas of its engineers are now more protected than ever.

Ten Years of Tools: Helping Olympia International develop new products and avoid litigation from competitors

Ten Years of Tools: Helping Olympia International develop new products and avoid litigation from competitors

For more than a decade, Patterson + Sheridan has helped Olympia grow from a small hand tool company to a major supplier to the largest retailers in the country. Our firm provides strategic counsel to help the company develop new products while mitigating the risk of litigation.

Determining the “path of least resistance” for product development

When Olympia is exploring new product lines, our attorneys help them identify existing patents and navigate the protected intellectual property of competitors. Through extensive research and analysis, we provide efficient pathways to bring new products to market without infringing on prior utility patents, design patents or trademarks. Over the years, Patterson + Sheridan has helped Olympia bring dozens of new products to market.

From lawsuit defendants to selling millions of units annually

A major breakthrough for the company was the introduction of a low cost, high volume consumer product at a major big box retailer. After identifying an excess production capacity and significant market demand, Olympia started producing and importing the products. There were no existing design patents for the products in place; however, a competitor ultimately sued for unregistered trade dress infringement.

Shortly after the suit was filed, we helped Olympia develop an alternative, more attractive product design that was free of infringement claims and a better product overall. This quick pivot in designs mitigated damages in the lawsuit and impressed Olympia’s customer. To this day, Olympia sells millions of these products each year.

Business growth fueled by a strategic partnership

Thanks to this ongoing relationship, we have been able to help Olympia grow its business by identifying workarounds to existing products, providing strategic insight into the marketplace and helping the company manufacture new products while avoiding competitors’ intellectual property.

Associated attorneys: Bruce Patterson, Jessie Herrera, Aaron Perkins, Jerry Selinger, Susan Powley

Associated practices: Litigation + Dispute Resolution