W. Bruce Patterson, 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

U.S. Patent Applications for Foreign Clients and Law Firms

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Non-U.S. IP firms and clients want their patent applications filed in the U.S. for a competitive fee and without the monthly billing that so often accompanies U.S. practice. Under a new program, Patterson + Sheridan receives applications and files them for a one-time flat fee, plus government expenses. The single fee covers everything associated with a patent application up to the first substantive action by the United States Patent and Trademark Office. The program results in a more predictable cost model, dramatically reducing time keeping and accounting activity and resulting in a model that more closely fits European practice.

A Global Approach to Serving Clients

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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.

How We Draft and Enforce Non-Traditional Trademarks for America’s No. 1 Acoustic Guitar-Maker

At Patterson + Sheridan, our trademark services go above and beyond words. We have deep experience drafting and enforcing non-traditional trademarks that can protect a product’s shape, pattern or color.

You may not even realize that your consumer product has unique attributes that can be protected by trademark. We help clients identify unconventional characteristics that set their designs apart and that deserve to be protected.

Trusted by one the world’s most renowned guitar manufacturers

Taylor Guitars, the number-one manufacturer of acoustic guitars in the United States, has trusted us with protecting their iconic designs for years.

You know a Taylor guitar when you see one: Its headstock, bridge and pickguard each have very unique shapes. Most guitarists don’t even have to see the logo to know it’s a Taylor — these elements are a giveaway even from a distance. That’s what makes those shapes trademark-worthy.

Here’s the problem: Low-end manufacturers, mostly in China, often try to capitalize on popular products and copy their shapes. That’s exactly what we’ve seen happen with Taylor’s designs.

However, it’s difficult to use the courts as leverage against these foreign manufacturers because they can’t be sued unless they are caught trying to sell the product in the United States.

Proactive protection from trade shows to lawsuits

Our team doesn’t just sit in our office and cross our fingers. We get out of the office to educate clients on what they can do and actively protect their products in important locations where they do business.

For example, we regularly attend the NAMM (National Association of Music Merchants) Show to enforce Taylor’s marks. This event draws nearly 100,000 attendees each year and is described as "the world’s largest trade-only event for the music products industry.”

When we discover a counterfeit product at a tradeshow like this, we take a phased approach of sending warning letters (in English and Chinese) and sending agents to follow up with infringers. If they don’t heed those warnings, our team takes legal action.

We recently settled a lawsuit with a company that repeatedly sold infringing guitars at the NAMM Show, but that is just one among many. Our team continually attends trade shows from Germany to Shanghai to proactively protect our clients against counterfeiters.

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