Crazy Story about Wilson & Patents
Yo, I'm not sure of the validity of this story I found on an invention website, but I think it is very interesting. I wonder what Wilson's official response would be?
Wilson Sporting Goods
Back in the '70s, Bob developed a folding bicycle which he ended up licensing to Korex, a major Korean sporting goods manufacturer in the bicycle and golf markets. Korex expressed interest in expanding into the tennis market and Bob developed a vibration-free tennis racket for them, maintaining the patent rights and licensing the design to them.
After several years of production, Korex decided to terminate their activity in the tennis market and released Bob from their agreement. So he contacted Wilson, the major U.S. manufacturer of such rackets.
Wilson was interested. He met with them in Chicago. Gave them full know-how, engineering and test data. Even a dozen rackets. Royalty rate was negotiated. He agreed to take a much lower rate from Wilson than he was getting from Korex on the expectation that Wilson's production would be much greater. A final negotiating meeting was scheduled.
Then it was cancelled. Wilson went through a major management shakeup. When things settled down Bob got back in touch with his only contact left there. "Yes, Wilson's still interested. Yes, they still have his data and his rackets."
After several months of trying to prod some action, he gets the statement, "Well, our patent attorney thinks you have a weak patent -- and we're going to go ahead and do our own version." That version came on the market about a year ago -- the Wilson Air-Shell.
Bob's design involved thinning down the racket handle, wrapping it with shock absorbant material, covering that with a thin hard shell (to maintain the "feel" of the standard racket handle), and then finishing the handle with conventional wrapping. And that's how his patent claims read -- except that his thin hard shell was in two pieces (2 half tubes) for ease of manufacture.
Wilson's design is identical, except that they use a full tube (one piece). Technically, they aren't infringing his patent. He and his attorney are currently arguing that, although Wilson is not literally infringing, they are infringing under the doctrine of equivalents, i.e., that Wilson's design performs substantially the same function in substantially the same way to obtain the same result. Certainly a reasonable argument. Wilson's response, "If you persist in your charge of infringement, Wilson will seek sanctions and attorney fees against Mr. Shomo for pursuing a frivolous claim."
Put yourself in Bob's shoes. What do you do now? If you persist in the case, it's likely you'll come to a reasonable settlement. However, there's an outside chance that Wilson could prevail on their threatened sanctions. And recognize that Bob's not pursuing this matter under a corporate liability-shield -- all of his personal assets are at risk. Not an easy decision to make!
It's likely that if there hadn't been a management shakeup at Wilson -- at that time -- an agreement would have flowed -- even with a "weak" patent. There's just not that much money involved. But a new management team, looking at actions of past employees, may well see the situation differently -- and in this case they did. And once that decision is made, the rest flows -- including hard-ball threats.
Short of having written broader claims in his patent -- which he may or may not have been able to do -- there's little Bob could have done to have prevented this situation. In essence, he did everything "right", only to lose -- even if he does proceed and does prevail.
Wilson Sporting Goods
Back in the '70s, Bob developed a folding bicycle which he ended up licensing to Korex, a major Korean sporting goods manufacturer in the bicycle and golf markets. Korex expressed interest in expanding into the tennis market and Bob developed a vibration-free tennis racket for them, maintaining the patent rights and licensing the design to them.
After several years of production, Korex decided to terminate their activity in the tennis market and released Bob from their agreement. So he contacted Wilson, the major U.S. manufacturer of such rackets.
Wilson was interested. He met with them in Chicago. Gave them full know-how, engineering and test data. Even a dozen rackets. Royalty rate was negotiated. He agreed to take a much lower rate from Wilson than he was getting from Korex on the expectation that Wilson's production would be much greater. A final negotiating meeting was scheduled.
Then it was cancelled. Wilson went through a major management shakeup. When things settled down Bob got back in touch with his only contact left there. "Yes, Wilson's still interested. Yes, they still have his data and his rackets."
After several months of trying to prod some action, he gets the statement, "Well, our patent attorney thinks you have a weak patent -- and we're going to go ahead and do our own version." That version came on the market about a year ago -- the Wilson Air-Shell.
Bob's design involved thinning down the racket handle, wrapping it with shock absorbant material, covering that with a thin hard shell (to maintain the "feel" of the standard racket handle), and then finishing the handle with conventional wrapping. And that's how his patent claims read -- except that his thin hard shell was in two pieces (2 half tubes) for ease of manufacture.
Wilson's design is identical, except that they use a full tube (one piece). Technically, they aren't infringing his patent. He and his attorney are currently arguing that, although Wilson is not literally infringing, they are infringing under the doctrine of equivalents, i.e., that Wilson's design performs substantially the same function in substantially the same way to obtain the same result. Certainly a reasonable argument. Wilson's response, "If you persist in your charge of infringement, Wilson will seek sanctions and attorney fees against Mr. Shomo for pursuing a frivolous claim."
Put yourself in Bob's shoes. What do you do now? If you persist in the case, it's likely you'll come to a reasonable settlement. However, there's an outside chance that Wilson could prevail on their threatened sanctions. And recognize that Bob's not pursuing this matter under a corporate liability-shield -- all of his personal assets are at risk. Not an easy decision to make!
It's likely that if there hadn't been a management shakeup at Wilson -- at that time -- an agreement would have flowed -- even with a "weak" patent. There's just not that much money involved. But a new management team, looking at actions of past employees, may well see the situation differently -- and in this case they did. And once that decision is made, the rest flows -- including hard-ball threats.
Short of having written broader claims in his patent -- which he may or may not have been able to do -- there's little Bob could have done to have prevented this situation. In essence, he did everything "right", only to lose -- even if he does proceed and does prevail.
Replies to This Discussion
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Permalink Reply by Tough Love Tennis on
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interesting...
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Permalink Reply by Protrainer Tennis on
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It's a brutal world when dealing with patents and BIG NAMES... It wouldn't suprise me if it were true. There's a new movie coming out on the 3rd of October about the man that invented the intermittent windshield wiper and a similar battle with Ford. It's called Flash of Genius.
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