wearable technology: protecting ip rights and minimizing...

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Presenting a live 90-minute webinar with interactive Q&A

Wearable Technology: Protecting IP Rights

and Minimizing Infringement Risks Leveraging Utility Patents, Design Patents, Trademarks and Trade Dress to Safeguard IP

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

TUESDAY, AUGUST 23, 2016

John M. Augustyn, Shareholder, Leydig Voit & Mayer, Chicago

Rod S. Berman, Partner, Jeffer Mangels Butler & Mitchell, Los Angeles

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Chicago l Rockford l Seatt le l Washington, D.C. Frankfurt , Germany

Wearable Technology: Protecting IP Rights and

Minimizing Infringement Risks John M. Augustyn

Leydig, Voit & Mayer, Ltd.

Strafford Webinar – August 23, 2016

Chicago Frankfurt am Main

San Francisco Bay Area Washington D.C.

John Augustyn

John Augustyn has been active in litigation, client

counseling, and prosecution for over 25 years.

He has been lead or co-counsel in patent and

trade secret litigations throughout the country. In

addition, he manages the patent prosecution for

several international corporations. Furthermore,

he has extensive experience in the drafting and

negotiation of agreements and licenses relating

to intellectual property. He has authored

numerous articles and chapters for books, has

appeared on multiple television and radio

programs, and has provided over 20 CLE

programs to thousands of attorneys.

Mr. Augustyn has been a law school instructor

for several years. Prior to attending law school,

he worked as an engineer for a Fortune 100

company. Mr. Augustyn has received several

legal awards, including Super Lawyer, Top Rated

Lawyer, and Leading Lawyer.

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Agenda

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John Augustyn

– What is Wearable Technology?

– Examples of Wearables

– Recent Cases

– Utility Patents

– Design Patents

– Trade Secrets

– Data Security and Privacy

Rod Berman

– Trademarks, Logos, Taglines

– Trade Dress

– Design Patents

– Copyright

– Comparisons

– Partnerships and Other Agreements

Agenda (continued)

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What is Wearable Technology?

Several possible definitions

– A device which is worn by a person and the device includes a new technology.

– A device which is worn by a person and the device includes electronics.

– A device which is worn by a person and the device communicates with another device, such as, a

phone or a network.

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Examples of Wearables

Head

– Virtual Reality Headsets

– Google Glass

– Blue Light Eyeglasses (filter out blue light from TV’s, computers, and phones about 2-3 hours before

bedtime).

– Sleep Hat (Sleep Shepherd-stocking-type hat with speakers. Monitors brain waves to generate

sounds to aid sleeping).

– Spree Smart Cap (Fitness tracker which includes an electronic pod in the headband which connects

to app.)

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Wrist

− Apple Watch

− Fit Bit

− Jawbone

Body

− Shirts which monitor your heart rate, breathing, muscle usage, and other items.

Catapult (measures metrics and used by NFL, NBA and college teams)

Adidas miCoach (measures metrics and used by soccer teams)

Zebra (RFID chips in shoulder pads of football players which tracks player stats)

Athos (measures metrics including muscle groups)

Sensoria (measures metrics and used by Formula 1 racing teams)

Ralph Lauren Polo Shirt (measures metrics and connects to phone)

− Clothes printed on 3D printer. Danit Peleg on Ted Talk. Made five outfits using open source file for

fabric. Used a soft filament vs. hard filament. Assembled fabric pieces into outfit. Also printed shoes

on 3D printer.

Examples of Wearables (continued)

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Shoes

− Electronics to monitor your activity. (GPS SmartSole monitors the location of people who may get lost

due to memory impairment.)

− Shoes printed on 3D printer.

Accessories

− Handbags which charge your phone.

− Cuff (An electronic module which vibrates to notify you of calls and messages. The module fits inside

several different styles of bracelets and pendants.)

− Ringly (A ring which changes color and vibrates to notify you of preselected calls, messages, apps or

people. Customize notifications with 5 different colors and 4 different vibration patterns.)

Examples of Wearables (continued)

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Recent Cases

Ralph Lauren’s Ricky Bag

− Bryan v. Leoht, Inc., Ralph Lauren Corporation and Kickstarter, Inc., filed August 19, 2015,

Southern District of Texas, Case No. 4:15 cv 2395

− Patent infringement suit over bag with illuminable interior and charger for electrical devices.

− US Patents 6,340,235 and 6,637,909

− Individual inventor (Jimmy Bryan) sued Ralph Lauren, Leoht and Kickstarter.

− Leoht Inc. was technology partner with Ralph Lauren.

− Leoht used Kickstarter to develop products for the technology.

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Recent Cases (continued)

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Adidas miCoach Training Shirts

− Sarvint Technologies, Inc. v. Textronics, Inc. and Adidas North America, Inc., filed January 9, 2015,

Northern District of Georgia, Case No. 1:15 cv 73

− Patent infringement suit over Adidas miCoach training shirts which measure heart rate, etc. and use a

smart phone app.

− US Patents 6,381,482 and 6,970,731

− Adidas and Textronics (body sensor manufacturer) sued by body sensor manufacturer, Sarvint.

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Jawbone and Fitbit

1. Aliphcom, Inc. d/b/a Jawbone v. Fitbit , Inc. et al. (filed May 27, 2015 in California State Court)

− Jawbone files lawsuit against Fitbit and former Jawbone employees who left for Fitbit.

− Lawsuit alleges trade secret misappropriation, etc.

2. Aliphcom, Inc. d/b/a Jawbone and Body Media, Inc. v. Fitbit , Inc. (filed June 10, 2015 in NDCA)

− Jawbone sues Fitbit for patent infringement.

− US Patents 8,073,707; 8,398,546 and 8,446,275

3. Aliphcom, Inc. d/b/a Jawbone and Body Media, Inc. v. Fitbit , Inc. (filed July 7, 2015 at ITC)

− Jawbone files an ITC action against Fitbit and Flextronics (manufacturer for Fitbit) for patent

infringement and trade secret misappropriation.

− US Patents 8,073,707; 8,398,546; 8,446,275; 8,529,811; 8,793,522; 8,961,413


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4. Fitbit, Inc. v. Aliphcom, Inc. d/b/a Jawbone and Body Media, Inc. (filed September 8, 2015 in NDCA)

− Fitbit sues Jawbone for patent infringement.

− US Patents 9,026,053; 9,048,923 and 9,106,307

5. Fitbit, Inc. v. Aliphcom, Inc. d/b/a Jawbone and Body Media, Inc. (filed September 3, 2015 in D. Del.)

− Fitbit sues Jawbone for patent infringement.

− US Patents 8,909,543; 9,031,812 and 9,042,971

6. Fitbit, Inc. v. Aliphcom, Inc. d/b/a Jawbone and Body Media, Inc. (filed November 2, 2015 at ITC)

− Fitbit files an ITC action against Jawbone for patent infringement.

− US Patents 8,868,377; 8,920,332 and 9,089,760


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Utility Patents

Patentability

− Novelty, non-obviousness, and utility

− Components of wearable:

• What is novel?

• Individual component?

• Assembly?

• System?

• Software?

• App?

• Packaging?

• Method?

• Accelerometer • Battery • Bluetooth components • Display • GPS • Haptic devices • Input Device • LED • NFC components • Printed circuit board • Sensors • USB interface

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Utility Patents (continued)

Patent Eligibility in View of Alice v. CLS Bank

− Is the claimed subject matter of the wearable “patent-eligible”?

− Two part test

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Divided/Joint Infringement

− Wearables can involve communication between:

• Two or more devices of the same person

User’s smart phone communicating with the same user’s wrist device

• Two or more devices of different individuals

Person A’s device communicating with Person B’s device

• Two or more devices between individual and an entity

Person A’s smart phone communicating with Company B’s credit card reader

• Two or more different entities

Company A sharing data with Company B data

− These scenarios raise joint infringement issues

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Divided/Joint Infringement (continued)

− The law is changing and may be different in several years

− Recent case law

− Strategic claim drafting:

• Single actor claims

• Combination of systems, methods, devices


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Patent Clearance Issues

− Example, clearance for new smart watch

• Smart watch patents

• Communication patents

• Circuit patents

• Power management patents

• Watch face and case patents

• Wristband patents

• Heart rate sensor patents

• Accelerometer patents

• Design patents

• Also consider Trademarks and Copyrights


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Design Patents

– New, original and ornamental design for an article of manufacture. 35 USC § 173.

– Design patents have been used for shoes and other articles of clothing and accessories.

– Ornamental vs. Functional.

– Shape of an Article.

– Surface Ornamentation.

– Graphical User Interface.

– Protect only certain portions or features of an article (versus the entire article) using broken lines to

show environment.

– Use design patents in conjunction with trademark protection and trade dress protection for the shape

or feature.

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Trade Secrets

– The Uniform Trade Secrets Act defines a trade secret as:

• information, including a formula, pattern, compilation, program, device, method, technique, or

process.

• that derives independent economic value, actual or potential, from not being generally known

to or readily ascertainable through appropriate means by other persons who might obtain

economic value from its disclosure or use; and

• is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

– Laws vary by state.

– New federal legislation, Defend Trade Secrets Act of 2016.

– Trade secrets in software.

– Trade secrets in manufacturing process.

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Data Security and Privacy

Fair Information Practice Principles (FIPPs)

1. Notice

2. Choice

3. Access/Participation

4. Security

• Items 1 and 2 (Notice and Choice) may be achieved by consent of user via app,

packaging or website

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Data Collected

– Health Data

– Location Data

– Financial Data

Data Flow

– Between Wearable and Receiver [Phone or Network (Wi-Fi/Broadband or Cellular)]

– Between Phone and Network (Wi-Fi/Broadband or Cellular)

– Between Network (Wi-Fi/Broadband or Cellular) and Wearable Provider (Manufacturer or Service

Provider)

– Between Wearable Provider and Third Parties (Analytics, Advertisers, Insurance Companies, etc.)

Data Security and Privacy (continued)

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Data Breaches

– Interception of data between the data flows noted above

– Disclosure of data on devices and servers of the entities involved in the data flows noted above (via

hacking, theft or accidental disclosure)

Use of Collected Data

– Positive Uses – advertising for goods or services relating to an activity (i.e. buy new shoes for

running) or to a location (i.e. buy sports drinks at nearby store).

– Negative Uses – insurance company monitoring your exercise activity (or lack thereof) or your

medical metrics during exercise to adjust your insurance premiums. Criminals monitoring your

location to commit robbery, burglary or kidnapping.


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Federal Regulation

– Proposed Location Privacy Protection Act

Prohibit collecting or disclosing geolocation information without consent of the user

– Proposed Geolocation Privacy and Surveillance Act (“GPS Act”)

Amends the criminal code to prohibit intercepting, disclosing, or using the geolocation

information of another person

Data Security

– Policies and procedures to maintain security of data collected from user of wearable device.

– Written plan and procedures for responding to a data breach.


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Data Breach Liability

– Causes of Action

• Negligence to maintain adequate security.

• Misrepresentation of facts relating to security measures.

– Government Actions (FTC, State Agencies, etc.)

– Civil Actions

Class actions

Business-to-business litigation


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Disclaimer

Any views expressed through this presentation are those of the author and may not reflect the

views of Leydig, Voit & Mayer or any of its clients. This presentation is for informational

purposes only and not for the purpose of providing legal advice. Use of any information

contained within this presentation does not create an attorney-client relationship.

©2016 Leydig, Voit & Mayer. All rights reserved.

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Intellectual Property Issues for Wearable Technology

Rod S. Berman, Jeffer Mangels Butler & Mitchell LLP

[email protected], 310.201.3517

Strafford Wearable Webinar

August 23, 2016

TRADEMARKS, LOGOS, TAGLINES

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IP Issues for Wearable Technology

Trademarks, Logos, Taglines

• Registration available but limitations on non-traditional trademarks, e.g., color, shape, scent, touch, sound and motion

• Protection of unregistered marks

• Protection of "Wearable", "Glass" and generic issues: Guidelines for Glass™ use (Exhibit A)

• Clearance: Fitbug v. Fitbit for fitness related wearable devices

• Motorola v. UNORTH – “moto” v. “mota” for dueling wearable devices

• Cost Term of life

Copyright © JMBM 2016 All Rights Reserved 51

TRADE DRESS

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Trade Dress

• Overall shape and appearance: the goodwill • Where are 3-D marks protected? • UK design rights and industrial designs • Functional product configuration not protected; “serves no purpose other than identification.” Test:

– Does design yield a utilitarian advantage? – Are alternative designs available? – Do ads tout utilitarian advantages? – Does the design result from a comparatively simple or inexpensive method of manufacture? – As compared to design patents, more strictly applied due to the long life of trade dress – PTO could consider red color and heart shape for a heart monitor aesthetically functional

• Must be distinctive – work with advertisers to use "look for" advertisements but not touting functional features (Apple® doomed); secondary meaning for products; (for secondary meaning for product)

• Distinctive packaging • Trend may pass before rights obtained • Apple v. Samsung – trade dress was functional; design patents worked

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DESIGN PATENTS

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DESIGN PATENTS

• Apple hired Paul Deneve from Yves Saint Laurent • Ornamental Features not “dictated solely by” the way it

works or operates • The Ergonometric concept and functionality test:

– Does the protected design represent the best design?

– Would alternative designs adversely affect the utility of the article?

– Any utility patents? – Functional touting in advertisements? – Is the overall appearance or elements in the

design not clearly dedicated by function? • Google Glass (Exhibit B) • Way to recoup investment in design cost; cf. Trade dress

(avoid confusion and protect investment in marketing) • Cost and term of life • May acquire rights faster than trade dress • May have both design patent (black and white) and

trade dress (color)

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COPYRIGHT

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Copyright

• Whose law applies?

• Incorporation of music

• Instructions

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COMPARISONS

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Intellectual Property Right

Protects Doesn't Protect How to Acquire

Rights Time to Obtain

and Lifetime Registerability Cost Enforcement

Standard for Infringement

Damages Foreign Issues Select Miscellaneous

Issues

Trade Dress

Source indicia; overall

appearance and image of a

product

Functional features

Use and registration -

Federal and State

Average 1.5 years to register;

potentially foreve

Need to show distinctive - 5 years of use - promote; Costly to prove secondary meaning - could be

millions of $s of promotional activities

Registration about $2500 with 2(f);

extra costs to file affidavits and

renewals

Federal or State Court/Customs

Must Show Non-functional; and

likelihood of confusion factors; survey evidence

Actual damages or lost profits; attorneys'

fees; corrective advertising; treble

and statutory damages; injunction

Generally no common law; color

might not be registerable

Utility patent not helpful

Product must have secondary

meaning; packaging can be inherently

distinctive

Can obtain conclusive

right to use, and strong presumption of validity

Laws vary by Circuit,

e.g., aesthetic functionality; ITC

"color"

Design Patent

Ornamental features of article of

manufacture

Functional features; prior

art

Federal registration

Average 18 months to

issuance; 15 years Yes, presumed valid

To issuance about $3,000; no

maintenance fees Federal Court

Ordinary observer as informed by

prior art finds two designs

substantially similar; expert

testimony

Lost profits, damages, infringer's total

profits; attorneys' fees; treble damages;

injunction

Can Register Utility patent not helpful

"black and

white"

Just Federal Circuit law; ITC

Copyright Expressions of

ideas Functional

ideas

Immediately when fixed in tangible form

Over 70 years; can obtain

certificate in 10 days

Yes, presumed valid About $250 Federal

Court/Customs

Access and substantial

similarity; expert testimony

Damages, statutory damages, attorneys' fees and injunction

Need to show proof of ownership; can register in some

countries, e.g., China

Utility patent not helpful

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PARTNERSHIPS AND OTHER AGREEMENTS

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Partnerships and Other Agreements

• Who owns the patent rights in a collaboration?

• Google partnership with Ray Ban and Oakley

• Use of exclusive requirements and supply agreements to "secure" IP rights – sourcing, outsourcing, and license (patent, copyright or trademark)

• Jawbone patent lawsuit prior to FitBit IPO – a settlement tool?

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Rod S. Berman Jeffer Mangels Butler & Mitchell LLP

[email protected] 310.201.3517

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