The audio portion of the conference may be accessed via the telephone or by using your computer's
speakers. Please refer to the instructions emailed to registrants for additional information. If you
have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.
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
Tips for Optimal Quality
Sound Quality
If you are listening via your computer speakers, please note that the quality
of your sound will vary depending on the speed and quality of your internet
connection.
If the sound quality is not satisfactory, you may listen via the phone: dial
1-866-570-7602 and enter your PIN when prompted. Otherwise, please
send us a chat or e-mail [email protected] immediately so we can
address the problem.
If you dialed in and have any difficulties during the call, press *0 for assistance.
Viewing Quality
To maximize your screen, press the F11 key on your keyboard. To exit full screen,
press the F11 key again.
FOR LIVE EVENT ONLY
Continuing Education Credits
In order for us to process your continuing education credit, you must confirm your
participation in this webinar by completing and submitting the Attendance
Affirmation/Evaluation after the webinar.
A link to the Attendance Affirmation/Evaluation will be in the thank you email
that you will receive immediately following the program.
For additional information about continuing education, call us at 1-800-926-7926
ext. 35.
FOR LIVE EVENT ONLY
Program Materials
If you have not printed the conference materials for this program, please
complete the following steps:
• Click on the ^ symbol next to “Conference Materials” in the middle of the left-
hand column on your screen.
• Click on the tab labeled “Handouts” that appears, and there you will see a
PDF of the slides for today's program.
• Double click on the PDF and a separate page will open.
• Print the slides by clicking on the printer icon.
FOR LIVE EVENT ONLY
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.
6
Agenda
7
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)
8
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.
9
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.)
10
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)
11
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)
12
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.
13
Recent Cases (continued)
14
Recent Cases (continued)
15
Recent Cases (continued)
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.
16
Recent Cases (continued)
17
Recent Cases (continued)
18
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
Recent Cases (continued)
19
Recent Cases (continued)
20
Recent Cases (continued)
21
Recent Cases (continued)
22
Recent Cases (continued)
23
Recent Cases (continued)
24
Recent Cases (continued)
25
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
Recent Cases (continued)
26
Recent Cases (continued)
27
Recent Cases (continued)
28
Recent Cases (continued)
29
Recent Cases (continued)
30
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
31
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
32
Utility Patents (continued)
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
33
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
Utility Patents (continued)
34
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
Utility Patents (continued)
35
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.
36
Recent Cases (continued)
37
Recent Cases (continued)
38
Recent Cases (continued)
39
Recent Cases (continued)
40
Recent Cases (continued)
41
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.
42
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
43
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)
44
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.
Data Security and Privacy (continued)
45
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.
Data Security and Privacy (continued)
46
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
Data Security and Privacy (continued)
47
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.
48
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
50
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
52
IP Issues for Wearable Technology
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
53
DESIGN PATENTS
54
IP Issues for Wearable Technology
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)
55
COPYRIGHT
56
IP Issues for Wearable Technology
Copyright
• Whose law applies?
• Incorporation of music
• Instructions
57
COMPARISONS
58
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
59
PARTNERSHIPS AND OTHER AGREEMENTS
60
IP Issues for Wearable Technology
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?
61
Top Related