Inventor Offers Additional Details on Patent Infringement SuitAugust 16th, 2013 by DWM Magazine
Last week, patent infringement lawsuits were filed against seven major window manufacturers and two distributors in the United States District Court for the Eastern District of Tennessee Northern Division, and DWM spoke to those who filed the suits this week to gain more details on the cases.
J-Channel Industries Corp., a subsidiary of CopyTele Inc., which develops and acquires patented technologies, filed suits against the window companies alleging that the “defendants have directly infringed on one or more claims of the ‘041 reissue patent’ for window frame manufactured housing according to the filed complaints and patent action notice.”
Kendall Sayers, son of the inventor/window manufacturer, tells us that the issue dates back to 1999, when he and his father Leland Sayers were running Sealmaster Industries Inc. in Tennessee. That’s the year the company was “forced to close due to loss of business related to misappropriation of their technology.”
“After licensing the technology to a few manufacturers, the original J-Channel patent was invalidated in patent litigation more than 10 years ago due to discrepancies in the claim language,” says Robert Berman, president and CEO of CopyTele. “Following that litigation, the inventor fortified the claim language to eliminate the discrepancies, and the patent office re-issued the patent. As a result, we now have a much stronger patent, an established royalty rate based upon the previous licenses and widespread infringement for J-Channel technology which has become an industry standard.”
Sayers tells DWM that the first litigation he filed goes back to 1998, when he filed on his own lawsuit. Following the loss, it took seven years for the re-issued patent to make its way through the patent office. This time around he is working with CopyTele to aid him in this process.
Robert Berman, president and CEO of CopyTele, tells DWM that “Unfortunately, the way these conversations are started are with lawsuits,” but his hope is to “start a dialogue with each of the defendants.”
“As the plaintiff, our position is that we are always willing to talk and be reasonable. Whether the cases settle will be up to them [defendants],” he adds.
So, ultimately, what do the plaintiffs hope to gain from the suit?
“Kendall’s father invented something that, in essence, revolutionized the industry. It used to be that you would install a window and this J channel separately and he came up with a way to attach the J-Channel to a window and make installation faster and more economical. He has been seeking to get paid for his invention for many years,” says Berman.
“So the goal is to reward the inventor for the benefits of his invention. It’s not to stop them: It’s to enter into licensees, and finally after all these years to get some compensation.”
Leland, now 80 years old, never saw a dime from his invention, adds Berman. “The goal is for him to receive a reasonable royalty for his efforts.”
When asked how his father feels about all this, Kendall admits there is an “open wound.”
“I don’t like to speak for him but I do see a lack of faith in his eyes. We got beat up hard due to frivolous counter-lawsuits and other underhanded tactics by the industry that forced us to close our factory and I am hoping we can settle this while he is still around to see it,” he says.
Kendall adds that the company was a little manufacturer when they started, and its first windows were delivered to customers on the back of his Volkswagen Jetta.
“We were one of the early manufacturers of vinyl windows for new construction,” says Kendall. “I remember the first time I went to see a customer and we were the only ones who had an integral J-Channel. We were making a lot of traction with our J-Channel innovation and then my heart sunk when people started to copy it.”
While the two hope to open dialogue through the lawsuits, they also hope it will shine some attention on the patent process overall.
“I always thought patents were supposed to protect the little guys and that’s not what it did the first time around,” says Kendall. “It’s kind of a rich man’s game.”
Berman adds that, “It’s not the patent office, it’s the process.”
“We are looking to have dialogue and unfortunately in the patent world this is the way you initiate it,” he adds. “We certainly have the resources, capacity, and experience to take these cases to trial if needed.”
DWM contacted all defendants in the case last week when the suit was filed. Some were unaware of the case as they had not yet been served and others advised they don’t comment on pending litigation.
Stay tuned to dwmmag.com for news on this case as it becomes available.