February 26, 2013

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Article

Legal Case Profiles

February 26, 2013

 “Money is just money, but there is some value in that—to get vindication that we weren’t wrong,” Magleby says.

 

Though the jury favored USA Power, the legal team anticipates another long appeals process. “Once the appeals process begins that’ll be another two-year process. Our clients will have been waiting for 10 years,” Tomsic says.

And though the appeals process means the case is far from closed, Tomsic, Magleby and Schnibbe are confident that their client will again come out on top, and they are proud to represent the company. “This is a once-in-a-lifetime lawyer activity,” Tomsic beams.

 

K-TEC v. Vita-Mix: How Blendtec Won a Patent Infringement Battle Against an Industry Giant  

By Di Lewis

Grant and Brett Foster were able to do some of the tastiest research in the history of lawsuits. The brothers, partners in Holland & Hart’s Salt Lake office, had the task of proving Vita-Mix infringed on K-TEC’s patent for a five-sided blending jar.

Which means they also had the difficult task of bringing different blenders into the office and making smoothies. And that is really what the case came down to, Grant says, blending things and blending them well.

Game Changer

Tom Dickson, owner and CEO of K-TEC, which markets its products under the Blendtec brand, came up with a solution that solved a decades-long problem with blenders—cavitation, or the tendency for blenders to create a pocket of air around the blender blade. Grant says by adding a shorter fifth wall to the blender, Dickson shifted the vortex or cyclone that blending creates so it was not centered over the blade, which makes the contents roll over instead of cavitating.

Realizing he was onto something big, Dickson moved quickly to patent “the five-sided jar that allowed you to do twice the work in half the time,” Grant says.

Commercial companies that do a lot of blending, like Baskin-Robbins, Starbucks and others, took notice of the newcomer. As did the blending industry giant, Vita-Mix, which understood it would lose big clients in the commercial blending market if it didn’t do something.

Brett says, “You’ve got a groundbreaking change of technology. In the blender world, this is the equivalent of an iPod versus a CD. Vita-Mix recognized it and copied it.”

The Fight

Grant says when the first patent was issued and Vita-Mix continued to copy Dickson’s invention, he wrote a demand letter, but Vita-Mix claimed the patent was invalid. So they withdrew the lawsuit, filed two additional patent applications and made sure the Patent Office had all the information it needed. Then, when these patents issued, K-TEC came at Vita-Mix again.

Grant worked the case at the U.S. Patent and Trademark Office (USPTO), fighting Vita-Mix’s numerous invalidity challenges. Brett and Holland & Hart partner Mark Miller were the principal lawyers who tried the case to the jury. The dual proceedings allowed the brothers to try the district court and USPTO together, then argue back-to-back at the Federal Circuit Court of Appeals in Washington D.C., which Grants thinks is the first time this has been done by siblings.

“It did require a lot of collaboration because of the parallel proceedings. Vita-Mix fought us on the frontlines in court, then tried to flank us from the rear at the Patent Office,” Grant says

Vita-Mix’s lead argument was non-infringement on the patent, Brett says, which they thought was absurd when the only evidence needed to prove infringement was the blending jar itself and patent claims. Vita-Mix argued its new jar was based off patents from its own company and the design was obvious because it was like drink pitchers.

Vita-Mix curved the fifth truncated wall on its jar, which was flat in the first version, and hired an expert to testify the change made a blending jar with three walls, not five, as required by Dickson’s patent. Brett says the infringement was still clear and the Utah district court granted summary judgment on the infringement issue before the jury trial.

On appeal, Vita-Mix argued this was an error because of the testimony of its expert. However, in the first few minutes of oral argument at the Federal Circuit, Brett says Judge Alan Lourie said, “You don’t need a Ph.D. in anything” to see that Vita-Mix’s jar has five walls as required by Dickson’s patent, which sunk Vita-Mix’s lead argument.

“The interplay between the trial lawyers in court and the re-examination team at the Patent Office—that’s where it was totally different from any other case I’ve had. This required total coordination between the patent prosecution team and the trial team,” Brett says.

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