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May 5, 2010


Don't mess with Staples. "Staples has won three suits in recent months that, taken as a whole, demonstrate its resolve to aggressively defend against patent infringement claims it believes are without merit. The suits involved three popular products sold under the Staples brand name. In each case, rather than settle the litigation, Staples instead challenged claims that these products infringed patents and won."

The press release -

Staples Wins Calculator Patent Case

Latest Win in Series of Recent Intellectual Property Successes

FRAMINGHAM, Mass. (May 5, 2010) - Staples, Inc. today announced that it has won a patent infringement and trade dress suit involving its popular Pillow Top calculator. On March 29, 2010, U.S. District Judge Virginia M. Kendall of the Northern District of Illinois granted Staples' motions for summary judgment, ruling, among other things, that the calculator did not infringe a design patent asserted by plaintiffs, Competitive Edge, Inc. and David M. Greenspon.

In granting Staples' motions, the judge applied the 2008 Egyptian Goddess decision by the U.S. Court of Appeals for the Federal Circuit, which addressed the appropriate legal standard for assessing design patent infringement claims. That case held that for design patent infringement claims, the test is "whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design." Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008).

In recent months, Staples has secured victories in two other patent cases concerning its own brand products. The company won summary judgment dismissals in cases involving its Staples® Better Binder™ products (decided in December 2009) and its Staples® Folding Crate products (decided in January 2009).

"Integrity is built into every step in our process when designing and manufacturing Staples brand products," said David D'Angelo, senior vice president of Staples Brands Group. "Not only do we work hard to ensure that we've taken actions to protect our intellectual property rights, we take clear steps to ensure that we respect the IP rights of others."

That's a backhanded way to puff out one's chest as a patent brawler.

About Staples
Staples, the world's largest office products company, is committed to making it easy for customers to buy a wide range of office products and services. Our broad selection of office supplies, electronics, technology and office furniture as well as business services, including computer repair and copying and printing, helps our customers run their offices efficiently. With 2009 sales of $24 billion and 91,000 associates worldwide, Staples operates in 25 countries throughout North and South America, Europe, Asia and Australia serving businesses of all sizes and consumers. Staples invented the office superstore concept in 1986 and today ranks second worldwide in e-commerce sales. The company is headquartered outside Boston.

I do not know how closely fought these cases were. The more I think about, the less odd this press release seems.

Companies will fight for a reputation of toughness when good sense would have them settle. But there are plenty of contingency law firms that assert patents that are easily invalidated or not infringed in hopes of a shakedown settlement. That pretty well sums up the business model that many of these firms have. A reputation for settlement, and unwillingness to go to trial, proceeds the suit, dimming the prospects of settlement during litation. Patents are a dirty business all the way around.

Patent Hawk's bread-and-butter business is invalidating patents for defendants. Only about one in ten of the patents that we are assigned do we consider the patent clean as a whistle with regard to validity. We are able to develop an overwhelming invalidity defense for around 70% of the patents we search.

Posted by Patent Hawk at May 5, 2010 9:32 AM | Patents In Business


"overwhelming invalidity defense for around 70% of the patents we search."

on what grounds?

and how should the patents have been prepared/prosecuted differently to make them less vulnerable to being invalidated?

Posted by: patent prosecutor at May 7, 2010 4:45 PM

Pretty easy one to field Mr. prosecutor. Don't rely on the USPTO to be the only person searching for art to help you draft valid claims.

Do you know who have the best in-house search teams in the world? Bio, Chemical, and Pharma companies. Do you know of any industry that more strongly relies on strong patent protection than those industries?

And regarding Patent Hawks 70% number, it can very well be true. Especially in the high tech arts where examiners are not very experienced. High quality professional searchers (there are a few who exist) definitely knock out over 50% of the independent claims on a regular basis. Dependents can be tougher, but by then you may not be infringing...

Posted by: Public Searcher DIP at May 7, 2010 6:28 PM

You said it -- patent law can certainly be a dirty business. I guess that's why it helps to have a patent hawk on one's team.

Posted by: Gena777 at May 10, 2010 2:03 PM