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Wearable Technology: Protecting IP Rights and Minimizing Infringement Risks Leveraging Utility Patents, Design Patents, Trademarks and Trade Dress to Safeguard IP

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Wearable Technology: Protecting IP Rights and Minimizing Infringement Risks Leveraging Utility Patents, Design Patents, Trademarks and Trade Dress to Safeguard IP 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 TUESDAY, AUGUST 23, 2016 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: John M. Augustyn, Shareholder, Leydig Voit & Mayer, Chicago Rod S. Berman, Partner, Jeffer Mangels Butler & Mitchell, Los Angeles 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. Tips for Optimal Quality FOR LIVE EVENT ONLY 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. Continuing Education Credits FOR LIVE EVENT ONLY 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. Program Materials FOR LIVE EVENT ONLY 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. 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 ChicagoSan Francisco l Rockford Bay l SeattleArea l Washington Washington, D.C.D.C . Frankfurt, Germany 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 John Augustyn – What is Wearable Technology? – Examples of Wearables – Recent Cases – Utility Patents – Design Patents – Trade Secrets – Data Security and Privacy 7 Agenda (continued) Rod Berman – Trademarks, Logos, Taglines – Trade Dress – Design Patents – Copyright – Comparisons – Partnerships and Other Agreements 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 Examples of Wearables (continued) 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. 11 Examples of Wearables (continued) 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.) 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 Recent Cases (continued) 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 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 Recent Cases (continued) 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 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: • Accelerometer • Battery • Bluetooth components • Display • GPS • Haptic devices • Input Device • LED • NFC components • Printed circuit board • Sensors • USB interface • What is novel? • Individual component? • Assembly? • System? • Software? • App? • Packaging? • Method? 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
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