How We Won a Patent Infringement Case for a Taiwanese Client

Hi, I’m Rich Beem. I’m a patent attorney in Chicago and I’d like to tell you about a particular patent matter – a particular case that we handled for a client. It’s a matter of public record in Chicago federal court. This is the product that is the subject of the invention. Our client in this case is a company called DYL. They are located in Taiwan. And they located us and chose us because they wanted a patent specialty firm here in Chicago to handle their patent case. Let me tell you a little bit about the invention. You can see that this is very nice, handy thing that can be carried by this handle. Now what is it? It is a pet food container. And the way it works is you can remove this handle, you can take off one of the lids, and you can remove the bowl and have the other lid, and this is a pet food container. So you can put pet food in here. This is for people that travel with their pets. And you can put some of the pet food in one of the bowls and some of the pet food in the other bowl, so if you have two dogs they can both eat at the same time. Or you can put pet food in one of the containers and put water in the other container. And that’s what the nature of this invention is. They had a design patent on this invention. A design patent covers the ornamental aspects. And it is a very nice looking product as you can see. It fits together very nicely and it makes a nice package that’s ready for travel. So that’s what the design is. And it says on here “Patent Pending USA. China Pat. Taiwan. Germany, Patent Pending.” It says the same thing on the other side and there is some information here. This is the Traveltainer product. Now, one of the things that happens when you have a good invention is people will copy it. They will copy it because it’s a nice product and they will say, “I want to have that product, too. I don’t necessarily want to pay the patent owner for it, but I’m going to make my own product to compete with it.” Let me show you an example of what actually happened in this case. This is another pet food container, this one right here. This is the original one, the Traveltainer. And this is another one that was called a Traveling Pet Kit that was sold by another company. We filed a lawsuit, a complaint for patent infringement against this product. You can see that they are very similar. This one is heart-shaped but has the same kind of C-shaped handle, it has the same kind of blue bowl here, and the same kind of…blue bowl here, and it has the same kind of pet food container except this one is heart-shaped. You can see the similarities in the design and on that basis we filed a complaint for patent infringement. This case had a very happy ending. We, instead of, hammering the defendant with a summons we sent them a complaint as a courtesy copy and asked them to contact us to see if we can work this out in a friendly way. They did contact us, they expected service of the complaint, and we worked it out. We negotiated this with the magistrate in federal court and we worked out a settlement. And the nice result of this for our client is within about two months after we filed the patent infringement suit, we reached a settlement. We entered an agreed judgment – a stipulated judgment – that acknowledged our client’s patent was valid, that was infringed by this product, there was an agreed injunction where the maker of this product agreed that they would not sell it anymore and there was a payment of damages to our client in Taiwan for the sales of the infringing product. So it was a very happy ending. You may have an invention. You may have a situation of patent infringement. That’s the kind of thing we handled here at Beem patent law firm. If you have such a matter, call us. I can be reached at 312-201-0011. Thank you!