On August 18, lingerie and accessories company Zephyrs filed a suit in New York Supreme Court (a court of first instance) against its former patent attorney Bernard Codd and his law firm McDermott, Will & Emery, claiming that their “deficient services “while drafting a bra insert patent now prevents Zephyrs to sue competitors selling similar products on the market and to collect royalties. The case is Runberg, Inc. d/b/a Zephyrs v. McDermott, Will & Emery LLP and Bernard P. Codd.
|This Kat was confused as to where the kidney-shaped insert should go.|
Debra MacKinnon is Zephyrs’ principal and the inventor of a kidney-shaped insert for women’s bras, which is “anatomically designed to conform to and push up the breasts, thereby increasing volume and cleavage, while providing a natural shape.” In March 2008, the company engaged the law firm McDermott, Will & Emery to file a patent and U.S. Patent No. 8,216,021 B1 (the Patent) was issued on July 10, 2012.
According to the complaint, Mr. Codd advised his client “that the best available alternative to describe the Invention in the formal patent application would be through the use of defined “ratios.”“
Victoria’s Secret has been selling for more than a decade “at least $120 million worth” of Zephyrs’ insert under a sourcing contract. This business relationship went sour in 2012 and Zephyrs filed a suit against Victoria’s Secret, claiming the lingerie retailer intentionally breached the agreement. Litigation was eventually dismissed by both parties with prejudice. The August 18 complaint alleges that Victoria’s Secret has been selling knock-offs of Zephyrs’ bra inserts since then without paying any royalties. Plaintiff estimates its lost royalties to exceeds $4,900,000. Amazon sells a similar product, Envy, on its website, and Zephyrs estimates it lost $1,000,000 in royalties.
|This is the stuff dreams are made of.|
When Zephyrs discovered that products similar to the one it had patented where sold, it consulted an attorney to file an infringement suit and discovered then that the Patent was defective. Ms. MacKinnon consulted with an independent patent counsel in April 2014 who pointed out what he believed was “substantial errors” in the patent when it describes the ratio of maximum thickness between the first main surface of the insert and its second main surface, and the ratio of a depth of the notch from a straight line connecting the first lobe of the insert and its second lobe along the top side of the bra insert.
Plaintiff claims that these ratios and limitations were “fundamentally incorrectly drafted” and, as such, did not correctly describe the invention which is accurately depicted in the diagrams of the patent application.
Plaintiff then hired another law firm to file a reissue application on its behalf, which is now pending before the USPTO. However, the complaint states that several claims in the Patent were “so fundamentally flawed, that they must be cancelled by the USPTO.”
The complaint states that even as Amazon and Victoria’s are selling similar inserts, Zephyrs cannot sue them as its Patent is defective. The reissue process does not permit “to sue under or assert the original, damaged patent from the date that infringement began until a reissue application is granted.” Even if the Patent is indeed reissued, the complaint points out that the companies selling products similar to the Zephyrs’ insert during this blackout period “may possess a statutory and equitable defense of “intervening rights” to the Reissued Patent. In other words, if a third party begins manufacturing or selling products that incorporate the Invention now (as many already have), they are permitted to keep selling such products even if they would infringe upon a Reissued Patent that is later granted and issued.”
Zephyrs is seeking damages and costs.
A warm Katpat to Chris Torrero who told the IPKat about this case. Thank you Chris!