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Significant IP Strategies for Wearable Technology in 2016 & Beyond LIVE Webcast

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Wearable devices and related technology are electronics or computers incorporated into clothing and other accessories worn by people. Although smaller such wearable devices can perform the same computing tasks as mobile phones and laptop computers. However, some also incorporate sensors and scanners that can monitor, control, and provide tracking or bio-feedback of physiological activity. These devices are used in education, health, medicine, security, sports, gaming, and many other activities. Such devices include caps, contact lenses, headbands, jewelry, glasses, 'smart' fabrics, watches, and other paraphernalia.

Although wearable technology offers new capabilities, it lacks a genuinely evident need in the current market. It is possible that, like Bluetooth headsets, Google Glass, white Apple ear-buds, and Beats Bat-eared headphones, many of these small devices may not be worn by people, other than for health and fitness, once the fad wears off.

Irrespective of the technology, all such devices need intellectual property (IP) protection. Protection must be considered for registered appearance, operation, and branding. This includes the design, content, components, methods, functions, and patents and trademarks.

The Knowledge Group has assembled a panel of notable technological and legal leaders and other seasoned professionals in this two-hour LIVE Webcast to offer the audience a noteworthy review and discussion of the Intellectual Property Protection of Wearable Technology in 2016 & Beyond. The panel of speakers also will provide the audience their insights and opinions on safeguarding the IP rights of wearable devices.

Key Topics

IP Strategies for Wearable Technologies – An Overview
IP Rights for Wearable Devices
IP Issues in the Wearable Technology Sector
Legal Challenges to Wearable Technologies
Regulatory Developments
Best Practices in IP Protection

To view the webcast go to this link: https://youtu.be/Y7zvRYE8nsk

To learn more about the webcast please visit our website: http://theknowledgegroup.org

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Significant IP Strategies for Wearable Technology in 2016 & Beyond LIVE Webcast

  1. 1. Speaker Firms and Organization: Lee, Hong, Degerman, Kang & Waimey David N. Makous Attorney Thank you for logging into today’s event. Please note we are in standby mode. All Microphones will be muted until the event starts. We will be back with speaker instructions @ 02:55pm. Any Questions? Please email: info@theknowledegroup.org Group Registration Policy Please note ALL participants must be registered or they will not be able to access the event. If you have more than one person from your company attending, you must fill out the group registration form. We reserve the right to disconnect any unauthorized users from this event and to deny violators admission to future events. To obtain a group registration please send a note to info@theknowledgegroup.org or call 646.202.9344. Presented By: February 05, 2016 1 Partner Firms: Bookoff McAndrews, PLLC Christopher Agrawal Partner Leydig, Voit & Mayer John M. Augustyn Shareholder
  2. 2. February 05, 2016 2  Please note the FAQ.HELP TAB located to the right of the main presentation. On this page you will find answers to the top questions asked by attendees during webcast such as how to fix audio issues, where to download the slides and what to do if you miss a secret word. To access this tab, click the FAQ.HELP Tab to the right of the main presentation when you’re done click the tab of the main presentation to get back.  Follow us on Twitter, that’s @Know_Group to receive updates for this event as well as other news and pertinent info.  If you experience any technical difficulties during today’s WebEx session, please contact our Technical Support @ 866-779-3239. We will post the dial information in the chat window to the right shortly and it’s available in the FAQ.Help Tab on the right.  You may ask a question at anytime throughout the presentation today via the chat window on the lower right hand side of your screen. Questions will be aggregated and addressed during the Q&A segment.  Please note, this call is being recorded for playback purposes.  If anyone was unable to log in to the online webcast and needs to download a copy of the PowerPoint presentation for today’s event, please send an email to: info@theknowledgegroup.org. If you’re already logged in to the online Webcast, we will post a link to download the files shortly and it’s available in the FAQ.Help Tab
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  4. 4. February 05, 2016 4 Welcome to the Knowledge Group Unlimited Subscription Programs. We have Two Options Available for You: FREE UNLIMITED: This program is free of charge with no further costs or obligations. It includes:  Unlimited access to over 15,000 pages of course material from all Knowledge Group Webcasts.  Subscribers to this program can download any slides, white papers, or supplemental material covered during all live webcasts.  50% discount for purchase of all Live webcasts and downloaded recordings. PAID UNLIMITED: Our most comprehensive and cost-effective plan, for a one-time fee:  Access to all LIVE Webcasts (Normally $199 to $349 for each event without a subscription). Including: Bring-a-Friend – Invite a client or associate outside your firm to attend for FREE. Sign up for as many webcasts as you wish.  Access to all of Recorded/Archived Events & Course Material includes 1,500+ hours of audio material (Normally $299 for each event without a subscription).  Free Certificate of Attendance Processing (Normally $49 Per Course without a subscription).  Access to over 15,000 pages of course material from Knowledge Group Webcasts.  Ability to invite a guest of your choice to attend any live webcast Free of charge (Exclusive benefit only available for PAID UNLIMITED subscribers).  6 Month Subscription is $499 with No Additional Fees Other options are available.  Special Offer: Sign up today and add 2 of your colleagues to your plan for free Check the “Triple Play” box on the sign-up sheet contained in the link below. https://gkc.memberclicks.net/index.php?option=com_mc&view=mc&mcid=form_157964
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  6. 6. Partner Firms: February 05, 2016 6 At the forefront of intellectual property law for more than a century, Leydig, Voit & Mayer provides valued advice and trusted counsel on intellectual property issues to industry leaders around the world. Our IP litigation, licensing, and prosecution services encompass patent, trademark, copyright, trade secrets, Internet and other IP issues, including post-grant proceedings. Our clients’ industries include pharmaceutical, chemical and chemical engineering, software, electronics, manufacturing and machine design, biotechnology, medical devices, financial services, and consumer products. The wealth of litigation and technical experience of the firm’s attorneys and staff enables the firm to tailor its services to the unique needs of each client. Established in 1991, and with offices in Los Angeles, Newport Beach, Seoul, London and DC, LHDK&W has helped industry leaders across a broad array of sectors manage the complex challenges of succeeding in the global economy by utilizing the firm's exceptional and experienced attorneys, supporting professionals and staff, we are able to provide our clients with comprehensive tailored solutions to their business-related legal issues. LHDK&W's attorneys and supporting professionals come from different backgrounds and experience. Yet, we share a common goal of exceeding our clients' expectations and satisfying their needs in multiple areas: Admiralty & Maritime, Banking & Financial Services, Business & Corporate, Litigation, Insurance, Intellectual Property, International Arbitration and Dispute Resolution Practice, Labor & Employment, Products Liability, and Real Estate. More can be learned about us at lhlaw.com.
  7. 7. Partner Firms: February 05, 2016 7 Bookoff McAndrews (BoMc) has emerged to be recognized and valued by corporations around the world for its unequivocal focus on providing the highest quality patent counseling and prosecution services. Since opening just three years ago, BoMc has experienced great success, growing from two attorneys to 18 attorneys. This rapid growth continues to be fueled by clients trusting its attorneys’ ability to provide tailored, strategic, and timely advice on all aspects of patent counseling, including patent prosecution; portfolio development and management; clearance, validity, and infringement opinions; contested proceedings before the United States Patent & Trademark Office (USPTO); licensing; and due diligence investigations for acquisitions and investments. BoMc’s co-founders, Les Bookoff and Roland McAndrews, were previously featured by Legal 500 and more recently in IAM Patent 1000 as top IP practitioners. BoMc’s attorneys counsel startups, midsize, and Fortune 100 companies as well as venture capital firms and universities across diverse industries and technology areas spanning medical devices, pharmaceuticals, aerospace and defense, materials, heavy machinery, software, electrical and computer technology, consumer products, alternative energy and green technology, chemistry, Internet, and e-commerce. BoMc’s attorneys continue to engage scores of new clients each year by providing the same high-quality patent prosecution, strategic counseling, and transactional representation that contributed to its attorneys’ success prior to the firm’s formation.
  8. 8. Brief Speaker Bios: John M. Augustyn Mr. Augustyn is active in all facets of patent litigation, client counseling, and prosecution. His litigation experience has involved several industries, including medical devices, electrical devices, magnetic devices, printing processes, agricultural equipment, manufacturing equipment, automotive equipment, fuel storage containers, and consumer products. He also manages the patent prosecution for several international corporations. Furthermore, he has extensive experience in the drafting and negotiation of agreements relating to intellectual property, including patent licenses, technology licenses, joint venture agreements, and research and development agreements. February 05, 2016 8 David N. Makous David presently works with the international law firm Lee Hong Degerman Kang Waimey in Los Angeles. He has acted as global IP counsel for a number of products and brands, acting on IP litigation, including class action claims, regulatory matters and complex licensing for companies large and small, in many countries. David has appeared in many federal district courts and courts of appeal. He also publishes, has lectured to engineering and business students about IP matters, and taught Conflicts of Law at a local law school. ► For more information about the speakers, you can visit: https://theknowledgegroup.org/event-homepage/?event_id=1290 Christopher Agrawal Chris Agrawal is a patent counseling partner with Bookoff McAndrews, one of the country’s premier patent prosecution and counseling boutiques. Chris was named a 2015 “Rising Star” in Washington D.C. by Super Lawyers and is retained by several of the region’s largest tech companies for developing patent portfolios and analyzing patent-related risks and opportunities. Chris focuses especially in Internet, mobile, and wearables technologies, and on developing and implementing patent strategies that help leading innovators secure market exclusivity and freedom to market new products and services.
  9. 9. Wearable Devices and related technology are electronics or computers incorporated into clothing and other accessories worn by people. Although smaller such wearable devices can perform the same computing tasks as mobile phones and laptop computers. However, some also incorporate sensors and scanners that can monitor, control, and provide tracking or bio-feedback of physiological activity. These devices are used in education, health, medicine, security, sports, gaming, and many other activities. Such devices include caps, contact lenses, headbands, jewelry, glasses, 'smart' fabrics, watches, and other paraphernalia. Although wearable technology offers new capabilities, it lacks a genuinely evident need in the current market. It is possible that, like bluetooth headsets, Google Glass, white Apple ear-buds, and Beats Bat- eared headphones, many of these small devices may not be worn by people, other than for health and fitness, once the fad wears off. Irrespective of the technology, all such devices need intellectual property (IP) protection. Protection must be considered for registered appearance, operation, and branding, This includes the design, content, components, methods, functions, and patents and trademarks. February 05, 2016 9
  10. 10. The Knowledge Group has assembled a panel of notable technological and legal leaders and other seasoned professionals in this two hour, LIVE Webcast to offer the audience a note-worthy review and discussion of the Intellectual Property Protection of Wearable Technology in 2016 & Beyond. The panel of speakers also will provide the audience their insights and opinions on safe-guarding the IP rights of wearable devices. Key Topics • IP Strategies for Wearable Technologies – An Overview • IP Rights for Wearable Devices • IP Issues in the Wearable Technology Sector • Legal Challenges to Wearable Technologies • Regulatory Developments • Best Practices in IP Protection February 05, 2016 10
  11. 11. Featured Speakers: February 05, 2016 11 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer SEGMENT 2: David N. Makous Attorney Lee, Hong, Degerman, Kang & Waimey SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC
  12. 12. Introduction Mr. Augustyn is active in all facets of patent litigation, client counseling, and prosecution. His litigation experience has involved several industries, including medical devices, electrical devices, magnetic devices, printing processes, agricultural equipment, manufacturing equipment, automotive equipment, fuel storage containers, and consumer products. He also manages the patent prosecution for several international corporations. Furthermore, he has extensive experience in the drafting and negotiation of agreements relating to intellectual property, including patent licenses, technology licenses, joint venture agreements, and research and development agreements. Mr. Augustyn received a B.S. in Engineering, with honors, from the Illinois Institute of Technology, and a J.D. degree in 1987 from Loyola University Chicago, where he graduated at the top 10% of his class. In law school, he received several awards for scholarship and writing, and was on the National Moot Court Team. He has authored articles and chapters for books, has appeared on television and radio, and has provided seminars for attorneys and clients. Mr. Augustyn was an instructor at Loyola University Chicago School of Law for over five years. In addition, he was the advisor of the Intellectual Property Moot Court Team at Loyola University Chicago for over fifteen years. Prior to attending law school, he worked as an engineer at a large equipment manufacturer in the areas of Design Engineering, Manufacturing Engineering, and Quality Engineering. Mr. Augustyn has received several legal awards, including Super Lawyer, Top Rated Lawyer, and Leading Lawyer. February 05, 2016 12 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  13. 13. Agenda John Augustyn – What is Wearable Technology? – Examples of Wearables – Recent Cases – Design Patents – Trade Secrets – Data Security and Privacy February 05, 2016 13 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  14. 14. David Makous – Trademarks • Trademark Overview • Examples for wearables – Trade Dress • Trade Dress Overview • Examples for wearables February 05, 2016 14 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  15. 15. Chris Agrawal – Utility patents • Patenting wearables: brief history • Patentability • Divided/joint infringement • Patent damages • Challenges in patent clearance • What’s next in wearables patents February 05, 2016 15 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  16. 16. 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. February 05, 2016 16 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  17. 17. 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.) February 05, 2016 17 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  18. 18. Wrist – Apple Watch – Fit Bit – Jawbone February 05, 2016 18 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  19. 19. 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. 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. February 05, 2016 19 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  20. 20. 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.) February 05, 2016 20 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  21. 21. RECENT CASES Ralph Lauren’s Ricky Bag – Patent infringement suit over bag with illuminable interior and charger for electrical devices. – Leoht Inc. was technology partner with Ralph Lauren. – Leoht used Kickstarter to develop products for the technology. – Inventor sued Ralph Lauren, Leoht and Kickstarter. Adidas miCoach Training Shirts – Patent infringement suit over Adidas miCoach training shirts which measure heart rate, etc. and use a smart phone app. – Adidas and Textronics (body sensor manufacturer) sued by body sensor manufacturer, Sarvint. February 05, 2016 21 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  22. 22. Jawbone versus Fitbit – Jawbone files lawsuit against former employees who left for Fitbit. Lawsuit alleges breach of contract for trade secret misappropriation. (May 2015). – Jawbone sues Fitbit for patent infringement. (June 2015). – Jawbone files an ITC action against Fitbit for patent infringement. (July 2015). – Fitbit files an ITC action against Jawbone for patent infringement. (November 2015). February 05, 2016 22 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  23. 23. DESIGN PATENTS – New, original and ornamental design for an article of manufacture. 35 USC § 173. – Design patents have been used for shoes and other articles of clothing and accessories. – Ornamental vs. Functional. – Shape of an Article. – Surface Ornamentation. – Protect only certain portions or features of an article (versus the entire article) using broken lines to show environment. – Use design patents in conjunction with trademark protection and trade dress protection for the shape or feature. February 05, 2016 23 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  24. 24. TRADE SECRETS – The Uniform Trade Secrets Act defines a trade secret as: • information, including a formula, pattern, compilation, program, device, method, technique, or process. • that derives independent economic value, actual or potential, from not being generally known to or readily ascertainable through appropriate means by other persons who might obtain economic value from its disclosure or use; and • is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. – Laws vary by state. – Federal legislation proposed. – Trade secrets in software. – Trade secrets in manufacturing process. February 05, 2016 24 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  25. 25. DATA SECURITY AND PRIVACY Fair Information Practice Principles (FIPPs) 1. Notice 2. Choice 3. Access/Participation 4. Security – Items 1 and 2 (Notice and Choice) may be achieved by consent of user via app, packaging or website February 05, 2016 25 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  26. 26. Data Collected – Health Data – Location Data – Financial Data Data Flow – Between Wearable and Receiver [Phone or Network (Wi-Fi/Broadband or Cellular)] – Between Phone and Network (Wi-Fi/Broadband or Cellular) – Between Network (Wi-Fi/Broadband or Cellular) and Wearable Provider (Manufacturer or Service Provider) – Between Wearable Provider and Third Parties (Analytics, Advertisers, Insurance Companies, etc.) February 05, 2016 26 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  27. 27. Data Breaches – Interception of data between the data flows noted above – Disclosure of data on devices and servers of the entities involved in the data flows noted above (via hacking, theft or accidental disclosure) Use of Collected Data – Positive Uses – advertising for goods or services relating to an activity (i.e. buy new shoes for running) or to a location (i.e. buy sports drinks at nearby store). – Negative Uses – insurance company monitoring your exercise activity (or lack thereof) or your medical metrics during exercise to adjust your insurance premiums. Criminals monitoring your location to commit robbery, burglary or kidnapping. February 05, 2016 27 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  28. 28. Federal Regulation – Proposed Location Privacy Protection Act  Prohibit collecting or disclosing geolocation information without consent of the user – Proposed Geolocation Privacy and Surveillance Act (“GPS Act”)  Amends the criminal code to prohibit intercepting, disclosing, or using the geolocation information of another person Data Security – Policies and procedures to maintain security of data collected from user of wearable device. – Written plan and procedures for responding to a data breach. February 05, 2016 28 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  29. 29. Data Breach Liability – Causes of Action • Negligence to maintain adequate security. • Misrepresentation of facts relating to security measures. – Government Actions (FTC, State Agencies, etc.) – Civil Actions  Class actions  Business-to-business litigation February 05, 2016 29 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer
  30. 30. Introduction David presently works with the international law firm Lee Hong Degerman Kang Waimey in Los Angeles. He has acted as global IP counsel for a number of products and brands, acting on IP litigation, including class action claims, regulatory matters and complex licensing for companies large and small, in many countries. David has appeared in many federal district courts and courts of appeal. He also publishes, has lectured to engineering and business students about IP matters, and taught Conflicts of Law at a local law school. David previously chaired the IP group at a national law firm for 20 years, and is also a registered patent attorney. His firm presently acts as patent counsel for LG. February 05, 2016 30 SEGMENT 2: David N. Makous Attorney Lee, Hong, Degerman, Kang & Waimey
  31. 31. Trademark Overview Trademarks (and service marks) are words, names, symbols or devices to identify and distinguish goods (or services). 15 USC 1127. Rights are created if the mark is: a. Valid; and b. Used in the United States, or the subject of an intent to use, or convention based, application filed with the PTO; Valid marks are many. The common law hierarchy of marks was generic, descriptive, suggestive and arbitrary, coined or fanciful. But a valid mark cannot be generic, or descriptive (unless it has acquired distinctiveness or secondary meaning). Examples of marks are words (ordinary, coined, combined, or re-purposed), personal names, letters, logos or designs, packaging, the shape of goods (three-dimensional mark), colors, sounds and smells. Registration requires multiple steps: filing, PTO review, publication for opposition, notice of allowance (for ITU), and proof of usage (for ITU), then registration. Marks can be rejected as generic, descriptive, surname, geographic, deceptive, scandalous, and more. Descriptive, surname, and geographic marks can be overcome with proof of acquired distinctiveness which requires proof sufficient to establish prima facie that the relevant consuming public has come to identify the mark with a specific source. Sales, units sold, advertising expenditures, and extent, media exposure, surveys, consumer testimonials, etc. are used to prove this. Marks can be rejected as confusingly similar to a prior rights holders’ mark, either by the PTO or via opposition or cancellation brought by the holder in the TTAB. Registration is optional, but once granted pre-empts all who come later with a confusingly similar mark in the trade territory of the entire USA. February 05, 2016 31 SEGMENT 2: David N. Makous Attorney Lee, Hong, Degerman, Kang & Waimey
  32. 32. Example of Wordmark Creation and Evaluation for a Wearable re Validity: Quick Exercise. Same notions are in play that apply to all trademarks, and there really is nothing new at issue. Follow strategic naming practices. Using the first FITBIT registration we will consider the hypothetical imagined creation and registration of this mark. "Fitbit" is an obvious combination (a coined construct) of "fit" (i.e. suitable, or healthy) and "fitness" (i.e. a personal health goal) with "bit" (basic computer programming unit). a. Not a good idea to identify it as FITNESS METER with a goods ID reading: "Computer device for measuring fitness", as then a descriptiveness objection is blatantly teased out; b. So move away from these issues by suggesting user goals, and selecting relevant morphemes. c. Combine the notions and further move it into the realm of "suggestiveness" calling it a FITBIT, and give it an obscure yet accurate goods ID reading: "Cl. 9 electronic device for displaying information." This avoids the risk of descriptiveness objections. Word Mark FITBIT February 05, 2016 32 SEGMENT 2: David N. Makous Attorney Lee, Hong, Degerman, Kang & Waimey
  33. 33. Word Mark FITBIT Goods and Services IC 009. US 021 023 026 036 038. G & S: Multifunctional electronic devices for displaying, measuring, and uploading to the Internet information including time, date, [ body and heart rates, global positioning, direction, ] distance, altitude, speed, steps taken [, ] * and * calories burned [, navigational information, weather information, the temperature, wind speed, and the declination of body and heart rates, altitude and speed ]. FIRST USE: 20090929. FIRST USE IN COMMERCE: 20090929 IC 038. US 100 101 104. G & S: Providing online chat rooms and electronic bulletin boards for registered users for transmission of messages concerning food, nutrition, personal activities, general interest, classifieds, virtual community, and social networking. FIRST USE: 20090925. FIRST USE IN COMMERCE: 20090925 IC 041. US 100 101 107. G & S: Providing a website featuring information regarding fitness training. FIRST USE: 20090925. FIRST USE IN COMMERCE: 20090925 IC 044. US 100 101. G & S: Providing a website featuring information regarding nutrition, dieting, wellness, and health. FIRST USE: 20090925. FIRST USE IN COMMERCE: 20090925 Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 77549355 Filing Date August 18, 2008 Current Basis 1A Original Filing Basis 1B Published for Opposition January 20, 2009 Change In Registration CHANGE IN REGISTRATION HAS OCCURRED Registration Number 3732334 International Registration Number 1094793; 1218353 Registration Date December 29, 2009 Owner (REGISTRANT) FITBIT, INC. CORPORATION DELAWARE 150 SPEAR STREET, SUITE 200 SAN FRANCISCO CALIFORNIA 94105 Assignment Recorded ASSIGNMENT RECORDED Attorney of Record Mark I. Feldman Type of Mark TRADEMARK. SERVICE MARK Register PRINCIPAL Live/Dead Indicator LIVE February 05, 2016 33
  34. 34. Trade Dress Overview Trade dress is a special type of trademark. It may be comprised of either how a product is packaged and promoted, or the configuration of the product itself. It can be registered as a trademark with the PTO. Distinctiveness must be proven to obtain protection in the court for unregistered dress, or in the PTO to obtain registration. This is generally shown by the same manner of acquired distinctiveness called out in the previous section with one major additive: the protected feature is advisedly called out to the consumer (such as” Look at our distinctive unique grille”) to obtain the necessary of association in the mind of the consuming public. Examples of protectable trade dress are grilles on autos (e.g. Rolls Royce), bottle shapes (e.g. Coca Cola), and restaurant layouts (e.g. Fuddruckers). Functional features of trade dress are not protectable under this body of law. Functionality is defined as that which is “essential to the use or purpose of the product, or effects its cost or quality” (See Ives.). These are four tests. In theory if one is proven, then the product feature is functional. A key consideration in this determination is the need by the competitors to use the same elements. If there are but a few ways to do something, then it will be difficult to usurp it as proprietary. February 05, 2016 34 SEGMENT 2: David N. Makous Attorney Lee, Hong, Degerman, Kang & Waimey
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  51. 51. February 05, 2016 51 SEGMENT 2: David N. Makous Attorney Lee, Hong, Degerman, Kang & Waimey
  52. 52. February 05, 2016 52 SEGMENT 2: David N. Makous Attorney Lee, Hong, Degerman, Kang & Waimey
  53. 53. Introduction Chris Agrawal is a patent counseling partner with Bookoff McAndrews, one of the country’s premier patent prosecution and counseling boutiques. Chris was named a 2015 “Rising Star” in Washington D.C. by Super Lawyers and is retained by several of the region’s largest tech companies for developing patent portfolios and analyzing patent-related risks and opportunities. Chris focuses especially in Internet, mobile, and wearables technologies, and on developing and implementing patent strategies that help leading innovators secure market exclusivity and freedom to market new products and services. Chris counsels clients on portfolio strategies, patent infringement, validity, and clearance, especially for clients growing into new business areas. Chris also has particular experience in patent transactions and related activities, such as searching for target patent acquisitions, conducting due diligence investigations, and negotiating patent sales and licenses. Chris’s experience also includes several district court litigations, providing significant insights for developing high- value patent portfolios and evaluating third-party patents. For more information, please click here. February 05, 2016 53 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC
  54. 54. Patent Strategies for Wearables • Patenting wearables: brief history • Patentability • Patent-eligibility • Divided/joint infringement • Patent damages • Challenges in patent clearance • What’s next in wearables patents February 05, 2016 54 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC
  55. 55. Patent challenges on the horizon “[T]he market for smart devices, such as wearables, will grow to $70 billion dollars in the next ten years. Like many other emerging technologies, the entrepreneurs and companies developing these applications will seek patent protection for their inventions. In turn, the current U.S. patent system will present challenges for IoT technologies.” - Wake Forest Journal of Business And Intellectual Property Law, Summer 2015 February 05, 2016 55 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC 1975 1992
  56. 56. Patenting wearables: brief history • Early “pioneering” patents dating to late ’90s • Later Bluetooth-era patents of ’00s • Pre-commercialization patents of 2008-2014 • Post-commercialization patents ’14-today • It’s a relatively diffuse market – Pebble, Basis – Jawbone, Fitbit, Garmin – Nike, Reebok, Polar, Withings – Samsung, Sony, Huawei, LG, Microsoft, Apple, Google, etc. – Next gen, startups, etc. February 05, 2016 56 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC 17th-century Chinese abacus ring
  57. 57. February 05, 2016 57 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC Patenting wearables: 1998-2001 Earliest Bluetooth patents for wrist and eyewear:
  58. 58. Sample Patents of Earliest Commercially-Adopted Wearables February 05, 2016 58 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC
  59. 59. Earliest Jawbone- and Fitbit-owned Patents February 05, 2016 59 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC
  60. 60. February 05, 2016 60 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC 0 2 4 6 8 10 12 14 16 18 20 1990 1995 2000 2005 2010 2015 Commercial Adoption Catching-up to Patent Literature Commercial Adoption Patent Maturity IoT Devices Outnumber Humans on Earth Pebble watch first launched Pioneering wearable patents Bluetooth first invented
  61. 61. February 05, 2016 61 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC 0 2 4 6 8 10 12 14 16 18 20 1990 1995 2000 2005 2010 2015 Commercial Adoption Catching-up to Patent Literature Commercial Adoption Patent Maturity Source of Patent Conflict
  62. 62. Patentability February 05, 2016 62 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC • Novelty, non-obviousness, and utility • Commoditization of wearables components: • What’s actually novel? – Hardware components? – Assembled device? – Kit, system, platform? – Method? – Software/apps? – Branding, trade dress, packaging? • Accelerometer • Bluetooth antenna • NFC antenna • GPS • Printed circuit board • LEDs • Battery • USB interface • haptic devices
  63. 63. Patentability challenges: analogous art February 05, 2016 63 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC Medical devices Health and Fitness devices Smart-tech Fashion/horology New wristwatch with a heart monitor
  64. 64. Patent-eligibility in the wake of Alice v. CLS Bank • What can you even patent anymore? • Is software of a wearable “patent-eligible”? • To be eligible: – Is the invention abstract? – If so, does it recite “significantly more” • “Fitbit seeks to force the challenged patents into the category of ineligible subject matter by ignoring the concrete, articulated limitations of the inventions claimed and, instead, stripping down the claims until an element that can be characterized as an abstract idea is revealed” – Jawbone brief before the International Trade Commission. February 05, 2016 64 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC
  65. 65. 65 Current Status of Wearables Patent “Arms Race” SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC
  66. 66. Divided/Joint Infringement • Most wearables involve communication between: – Two or more devices of the same person or entity • Ex: user’s Apple smartphone talking to the same user’s Jawbone bracelet – Two or more devices of different individuals • Ex: spouse A’s Fitbit talking to spouse B’s Fitbit – Two or more different entities • Ex: Nike sharing sneaker motion data with Apple iPhone motion data • Different communications protocols • Each of these scenarios raises serious joint infringement issues: Who is liable when practice of a claim is split across two or more actors? February 05, 2016 66 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC
  67. 67. Divided/Joint Infringement, cont. • Consider this Example: 1. Using an iBeacon to detect when a customer walks into a store [Store, Customer] 2. Photographing a product barcode using the customer’s iPhone [Customer] 3. Collecting payment data from the customer’s Apple Watch [Verifone, Apple, Store] 4. Processing a payment discount if the customer entered the store at a desired time [Amex, Store, Customer, Verifone, etc. etc.] February 05, 2016 67 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC
  68. 68. Divided/Joint Infringement, cont. • Imagine case of third party apps: • API to access third-party’s raw sensor data • API to access third-party’s mobile app • API to share interfaces/data between platforms • The law is in tremendous amount of flux, and may be different five years from now • Recent rule: Single party of multi-party may be liable if “[e]xercises ‘control or direction’ over the entire process such that every step is attributable to the controlling party” • Strategic claim drafting becomes critical: – Single actor claims – Combination of systems, methods, devices, CRM February 05, 2016 68 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC
  69. 69. Patent damages • What is the value of the patented system? • Apportion to the value of the infringing component? • Status of the entire-market-value (EMV) rule • VirnetX, Inc. v. Cisco Systems, Inc., 767 F.3d 1308 (Fed. Cir. Sep. 16, 2014) • Example: What are the damages caused by a wearable bracelet that infringes a system-type claim for analyzing wrist movement relative to shoe movement? February 05, 2016 69 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC
  70. 70. Challenges in Patent Clearance February 05, 2016 70 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC Substantial volumes of background technology to scour and clear: New Smart watch Hrt-rate sensor patents Accelero- meter patents Coms patents Wrstbnd /clasp patents Circuit / PCB patents Bezel and face patents Battery/ power mgmnt. patents Horology patents
  71. 71. What’s next in wearable patents? • Looming flood of litigation – District courts – ITC • Post-grant challenges of older, “pioneering” patents and later but still pre-commercial acceptance • High bar for receiving broad “blocking” patents • What is an established company to-do if it wants to enter this area? • Medical device company wants to design and sell an activity tracker • Pharmaceutical company wants to design and sell a glucose monitor • Fashion company wants to design and sell a smart watch or shirt • Opportunities for white-label wearables to minimize risk to Fortune 500 set. February 05, 2016 71 SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC
  72. 72. February 05, 2016 72 Contact Info: John M. Augustyn Member Leydig, Voit & Mayer E: jaugustyn@leydig.com T: 312-616-5600 Christopher Agrawal Partner Bookoff McAndrews, PLLC E: cagrawal@bookoffmcandrews.com T: (202) 808-3552 David N. Makous Attorney Lee, Hong, Degerman, Kang & Waimey E: dmakous@lhlaw.com T: 213 244 7064
  73. 73. ► You may ask a question at anytime throughout the presentation today. Simply click on the question mark icon located on the floating tool bar on the bottom right side of your screen. Type your question in the box that appears and click send. ► Questions will be answered in the order they are received. Q&A: February 05, 2016 73 SEGMENT 1: John M. Augustyn Shareholder Leydig, Voit & Mayer SEGMENT 2: David N. Makous Attorney Lee, Hong, Degerman, Kang & Waimey SEGMENT 3: Christopher Agrawal Partner Bookoff McAndrews, PLLC
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  76. 76. February 05, 2016 76 ABOUT THE KNOWLEDGE GROUP The Knowledge Group is an organization that produces live webcasts which examine regulatory changes and their impacts across a variety of industries. “We bring together the world's leading authorities and industry participants through informative two-hour webcasts to study the impact of changing regulations.” If you would like to be informed of other upcoming events, please click here. Disclaimer: The Knowledge Group is producing this event for information purposes only. We do not intend to provide or offer business advice. The contents of this event are based upon the opinions of our speakers. The Knowledge Group does not warrant their accuracy and completeness. The statements made by them are based on their independent opinions and does not necessarily reflect that of The Knowledge Group‘s views. In no event shall The Knowledge Group be liable to any person or business entity for any special, direct, indirect, punitive, incidental or consequential damages as a result of any information gathered from this webcast. Certain images and/or photos on this page are the copyrighted property of 123RF Limited, their Contributors or Licensed Partners and are being used with permission under license. These images and/or photos may not be copied or downloaded without permission from 123RF Limited

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