LoTempio Law Blog

LoTempio Law Blog

Patents, Trademarks, Copyright & Other Interesting Stuff, with N.Y. Attorney Vincent G. LoTempio

$920 Million Kevlar Trade Secret Verdict Overturned

Posted in Patents


DuPont has been making Kevlar, the ubiquitous strong polymer for use in bullet-proof armor and countless other consumer  products, for over thirty years.

Kolon is a South Korean company that manufactured a similar polymer product known as Heracron, and in 2006 they hired several ex-employees of DuPont to consult on their process for technical improvement.


In 2009, DuPont sued Kolon in Federal District Court, alleging theft of trade secrets both regarding the technical aspects of their polymer and their business practices.

Broadly defined, a Trade Secret can be all forms and types of financial, business, scientific, technical, economic, or engineering information.

  • Invention disclosures
  • Customer Lists
  • Market Analysis
  • Formulations
  • Software code

But only if…

  1. The owner took reasonable measures to keep the information secret commensurate with the value of the Trade Secret;
  2. It’s not known or readily ascertainable by competitors and the general public; and
  3. The information derives actual or potential independent economic value from not being made known to the public

In 2011, the jury in the case found fault on the part of Kolon and awarded damages to DuPont of $919.9 million. Key to DuPont’s victory was the Court granting their motion to exclude evidence from a prior case as prejudicial and potentially confusing to the jury.

Kolon filed an appeal, arguing that the District Court abused their discretion in granting the motion to exclude  evidence that was available to the public from a prior case.

The prior case, known as the Azko litigation involved litigation by DuPont in the 1980s against their competitor AzkoNobel which included 42 elements of intellectual property made public during the case which DuPont argued were protected under trade secrets.akzonobel

Kolon argued that not allowing the evidence from the Azko case into the trial to show that the elements discussed during the previous case could not be subject to trade secret protection as matters of public record (though not, as the Court of Appeals noted, “generally known”) unfairly prejudiced the jury in their case.

The Court of Appeals ruled that the jury should have been allowed to see the “public” evidence from the previous case to determine if the evidence made the alleged trade secrets less likely to actually qualify for legal protection.

On April 3, 2014 the Court ruled that the District Court had abused its discretion, overturned the $919.9 million verdict in favor of DuPont, and remanded the case to the District Court with instructions to allow evidence from the Azko litigation to be considered by the jury.

Whether this will affect the jury’s decision in this new case remains to be seen.

LoTempio Patent client makes deal on “Shark Tank”

Posted in Interesting Stuff, Inventors, What Inventors Need to Know

Inventor and entrepreneur Frank Scozzafava of Mix Bikini designs, manufactures and markets interchangeable reversible bikinis. Frank is also a client of Kloss, Stenger and LoTempio.barbara corcoran

Frank was on the CNBC nationally televised show Shark Tank and was lucky enough to make a deal to help finance his Mix Bikini idea.

Shark Tank is business themed reality series on CNBC that features the sharks — experienced, self-made, multi-millionaire and billionaire tycoons – who listen to the presentations of hopeful entrepreneurs and offer business deals that could make some lucky contestants millionaires.

As a patent attorney it always makes me happy to see an inventor succeed with manufacturing, marketing and getting an invention to the market.

It just goes to show that good ideas are worth protecting. Success stories are nice, but that shouldn’t undermine all the hard work and “never say die” attitude that it takes to get into the position to make such a deal.

But, I would like to think that nothing is impossible. Inventors should believe it is possible to get a white knight to back their idea with a deal like Frank made with with Barbara Corcoran on “Shark Tank.”shark tank

Frank’s invention allows the wearer of a bikini to mix different bikini parts to create a huge wardrobe of bikinis with just a few parts.

The trick is to mix and match left and right triangle with halter-tops and with classic or scrunchie bottoms that connect with rings and strings to create thousands of bikinis. The more bikini parts you collect, the more bikinis you create.

This inventive configuration allows the user to reassemble and MiX Bikini as much as they want.

Scozzafava stated on the show.

“I’m super happy,” he said. “I just made a deal with Barbara, who was the coolest one and that’s who I wanted to make a deal with.”

He recently launched his new website Mix Bikini  “The changeable Bikini.”

No patent infringement by Google or Microsoft

Posted in Patents

Two of the largest search engine marketing vendors in the United States (Google Inc. and Microsoft Corp.) will not have to pay Paid Search Engine Marketing Tools LLC for their alleged patent infringement. google logo

The Patent Trial and Appeal Board reaffirmed the consolidated ruling in Paid Search Engine Tools, Inc. v. Google Inc., Case No. 2:07-CV-0403 (E.D. Tex.) (PDF) denying PSET’s contention that Google, among other companies, enjoyed commercial success solely as a result of replicating PSET’s patents.

PSET is the owner of U.S. Patent No. 7,043,450 (PDF) (the ‘450 patent) entitled “Paid search engine bid management.” The patent which was issued 9 May 2006 outlines a method for users to optimize their use of paid search engines by accumulating large amounts of target key words and directing web users to the site of the highest bidder.

This certainly seems familiar with the advent of Google AdWords and Microsoft’s Bing which utilize a similar method to attract large numbers of consumers and earn millions of dollars a year from marketing capital.microsoft-logo

PSET asserts that they should be credited with the invention of SEM dating back to 28 May 2000, but PTAB declared that the evidence was “not persuasive.” The Board saw weaknesses in the two major claims of the suit.

The first being that the “number of customers attracted by PSET was a very weak showing of commercial success in the absence of information concerning market share.”

The second simply being a lack of credible connection between the “asserted commercial success” of PSET’s inventions, and those offered by Google and other companies.

The reaffirmation by PTAB surely dissuades smaller companies with legitimate patent infringement cases from engaging in uphill legal battles with blue chip companies without having indisputable evidence of first having designed and created a particular invention before their contenders.

Certainly it would be to the long-term detriment of large companies such as Google and Microsoft to sell for service or otherwise new products without first having ensured indisputable leverage concerning the legal use of patents.


Use of surname Piazza as a wine trademark

Posted in Trademarks, Wine Trail and Trademark Talk

One of the most cherished aspects of Italian culture is the dolce far niente, the art of doing nothing.

It is those celebrated moments of smiles and laughter exchange over lingering cups of espresso or glasses (often bottles) of wine, independent of purpose or agenda that delight the heart and nurture the soul. Such moments are often experience in the open squares and public plazas throughout Italy referred to as my name sake “Piazza”.Bella Piazza

If I were a wine producer my experiences with and my affection for the people and plazas named Piazza would compel me to proudly associate my name with my wine or vineyard.

Yet while my affection for my namesake might tempt me to favor using it as the trademark for my “would be” wine or vineyard, it being my namesake alone doesn’t mean it would necessarily qualify for registration under the Lanham Act (15 U.S.C. §1052) .

If the public recognizes Piazza as a surname (essentially because it is commonly used as such) it may not qualify for placement on the principal register in the USPTO, unless over time and through substantial association my name has become known as my trademark; or in short my surname has acquired a secondary meaning.

Moreover even should my surname prove to be unique or rare enough not to require a secondary meaning under the Lanham Act,  I still may be prohibited from registering it as my trademark if someone else has already claimed it or a name similar enough in sound and use to it that it may prove to be confusing to the public consumer.

The Trademark Trial and Appeal Board has identified five factors to be considered if a term is primarily merely a surname:

  1. Is the surname rare (see TMEP §1211.01(a)(v));
  2. Is the term the surname of anyone connected with the applicant;
  3. Does the term have any recognized meaning other than as a surname (see TMEP §§1211.01(a)–1211.01(a)(vii));
  4. Does it has the “look and feel” of a surname (see TMEP §1211.01(a)(vi)); and
  5. If the stylization of lettering is distinctive enough to create a separate commercial impression (see TMEP §1211.01(b)(ii)).

For the record my “would be” wine and vineyard takes its virtual hat off to the Bella Piazza Winery in Plymouth, California for the selection and registration of trademark close to my heart.

Buffalo State Physics Student aspires to become Patent Litigator

Posted in Interesting Stuff, Interviews

If one hundred students were asked what their most significant accomplishment over the last year was, capturing the curvature of the Earth on an HD camera would most certainly be an aberration.

But that is exactly what SUNY Buffalo State Physics student Edward J. Bryant did for a seemingly routine final course project.earth curce

The most successful parts of the mission included launching a balloon to 100,000 ft which broke multiple height records for Western New York universities and capturing the curvature of the Earth (see image above).

Bengal Space Launch achieved its experimental objectives with a little help from corporate and state funded sponsors. The entire launch was documented on the YouTube clip below.

Originally from the Bronx, N.Y., Mr. Bryant found his way to Buffalo to not only study physics at a state university, but also to develop and procure a professional network outside of New York City and to set the foundation to achieve his dream of becoming an Intellectual Property (IP) litigator.

“I understand that the journey from student to patent litigator will require focus and dedication, but how can you enjoy the rewards of life if you didn’t work hard enough to get there!” says Edward.

Edward, will be a senior in the fall of 2014 and will apply to law school in 2015. His proclivity for the analysis of the obvious will be essential for his success in law school.

Contemporary patent, trademark and copyright infringement issues require IP attorneys to have an acute ability to explain the complexities of disputed patents in layman’s terms, while simultaneously being able to argue the merits of the law to a judge and or jury.

Physics requires an incredible degree of critical thinking skills and superimposed with a superb legal education, will be an excellent foundation to a career as an exceptional patent litigator. Good luck Edward!



43north.org to give $5 million to startup busineses

Posted in Interesting Stuff, Inventors, Patents

buffalo-billion As part of Gov. Andrew M. Cuomo’s $1 billion high-profile bid to turn the Buffalo Niagara region’s economy around, 43North business launched a global business plan competition that is going to give out $5 million in prizes to attract entrepreneurs with the best ideas for starting a new business.

America’s richest and most ambitious business idea competition offers a grand prize of $1 million, plus free office space and support services for a year, to the entrepreneur with the best idea. The winning business must locate in Buffalo for at least a year.

Winners also receive free incubator space for a year, mentorship from experts in their fields and access to many incentive programs, like Start-Up NY, which allows businesses to operate tax-free for 10 years.

Overall, 11 promising new businesses will get free money; ranging from $250,000 to $1 million.

Here is how the 11 prizes totaling $5 million break down:

  • top award of $1 million;
  • six $500,000 awards; and
  • four $250,000 awards.

David Robinson reported in the Buffalo News that, “All too often, we have been on the outside looking in when it comes to innovation,” said John R. Koelmel, the local executive and chairman of the New York Power Authority, which is providing the $5 million in funding for the competition. “This is going to attract an even more scarce asset that we desperately need: intellectual capital.” This year’s competition is just the start.

The plan is for similar contests to be held during each of the next four years, said Howard Zemsky, the Buffalo developer who serves as the co-chairman of the Western New York Regional Economic Development Council.

James Fink, Buffalo Business First, Reporter said “The $5 million was made following a recommendation last May by the Western New York Power Proceeds Allocation Board, who help oversee where New York Power Authority excess power proceeds funds are spent in the region.”

“If you had an idea as an entrepreneur, what would you do with $1 million? It truly is a lot,” said Andrew Pulkrabek, the executive director of the 43North initiative.

43North is looking for the best new business ideas from anywhere in the world to come to Buffalo. To promote the competition, organizers plan to make presentations in a dozen U.S. cities, from California to New York City, as well as in southern Ontario, India, China and Israel.

43North’s steering committee includes Howard A. Zemsky, Jordan Levy, Buffalo attorney Scott Friedman, local venture capitalist Ronald Schreiber, David Zebro of Buffalo private-equity firm Strategic Investments & Holdings and Sharon Randaccio of Performance Management Partners in Williamsville.

It is hoped the contest will attract 1,000’s of ideas for new businesses.

Round 1 (February 5 – May 31): applications will accepted from prospective businesses through the group’s website, www.43north.org.

The purpose of Round 1 is for applicants to provide a vision for their venture, including their business concept, target customers, industry overview, competitive landscape and revenue potential. This submission is not intended to be as comprehensive as a detailed business plan, but should provide the judges with a summary of the major elements of the venture.

The final stage in the competition will take place Oct. 27 to 31, finalists will pitch their business to a panel of local judges through a 10-minute presentation, followed by 10 minutes of questions.enter 43north

Patent attorney Vincent LoTempio featured in the press

Posted in Interviews, Patents

buffalo law journal

Recently Buffalo patent attorney, Vincent LoTempio was a guest columnist for the Buffalo Business First/Buffalo Law Journal and was featured in an article in the Suit Magazine.

The article I wrote for Business First “IP: a ‘weapon’ for all businesses” explores how intellectual property can be used as both the shield and a sword for business.

the suit

Protecting patent, trademark and copyright assets is vital to the economic success and survival of any business enterprise.

The article in the Suit Magazine was written by Judy Magness  titled “Yes, Virginia, even lawyers can find happiness online.” Judy interview explores how attorneys today are using networking sites such as YouTube, Facebook and LinkedIn to promote their law firms.

The Suit Magazine is a hardcopy magazine and webpage that “promotes enterprise through information.”

Magness interviewed  both Kevin O’Keefe  the CEO and publisher of LexBlog, Inc. and myself for this article.

She observed that  ”the power of traditional word-of-mouth marketing is a valuable networking tool within the legal profession. As social media emerged, however, both saw the potential to reach people in a way they never could before.”

Thanks to Matt Chandler and Judy Magness for allowing me to share some of my ideas through a couple of great websites.

Interview with Wine Expert Rebecca Christie

Posted in Interviews, Trademarks, Wine Trail and Trademark Talk

Recently, Barbara A. Piazza and I had the opportunity to meet with Rebecca Christie, the proprietor of “Savory Sips,” an exclusive wine store located in the heart of Lewiston, New York.

savory sips

During our visit Rebecca shared her vast knowledge of the wine industry. She spoke of the wonderful wineries along the Niagara Wine Trail and of local and worldwide renowned wines carried in her store.

Her genuine delight in helping wine lovers find the right wine for an occasion or meal was evident.

We asked her couple questions about picking wines in general and the local wine industry in Western New York. Here is what she had to say: 

What is the name of your business? Where are you located?

I have two wine related businesses:

Savory Sips located at 467 Center Street, Lewiston NY; and

Village Wine Tours located in Sanborn NY.

How long have you been involved with the wine industry?

I have been involved with the wine industry for 3 years; I have my import, wholesale and retail license.

Do you organize wine trail trips and wine tastings?

Village Wine Tours organizes the wine tastings and limo transportation to Niagara on the Lake, Seneca Lake and Niagara Wine Trail.


Where do you get your wines from? 

I prefer to get wines that are from D.O.C.G. certified regions that score 88-96. I can sell those great wines at a price under $25.00.

D.O.C.G. stands for “Denominazione di Origine Controllata e Garantita” or the highest level of Italian wine origin.

Can you get wines from anywhere in the world?

Yes, I can get wines from everywhere in the world Turkey, Israel, Italy, France, Spain, Portugal, Hungary, Argentina to name a few. I only sell wine that is not massed produced; i.e wine that is low in chemicals and sugars, even wines with zero sugars and chemicals.

What is your association with local wineries?

I’m an associate member of the wine trail Niagara Wine Trail

What is your opinion of the Western New York wineries?

Niagara Wine Trail is 7th in the world for varietal wines and some WNY wineries have perfected the smooth dry wines while others would like to be known for their sweet wines.

Are you familiar with many of the laws regarding wine trademarks and labels? Licensing’s etc.

I’m familiar with the NY State Liquor Authority (SLA) laws and somewhat knowledgeable with regard to licensing and trademark laws and certainly knowledgeable in patents.

What are the ramifications of drinking massed produced wine?

The ramification of drinking massed produced wines is that they are loaded with chemicals and sugars not produced by meticulous wine makers. It is the chemicals and sugars that make people ill after drinking wine.

 Why get “single vineyard” wines?

Single vineyard means that the grapes are grown in the sweet spot of the vineyard ie; where the sun hits the most and there is plenty of water and the soil is the richest.

What is a blue zone? What areas in the world have the richest soil?amarone

Blue zone wines are made from grapes that are picked from the richest soil on earth Italy, Greece, Argentina.

The benefit of blue zone wines are clear; people who drink wines from these areas live long and have low disease rate, low incidence of heart ailments and brain cancer.

Also people in Sardinia are 10 times more likely to age well and live into their hundreds because if the diet includes 4 servings of wine a day (Cannonau) grapes.

 What criteria should I look for before purchasing a wine?

Look at who is the wine maker, and the wine should score, zero or close to zero in sugars, and as I’ve already said I like wines that are from a D.O.C.G. Certified region.


GoDaddy.com not Liable for Cybersquatting

Posted in Interesting Stuff, Trademarks

The ACPA did not not provide a cause of action for contributory  cybersquatting. The U.S. Court of Appeals ruled December 4, 2013 on the matter. The court affirmed a district court’s grant of summary judgement in favor of the website, GoDaddy.com. (Petroliam Nasional Berhad v. GoDaddy.com, Inc.)


The ACPA imposed civil liability for cybersquatting on persons who used, registered, or trafficked in a domain name for the purpose of furthering “a bad faith intent to profit” from a protected mark.

According to PETRONAS, Congress had incorporated the common law of trademark infringement. According to the court, Congress enacted the ACPA in 1999 to protect consumers and to provide clarity for trademark owners by prohibiting the bad-faith and abusive registration of distinctive marks. Imposing contributory liability for cybersquatting would create incentives that induced “false positives”.

Finally, holders of infringed marks had sufficient remedies under the ACPA without the help of contributory liability. In addition to provisions that imposed civil liability on cybersquatters, the ACPA authorized in rem actions against domain names when registrants were not available to be sued personally. Trademark holders could also bring traditional claims for direct or contributory trademark infringement when the infringement arose from cybersquatting activities.

Patent Wars III: Return of the iPhone

Posted in Business/Corporate, Patents

In the most recent iteration of the titanic intellectual property battle between technology giants Apple Inc. and Samsung Electronics, apple took home a $290 million jury verdict.

The case (Apple Inc. v. Samsung Electronics Co., Ltd. (.PDF), centered on Samsung’s alleged infringement of six of Apple’s patents (U.S. Patent Nos. 7,469,381; 7,844,915; 7,864,163; D604,305; and D618,677).

Over the course of the proceedings, the jury calculated damages based on infringement caused by sixteen different Samsung devices: Galaxy Prevail, Gem, Indulge, Infuse 4G, Captivate, Continuum, Droid Charge, Epic 4G, Exhibit 4G, Galaxy Tab, Nexus S 4G, Replenish, and Transform. The Infuse 4G was the largest infringer, accounting for one third of the total damages.

In determining the damages, the jury was instructed to put Apple in the financial position they would have been had the infringement not occurred. More precisely, the jury had to figure out how much Samsung’s infringement cost Apple. The jury made this determination by considering: (1) reasonable royalty rates, (2) Apple’s lost profits , and (3) Samsung’s unfairly attained profits.

This is the second major financial blow to Samsung in 2013, as a different jury trial awarded Apple $1,000,000,000 in damages for infringements created by 26 Samsung products 9however, this award was later reduced to $550 million). Even though Samsung is an enormous multi-billion dollar company, it will be interesting to see how the financial repercussions from these cases affect their products and market share. Stay tuned for the next installment of: THE PATENT WARS.