When a company copied their invention, Natasha and Fred Ruckel began investigating — and got an inside look into how products are ripped off.
On Valentine’s Day in 2015, Natasha Ruckel and her husband, Fred, were sitting in their living room in Gilboa, N.Y. Natasha was improvising on the piano, and Fred was listening while messing around with the couple’s cat, Yoda. Fred noticed a ripple in the living room rug, forming a half circle on one side. Again and again he tossed toys into the ripple and a delighted Yoda darted in and out. Natasha looked up from her playing. “That’s when we came up with the idea for the Ripple Rug,” she says.
The Ruckels, who had spent around 25 years earning their living in marketing and advertising for brands from PepsiCo to ESPN to Hasbro, were already in the midst of creating their first venture: an app that provided a way for amateur photographers to monetize online images. But they both agreed that the Ripple Rug was a better bet.
A couple of days later, Fred went to Home Depot and bought some cheap pieces of carpet, and they got to work on a prototype. When they had that, they launched a Kickstartercampaign in May 2015, pricing the American-made product at $39.95, to test the market. Within 30 days, they received $15,000 in backing. They had the products made in Georgia for $15 each, and filled the orders.
The Ruckels were weighing their next step when, that fall, the opportunity of a lifetime hit. QVC, in conjunction with the Today show, hosted an ongoing competition called the “Next Big Thing” for entrepreneurs with new retail products. Participants presented their offerings on the TV program, and the winning products received an order from QVC.
Following an arduous vetting process — including proof of a multimillion-dollar insurance policy, a guarantee of having 1,500 items available for sale and sample videos of the Ruckels in pitch mode — Ripple Rug made the cut. “We drove into New York City, and at every exit, we practiced the pitch,” Fred remembers. “We were there by 5 a.m. and hardly slept the night before.”
They sold a few hundred units immediately. QVC bought 1,500 more and Ripple Rug became a top seller. “It was pretty damned amazing,” says Fred. “We were profitable out of the gate, which is virtually unheard of. It felt like a great moment.”
It was, and it wasn’t. Over the next 14 months, the Ruckels learned that coming up with a truly original innovation attracts not only devoted customers but also the kind of highly organized, deep-pocketed bootleggers who rip off products and systematically grind their inventors into the ground — both financially and emotionally. “It creates so much discord that you are willing to give up the dream of entrepreneurship and go back to your day job,” says Fred.
In the thick of battle, however, the Ruckels learned critical lessons: the importance of copyrighting assets before launching; the reality that people will steal everything from your marketing pitch to your product to your advertising photos; the need to continually patrol for ripoffs and take action. They also got a darkly fascinating glimpse of how ruthless, well-funded, deeply sophisticated bootlegging operations work — and how, with tenacity, vigilance, a good lawyer and the right strategy, they can be beaten.
To read how they won, here is the rest of the article:
Earlier today, iPEL, Inc., launched its new website and a brand-new model of patent monetization, which offers free and paid licensing options to operating companies. iPEL has also defined a set of business practices that a Non-Practicing Entity can follow in order to call itself an Ethical NPETM.
iPEL was formed with $100 Million in initial capital, in May of 2017, by Brian Yates, a well-known patent monetizer, and Rasheed McWilliams, a respected patent trial attorney. For the last year, iPEL has been actively building its worldwide patent portfolio, which currently includes more than 1,000 distinct patent families.
iPEL announced its Initial License Offering, available only through the end of 2018, which provides all companies an opportunity to secure a license to iPEL’s entire worldwide patent portfolio, through one of two licensing programs: (1) free licenses for small businesses and startups, and (2) paid licenses for larger businesses.
Both categories of licenses should be a welcomed change for operating companies, who historically learned of patents owned by one of Mr. Yates’ companies by being sued. Indeed, the dozens of NPEs that Mr. Yates has owned were often amongst the most active patent plaintiffs in the US and were responsible for more than 1,000 patent infringement lawsuits, against a majority of the companies on the Fortune 1000.
With iPEL, it seems clear Mr. Yates is intent on pursuing a very different monetization model. “It’s pretty funny,” said Mr. Yates. “Several people thought I retired or left the patent monetization business, because during the last year, I have not created dozens of new NPEs or filed hundreds of new patent lawsuits. But, I just turned 43 years old, and I have no desire to retire anytime soon. I love what I do and am incredibly proud of what we are doing with iPEL. And, even though it has been fun keeping the details of iPEL a secret, it’s going to be a lot more fun watching iPEL impact the entire innovation ecosystem.”
Although Mr. Yates and Mr. McWilliams would not share the full scope of what iPEL has planned, it is clear that they want to change the NPE narrative. Providing a defined list of best practices and clearly defined pre-litigation licensing options are definitely new talking points for NPEs.
Even the most vigilant anti-NPEs, however, will have a hard time criticizing iPEL’s offer to grant small businesses and startups a completely free, no strings license to its entire patent portfolio.
iPEL’s free license is available to any company whose gross annual revenues do not exceed $5 Million USD (or the equivalent in any other national currency) and is for a one-year term. Although the license is renewable, it is not available to affiliates or subsidiaries of larger entities that do not meet the revenue restrictions.
“We know that small businesses and startups are the most likely to engage in paradigm-shifting innovation” said Mr. Yates, CEO of iPEL. “Those companies are not afraid to take risk, to ask big questions, or to dream. Unfortunately, in almost all instances, those same companies cannot afford to buy all of the patent licenses they need in order to implement their new technologies. iPEL wants to help these companies succeed, by giving them a large portfolio of patented technologies, upon which they can freely build.”
“There is no reason patent licensing cannot and should not be a celebrated exchange of innovation and technology between those with rights and those who need to leverage those rights in order to produce and distribute products,” said Mr. McWilliams, President of iPEL. “Patent and technology licensing has been a part of the fabric of American culture since the earliest days of our history as a nation.”
“Regrettably, patent licensing has become a maligned practice over the last decade in the United States,” said Mr. Yates. “This has allowed the many benefits of patent licensing to lay unrealized, and for innovation to stagnate. My hope is that by giving free, non-exclusive rights to iPEL’s valuable patent portfolio, startups and small businesses will create more jobs and create exciting new technologies.”
Of course, there is a self-serving piece to what iPEL is doing as well. If startups and small businesses do successfully build on the patents in iPEL’s portfolio, then they will at some point becoming paying licensees. “Sure, it just makes good business sense really,” said Mr. McWilliams. “These small companies don’t have the ability to pay for patent licenses, and a patent infringement lawsuit could cripple them before they even get started. We’d love for them to build on our valuable technologies without worry, and once they can afford it, purchase an ongoing license. It is a win-win for everyone.”
At the end of the day, iPEL hopes this new, startup-friendly model becomes an industry standard. “Despite the false narrative that has been spread by many willful infringers, NPEs are a vital part of innovation and the global economy. And, at iPEL, we are holding ourselves to the highest professional standards, by giving all companies an opportunity to secure licenses on reasonable, pre-litigation terms. And, small businesses and startups should never be afraid of an NPE jeopardizing their company. For those reasons, we challenge the rest of the industry to follow our lead,” Mr. Yates said. “It is time for NPEs to stop allowing infringers to define us as a bunch of heartless monsters. Everyone should abide by the Ethical NPETM practices and support small businesses and startups. It’s simply the right thing to do.”
More information about iPEL’s Ethical NPETM criteria, its worldwide patent portfolio, and its free and paid licensing programs, is available at www.ipel.com.
The Cade Museum for Creativity & Invention is excited to announce that the 2018 Cade Prize is now accepting applications from inventors and entrepreneurs in the state of Florida. For the first time, the Cade Prize will award the top four finalists! The application fee is waived until June 22nd at midnight. Beginning June 23rd, the application fee will be $55.
For more information, please visit www.cademuseum.org or email Ashley Bryant at firstname.lastname@example.org.
Read the Fine Print before you sign.
It all sounds so good, and easy. You have spent hours and perhaps years creating your product. You have spent money making prototypes and patents. We know those are not cheap and can take years to get. You see an ad on TV and it sounds great! They can do it all! You meet with someone and they love your idea as much as you do, or so they say.
Here is the kicker. They are in it for the money. I am not saying they aren’t entitled to be paid for their work. The problem is, they rarely do work. Inventors do not ask enough questions or talk to enough people about the company they are choosing. It is based on pure emotion. They sign a contract to pay and they don’t know what they are getting in return.
Inventors are easy pickings for a lot of companies. They tell the inventor what they want to hear and the inventor jumps at the chance. Their credit card is out so fast, they forgot to read the fine print.
Here is another inventor who fell into the trap:
Don’t be the next one to get burned. If you have questions, or need help, email us at email@example.com
Fed up with what he perceived as bureaucracy run amok at the U.S. Patent and Trademark Office, Paul Morinville staged a striking protest this summer, with inventors marching on the agency’s Alexandria headquarters, holding signs and burning their patents.
He said too many patents approved by the agency had been revoked by administrative law judges at the Patent Trial and Appeal Board, which he said tends to side with major technology companies in disputes with independent inventors.
“If you like to steal other inventors’ stuff, then you must love PTAB,” said Mr. Morinville, managing director of U.S. Inventor Inc., an organization advocating for stronger patent protections for startups.
One judge, for example, represented Apple Inc. in private practice and then ruled in favor of the tech giant 17 times after joining the court. Another judge represented AT&T Inc. as a private lawyer and later presided over a case involving the telecommunications company.
Mr. Morinville estimates that the review board has invalidated patents in 92 percent of the cases it has resolved.
Eyebrows were raised this summer when a lawyer representing the patent office in a federal court appeal of a board decision acknowledged that the agency had added extra judges to reviews in order to achieve the desired outcome. The patent office attorney said the move was necessary to “ensure the [director’s] policy positions are being enforced.”
The Supreme Court will take up the issue in a case that asks the justices to declare the appeals board process unconstitutional.
Oral arguments in the case, Oil States Energy Services v. Greene’s Energy Group, are scheduled for Nov. 27.
Congress created the Patent Trial and Appeal Board to address complaints that the patent office was approving too many applications that were vague or overly broad. The board was expected to be cheaper and more efficient than courts to resolve patent disputes.
It handles contested patent cases through administrative proceedings known as inter partes reviews. All cases are managed by panels of three to five administrative law judges.
Inventors say the rulings often seem arbitrary and are particularly irked by what they see as a pro-corporate bent among the administrative law judges. They say anyone can bring a challenge, and the judges can continue a case even if the complaint is withdrawn.
The appeals board is not subject to review by the regular court system, which the inventor community says leaves it with little recourse.
“There is no code of conduct for PTAB judges,” Mr. Morinville said. “There is no rule of law in the PTAB, and that is what really angers people in terms of the invalidation which should rely on the rule of law.”
The patent office’s chief information officer did not respond to multiple requests for comment.
The test case before the Supreme Court involves Houston-based Oil States, a company that provides equipment for the oil and gas industry. It received a patent for a tool that pumps fluid into an oil well without fluid making contact with the wellhead.
Greene’s Energy Group of Imperial, Pennsylvania, challenged that patent through a review, and the board invalidated it. Oil States asked the board if it could amend the patent, but that motion was denied. The company then filed an appeal with the U.S. Court of Appeals for the Federal Circuit.
Oil States said the review process is unconstitutional because a patent is a form of private property and the same agency that grants a property right can eliminate it without a jury trial in federal court.
The Federal Circuit rejected Oil States’ argument and affirmed the board’s decision. Oil States petitioned the Supreme Court, which agreed to hear the case.
The Supreme Court denied similar requests over the past few years to determine the constitutionality of the Patent Trial and Appeal Board’s reviews.
Some patent analysts said Justice Neil M. Gorsuch may be the reason the court chose to hear Oil States. Justice Gorsuch, who was confirmed to the court this year, has expressed concerns about administrative adjudication in judicial opinions.
“Clearly, the court took this on to not just leave things as status quo,” said Art Monk, vice president of patent transactions at TechInsights, a San Jose, California-based provider of patent data. “They could do something radical like invalidate the entire America Invents Act or do something more benign like provide guidance on how property rights need to he handled.”
If the Supreme Court decides the board’s reviews are unconstitutional, then the ruling could restrict other federal agencies’ uses of administrative tribunals to resolve disputes. The Federal Election Commission, Securities and Exchange Commission and Federal Communications Commission are among the agencies that rely on such systems, known as administrative adjudication.
“A ruling striking down PTAB would show the Supreme Court wants to tighten the constraints on administration adjudication and could lead to challenges over other well-established forms of adjudication,” said Greg Reilly, who teaches patent law at Chicago-Kent College of Law.
Small companies and independent inventors say patents are property rights and can be revoked only by a federal court. Several groups, including conservative organizations and a coalition of patent law professors, have filed briefs in support of Oil States.
“We have judicial opinions written over the past 150 years affirming patents as private property rights,” said Greg Dolin, a patent law professor at the University of Baltimore Law School who filed a brief in support of Oil States. “Court after court and justice after justice keep saying patents are private property rights that can only be adjudicated in courts.”
Large tech companies contend that patents are public property and the same government that recognizes them can regulate how they are adjudicated.
The Patent Trial and Appeal Board system gives challengers more leeway to invalidate a patent based on the portion of the technology used instead of the entire patent.
“The PTAB and its review process are constitutional,” Mr. Reilly said. “Patents are created by federal statute, which also gives Congress the right to specify administrative adjudication. Inter parties reviews are appealable to Federal Circuit which protects due process concerns.”
Even if the court finds the review process unconstitutional, it’s not clear what would happen to the patents the PTAB has already invalidated.
“I think we could have a situation in which changes to the law don’t apply retroactively. I think there is still a lot of uncertainty surrounding this case,” Mr. Reilly said.
The debate over the Patent Trial and Appeal Board has attracted attention on Capitol Hill. In June, Sen. Christopher A. Coons, Delaware Democrat, introduced legislation dubbed the Stronger Patents Act. Delaware is the nation’s busiest jurisdiction for patent disputes. More than 6,500 patent cases were filed in federal court in Delaware in 2014, according to the most recently available data from PwC, the brand name for PricewaterhouseCoopers.
Mr. Coons said the bill would bring more balance to the board’s reviews. If passed, the bill will attempt to bar patent challengers from seeking both a Patent Trial and Appeal Board review and a district court hearing, limit board reviews to one claim per patent, and ensure a challenger has a business or financial reason to attack a patent.
“The bill requires the PTAB to use the same standards that a district court applies when evaluating if a patent claims something truly new and nonobvious, standards that are fairer because they account for the fact that inventors have already had to prove to a patent examiner that they deserve a patent,” Mr. Coons said.