The Alpine Ski’s inventor, Herb Schell, was my client. A former personal trainer in Hollywood, he had made a bundle with this invention. Then suddenly, about a year ago, cheaply produced ads began to run on late-night television for something called the Scandinavian Skier, unmistakably a knockoff of Herb’s invention. It was a lot less expensive, too: whereas the real Alpine Ski sells for upward of six hundred dollars (and Alpine Ski Gold for over a thousand), the Scandinavian Skier was going for $129.99.
Herb Schell was already seated in my office, along with the president and chief executive officer of E-Z Fit, the company that was manufacturing Scandinavian Skier, Arthur Sommer; and his attorney, a high-powered lawyer named Stephen Lyons, whom I’d heard of but never met.
On some level I found it ironic that both Herb Schell and Arthur Sommer were paunchy and visibly in lousy shape. Herb had confided to me over lunch shortly after we met that, now that he was no longer a personal trainer, he’d grown tired of working out all the time; he much preferred liposuction.
“Gentlemen,” I said. We shook hands all around. “Let’s resolve this thing.”
“Amen,” Steve Lyons said. His enemies (who are legion) have been known to refer to him as “Lyin’ Lyons” and his small, aggressive law firm as “the Lyons den.”
“All right,” I said. “Your client has blatantly infringed on my client’s design, down to the last claimed feature. We’ve been through all this dozens of times. It’s a goddamned Chinese copy, and unless this is resolved today, we are prepared to go into federal court and seek an injunction. We’ll also seek damages, which, as you know in cases of willful infringement, are treble.” Patent law tends to be a very mild, rather dull way to earn a living-the bland leading the bland, I like to call it-and so I cherished my few opportunities to be confrontational. Arthur Sommer flushed, presumably with anger, but said nothing. His thin lips curled up in a small, tight smile. His attorney leaned back in his chair: ominous body language if ever there was such a thing.
“Look, Ben,” Lyons said. “Since there really isn’t any cause of action here, my client is generously willing to make a courtesy settlement offer of five hundred thousand. I’ve advised him against it, but this charade is costing him and all of us-”
“Five hundred thousand? Try twenty times that.”
“Sorry, Ben,” Lyons said. “This patent isn’t worth the paper it’s printed on.” He clasped his hands together. “We got an on-sale bar here.”
“What the hell are you talking about?”
“I have evidence that Alpine Ski went on sale more than a year before the patent filing date,” Lyons replied smugly. “Sixteen months before, to be exact. So the damned patent’s not valid. On-sale statutory bar.”
This was a new approach on his part, and it was unsettling. Up to now, all we’d been hashing out, in letter after letter, was whether Scandinavian Skier materially resembled Alpine Ski: whether it infringed the claims of the patent, to put it in legalese. Now he was citing something called the “on sale” doctrine, under which an invention can’t be patented if it was “in public use or on sale” more than a year before the date that the patent was applied for.
But I did not let on my surprise. A good attorney must be a skilled bullshit artist. “Nice try,” I said. “That’s not really use, Steve, and you know it.” It sounded good, whatever it meant.
“Ben-” Herb interrupted.
Lyons handed me a legal file folder. “Take a look,” he said. “Here’s a copy of a newsletter put out by the Big Apple Health Club in Manhattan that shows their latest piece of equipment-the Alpine Ski-almost a year and a half before Mr. Schell applied for his patent. And an invoice.”
I took the folder, glanced at it without interest, and handed it back.
“Ben-” Herb said again. “Can we talk for a minute?”
I left Lyons and Sommer in my office while Herb and I talked in a nearby vacant conference room.
“What the hell is this all about?” I asked.
“It’s true. They’re right.”
“You sold this thing more than a year before you applied for a patent?”
“Two years before, actually. To twelve personal trainers at health clubs around the country.”
I stared at him evenly. “Why?”
“Christ, Ben, I didn’t know the law. How the hell are you supposed to test these things out unless you get it out there? You have no idea the kind of abuse machines like this take in gyms and health clubs.”
“So you were able to make improvements along the way?”
“Well, sure.”
“Ah. How fast can you get me a document from your corporate headquarters in Chicago?”
Steve Lyons was beaming with triumph as we came in. “I assume,” he said with what he probably took to be sympathy, “that Mr. Schell has filled you in.”
“Yes, indeed,” I said.
“Preparation, Ben,” he said. “You ought to look into it.”
The timing was exquisite. At that moment my personal fax machine rang and squealed and began to print out a document. I walked over to the fax, watched it print out, and as it did so, I said: “Steve, I only wish you’d saved us all the time and expense by doing a little reading in your case law.”
He looked at me, puzzled, his smile dimming somewhat.
“Ah, let’s see,” I said. “It would be 917 Fed Second 544, Federal Circuit 1990.”
“What’s he talking about?” Sommer audibly whispered to Lyons. Lyons, unwilling to shrug in my presence, merely stared at me, uncomprehending.
“Is that true?” Sommer insisted.
Lyon’s facial expression did not change. “I’d have to look it up.”
The fax machine cut the paper, a staccato punctuation mark. I handed it to Lyons. “Here’s a letter from the manager of the Big Apple Health Club to Herb Schell, containing his thoughts about the Alpine Ski, his notes on how it was holding up and what about it might be reconfigured. And suggestions for modifications.”
At that point Darlene walked in, silently gave me a book-Federal Reporter 917, 2d Series-and left. Without even looking at it, I handed it to Lyons.
“This some sort of game you’re playing?” Lyons managed to stammer.
“Oh, not at all,” I replied. “My client sold prototypes during a period of testing, and gathered performance data from the sold version. Therefore the ‘on-sale’ doctrine doesn’t apply, Steve.”
“I don’t even know where you’re getting this-”
“Manville Sales Corp. v. Paramount Systems, Inc. Fed Second 544.”
“Oh, come off it,” Lyons retorted. “I never even heard of-”
“Page 1314,” I said as I returned to my chair, leaned back, and folded my legs. “Let’s see.” In a monotone, I recited: “The policies that define the on sale and public use bars do not support invalidation of the patent even though, more than one year prior to filing a patent application, the patentee installed a fixture at a state highway rest station under construction. A period of outdoor testing of the invention was necessary to determine whether it would…”
Lyons, in the meantime, sat with the book open on his lap, following along, mouthing the words. He finished the sentence for me: “it would serve its purpose.”
He looked up at me, slack-jawed.
“See you in court,” I said.
Herb Schell left that morning much happier and almost ten million dollars richer. And I had the pleasure of a parting colloquy with Steve Lyons.
“You knew that fucking case word for word,” he said. “Word for word. How the hell did you do that?”