Mock arbitration shines light on designs
An arbitration tribunal consisting of Dan Bereskin, Richard Kreindler and Richard Tan unanimously found that a design patent for a glass with a double wall was not infringed, following a mock proceeding at the AIPPI Congress in Toronto
The proceeding comprised some procedural questions, followed by opening statements by counsel for each party, evidence from two witnesses with direct evidence and cross-examination, witness conferencing (so-called hot tubbing) and closing arguments.
The audience of AIPPI attendees then witnessed a short deliberation between the panel. Bereskin said he relied on the evidence before his eyes rather than legal precedent: “My initial reaction is that the designs are not substantially the same. We would come close to giving the claimant a monopoly in liquid in a glass that appears to float. That is a functional feature and should not be protected.”
Tan added: “The bottom line is we need to determine whether there is substantial similarity or not. I would have thought not similar, so no infringement.” As they had found that there was no infringement, the panel was spared the challenge of deciding whether they had jurisdiction to rule on validity, something that the parties had strongly disputed.
The arbitration process was compressed into three hours, with strict time limits for each part. Nevertheless there were numerous noteworthy points raised, including an opposition to one of the arbitrators, a challenge to the testimony of one of the expert witnesses, and some vigorous cross-examination.
Much of the evidence centred on whether the design patents and the alleged-infringing products were similar in the eyes of an ordinary observer, and whether the double wall was a functional or ornamental feature.
Iván Poli and Mario Franzosi, who played the parts of the expert witnesses, provided entertaining testimony for the audience. Poli, witness for the claimant, said he had asked his ex-wife her opinion as she is a typical consumer: “She’s a very committed purchaser of things. She’s an authority.” Franzosi however said that, as a man, he was more interested in “what’s inside the glass”.
The facts of the dispute mirrored a real case, Bodum USA, Inc v Trudeau Corporation (1889) Inc, decided by Canada’s Federal Court in 2012. In that case Mr Justice Boivin also dismissed the infringement claim, and allowed the counter-claim of invalidity.