Mock arbitration shines light on designs
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

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.

more from across site and ros bottom lb

More from across our site

The FRAND rate is only 5 cents higher than the per-device rate determined at first instance in 2023
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Nearly four months after joining Crowell & Moring, Edward Taelman reflects on starting afresh, new clients, and firm culture
Firms discuss the ebb and flow of life sciences IP work and explain how they help professionals pivot between specialities
Mercedes-Benz, Dolby Laboratories, and Panasonic discuss the merits and drawbacks of the USPTO's terminal disclaimer proposal
In-house counsel believe Chinese domestic firms are becoming as sophisticated as international firms, but they may not shift their portfolios just yet
The Court of Appeals for the Federal Circuit is looking to renew a ban that has prevented Judge Pauline Newman from hearing cases
The list of the top representative firms at the UPC may yield few surprises but their success did not come free
The German firms have accounted for 26% of all infringement actions, while US corporations appear interested in litigating at the forum, a report has revealed
Vincent Brault tells us how he fits kitesurfing into his lunchtime routine and why IP is no longer seen as ‘nerdy’
Gift this article